Tessera, Inc. v. UTAC (Taiwan) Corporaiton
Filing
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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NOT FOR CITATION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
ashah@kslaw.com
bhattenbach@irell.com
dherrington@cgsh.com, dherrington@cgsh.com
dslusarczyk@irell.com, mspillner@tessera.com
jtrugman@irell.com
jjohnston@cgsh.com
jlipner@irell.com, csilver@irell.com, hhyun@irell.com, slee@irell.com
lfriedman@cgsh.com, maofiling@cgsh.com
For the Northern District of California
United States District Court
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Michael F. Heafey
mheafey@kslaw.com, rgowins@kslaw.com
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Morgan Chu
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Morvarid Metanat
mmetanat@orrick.com
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Nathaniel E. Jedrey
njedrey@cgsh.com
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Polina Bensman
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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
mchu@irell.com
lbensman@cgsh.com
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Ryan Alexander Ward
rward@irell.com
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Sri Kuehnlenz
skuehnlenz@cgsh.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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