CogniPower LLC v. Power Integrations, Inc.

Filing 37

ORDER re 24 CogniPower's Motion to Compel Compliance with Document Subpoenas. Signed by Magistrate Judge Virginia K. DeMarchi on 1/8/2025. (vkdlc1, COURT STAFF) (Filed on 1/8/2025)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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IN RE SUBPOENA TO POWER
INTEGRATIONS, INC.

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COGNIPOWER LLC,
Plaintiff,

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United States District Court
Northern District of California

v.
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SAMSUNG ELECTRONICS CO., LTD. ET
AL,

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Defendants.

Case No. 24-mc-80157-VKD
Issuing Court Case No: 2:23-cv-160-JRG
(E.D. Tex.)
ORDER RE COGNIPOWER’S
MOTION TO COMPEL COMPLIANCE
WITH DOCUMENT SUBPOENAS
Re: Dkt. No. 24

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On January 7, 2025, the Court held a hearing on CogniPower LLC’s (“CogniPower”)

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motion to compel Power Integrations, Inc.’s (“Power Integrations”) compliance with certain

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document subpoenas. Dkt. No. 24. CogniPower is the plaintiff in a patent infringement action,

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CogniPower LLC v. Samsung Electronics Co., Ltd. et al., Case No. 2:23-cv-160-JRG, pending in

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the Eastern District of Texas (“Texas action”). Dkt. No. 24-1 at 1. In that action, CogniPower

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contends that Samsung’s accused products contain components supplied by non-party Power

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Integrations. Id. at 2. Samsung has asserted an invalidity defense, claiming that certain Power

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Integrations chips are prior art to CogniPower’s patents. Id.

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CogniPower has served several document subpoenas on Power Integrations, include three

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subpoenas at issue here. See Dkt. No. 1-2; Dkt. No. 24-3; Dkt. No. 24-6. It now moves to compel

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Power Integrations to produce four categories of documents that it says are within the scope of

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these subpoenas:

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1. Communications between Power Integrations and Samsung that are not in Samsung’s

possession.

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2. Power Integrations physical test chips relating to its alleged conception and reduction

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to practice of asserted prior art.

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3. Testing or simulations for the InnoSwitch1 and InnoSwitch3 that show the information

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transmitted over the FluxLink and that show the information received on the primary

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side.
4. Prior art search results or a privilege log showing the prior art search results and the

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dates Power Integrations became aware of prior art references.

United States District Court
Northern District of California

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Dkt. No. 24-1 at 1-2. However, at the hearing, the parties1 advised that only two categories of

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documents remain at issue for purposes of this motion: (1) Power Integrations’ prior art search

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results; and (2) communications between Power Integrations and Samsung. Dkt. No. 36. For the

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reasons discussed at the hearing and as further explained below, the Court orders as follows:

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1.

Power Integrations’ Prior Art Search Results

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CogniPower’s subpoena asks Power Integrations to produce prior art searches performed

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by Power Integrations relating to U.S. Reissue Patents Nos. RE47,031 and RE47,713—two of the

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patents asserted by CogniPower in the Texas action against Samsung. Dkt. No. 24-6 (Request No.

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18). CogniPower offers no persuasive justification for requiring Power Integrations to produce, or

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generate a privilege log for, prior art searches that were conducted in 2020 and are protected from

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disclosure by the attorney-client privilege and/or the attorney work product doctrine. The Court

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denies CogniPower’s motion to compel this category of documents or a privilege log listing the

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documents in this category.

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2.

Communications Between Power Integrations and Samsung

At the hearing, CogniPower advised that its requests for communications between Power

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Integrations and Samsung are limited to the 2011-2012 time period, and are additionally limited to

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communications about the following subjects: (1) CogniPower, its patents and its technology,

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including the OmniSwitch; (2) the design of the controller chips Power Integrations supplies to

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“Parties” as used in this order refers to CogniPower and Power Integrations.
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United States District Court
Northern District of California

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Samsung for use in the accused products, including any customization or specialization on behalf

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of Samsung; and (3) Samsung’s requirements or specifications for the controller chips used in the

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accused products. See Dkt. No. 36; Dkt. No. 31 at 1-2. CogniPower argues that it has attempted

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to obtain these documents for Samsung directly in the Texas action without success because

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Samsung does not have those documents for the 2011-2012 time period. Dkt. No. 24-1 at 3-4.

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Power Integrations objects to production of these communications on several grounds, but its

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principal objection is that to the extent CogniPower seeks evidence of Samsung’s disclosure of

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confidential CogniPower information to Power Integrations, its requests are overbroad, and even if

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CogniPower’s demand was limited to communications reflecting such disclosures, there is no non-

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speculative basis to believe any such disclosures occurred. See Dkt. No. 29 at 2-3, 4-8. In

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addition, Power Integrations contends that it has already produced communications between

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Power Integrations and Samsung for the 2011-2012 time period in the separate action,

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CogniPower LLC v. Fantasia Trading LLC et al, 1:19-cv-02293-JLH-SRF, pending in the District

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of Delaware (“Delaware action”), and that it has made that same production available for

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CogniPower’s use in the Texas action. Id. at 4; Dkt. No. 36; see also Dkt. No. 1 at 7-8; Dkt. No.

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29 at 9.

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The Court finds that CogniPower has articulated reasonable grounds for its request for

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communications between Samsung and Power Integrations in the 2011-2012 time period

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regarding CogniPower’s technology and Power Integrations’ development of the OnmiSwitch.

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However, the Court is not persuaded that CogniPower is entitled to production of the full scope of

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the communications described in its reply. Further, the parties disagree about whether Power

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Integrations’ search for and production of responsive communications in the Delaware action,

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which has been shared with CogniPower, already encompasses the communications CogniPower

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seeks here. Dkt. No. 36. To assist the parties and the Court in resolving their dispute regarding

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this document category, the Court orders as follows:

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1. By January 21, 2025, CogniPower must describe to Power Integrations the specific

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subject matter of the communications it seeks. In addition, CogniPower must identify

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the Power Integrations custodians (by name and/or by job function) and/or repositories
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that it believes should be searched for such communications, and it must identify the

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search terms it believes are reasonably tailored to hit the communications it seeks.

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2. By January 28, 2025, Power Integrations must identify to CogniPower the custodians

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and/or repositories whose documents it previously searched for responsive

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communications, and it must disclose the search terms that it believes hit documents

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responsive to CogniPower’s requests for communications.

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searches and productions can be expected to have captured communications with the

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specific subject matter CogniPower seeks for the time period 2011-2012.

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United States District Court
Northern District of California

3. Thereafter, the parties must confer regarding whether Power Integrations’ prior

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4. The parties must jointly file a report regarding the status of their dispute by February
4, 2025.
IT IS SO ORDERED.
Dated: January 8, 2025

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Virginia K. DeMarchi
United States Magistrate Judge

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