Tessera, Inc. v. UTAC (Taiwan) Corporaiton

Filing 293

ORDER Re: Discovery Dispute Joint Report #9 278 . Signed by Magistrate Judge Howard R. Lloyd on 4/30/2015. (hrllc1, COURT STAFF) (Filed on 4/30/2015)

*E-Filed: April 30, 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NOT FOR CITATION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 #9

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UTAC (TAIWAN) CORPORATION,

[Dkt. No. 278]

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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”) #9. Dkt.

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No. 278. The parties’ dispute relates to the following Tessera discovery requests: RFP Nos. 80-81

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and Federal Rule of Civil Procedure 30(b)(6) Topic No. 51. Tessera seeks discovery, including

For the Northern District of California

United States District Court

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documents and deposition testimony, about the role of UTC’s corporate affiliates in royalty-

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triggering activities related to the products at issue. Tessera argues that: (1) the requested discovery

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is needed to determine the full extent to which UTC has participated in royalty-triggering activities

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for UTC products, and in turn, the full amount of royalties owed by UTC under the agreement; (2)

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discovery of UTC’s corporate affiliates is necessary to verify UTC’s summary spreadsheets—that

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Tessera argues were created for this litigation—that contain the number of units sold and “billable

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pins” of certain of the products at issue; (3) Tessera requires the requested discovery regarding

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UTC’s corporate affiliates to test UTC’s assertions about the nature and scope of UTC’s business

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and its relationship with those entities; and (4) any relevant documents located in the offices of

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UTC’s corporate affiliates are discoverable, and UTC should be required to search for and collect

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those documents. Alternatively, Tessera argues that if UTC does not produce the requested

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documents, Tessera should be entitled to an inference that certain products are royalty-bearing, and

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Tessera’s estimates of the number of units and “billable pins” in such products shall be presumed

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accurate. UTC argues that Tessera’s requests for discovery are irrelevant, not within UTC’s control,

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and burdensome to search for.

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First, the Court will address RFP 80 and Deposition Topic 51. RFP 80 seeks documents

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“sufficient to show the role of any UTAC Taiwan corporate parents, subsidiaries, or affiliates in the

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manufacturing, distributing, promoting, selling, testing, or negotiating any w-BGA Packages,

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UTAC Taiwan Packages, or UTAC Taiwan Tested Packages.” Deposition Topic 51 seeks to

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require a UTC witness to testify as to “UTAC Taiwan’s corporate structure, including the role of

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any corporate parents, subsidiaries, or affiliates in the manufacturing, distributing, promoting,

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selling, testing, or negotiating any w-BGA Packages, UTAC Taiwan Packages, or UTAC Taiwan

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Tested Packages.”

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These requests are irrelevant and burdensome. They seek discovery about companies that are

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not parties to the agreement and not parties to this lawsuit. UTC is not required to produce

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documents and information about other parties that it does not control. See Seifi v. Mercedes-Benz

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U.S.A., LLC, No. 12-CV-05493, 2014 WL 7187111, at *3 (N.D. Cal. 2014) (rejecting claim that

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subsidiary had obligation to provide discovery of its parent corporation); Dugan v. Lloyds TSB

For the Northern District of California

United States District Court

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Bank, PLC, No. 12-CV-02549, 2013 WL 4758055, at *3 (N.D. Cal. Sept. 4, 2013) (same).

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Moreover, the activities of other parties are irrelevant. Only UTC is subject to the agreement, and

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therefore only UTC’s activities can be a basis for UTC owing royalties under it.

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Second, the Court will address RFP 81. RFP 81 seeks “[a]ll documents reflecting statements

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made by UTAC Taiwan’s corporate parents, subsidiaries, or affiliates, about any license to Tessera

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patents or about the Agreement.”

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The documents sought are not relevant and not in UTC’s control. This request asks for

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statements by other parties about other agreements, and Tessera has not explained how such

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discovery is relevant here. Statements by a party other than UTC are not relevant to, or binding on,

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UTC, with respect to contract interpretation. In addition, as discussed above, UTC does not control

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its parent or any other company, and therefore has no obligation or ability to provide discovery of

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the documents of other such companies. Moreover, RFP 81 is overbroad. UTC’s parent, UTAC

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Singapore, has its own separate patent license with Tessera. Therefore, RFP 81’s request for “[a]ll

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documents reflecting statements made by” UTC Singapore “about any license to Tessera patents”

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would encompass UTAC Singapore’s statements about its own license. These statements are not

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relevant to UTC’s license.

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Accordingly, Tessera’s request for discovery responsive to RFPs 80-81 and Deposition
Topic No. 51 is denied. In addition, Tessera’s request that it be entitled to an inference that certain

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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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