Tessera, Inc. v. UTAC (Taiwan) Corporaiton

Filing 124

DISCOVERY ORDER by Magistrate Judge Howard R. Lloyd on 114 Discovery Dispute Joint Report #3. (hrllc1, COURT STAFF) (Filed on 6/6/2013)

*E-FILED: June 6, 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NOT FOR CITATION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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v.

No. C10-04435 EJD (HRL)
ORDER ON DISCOVERY DISPUTE
JOINT REPORT #3

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UTAC (TAIWAN) CORPORATION,

[Dkt. 114]

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Defendant.
____________________________________/
In Discovery Dispute Joint Report (“DDJR”) #2 the court was asked whether the deposition

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of UTAC’s Taiwan-based employee, Ken Hsieh, should take place in Taiwan or in the US and

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whether a FRCP 30(b) notice was sufficient to compel his attendance. The court ordered that a Rule

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30(b) notice was enough, but that the deposition should take place in Taiwan.

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Now, in DDJR#3, the parties continue to wrangle, this time over the ground rules for Hsieh’s

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deposition. UTAC refuses to produce him for questioning until the court clarifies whether Hsieh is

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entitled to assert the attorney–client privilege during his testimony by virtue of his position in the

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finance office of UTAC as a “Legal Executive.” Although Hsieh has a legal education and may

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offer legal advice as part of his job in UTAC’s finance office, there is no dispute that Hsieh is not a

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“lawyer” or admitted to practice in Taiwan or anywhere else. The court is told that it is

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commonplace for individuals in Taiwan to obtain a legal education but to never take the bar

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examination or become admitted to practice as a lawyer.

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UTAC urges this court to find that the attorney-client privilege should apply to

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communications between Hsieh and other UTAC employees even though no actual “lawyer” is

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involved, and cites California Evidence Code § 950. 1 Section 950 describes a “lawyer” for

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attorney-client privilege purposes as one authorized, “...or reasonably believed by the client to be

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authorized,” to practice law. This does not help UTAC because it acknowledged that it knew Hsieh

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was not authorized to practice law and not a lawyer. Significantly, Evidence Code § 952 limits the

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privilege to communications between a client and “his or her lawyer.”

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UTAC claims support for its position in Renfield Corp. v. E. Remy Martin & Co., 98 F.R.D.

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442 (D. DE, 1982), which held that in-house legal advisors in France were the functional equivalent

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of lawyers and the privilege could apply to their communications. However, the court was not

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applying California law. And, the specific facts that the court found compelling are quite hazy, and

For the Northern District of California

United States District Court

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its reasoning difficult to follow or credit. In any event, Renfield is not binding authority, and not

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persuasive.
Finally, UTAC appeals to the court’s sense of equity. It argues it is not “fair” that Tessera

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should have the benefit of the attorney-client privilege just because it communicated with actual

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lawyers while it is denied the privilege because it used legally trained non-lawyers. However, this

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argument seems to invite the court to ignore what the law requires in order to recognize the

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privilege, which the court cannot do. And, it is UTAC’s burden to prove it exists here.
The court has found no binding authority on the question presented, but is persuaded the

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right result was reached by Judge Wilken in Powertech Technology Inc., v. Tessera, Inc., No. 11-

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06121 CW, Order Overruling Powertech Tech., Inc’s. Obj. to the Special Master’s Dec. 14, 2012

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Order (ECF No. 215). The facts there are strikingly similar to here. There, the individuals in

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question were foreign legal advisors who supposedly played a role equivalent to attorneys. No go,

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said Judge Wilken. No privilege. They were not lawyers and no one claimed they were authorized

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to practice law.
In conclusion, Hsieh has a legal education and apparently offers legal advice as part of his

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job in UTAC’s finance office. However, he is not a lawyer. He is not authorized to practice law in

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Taiwan or anywhere else. UTAC knows this. There is no showing that Taiwan recognizes an

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attorney-client privilege in communications between non-lawyer legal advisors and their employers.

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Both sides agree that in this diversity case California law controls questions about privilege.
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There is no assertion that UTAC BELIEVED any privilege attached to communications between

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Hsieh and its other employees. By virtue of the undisputed facts here, no privilege attaches to

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Hsieh’s communications with others in UTAC.

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IT IS SO ORDERED.
Dated: June 6, 2013
HOWARD R. LLOYD
UNITED STATES MAGISTRATE JUDGE

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For the Northern District of California

United States District Court

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Benjamin J.A. Sauter

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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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For the Northern District of California

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

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United States District Court

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Lawrence B. Friedman

[e-mail]

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Michael F. Heafey

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Morgan Chu

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Morvarid Metanat

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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]

[e-mail]

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

[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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