Tessera, Inc. v. UTAC (Taiwan) Corporaiton
Filing
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ORDER Re: Discovery Dispute Joint Report #10 276 . Signed by Magistrate Judge Howard R. Lloyd on 6/12/2015. (hrllc1, COURT STAFF) (Filed on 6/12/2015)
*E-Filed: June 12, 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NOT FOR CITATION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 #10
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UTAC (TAIWAN) CORPORATION,
[Dkt. No. 276]
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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”) #10.
and Federal Rule of Civil Procedure 30(b)(6) Topic No. 14. According to Tessera, UTC refuses to
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For the Northern District of California
Dkt. No. 276. The parties’ dispute relates to the following Tessera discovery requests: RFP No. 33
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United States District Court
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produce “catalogs, data sheets, data books and product specifications,” as well as presentations for
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the products at issue, even though it makes such materials available to customers, investors, or
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industry conferences. See RFP 33. In addition, Tessera asserts that UTC refuses to provide a
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corporate representative on 30(b)(6) topics covering UTC’s representations to customers concerning
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the agreement. See Tessera’s 30(b)(6) Notice Topic 14. Tessera argues that UTC’s marketing
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materials are relevant to proving that UTC’s products practice the licensed patents, rebutting UTC’s
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obviousness defenses and counterclaims, and rebutting UTC’s geographical scope arguments. In
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the alternative, Tessera argues that UTC should be precluded from arguing at trial that (1) its
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products do not infringe the asserted patents; (2) Tessera’s patents are invalid due to obviousness;
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and (3) UTC’s royalty obligations are limited to its activities in countries where Tessera has a valid
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and infringed patent in force. UTC argues that Tessera’s requests for discovery are irrelevant and
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burdensome.
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First, the Court will address RFP 33. RFP 33 seeks: “For each of the UTC Packages and w-
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BGA packages, all Documents that are made generally available to customers (including
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wholesalers, retailers, and distributors) or the public, including catalogs, data sheets, data books and
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product specifications.”
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The parties already addressed this RFP when they reached an agreement on May 30, 2014 as
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to what technical documents UTC would produce. See UTC’s Responses and Objections to
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Tessera’s Third Set of Requests for Production at RFP 33. Consistent with the agreement, UTC has
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produced technical documents reasonably relevant to the features and qualities of the UTC products
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that Tessera is accusing of infringing its patents, as well as the processes for making these products.
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To the extent Tessera is arguing that there are additional technical documents responsive to RFP 33
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that would be relevant to Tessera’s infringement contentions, it has not explained its basis for this
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argument. In regards to Tessera’s argument as to “geographic scope,” Tessera has not identified a
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connection between geographic scope and RFP 33. Tessera has not argued that RFP 33 is relevant
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to any other issue in the case.
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Moreover, RFP 33 is burdensome. It purports to cover an unlimited time period and lacks a
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limit as to the subject matter addressed in the requested documents. Here, the burden of complying
For the Northern District of California
United States District Court
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with RFP 33 outweighs its likely benefit. See Fed. R. Civ. P. 26(b)(2)(C)(iii) (a court must limit
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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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Second, the Court will address Deposition Topic 14. Deposition Topic 14 seeks to require a
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UTC witness to address “UTAC Taiwan’s representations to customers, or otherwise in any
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marketing, promotional, or other materials or communications, since December 3, 2001, that any
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UTAC Taiwan Packages are made under a license from Tessera.” The only justification Tessera
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offers for its motion to compel as to Topic 14 is its “geographic scope” argument.
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UTC already provided multiple witnesses in the first phase of litigation who were
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extensively questioned about the actual negotiations between the parties concerning the agreement.
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Thus, Tessera has already received competent evidence on the subject. In addition, this request is
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overly broad and burdensome, as it purports to cover a period of over 13 years, as well as whether
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any communications with customers during that period included representations of the type
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described in this Topic. Because the burden of this proposed discovery outweighs its likely benefit,
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Tessera’s motion is denied.
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Accordingly, Tessera’s request for discovery responsive to RFP 33 and Deposition Topic 14.
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is denied. In addition, Tessera’s request that UTC be precluded from arguing at trial that (1) its
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products do not infringe the asserted patents; (2) Tessera’s patents are invalid due to obviousness;
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and (3) UTC’s royalty obligations are limited to its activities in countries where Tessera has a valid
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and infringed patent in force, is denied.
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IT IS SO ORDERED.
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Dated: June 12, 2015
HOWARD R. LLOYD
UNITED STATES MAGISTRATE JUDGE
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For the Northern District of California
United States District Court
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C10-04435 EJD (HRL) Order will be electronically mailed to:
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Anup M Shah
ashah@kslaw.com
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Avram E Luft
aluft@cgsh.com
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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
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
For the Northern District of California
United States District Court
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Lawrence B. Friedman
lfriedman@cgsh.com, maofiling@cgsh.com
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Michael F. Heafey
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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
mheafey@kslaw.com, rgowins@kslaw.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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