Tessera, Inc. v. UTAC (Taiwan) Corporaiton

Filing 332

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NOT FOR CITATION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

[e-mail]

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Avram E Luft

[e-mail]

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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

[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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Lawrence B. Friedman

[e-mail], [e-mail]

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Michael F. Heafey

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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]

[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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