Carnegie Mellon University v. Marvell Technology Group et al

Filing 31

Order by Magistrate Judge Howard R. Lloyd granting in part and denying in part 1 Plaintiff's Motion to Compel. 5/31/2011 hearing is vacated.(hrllc2, COURT STAFF) (Filed on 5/27/2011)

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*E-FILED 05-27-2011*

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NOT FOR CITATION

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IN THE 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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For the Northern District of California

United States District Court

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No. C11-80078MISC JF (HRL)

CARNEGIE MELLON UNIVERSITY,

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ORDER GRANTING IN PART AND
DENYING IN PART PLAINTIFF’S
MOTION TO COMPEL

Plaintiff,
v.

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MARVELL TECHNOLOGY GROUP and
MARVELL SEMICONDUCTOR, INC.,

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Defendants.

[Re: Docket No. 1]
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Carnegie Mellon University (CMU) has sued defendants Marvell Technology Group

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and Marvell Semiconductor, Inc. (collectively, Marvell) in the United States District Court for

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the Western District of Pennsylvania for alleged patent infringement.

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Samsung Electronics Co. Ltd. (SEL), a Korean company, is a Marvell customer.

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Samsung Semiconductor, Inc. (SSI), SEL’s indirect subsidiary, sells Samsung hard drives in the

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United States. Neither SEL nor SSI are parties to the underlying patent infringement lawsuit.

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CMU subpoenaed SSI for information pertaining to sales of Samsung drives that

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reportedly contain the accused Marvell chips. CMU now moves this court for an order

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compelling SSI’s compliance with those subpoenas as to Requests for Production Nos. 1 and 4

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and deposition topics 1, 5 and 11. SSI opposes the motion. The matter is deemed suitable for

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decision on the papers, and the May 31, 2011 hearing is vacated. Civ. L.R. 7-1(b). Upon

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consideration of the moving and responding papers, this court grants the motion in part and
denies it in part.

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Rule 45 of the Federal Rules of Civil Procedure authorizes the issuance of a subpoena

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commanding a nonparty to attend and testify; produce designated documents, electronically

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stored information, or tangible things in that non-party’s possession, custody or control; or

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permit the inspection of premises. FED.R.CIV.P. 45(a)(1)(A)(iii). The scope of discovery

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through a Fed. R. Civ. P. 45 subpoena is the same as that applicable to Fed. R. Civ. P. 34 and

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the other discovery rules. FED.R.CIV.P. 45 advisory committee’s note (1970).

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Parties may obtain discovery about any nonprivileged matter that is relevant to any

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party’s claim or defense. FED.R.CIV.P. 26(b)(1). “Relevance under Rule 26(b)(1) is construed

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more broadly for discovery than for trial.” Truswal Sys. Corp. v. Hydro-Air Eng’g, Inc., 813
F.2d 1207, 1211 (Fed.Cir.1987). “Relevant information need not be admissible at the trial if the

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For the Northern District of California

United States District Court

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discovery appears reasonably calculated to lead to the discovery of admissible evidence.”

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FED.R.CIV.P. 26(b)(1). Discovery is not unfettered, however. A court must limit the extent or

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frequency of discovery if it finds that (a) the discovery sought is unreasonably cumulative or

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duplicative or can be obtained from a source that is more convenient, less burdensome or less

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expensive, (b) the party seeking discovery has had ample opportunity to obtain the information

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through discovery; or (c) the burden or expense of the discovery sought outweighs its likely

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benefit, considering the needs of the case, the amount in controversy, the parties’ resources, the

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importance of the issues at stake, and the importance of the discovery in resolving those issues.

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FED.R.CIV.P. 26(b)(2)(C)(i)-(iii).

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CMU wants information, going back about eight years, relating to SSI’s sales of hard

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drives containing the accused Marvell chips. That information is relevant to CMU’s claimed

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damages. The crux of this discovery dispute turns on the identification of the Samsung hard

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drive models that actually contain the accused chips. There is a suggestion in the record before

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this court that Marvell does not know which Samsung drives contain the accused chips. SEL

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undoubtedly has the information that CMU seeks. However, CMU says that, under the terms of

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Korea’s accession to the Hague Convention, obtaining the requested information directly from

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SEL for pretrial discovery is not possible. So, CMU instead moves to compel the information

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from SSI. SSI, however, says that unless it opens every hard drive in its current inventory, it
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has no way of knowing which Marvell chips are contained in a particular hard drive model.

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Here, SSI points out that it neither designs nor manufactures the drives, but merely purchases

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them from SEL and then resells them here. Further, SSI says that its inventory is limited to

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what is needed to fill imminent orders and reflects only what SSI has purchased from SEL in

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the past two weeks or so.

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There is no convincing evidence that SSI has responsive information in its possession or

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custody. And, other than the fact that SEL is SSI’s indirect parent, there are no facts presented

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here to suggest that SSI has legal control over SEL’s information. See United States v. Int'l

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Union of Petroleum & Indus. Workers, 870 F.2d 1450, 1452 (9th Cir. 1989) (“Control is
defined as the legal right to obtain documents upon demand.”); In re Legato Sys., Inc. Sec.

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For the Northern District of California

United States District Court

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Litig., 204 F.R.D. 167, 170 (N.D. Cal. 2001) (“Decisions from within [the Ninth Circuit] have

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noted the importance of a legal right to access documents created by statute, affiliation or

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employment.”).

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Boiled to its essence, then, the instant dispute requires this court to decide whether SSI

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should be compelled to produce all of its sales records (including sales of hard drives that do

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not contain the accused chips) and to then have either CMU or SSI separate the wheat from the

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chaff; or whether CMU should first identify for SSI the relevant hard drives—something which

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CMU says it can do, albeit not without doing some research.

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Having weighed legitimate competing interests and possible prejudice, and in the

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interests of protecting SSI as a non-party and limiting discovery to information that is relevant,

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this court concludes that CMU should first do the legwork necessary to identify the relevant

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hard drives containing the accused chips. SSI shall then produce the requested documents

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pertaining to the identified drives, as well as appropriate witness(es) to testify about that

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information. If SSI claims that the discovery to be produced is confidential, the parties shall

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meet and confer to attempt to agree to the terms of a protective order to be entered by this court.

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If the parties cannot agree on the terms of a protective order, they shall submit their respective

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proposed orders to this court for review.

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SO ORDERED.
Dated:

May 27, 2011

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HOWARD R. LLOYD
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UNITED STATES MAGISTRATE JUDGE

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For the Northern District of California

United States District Court

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5:11-mc-80078-JF Notice has been electronically mailed to:

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Daniel H. Royalty

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David C. Radulescu

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Jon Michaelson

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Jonathan Hart Harrison

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Melissa J Baily

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Michael Richard Haven

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Simon J. Frankel

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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.

[e-mail]
[e-mail]

[e-mail], [e-mail]
[e-mail]

[e-mail], [e-mail]
[e-mail], [e-mail]

[e-mail], [e-mail]

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For the Northern District of California

United States District Court

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