Tessera, Inc. v. UTAC (Taiwan) Corporaiton
Filing
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ORDER Re: Discovery Dispute Joint Report #13 290 . Signed by Magistrate Judge Howard R. Lloyd on 6/4/2015. (hrllc1, COURT STAFF) (Filed on 6/4/2015)
*E-Filed: June 4, 2015*
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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TESSERA, INC.,
Case No. 10-cv-04435-EJD (HRL)
United States District Court
Northern District of California
Plaintiff,
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ORDER RE: DISCOVERY DISPUTE
JOINT REPORT #13
v.
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UTAC (TAIWAN) CORPORATION,
Re: Dkt. No. 290
Defendant.
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Plaintiff Tessera, Inc. (“Tessera”) sues Defendant UTAC (Taiwan) Corporation (“UTC”)
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for alleged failure to pay royalties under a license agreement. The first phase of this action
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concerned a contract interpretation dispute between Tessera and UTC about the criteria for
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determining which UTC products are royalty-bearing. Following discovery on that subject, the
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parties submitted summary judgment motions relating to contract interpretation, which were ruled
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on by the court.
In the second phase of this action, Tessera served UTC with infringement disclosures
identifying the products that Tessera contends are royalty-bearing under the agreement. Tessera’s
July 8, 2014 disclosures identified 32 claims of 12 licensed patents and provided claim charts
contending that two types of UTC packages—its w-BGA packages and DFN packages—are
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
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package, UTC’s LGA SiP package, is covered by the claims of the licensed patents and is
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therefore royalty-bearing. UTC disputes Tessera’s contentions, and also served Tessera with
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invalidity contentions.
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UTC has filed a motion for partial summary judgment, which is currently pending. Dkt.
Nos. 208, 247. Tessera opposed the motion, and the court has not yet issued a ruling. The parties
have also briefed and argued claim construction issues, and the court has not yet issued a claim
construction order.
Presently before the Court is the parties’ Discovery Dispute Joint Report (“DDJR”) #13.
Dkt. No. 290. The parties’ dispute relates to RFP No. 85 in Tessera’s 8th Set of Requests for
Production. Tessera requests that the Court order UTC to produce responsive documents to RFP
85, which seeks UTC’s internal engineering communications related to the semiconductor
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United States District Court
Northern District of California
packages at issue.
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Tessera argues that these documents are relevant because they provide
evidence of UTC’s alleged infringement of the asserted Tessera patents as well as evidence
rebutting invalidity contentions that have been raised by UTC. In addition, Tessera argues that
producing this discovery is not unduly burdensome. UTC argues that the requested discovery is
cumulative and unnecessary as well as overbroad and unduly burdensome.
Parties may obtain discovery about any nonprivileged matter that is relevant to any party’s
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claim or defense. Fed. R. Civ. P. 26(b)(1). “Relevance under Rule 26(b)(1) is construed more
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broadly for discovery than for trial.” Truswal Sys. Corp. v. Hydro-Air Eng’g, Inc., 813 F.2d 1207,
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1211 (Fed. Cir. 1987). “Relevant information need not be admissible at the trial if the discovery
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appears reasonably calculated to lead to the discovery of admissible evidence.” Fed. R. Civ. P.
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26(b)(1).
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Discovery is not unfettered, however. A court must limit the extent or frequency of
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discovery if it finds that (a) the discovery sought is unreasonably cumulative or duplicative or can
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be obtained from a source that is more convenient, less burdensome or less expensive; (b) the
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party seeking discovery has had ample opportunity to obtain the information through discovery; or
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(c) the burden or expense of the discovery sought outweighs its likely benefit, considering the
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needs of the case, the amount in controversy, the parties’ resources, the importance of the issues at
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stake, and the importance of the discovery in resolving those issues. Fed. R. Civ. P.
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26(b)(2)(C)(i)-(iii).
Here, RFP 85 seeks “All internal communications between UTC engineers, developers, or
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researchers, relating to Packages at Issue.” “Packages at Issue” is defined as “all w-BGA
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Packages and UTC Packages.” “UTC Packages” is defined as “any integrated circuit packages
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made . . . or sold by UTC at any time other than w-BGA Packages, including but not limited to
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DFN and LGA SiP Packages.” “W-BGA Packages” are defined as “packages made . . . or sold by
UTC on which UTC paid royalties to Tessera prior to September 24, 2010 or any substantially
similar packages.”
Tessera’s request is overbroad and unduly burdensome. Because UTC is in the business of
making integrated circuit packages, a large percentage of communications among UTC’s
engineers, developers, and researchers is likely to relate to such packages. UTC asserts that it
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United States District Court
Northern District of California
would take weeks to collect such communications, and it would require additional time and
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expense for UTC’s counsel to sort through the documents to ensure that only responsive, nonprivileged documents are produced.
In addition, the requested discovery is cumulative and unnecessary. UTC has already
produced package drawings, wiring diagrams, bills of materials, specifications, data sheets and
training materials for the various assembly steps and processes involved in making the packages.
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These engineering drawings and other technical documents show the structures, features, and
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operations of the Packages at Issue. Tessera has no basis to contend that internal communications
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would reveal anything relevant to the structure and operation of the packages that is not contained
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in the engineering and technical documents that UTC has already produced.
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In the alternative, Tessera states that it is willing to narrow its request to the following
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UTC engineers that Tessera believes are likely to possess information most relevant to responding
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to UTC’s non-infringement and invalidity defenses: Ken Keng (UTC’s head of research and
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development); any predecessors to Ken Keng holding the title of head of research and
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development or a substantially similar title; and Vincent Liu, Eric Kuo, and Norick Chang
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(engineers in UTC’s Assembly Engineering Section). Tessera states that it is also willing to
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narrow the date range of the request from 2001 (the year the parties entered the agreement) to the
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present. This narrowed request, however, is also overbroad. It seeks the collection and production
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of essentially all of the engineers’ emails and other communications over a fourteen-year period.
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Accordingly, Tessera’s request that UTC be ordered to produce documents responsive to
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RFP 85 is denied.
IT IS SO ORDERED.
Dated: June 4, 2015
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________________________
HOWARD R. LLOYD
United States Magistrate Judge
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United States District Court
Northern District of California
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