Tessera, Inc. v. UTAC (Taiwan) Corporaiton

Filing 369

Order by Magistrate Judge Howard R. Lloyd on 368 Discovery Dispute Joint Report 18. (hrllc1, COURT STAFF) (Filed on 10/21/2015)

E-Filed 10/21/15

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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)

Plaintiff,
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v.

ORDER RE: DISCOVERY DISPUTE
JOINT REPORT 18

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UTAC (TAIWAN) CORPORATION,

Re: Dkt. No. 368

Defendant.

United States District Court
Northern District of California

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Tessera, Inc. (“Tessera”) sues UTAC (Taiwan) Corporation (“UTC”) for breach of contract

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and patent infringement. Dr. Bravman wrote an expert report for Tessera, and the parties filed

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discovery dispute joint report (“DDJR”) 14 when they failed to agree on whether the scope of

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mandatory expert discovery required Tessera to produce “certain materials and information”

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related to Dr. Bravman’s report. Dkt. No. 336. Tessera argued, in part, that unproduced scanning

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electron microscope photos of semiconductor packages were non-discoverable work product

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because those photos were created for this case at the direction of Tessera’s lawyers and Dr.

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Bravman did not review, generate, or rely upon those photos. The court resolved DDJR 14, in

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part, by ruling that Tessera may withhold any such unproduced photos as work product. Dkt. No.

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361 at 3.

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The parties now dispute whether Tessera accurately described how the photos withheld as

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work product were created. UTC quotes deposition testimony from Dr. Bravman that suggests

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photos were taken according to requests and instructions from Dr. Bravman; UTC argues that Dr.

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Bravman therefore “generated” the withheld photos and Tessera must produce all of them under

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Federal Rule of Civil Procedure (“FRCP”) 26(a)(2)(B). UTC also argues Tessera has been unduly

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evasive during the discovery process and that therefore Tessera should provide a log of withheld

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photos to UTC. Tessera responds that UTC’s request is an untimely attempt to relitigate issues

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that the court already resolved. Tessera also asserts that Dr. Bravman received a subset of

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preexisting work-product photos and that no new photos were generated in response to his

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requests.
Discussion

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UTC raises this dispute far too late. Expert discovery closed on July 17, 2015, and UTC

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was required to file this DDJR no more than seven days later. Dkt. No. 342 at 1; Civ. L.R. 37-3;

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Dkt. No. 118 at 9. UTC deposed Dr. Bravman on July 14, 2015. This DDJR is based on that

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deposition testimony and UTC could have timely filed this DDJR within the ten days following

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the deposition. UTC, instead, filed this DDJR on October 16, 2015.

United States District Court
Northern District of California

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UTC argues it has not waived this dispute because UTC deposed Dr. Bravman after DDJR

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14 had already been filed. Dkt. No. 368 at 4 n.1. That does not explain why UTC deposed Dr.

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Bravman and then waited three months to file a DDJR about his deposition testimony. The

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dispute in this DDJR relates to the disputes in DDJR 14, but that did not preclude UTC from

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timely filing this DDJR.

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concurrently filing separate DDJRs that relate to each other, Dkt. Nos. 337, 339; likewise, UTC

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could have timely filed this DDJR in July even though related disputes had been filed in DDJR 14.

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UTC also cites City of Owensboro v. Kentucky Utilities Co., No. 4:04 CV-87-M, 2008 WL

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4542674, at *2 (W.D. Ky. 2008), to argue discovery disputes related to FRCP 26(a)(2)(B) cannot

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be untimely. Dkt. No. 368 at 4 n.1. UTC misreads Owensboro, which held that a party is not

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required to separately raise FRCP 26(a) before that party may request the exclusion of expert

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testimony under FRCP 37(c). That holding is not binding on this court and, in any event, that

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holding provides no justification for the violation of Local Rule 37-3 and the violation of the

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parties’ stipulated protective order.

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In the past UTC has raised disputes that relate to each other by

Conclusion

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The court shall not rule on the merits of this discovery dispute because the dispute was not

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timely presented to the court as required by Civil Local Rule 37-3 and the parties’ stipulated

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protective order. The court shall not order the relief requested by UTC.
IT IS SO ORDERED.
Dated: 10/21/15

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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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