Rembrandt Patent Innovations, LLC et al v. Apple Inc. et al

Filing 11

ORDER GRANTING IN PART AND DENYING IN PART 1 Motion to Quash Subpoena and for Protection. Signed by Judge Robert Pitman. (td)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
AUSTIN DIVISION
REMBRANDT PATENT
INNOVATIONS, ET AL.,
PLAINTIFFS

V.
APPLE, INC. ,
DEFENDANT

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No. 1:15-CV-438-RP

ORDER
Before the Court is the Motion to Quash Subpoena and for Protection filed by Samsung
Austin Semiconductor, LLC (“SAS”) on May 22, 2015 (Clerk’s Dkt. #1). Plaintiffs Rembrandt Patent
Innovations, LLC and Rembrandt Secure Computing, LP (collectively, the “Plaintiffs”) filed their
Opposition to Motion to Quash Subpoena and for Protection on June 1, 2015 (Clerk’s Dkt. 2). On
July 13, 2015, the Court heard oral arguments on the motion to quash. Having considered the
arguments of counsel, the pleadings, the applicable case law and the entire case file, the Court
issues the following Order.
Background
This discovery dispute arises from a lawsuit filed by Plaintiffs against Apple, Inc. (“Apple”
or “Defendant”) for patent infringement.1 Plaintiffs assert a cause of action against Apple under
35 U.S.C. § 271(f), arguing Apple’s patent infringement is based, at least in part, on processors
sent abroad that are then combined with Apple products outside of the United States.2 Plaintiffs
allege such processors are designed, manufactured and shipped outside of the United States by
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Plaintiffs originally filed this lawsuit in the United States District Court for the Eastern District of Texas
under Cause No. 2:14-CV-15-JRG. The lawsuit has since been transferred and is now pending in the Northern
District of California under Cause No. 3:14-CV-5093.
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Section 271(f) imposes liability for patent infringement where components of a patented invention are
combined outside of the United States in a manner that would infringe the patent if such combination occurred within
the United States. 35 U.S.C. § 271(f).

SAS, and has subpoenaed documents and testimony from SAS relating thereto (the “Subpoena”)3.
SAS seeks from this Court an order quashing the Subpoena as unduly burdensome under Federal
Rule of Civil Procedure 45, and protecting SAS from such discovery requests in the future.
Standard of Review
The issuance of subpoenas to obtain discovery from non-parties is governed by Federal
Rule of Civil Procedure 45. On timely motion, a court must quash or modify a subpoena if it
subjects the person to undue burden. FED. R. CIV. P. 45(c)(3)(A)(iv). In determining whether a
subpoena subjects a non-party to an undue burden, a court considers: (1) the relevance of the
requested information; (2) the party’s need for the information; (3) the breadth of the request; (4)
the time period covered by the request; (5) the particularity with which the request is described; and
(6) the burden imposed. Wiwa v. Royal Dutch Petroleum Co., 392 F.3d 812, 818 (5th Cir. 2004).
The question of undue burden on a non-party requires a court to balance the subpoena’s benefits
and burdens, and “calls upon the court to consider whether the information is necessary and
unavailable from any other source.” Positive Black Talk, Inc. v. Cash Money Records, Inc., 394
F.3d 357, 377 (5th Cir. 2004)(internal citations omitted). The decision whether to grant a motion
to quash under Rule 45 is within the “broad discretion” of the court. Id.
Discussion
SAS argues the Subpoena should be quashed as unduly burdensome under Rule 45, a
claim the Plaintiffs dispute. Having considered the arguments of counsel and the applicable legal
standard, this Court is of the opinion that because the information at issue is available from Apple,
a party to the litigation, any interest Plaintiffs have in obtaining said information from a non-party
is far outweighed by the burden imposed.
Plaintiffs contend information relating to processors shipped out of the United States and
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A Subpoena to Testify at a Deposition in a Civil Matter was issued to SAS by the United States District
Court for the Eastern District of Texas on September 12, 2014 in Cause No. 2:14-CV-15.

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used in Apple products is relevant to their § 271(f) claim against Apple. Plaintiffs have failed to
explain, however, why this information cannot be obtained from the Defendant.

It seems

reasonable to assume that information regarding the processors used by Apple in its products
would be available from Apple, and Plaintiffs have not shown otherwise. Plaintiffs indicated during
oral argument that the Defendant has not been forthcoming with such information, but
acknowledged they have yet to receive a definitive statement from Apple regarding whether such
information is available or not.
The Court finds that until and unless Plaintiffs can establish they are unable to obtain the
requested information from the Defendant, subpoenaing the information from SAS creates an
undue burden that is not outweighed by Plaintiffs’ need for the information. Therefore, the Court
finds the Subpoena should be quashed as unduly burdensome under Rule 45. However, because
this Court’s ruling contemplates revisiting the issue upon a showing by Plaintiffs that such
information is unavailable from Apple, the Court declines to grant SAS’ request for protection from
future discovery requests.
IT IS THEREFORE ORDERED that Samsung Austin Semiconductor, LLC‘s Motion to
Quash Subpoena and for Protection (Clerk’s Dkt. #1) is hereby GRANTED IN PART and DENIED
IN PART. Accordingly, the Subpoena to Testify at a Deposition in a Civil Matter issued to Samsung
Austin Semiconductor, LLC on September 12, 2014 by the United States District Court for the
Eastern District of Texas in Cause No. 2:14-CV-15 is hereby QUASHED, and Samsung Austin
Semiconductor, LLC‘s request for a protective order from future discovery requests is hereby
DENIED.

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As the Motion to Quash Subpoena and for Protection was the only matter at issue before
this Court, it is FURTHER ORDERED that this case is hereby CLOSED.
SIGNED on July 15, 2015.

ROBERT L. PITMAN
UNITED STATES DISTRICT JUDGE

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