Tessera, Inc. v. UTAC (Taiwan) Corporaiton
Filing
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ORDER Re: 193 Discovery Dispute Joint Report #5; 194 Discovery Dispute Joint Report #6. Signed by Magistrate Judge Howard R. Lloyd on 2/4/2015. (hrllc1, COURT STAFF) (Filed on 2/4/2015)
*E-Filed: February 4, 2015*
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IN THE UNITED STATES DISTRICT COURT
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For the Northern District of California
NOT FOR CITATION
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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,
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v.
No. C10-04435 EJD (HRL)
ORDER RE: DISCOVERY DISPUTE
JOINT REPORT #5-#6
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UTAC (TAIWAN) CORPORATION,
[Dkt. Nos. 193, 194]
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Defendant.
____________________________________/
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Plaintiff Tessera, Inc. (“Tessera”) sues Defendant UTAC (Taiwan) Corporation (“UTC”) for
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alleged failure to pay royalties under a license agreement. The first phase of this action concerned a
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contract interpretation dispute between Tessera and UTC about the criteria for determining which
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UTC products are royalty-bearing. Following discovery on that subject, the parties submitted
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summary judgment motions relating to contract interpretation, which were ruled on by the court.
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The court entered an Amended Case Management Order that required Tessera to provide its
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infringement contentions in accordance with Patent L.R. 3-1, 3-2, and 3-3 with respect to its claim
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for royalties under the license agreement. Tessera served UTC with the required disclosure,
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identifying 32 claims of 12 licensed patents and providing claim charts contending that two types of
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UTC packages—its w-BGA packages and DFN packages—are covered by the claims of licensed
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patents and are therefore royalty-bearing. Tessera’s disclosure asserted that Tessera did not have
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enough information to determine whether a third type of package, UTC’s LGA SiP package, is
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covered by the claims of the licensed patents and is therefore royalty-bearing. UTC disputes
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Tessera’s contentions, and also served Tessera with invalidity contentions.
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Presently before the Court is the parties’ Discovery Dispute Joint Report (“DDJR”) #5 and
#6. Dkt. Nos. 193, 194. Each will be addressed in turn.
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A.
DISCOVERY DISPUTE JOINT REPORT #5
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DDJR #5 concerns whether Tessera must produce certain documents relating to claims by
infringe Tessera’s U.S. Khandros patents. The documents that UTC seeks include: documents
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containing Tessera’s infringement contentions, including briefs and claim charts concerning claim
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For the Northern District of California
Tessera in earlier suits against other parties in which Tessera has asserted that certain packages
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United States District Court
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construction and Tessera’s infringement contentions; expert reports and other supporting materials,
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such as documents relating to testing, modeling and analysis of accused packages; and decisions
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and/or findings by courts and court-appointed experts concerning Tessera’s infringement
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contentions and claim construction of the Khandros Patents. The specific parties and products for
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which UTC seeks these materials are the following: Samsung’s w-BGA packages in Samsung
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Electronics Co., Ltd. v. Tessera Technologies, Inc., C02-05837 (N.D. Cal.); Micron and Infineon’s
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w-BGA packages in Tessera, Inc. v. Micron Technology Inc., 05-CV-0094 (E.D. Tex.); Amkor’s w-
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BGA packages and other BGA packages in Amkor Technology, Inc. v. Tessera, Inc., 16 531/VRO;
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and Nanya’s w-BGA packages Semiconductor Chips with Minimized Chip Package Size and
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Products Containing Same (III), ITC No. 630 (337-TA-630). UTC also requests production of the
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findings of the court-appointed expert in Tessera Inc. v. Advanced Micro Devices Inc., C05-04063
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(N.D. Cal.).
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“Parties may obtain discovery regarding any nonprivileged matter that is relevant to any
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party’s claim or defense . . . . Relevant information need not be admissible at the trial if the
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discovery appears reasonably calculated to lead to the discovery of admissible evidence.” Fed. R.
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Civ. P. 26(b)(1).
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UTC argues that the documents it seeks directly relate to Tessera’s patent assertions in two
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ways. First, UTC contends that the five foreign patents Tessera is asserting against UTC’s w-BGA
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packages are part of the same family of patents—the “Khandros Patents”—that Tessera has asserted
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in all of its prior suits against w-BGA packages. According to UTC, Tessera’s assertions in the
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earlier suits concerning what the U.S. Khandros Patents cover and whether they are infringed by w-
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BGA packages directly relate to the issues in this case of what the foreign Khandros Patents cover
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and whether they are infringed by UTC’s w-BGA packages.
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None of the patents asserted in the prior cases are asserted here. In addition, UTC does not
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cite to, and the court is not aware of any, case law holding that a party’s statements about patents in
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a prior litigation can impact the construction of different patents that are asserted in a subsequent,
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unrelated case. Accordingly, UTC’s argument regarding the relevancy of Tessera’s assertions in the
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earlier suits concerning what the U.S. Khandros Patents cover and whether they are infringed by w-
For the Northern District of California
United States District Court
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BGA packages is unconvincing.
Second, UTC argues that Tessera’s assertions in earlier suits that the Khandros Patents
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disclose and claim w-BGA packages are relevant to the validity of the U.S. patents it is asserting
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here. UTC has identified the same Khandros Patents that Tessera asserted in the earlier suits as
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prior art that invalidates the six U.S. patents that Tessera is asserting against the w-BGA packages
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here. The U.S. patents refer to Khandros Patents as relevant prior art and purport to claim an
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invention addressing the same types of semiconductor packages. Moreover, in the earlier suits,
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Tessera asserted that the Khandros Patents disclose and claim w-BGA packages. Here, Tessera
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contends that six of the U.S. patents it is asserting also disclose and claim w-BGA packages. UTC
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argues that because the Khandros Patents predate the U.S. patents, the fact that they disclose and
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claim the same package structures renders the U.S. patents invalid.
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UTC requests that Tessera produce documents from prior litigation involving patents that are
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not asserted in the present case. UTC is seeking statements made by Tessera about prior art and
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patents not at issue here. Such statements are not relevant to validity. The scope of the prior art
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references asserted in this case is determined by the references themselves, not by statements made
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in prior litigation regarding infringement of these references. See, e.g., Net MoneyIN, Inc. v.
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VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Accordingly, UTC’s argument that Tessera’s
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assertions in earlier suits are relevant to the validity of the U.S. patents it is asserting here, fails.
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Lastly, UTC argues that the requested documents should be produced because they meet the
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“technological nexus” standard articulated in Apple Inc. v. Samsung Electronics Co., C12-00630
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LHK (PSG), 2013 WL 3246094, at *20 (N.D. Cal. June 26, 2013). In Apple Inc. v. Samsung
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Electronics Co., the court considered a request for prior litigation documents. The court ruled that
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“the appropriate standard for determining the relevance of documents from those other cases turned
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on the similarity between the patents in the disputes. To satisfy the standard, the other case must
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involve the patents-in-suit or patents covering the same or similar technologies, features, or designs
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as the patents-in-suits. . . . [T]he starting point of the “technological nexus” inquiry is the patents at
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issue, not the products at issue.” Apple Inc. v. Samsung Electronics Co., 2013 WL 3246094, at *20
For the Northern District of California
United States District Court
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(internal quotation marks omitted). “[T]he technological nexus standard is not a substitute for the
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relevance inquiry under Fed. R. Civ. P. 26(b) but rather is shorthand for the balancing inquiry in
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which the court ordinarily must engage.” Id.
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Here, UTC has failed to show that the prior litigation involves the patents-in-suit or patents
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covering the same or similar technologies, features, or designs as the patents-in-suits. UTC
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contends that the five foreign patents Tessera is asserting against UTC’s w-BGA packages are part
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of the same family of patents that Tessera has asserted in all of its prior suits against w-BGA
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packages. According to UTC, all of the Khandros Patents, both U.S. and foreign, trace back to the
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07/586,758 application that Tessera filed on September 24, 1990. UTC conclusorily argues that the
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Khandros Patents relate to the same basic invention and share the same core claim terms. UTC
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fails, however, to discuss any specifics about the inventions at issue or the core claim terms in the
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relevant Khandros Patents. Accordingly, UTC has failed to meet the “technological nexus”
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standard.
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Accordingly, UTC’s request for production of certain documents relating to claims by
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Tessera in earlier suits against other parties in which Tessera has asserted that certain packages
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infringe Tessera’s U.S. Khandros patents is denied.
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B.
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DDJR #6 concerns whether Tessera must produce certain documents from earlier
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DISCOVERY DISPUTE JOINT REPORT #6
proceedings against other parties in which Tessera asserted that certain packages infringed Tessera’s
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U.S. Khandros Patents. The documents UTC seeks relate to certain prior art, referred to as the
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OMPAC prior art, that parties in earlier proceedings asserted as prior art that invalidated the U.S.
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Khandros Patents. Specifically, UTC seeks unredacted portions of Tessera’s prehearing and post-
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hearing briefs concerning the OMPAC prior art in Semiconductor Chips with Minimized Chip
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Package Size and Products Containing Same (II), ITC No. 605 (337-TA-605), and Semiconductor
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Chips with Minimized Chip Package Size and Products Containing Same (III), ITC No. 630 (337-
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TA-630).
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In these two ITC proceedings, the respondents contended that the OMPAC prior art
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invalidated the Khandros Patents that Tessera was asserting. In seeking to distinguish the OMPAC
For the Northern District of California
United States District Court
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prior art from the Khandros Patents in the ITC proceedings, Tessera made statements seeking to
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limit the scope and meaning of the claim term “movable” in the Khandros Patents. The same
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“movable” term appears in the foreign Khandros Patents that Tessera is asserting here. UTC argues
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that Tessera’s statements about what the term “movable” means are therefore relevant to the
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meaning of this same term in the foreign Khandros Patents. UTC also argues that the documents
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meet the “technological nexus” standard articulated in Apple Inc. v. Samsung Electronics Co., for
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the same reasons laid out in DDJR #5.
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The court denies UTC’s request for production for the same reasons discussed above in
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regards to DDJR #5. Specifically, in regards to the meaning of the term “movable,” UTC does not
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cite to, and the court is not aware of any, case law holding that a party’s statements about patents in
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a prior litigation can impact the construction of different patents that are asserted in a subsequent,
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unrelated case. In regards to UTC’s argument that the documents meet the “technological nexus”
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standard, UTC has failed to show that the prior litigation involves the patents-in-suit or patents
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covering the same or similar technologies, features, or designs as the patents-in-suits.
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IT IS SO ORDERED.
Dated: February 4, 2015
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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David H. Herrington
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Dominik B. Slusarczyk
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Jennifer Renee Bunn
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Joseph Mark Lipner
jlipner@irell.com, csilver@irell.com, mdonovan@irell.com, slee@irell.com
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Kevin Patrick Kiley
kkiley@irell.com
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Lawrence B. Friedman
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Michael F. Heafey
bhattenbach@irell.com
dherrington@cgsh.com, dherrington@cgsh.com
dslusarczyk@irell.com, mspillner@tessera.com
jbunn@irell.com
lfriedman@cgsh.com
mheafey@kslaw.com, phennings@kslaw.com
For the Northern District of California
United States District Court
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Morgan Chu
mchu@irell.com
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Morvarid Metanat
mmetanat@orrick.com
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Nathaniel E. Jedrey
njedrey@cgsh.com
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Richard William Krebs rkrebs@irell.com, cmedina@irell.com, rbrown@tessera.com,
Slee@irell.com, sveeraraghavan@tessera.com, tegarcia@tessera.com
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Ryan Alexander Ward
rward@irell.com
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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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