Tessera, Inc. v. UTAC (Taiwan) Corporaiton

Filing 109

ORDER on 101 Discovery Letter Brief by Magistrate Judge Howard R. Lloyd. (hrllc1, COURT STAFF) (Filed on 2/14/2013)

*E-FILED: February 14, 2013*

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NOT FOR CITATION

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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TESSERA, INC.,
Plaintiff,

For the Northern District of California

United States District Court

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No. C10-04435 EJD (HRL)
ORDER ON DDJR #2

v.
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[Dkt. 101]
UTAC (TAIWAN) CORPORATION,

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Defendant.
____________________________________/
In this breach of contract case Plaintiff Tessera, Inc. (“Tessera”) sues Defendant UTAC

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(Taiwan) Corporation (“UTC”) for alleged failure to pay royalties under a license agreement. The

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parties dispute the basis on which the royalty payments are due. A discovery dispute has arisen over

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whether and where Tessera may depose UTC employee Ken Hsieh, who lives and works in Taiwan.

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Tessera asks the Court to order UTC to bring Hsieh to California for a deposition. UTC argues that

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Tessera may not compel Hsieh’s deposition through a notice pursuant to Federal Rule of Civil

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Procedure 30.

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If the party to be deposed in a matter is a corporation, the party seeking discovery may either

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designate an appropriate individual, or describe the subject matter to be covered in the proposed

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deposition and allow the corporate deponent to designate its own spokesperson. See Fed. R. Civ. P.

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30(b)(6). If, however, the party seeking discovery chooses to designate a particular witness, the

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person designated must be an officer, director, or managing agent of the corporation. See id; Use

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Techno Corp. v. Kenko USA, Inc., No. C-06-02754 EDL, 2007 WL 2403556, * 1 (N.D.Cal. Aug. 20,

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2007). If the person is not an officer, director, or managing agent of corporation, the party seeking

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discovery must proceed as though the person is an ordinary non-party witness, and obtain a

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subpoena to secure the attendance of the deponent. Id.

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To determine whether an individual is a “managing agent” under Rule 30, courts look to see

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if the individual involved is invested by the corporation with general powers to exercise his

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discretion and judgment in dealing with corporate matters, whether the individual can be depended

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upon to carry out the employer's direction to give testimony at the demand of a party engaged in

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litigation with the employer, and whether the individual can be expected to identify with the

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interests of the corporation rather than with those of the other parties. Wright & Miller, 8A Fed.

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Prac. & Proc. Civ. § 2103 (3d ed.). Courts place particular emphasis on the third factor,

For the Northern District of California

United States District Court

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identification with the interests of the employer. Id. The party seeking the deposition bears the

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burden of providing evidence that the proposed deponent is a managing agent, but courts resolve

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close questions of a deponent’s status in favor of the examining party. Use Techno Corp. v. Kenko

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USA, Inc., No. C-06-02754 EDL, 2007 WL 2403556, * 1 (N.D.Cal. Aug. 20, 2007).

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The Court has reviewed the competing contentions of the parties and is convinced that Hsieh

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is an employee with relevant information. Hsieh authored or was included in a substantial number

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of the e-mails already produced in this case. He authored emails explaining how UTC determined

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whether royalty payments are due, so he has information directly relevant to the primary issue in

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this litigation. Hsieh also provided Tessera with many of UTC’s royalty statements. Whether Hsieh

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is a managing agent for purposes of Rule 30 is a closer call. Because Hsieh is a current employee at

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UTC the second and third factors considered in this determination, whether he can be depended

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upon to carry out UTC’s direction to give testimony, and whether he can be expected to identify

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with UTC’s interests rather than with Tessera’s, weigh in favor of a finding that he is a managing

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agent for purposes of Rule 30. UTC argues that the first factor, whether the individual is invested

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by the corporation with general powers to exercise his discretion and judgment in dealing with

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corporate matters, weighs against a finding that Hsieh is a managing agent. UTC claims that Hsieh

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has no decision-making authority, and that Tessera is already deposing Hsieh’s supervisor, Wendy

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Pan, and UTC’s President and Chief Executive Officer, Johnson Hsu, both of whom have more

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authority than Hsieh.

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As close questions of a deponent’s status are resolved in favor of the examining party, and

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for the sake of efficiently moving the case forward, the Court finds that Hsieh is a managing agent

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for purposes of Rule 30. Tessera may therefore compel Hsieh’s testimony with respect to non-

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privileged information through a Rule 30 notice. The Court finds that special circumstances do not,

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however, warrant displacing the general rule that depositions of a defendant’s corporate witnesses

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are taken at the defendant’s principal place of business. Wright & Miller, 8A Fed. Prac. & Proc.

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Civ. § 2112 (3d ed.). UTC’s principal place of business is Taiwan, where Hsieh lives and works.

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Accordingly, UTC is ordered to produce Hsieh for a deposition, and Hsieh’s deposition shall occur

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in Taiwan.

For the Northern District of California

United States District Court

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IT IS SO ORDERED.
Dated: February 14, 2013
HOWARD R. LLOYD
UNITED STATES MAGISTRATE JUDGE

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C10-04435 EJD (HRL) Order will be electronically mailed to:

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Benjamin W. Hattenbach

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Brian David Ledahl

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David H. Herrington

[e-mail], [e-mail]

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Jennifer Renee Bunn

[e-mail]

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Joseph Mark Lipner

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Kathleya Chotiros

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Laura Elizabeth Evans

[e-mail], [e-mail]

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Lawrence B. Friedman

[e-mail]

[e-mail]

[e-mail]

[e-mail], [e-mail], [e-mail]
[e-mail]

For the Northern District of California

United States District Court

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Michael F. Heafey

[e-mail], [e-mail], [e-mail]

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Morgan Chu

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Nathaniel E. Jedrey

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Richard William Krebs [e-mail], [e-mail], [e-mail],
[e-mail], [e-mail], [e-mail]

[e-mail]
[e-mail]

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Counsel are responsible for distributing copies of this document to co-counsel who have not
registered for e-filing under the court’s CM/ECF program.

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