Tessera, Inc. v. UTAC (Taiwan) Corporaiton

Filing 291

ORDER Re: Discovery Dispute Joint Report #8 275 . Signed by Magistrate Judge Howard R. Lloyd on 4/24/2015. (hrllc1, COURT STAFF) (Filed on 4/24/2015)

*E-Filed: April 24, 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NOT FOR CITATION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 #8

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UTAC (TAIWAN) CORPORATION,

[Dkt. No. 275]

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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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In the second phase of this action, Tessera served UTC with infringement disclosures

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identifying the products that Tessera contends are royalty-bearing under the agreement. Tessera’s

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July 8, 2014 disclosures identified 32 claims of 12 licensed patents and provided claim charts

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contending that two types of UTC packages—its w-BGA packages and DFN packages—are

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covered by the claims of licensed patents and are therefore royalty-bearing. Tessera’s disclosure

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asserted that Tessera did not have enough information to determine whether a third type of package,

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UTC’s LGA SiP package, is covered by the claims of the licensed patents and is therefore royalty-

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bearing. UTC disputes Tessera’s contentions, and also served Tessera with invalidity contentions.

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UTC has filed a motion for partial summary judgment, which is currently pending. Dkt.

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Nos. 208, 247. Tessera opposed the motion, and the court has not yet issued a ruling. The parties

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have also briefed and argued claim construction issues, and the court has not yet issued a claim

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construction order.

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Presently before the Court is the parties’ Discovery Dispute Joint Report (“DDJR”) #8. Dkt.

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No. 275. The parties’ dispute relates to the following Tessera discovery requests: RFP Nos. 24-32

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and 35-36, Interrogatory No. 19, and Tessera’s First Request for Inspection. Tessera argues that

For the Northern District of California

United States District Court

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UTC should be compelled to provide discovery responsive to these requests because UTC has failed

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to make a meaningful disclosure about the technological details of UTC’s products and

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manufacturing processes. In the alternative, Tessera argues that UTC should be precluded from

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arguing that its products are not covered by the licensed patent claims. UTC argues that Tessera’s

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requests for discovery are either moot because UTC has produced or agreed to produce the

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requested information, or burdensome and irrelevant.

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First, the Court will address RFPs 24-32 and 35-36. Tessera argues that it is entitled to

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production of technical documents describing UTC’s royalty-bearing products, including: data

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sheets and other documents describing the properties of the materials used in UTC’s royalty-bearing

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packages, factory-level instructions regarding assembly of the royalty-bearing packages, and bill of

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materials for the royalty-bearing packages.

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RFP 24 seeks “Documents sufficient to identify all UTC Packages.” RFP 25 seeks

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“Documents sufficient to identify all w-BGA Packages from before September 24, 2010.” RFP 26

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seeks “Documents sufficient to identify all w-BGA Packages from after September 24, 2010.” RFP

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27 seeks “Documents sufficient to describe the structure of each UTC Package and w-BGA

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Package.”

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UTC has already provided technical documents relating to w-BGA packages. These include
package drawings, wiring diagrams, bills of materials, and specifications for the various assembly

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steps and processes involved in making these packages. UTC has provided responsive documents to

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satisfy RFPs 24-27, and Tessera has not articulated a basis for contending otherwise.

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In addition, a request for all revisions or versions of the technical information from 2010

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onwards is irrelevant, burdensome and overbroad. See Fed. R. Civ. P. 26(b)(2)(C)(iii) (a court must

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limit discovery when “the burden or expense of the proposed discovery outweighs its likely benefit,

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considering the needs of the case, the amount in controversy, the parties’ resources, the importance

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of the issues at stake in the action, and the importance of the discovery in resolving the issues”).

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UTC has already produced the operative versions of its engineering drawings and other technical

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documents. Tessera’s request that UTC produce all revisions or versions of these documents that

For the Northern District of California

United States District Court

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may have existed over the last several years would encompass essentially all technical and

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engineering documents that ever existed at the company. Searching for and collecting all such

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materials would be burdensome. Moreover, Tessera has not provided a justification for imposing

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that burden. Not all versions or revisions would be relevant. The patents Tessera has asserted for

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its royalty claim concern a limited set of features and components of a semiconductor package.

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UTC has already provided a full production of the operative technical documents concerning its

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packages. UTC’s burden of attempting to comply with such a request outweighs any purported

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benefit to Tessera. Tessera must identify any particular documents and versions or revisions it

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contends would be relevant before production of these materials will be compelled.

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RFP 28 seeks “Documents sufficient to describe the processes used to make each UTC

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Package and w-BGA Package.” RFP 29 seeks “Documents sufficient to describe the operation

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(including the thermal, mechanical and electrical behavior) of each UTC Package and w-BGA

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package.” RFP 30 seeks “All technical drawings (such as bond diagrams, substrate diagrams,

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package-outline drawings, unit-detail drawings) for each UTC Package and w-BGA package.” RFP

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31 seeks “All specifications for each UTC Package and w-BGA package.”

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In regards to RFPs 28-30, UTC has produced responsive documents and is not aware of

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anything more that should or could be produced. UTC has produced documentation responsive to

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RFP 31, and is searching for more at Tessera’s request.

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RFP 32 seeks “Documents sufficient to describe the materials (including the material’s

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commercial name, chemical composition, thermos-mechanical properties, and geometry and

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dimensions of the material) used in each UTC Package and w-BGA package, including mold

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compounds, encapsulants, Underfills, solder-masks, die attach materials, die contacts, solder,

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package substrate, and interposer materials.”

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In regards to RFP 32, as well as RFPs 28-29, UTC is willing to search for and produce data

substrate, gold wire and solder balls. UTC is not aware of any others that are relevant. UTC has

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requested that Tessera identify any others it contends would be relevant and explain the basis, but

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For the Northern District of California

sheets for components that may be relevant to the case: die attach, molding component, encapsulant,

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United States District Court

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Tessera has failed to do so. In regards to Tessera’s argument that UTC’s production in response to

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RFP 32 may not include all “bills of materials,” Tessera has failed to identify anything that may be

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missing.

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RFPs 35 and 36 seek eight samples of each of the UTC and w-BGA packages. In response
to RFPs 35-36, UTC has sent sample packages of its w-BGA packages to Tessera’s counsel.
Second, Tessera argues that UTC should be compelled to answer Interrogatory 19, which

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requests: “For each technical document produced by UTC in this litigation, identify which Packages

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at Issue the document describes or covers and any unique naming convention or identifiers used by

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UTC or its customer(s) for the Package at Issue described or covered by that document.” According

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to Tessera, a response is necessary because the technical materials that UTC produced refer to UTC

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packages with inconsistent identifiers. However, no such correlation table matching technical

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documents to royalty reports exists, and UTC is not required to create one. Nevertheless, UTC

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agreed to create one, and is currently doing so.

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Third, Tessera argues that it should be permitted to inspect UTC’s manufacturing facility

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located at 2, Li Hsin Road 3, Science Based Industrial Park, Hsinchu, Taiwan. Tessera argues that

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an inspection would permit Tessera’s experts to observe and document pertinent features of UTC’s

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manufacturing processes and royalty-bearing products that cannot be inferred through other

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discovery. In addition, Tessera argues that the claim constructions that UTC has argued that the

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Court should adopt seek to add numerous difficult-to-prove limitations to Tessera’s process claims,

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adding to the need for this inspection.

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UTC has concerns about the disruptiveness and invasiveness of a proposed inspection, given

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that information belonging to UTC’s customers could be inadvertently disclosed during the

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inspection. UTC has asked Tessera to explain what information, if any, it believes an inspection

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could provide that is not already provided in the technical documents UTC has produced. Tessera

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has not done so. Before an inspection of UTC’s manufacturing facility will be compelled, Tessera

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must specify what information it believes an inspection could provide that is not already provided in

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the technical documents UTC has produced.

For the Northern District of California

United States District Court

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Accordingly, Tessera’s request for discovery responsive to RFPs 24-32 and 35-36,

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Interrogatory 19, and Tessera’s First Request for Inspection is denied. In addition, Tessera’s request

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that UTC be precluded from arguing that its products are not covered by Tessera’s patent claims is

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also denied.

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IT IS SO ORDERED.
Dated: April 24, 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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Anup M Shah

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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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Jackson Samuel Trugman

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Jacob Johnston

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Joseph Mark Lipner

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Lawrence B. Friedman

[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]

For the Northern District of California

United States District Court

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Michael F. Heafey

[e-mail], [e-mail]

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Morgan Chu

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Morvarid Metanat

[e-mail]

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Nathaniel E. Jedrey

[e-mail]

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Polina Bensman

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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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Ryan Alexander Ward

[e-mail]

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Sri Kuehnlenz

[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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