ASUS Computer International v. UNM Rainforest Innovations

Filing 17

ORDER TRANSFERRING 1 MOTION TO QUASH TO WESTERN DISTRICT OF TEXAS. Signed by Judge Susan van Keulen on 7/3/2024. (svklc1, COURT STAFF) (Filed on 7/3/2024)

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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 ASUS COMPUTER INTERNATIONAL, Plaintiff, 8 United States District Court Northern District of California 9 v. 10 UNM RAINFOREST INNOVATIONS, 11 Defendant. 12 Case No. 24-mc-80142-SVK ORDER TRANSFERRING MOTION TO QUASH TO WESTERN DISTRICT OF TEXAS RE: DKT. NO. 1 Before the Court is Petitioner ASUS Computer International’s (“Petitioner” or “ACI”) 13 motion to quash a deposition subpoena (“ACI subpoena”) served by Respondent UNM Rainforest 14 Innovations (“Respondent” or “UNM”) in an underlying patent infringement action pending in the 15 Western District of Texas styled as UNM Rainforest Innovations v. ASUSTeK Computer Inc., 16 6:20-cv-00142-ADA. On the record before this Court, it is not disputed that Petitioner ACI is a 17 wholly owned subsidiary of the defendant in the underlying action, ASUSTeK Computer Inc. 18 (“ASUSTeK”) and that ACI and ASUSTeK are represented by the same counsel, Marcus Barber. 19 Dkt. 12-3 (Opposition) at 3-4. 20 ACI makes two substantive arguments to quash: (1) ACI would be subject to undue 21 burden because in the underlying action ASUSTeK provided a Rule 30(b)(6) witness regarding 22 ASUSTeK and ACI’s relationship and the Texas court has granted UNM’s request to depose 23 ASUSTeK on sales-related information; and (2) ACI would be subject to further undue burden as 24 a result of UNM’s gamesmanship of serving an amended subpoena on the eve of the close of 25 discovery tripling the number of deposition topics. Dkt. 1 (Motion) at 5. In opposition, UNM 26 urges this Court to transfer the dispute to the presiding court, citing significant overlap between 27 discovery disputes between UNM and defendant ASUSTeK Computer, Inc. and the disputed 28 scope of discovery now before this Court. UNM also argues that resolution of the ASUS 1 subpoena will impact the case schedule in the underlying action, specifically impending expert 2 witness deadlines. Dkt. 12-3 (Opposition) at 5-7. 3 4 Civ. L.R. 7-1(b). For the reasons set forth below, the Court TRANSFERS this dispute to the 5 Western District of Texas. 6 United States District Court Northern District of California The Court has determined that this matter may be resolved without oral argument. Federal Rule of Civil Procedure 45(f) allows for the transfer of a motion to quash from the 7 district of compliance to the issuing district only under “exceptional circumstances.” The mere 8 fact that the issuing court is “familiar” with a case because it has been pending for several years is 9 not, as ACI points out, “exceptional.” Dkt. 12-3 (Opposition) at 5; Dkt. 15 (Reply) at 3. 10 However, here ACI’s own arguments demonstrate that the dispute in this Court is entwined with 11 disputes between UNM and ASUSTeK, and rulings by the Texas court regarding those disputes, 12 to such a degree as to warrant transfer. 13 ACI argues to quash the ACI subpoena because “ASUSTeK’s witnesses have already 14 testified regarding ACI sales data, the relationship between ASUSTeK and ACI, as well as the 15 numerous other financial topics about which UNM seeks to subpoena ACI.” Dkt. 1 (Motion) at 3- 16 4. In support of this argument, ACI points in part to the transcript of a June 5, 2024, discovery 17 hearing in the Texas court, where ASUSTeK argued against a further production and deposition 18 directed to ASUSTeK financial data, citing its production of an ACI spreadsheet reflecting ACI 19 data as sufficiently responsive. Dkt. 1 (Motion) at 4-5; Dkt. 1-13 (Hearing Transcript) at pp. 16- 20 17. At the hearing, ASUSTeK states that it does not have sales data because it does not make 21 infringing sales. Dkt. 1-13 (Hearing Transcript) at pp. 18-19. Nevertheless, the Texas court 22 ordered ASUSTeK to produce sales data relating to the infringing products within two weeks and 23 to provide a deposition. Dkt. 1-13 (Hearing Transcript) at pp. 15; 20-21. 24 In sum, in this Court ACI claims undue burden in light of ASUSTeK’s production of sales 25 and financial data in the Texas court. Yet in the Texas court, ASUSTeK claims it does not have 26 sales and financial data. Further, there is nothing in the record before this Court as to the 27 completeness of ASUSTeK’s production and deposition as ordered on at the June 5 discovery 28 hearing. The claims of ACI and ASUSTeK may not be inconsistent, but the record before this 2 1 Court is not sufficient to make that determination. Because ACI’s argument in support of its 2 motion to quash relies upon ASUSTeK’s actions in the Texas court, this dispute is more 3 appropriately adjudicated in that Court. Further, in light of the undisputed relationship and 4 identity of counsel between ACI and ASUSTeK, there is relatively little or no burden on ACI to 5 have this matter heard in the Texas court. 6 7 close of discovery. Dkt. 1 (Motion) at 8. Taken in isolation, UNM’s behavior could warrant 8 quashing the ACI subpoena. However, in light of the larger underlying disputes outlined above, 9 such a final determination, if appropriate, is best made by the Texas court. 10 11 United States District Court Northern District of California ACI also complains of UNM’s late, substantial modification to the ACI subpoena near the SO ORDERED. Dated: July 3, 2024 12 13 SUSAN VAN KEULEN United States Magistrate Judge 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 3

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