LSI Corporation v. Vizio, Inc.
ORDER GRANTING IN PART AND DENYING IN PART 1 Motion to Quash; DENYING 18 Motion to Strike. Signed by Judge Andrew W. Austin. (kkc, )
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
LSI CORPORATION DBA LSI LOGIC
Before the Court are Non-Party MediaTek Wireless, Inc. and Non-Party Wade Buckner's
Motion to Quash Subpoenas or, in the Alternative, Motion for a Protective Order, filed February 29,
2012 (Clerk's Dkt. #1), and the responsive pleadings; and LSI Corporation's Motion to Strike “NonParty Mediatek Wireless, Inc. and Non-Party Wade Buckner's Response to LSI Corporation's
Response to the Declaration of Adam Chang in Relation to Non-Party Mediatek Wireless, Inc. and
Non-Party Wade Buckner's Motion to Quash Subpoenas or, in the Alternative, Motion for a
Protective Order,” filed May 10, 2012 (Clerk's Dkt. #18) and the responsive pleadings.
The motions were referred pursuant to 28 U.S.C. § 636(b)(1)(a), Federal Rule of Civil
Procedure 72, and Rule 1(c) of Appendix C to the Local Rules of the United States District Court
for the Western District of Texas.
LSI Corporation (“LSI”) is the defendant in a lawsuit filed in the Central District of
California (the “CA Case”). In the CA Case, LSI brings claims for patent infringement against
Vizio, Inc. for patents relating to the decoding of high definition audio and video signals in
televisions and DVD players sold by Vizio. According to LSI, the decoding of these signals occurs
at least in part in high definition audio/video decoder chips that are designed and manufactured by
various non-party chip manufacturers, including MediaTek, Inc. located in Taiwan
The chip manufacturers sell the decoder chips to Original Design
Manufacturers who then assemble for Vizio products containing the decoder chips. MediaTek
Wireless, Inc. (“MediaTek Wireless”) and Mediatek USA, Inc. (“MediaTek USA”) are both
subsidiaries of MediaTek-Taiwan, but are located in the United States. None of the MediaTek
entities are parties to the CA case.
Beginning in June 2011, counsel for LSI issued various subpoenas to MediaTek USA and
MediaTek Wireless. Although MediaTek-Taiwan was not served with the discovery requests, it has
responded, both by serving objections and providing substantive responses. In the months thereafter,
counsel for LSI and MediaTek-Taiwan have engaged in discussions regarding MediaTek-Taiwan
voluntarily disclosing documents responsive to the subpoenas discovery, but LSI is not satisfied that
the subpoenas have been fully responded to, by MediaTek-Taiwan, or the subsidiaries.
Pertinent to this motion, on February 16, 2012, LSI served subpoenas ad testificandum on:
(1) MediaTek Wireless in Austin, Texas and Woburn, Massachusetts; (2) Wade Buckner in Austin,
Texas; and (3) MediaTek USA in San Jose, California. The subpoenas sought information
concerning the extent to which MediaTek-Taiwan’s subsidiaries have access to technical information
and source code LSI has unsuccessfully attempted to obtain voluntarily from MediaTek-Taiwan.1
MediaTek-Taiwan has produced additional source code following the subpoenas, but LSI still seeks
discovery regarding the access MediaTek-Taiwan’s subsidiaries have to additional information.
Taiwan is not a signatory to the Hague Convention, and thus MediaTek-Taiwan cannot be
served with a subpoena, or otherwise compelled by LSI to provide discovery in this matter.
MediaTek Wireless and Buckner have filed this action, objecting to LSI’s requests for deposition
testimony as overly broad, seeking non-relevant information, and providing inadequate time for
Under Federal Rule of Civil Procedure 45, a court may quash or modify a subpoena if it
subjects a person to undue burden. Wiwa v. Royal Dutch Petroleum Co., 392 F.3d 812, 817-818 (5th
Cir. 2004) (citing FED . R. CIV . P. 45(3)(A)(i)-(iv)). In determining whether a subpoena presents an
undue burden on a non-party, the Court considers (1) the relevance of the information requested;
(2) the need of the party for the documents; (3) the breadth of the document request; (4) the time
period covered by the request; (5) the particularity with which the party describes the requested
documents; (6) the burden imposed; and (7) the expense and inconvenience to the non-party. Id. at
818. The party moving to quash or modify a subpoena has the burden to prove “that compliance
with the subpoena would be ‘unreasonable and oppressive.’” Id. (quoting Williams v. City of Dallas,
178 F.R.D. 103, 109 (N.D. Tex. 1998)).
On April 16, 2012, the Court held a hearing on the motion to quash. At the hearing, counsel
for MediaTek Wireless and Buckner represented that, despite their objection to the discovery, they
had nonetheless responded by producing all responsive documents in their possession. Counsel also
represented that MediaTek Wireless and MediaTek USA had produced all of the responsive
documents they had the ability to obtain from MediaTek-Taiwan, and that further responsive
documents, if any, would be in the possession of MediaTek-Taiwan. Because this latter point was
not in an evidentiary form in the record, the Court asked counsel if he could submit a declaration to
this effect, and counsel agreed to do so. On April 20, 2012, the movants filed the declaration of
Adam Chang (“Chang”), who describes himself as “a Manager at MediaTek Inc.” (which the court
has referred to herein as MediaTek-Taiwan). In his declaration, Chang states MediaTek Wireless
and MediaTek USA have only limited access to information about MediaTek-Taiwan’s chips, code,
and documents. Chang states he personally collected and produced to LSI all of the information
responsive to the subpoenas that is in MediaTek-Taiwan’s possession that is also available to
MediaTek Wireless and MediaTek USA.
LSI contends Chang’s declaration is insufficient. LSI complains Chang fails to explain why
he, as an employee of MediaTek-Taiwan, did not produce all the documents to which he has access,
but instead limited the production to only those documents which the MediaTek subsidiaries can
access. LSI further complains Chang did not explain why the MediaTek subsidiaries do not have
greater access to the information sought, and did not address in any way the subpoena topics aimed
at gathering information regarding communication between MediaTek-Taiwan and its subsidiaries.
LSI maintains it “is simply seeking to depose a corporate representative of MediaTek Wireless for
the limited purpose of determining the extent to which MediaTek Wireless has access to documents
and information in the custody of MediaTek-Taiwan.” (Clerk’s Dkt. #16 at 4).
MediaTek Wireless and Buckner, in turn, argue LSI has incorrectly framed the issue before
the Court. They contend the two subpoenas that are the subject of their motion to quash are broader
in scope than the characterization quoted above. They also maintain even the limited scope of
discovery now sought by LSI is unnecessary as Chang’s declaration makes clear all information to
which MediaTek Wireless and MediaTek USA have access has been produced. Finally, Buckner
points out his uncontested declaration establishes he has no personal knowledge of the topics
identified in the subpoena served upon him.2
Upon review of Chang’s declaration, the Court finds LSI’s characterization well taken.
Chang is not an employee of either MediaTek subsidiary. Rather, he is an employee of MediaTekTaiwan. As such, it is not apparent how he could have personal knowledge of the extent to which
responsive documents are in the “possession, custody or control” of MediaTek Wireless. See FED .
R. CIV . P. 45(a)(1)(A)(iii) (subpoena may direct production of documents within person’s possession,
custody or control). Nor is his declaration precisely clear on the process by which MediaTek
Wireless may obtain documents from MediaTek-Taiwan or the limits on that process. And he does
not explain the source of his statements regarding what the subsidiaries do, and do not, have access
to, related to the subpoenaed documents.
A party is permitted to inquire into relevant topics in discovery, including “discovery [which]
appears reasonably calculated to lead to the discovery of admissible evidence.” FED . R. CIV . P.
26(b)(1). In this case, LSI has propounded discovery requests which seek information regarding:
• The ability of any U.S.- and/or internationally-based MediaTek entity to access or obtain
information from any other MediaTek entity regarding the categories of documents sought
by LSI’s various subpoenas to MediaTek. (Topic 1);
• The manner, means, methods, or devices by which the MediaTek entities communicate
with each other. (Topic 2);
LSI has moved to strike the pleading filed by MediaTek Wireless and Buckner in response
to LSI’s response to the declaration of Chang. Clerk’s Dkt. #18. LSI contends the pleading was
filed without permission and in contravention of the Federal Rules of Civil Procedure. MediaTek
Wireless and Buckner maintain they were granted oral permission to file the pleading during the
Court’s April 20, 2012 hearing. Finding no prejudice to LSI will flow from allowing the filing, the
Court will deny LSI’s Motion to Strike.
• The manner, means, methods, or devices by which the MediaTek entities communicate
when working with and managing multi-site and multi-cultural teams both domestically and
internationally. (Topic 3);
• Access to databases maintained by any of the MediaTek entities by any other MediaTek
entity. (Topic 4);
• Any and all means by which any MediaTek entity may access or obtain information
regarding (a) Accused Vizio Products; (b) Decoder Development Data and/or (c) Vizio
Communications. (Topic 5);
• Any and all methods or means by which MediaTek Wireless Inc. or any other MediaTek
entity may access the categories of documents sought by LSI’s various subpoenas to
MediaTek. (Topic 6);
• The location(s) of all (a) sales and marketing data, (b) financial data, (c) design data, (d)
Decoder Development Data, (e) technical data or information, and (f) any local or central
repository for backup or storage of communications among the MediaTek entities. (Topic
• The description, nature, and identification of any documents provided to MediaTek
Wireless Inc. by AmTran or Vizio pertaining to any Vizio products made, assembled, or sold
to AmTran since January 1, 2004. (Topic 8).
LSI maintains that the topics identified by LSI are aimed at discovering the extent to which
admissible evidence may be obtained from MediaTek Wireless by determining its ability to obtain
responsive documents. See Kissinger v. Reporters Comm. for Freedom of the Press, 445 U.S. 136,
165, 100 S. Ct. 960, 976 n.6 (1980) (Stevens, J., concurring) (noting courts have rejected narrow
physical-possession test in determining control, “focusing instead on whether the subpoenaed party
has a legal right to custody or control of the documents in question”).3 As LSI points out, courts
See also, Mercy Catholic Med. Ctr. v. Thompson, 380 F.3d 142, 160 (3rd Cir. 2004) (control
defined as legal right to obtain required documents on demand); In re Bankers Trust Co., 61 F.3d
465, 469 (6th Cir.1995) (documents deemed to be within party's “possession, custody or control” for
purposes of rules of civil procedure “if the party has actual possession, custody, or control, or has
the legal right to obtain the documents on demand”); United States v. Int'l Union of Petroleum &
Indus. Workers, 870 F.2d 1450, 1452 (9th Cir. 1989) (control defined as legal right to obtain required
documents on demand).
have regularly permitted discovery of information from one corporation based on its relationship
with, and ability to obtain documents from, a related corporate entity.4 Accordingly, the Court
declines to quash the deposition of a MediaTek Wireless corporate representative directed at the 8
topics set forth above.
The Court does, however, agree that LSI’s subpoena of Wade Buckner should be quashed.
Buckner has presented a declaration in which he states he has not been personally involved in the
design or development of any of the computer chips at issue in the CA case, and has not had any
involvement in the design or development of any computer chips that have functions related to the
decoding of audio or video signals. LSI has not presented any argument or evidence suggesting
Buckner is the appropriate corporate representative for the purpose of the deposition topics on which
a deposition will be permitted. In fact, LSI concedes Buckner was selected based solely on
information in his internet profile indicating he had a background in multi-site and multi-cultural
teams. This is insufficient to overcome Buckner’s declaration made under oath.
See, e.g., Enron Corp. Sav. Plan v. Hewitt Assocs., L.L.C., 258 F.R.D. 149, 164 (S.D. Tex.
2009) (concluding party’s statement that predecessor’s documents not in its possession was not
wholly responsive, and party must also explain who had possession or control, and relationship to
predecessor, and indicate whether it had legal right to obtain documents in predecessor's possession
or whether it purchased them when it purchased predecessor); Alexander v. F.B.I., 194 F.R.D. 299,
302 (D.D.C. 2000) (finding subpoena recipient’s statement that she would produce any responsive
documents that exist and that were in her possession and stating that no documents were produced
because no additional responsive documents exist was insufficient because statement did not explain
in detail search performed, including locations searched, and did not address whether all documents,
including those not in her possession but still within her control, were produced); Addamax Corp.
v. Open Software Foundation, Inc., 148 F.R.D. 462, 468-69 (D. Mass. 1993) (ordering non-party
corporation to produce documents in possession of related German corporation). See also Gerling
Int’l Ins. Co. v. Comm’r, 839 F.2d 131, 140–41 (3rd Cir.1988) (citing cases in which requisite
control found between parents and subsidiaries, and sister corporations).
Accordingly, the Court ORDERS that Non-Party Mediatek Wireless, Inc. and Non-Party
Wade Buckner's Motion to Quash Subpoenas or, in the Alternative, Motion for a Protective Order
(Clerk's Dkt. #1) is GRANTED IN PART AND DENIED IN PART as set forth above. The Court
FURTHER ORDERS that LSI Corporation's Motion to Strike (Clerk's Dkt. #18) is DENIED.
SIGNED this 22nd day of May, 2012.
ANDREW W. AUSTIN
UNITED STATES MAGISTRATE JUDGE
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