Greenthread, LLC v. Intel Corporation et al

Filing 76

VENUE DISCOVERY DISPUTE ORDER. Signed by Judge Alan D Albright. (lad)

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IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION
GREENTHREAD, LLC,
Plaintiff,
-vINTEL CORPORATION; DELL INC.;
and DELL TECHNOLOGIES, INC.,
Defendants.

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CIVIL NO. 6:22-CV-00105-ADA

VENUE DISCOVERY DISPUTE ORDER
The Court hereby resolves a discovery dispute submitted to the Court by email by
Greenthread, LLC (“Plaintiff”) and Intel Corporation (“Defendant”). The “First Issue” is whether
the Court should compel Intel to produce evidence of its business relationship, in-person
negotiations, or local contracts with defendant Dell. The “Second Issue” is whether the Court
should compel Intel to disclose individuals it encountered while investigating the factual
allegations asserted in its Motion to Transfer but chose not to disclose. Plaintiff’s requested relief
on both issues is GRANTED-IN-PART.
Plaintiff’s Position on the First Issue:
Intel moved to transfer this case to Oregon and to sever the case against Dell on the basis
that the key Intel witnesses and documents are located in Oregon or California (Dkt. 60). Dell has
separately moved to transfer this case to the Austin Division, where Dell is headquartered (Dkt.
65). In response to both motions, Greenthread served discovery requests seeking the following:
(1) Intel’s contracts with Dell to furnish the Accused Products (RFP 3); (2) documents evidencing
Intel’s in-person meetings or negotiations with Dell relating to the Accused Products (RFP 8 and

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Topic For Examination 26); and (3) Intel’s business relationship with Dell (Topic for Examination
22).
In evaluating whether to transfer this case, this Court must consider this District’s interest
in deciding localized disputes, which focuses on the events giving rise to this suit. Intel asserts that
the only relevant events are where the design and development of the Accused Products took place.
But no case so narrowly defines the local interest. Rather, part of the relevant events giving rise to
this suit are Intel’s sale of Intel’s Accused Products to Dell, its largest customer, who is
headquartered in this District. All of Intel’s employees responsible for the sale and marketing of
Intel’s products to Dell reside in this District. Therefore, when Intel met with Dell to discuss,
negotiate, or purchase the Accused Products, those discussions and meetings likely occurred in
this District. Intel’s contracts with Dell to furnish the Accused Products were likely similarly
negotiated, executed, and performed in this District. Moreover, the close and longstanding
relationship between Dell and Intel in which Intel furnishes Dell Accused Products for retail sales
will show Intel’s close connection to this District. Finally, while Intel produced a master agreement
(including amendments) with Dell, this agreement does not specifically relate to the Accused
Products and merely establishes general contractual obligations between Intel and Dell. Intel has
failed to produce relevant agreements relating to the Accused Products, such as any statement of
work or pricing agreements for the Accused Products. These agreements may show, for example,
Dell’s level of control or input into the design or development of the Accused Products, whether
Dell executed or signed these agreements in this District, and forum selection clauses electing this
District to resolve any disputes between them.
Intel’s cited case law does not alter this analysis. In both In re Hoffman-Law Roche Inc.
and In re Samsung Elec. Co, the Court held that national retail sales to consumers were not relevant

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to the local interest. Neither case addresses the situation here, where one defendant (Intel) designs
and develops products that another defendant (Dell), headquartered in this District, purchases and
then incorporates into a separate group of accused products. Neither case stands for the proposition
that meetings or negotiations occurring in this District that result in the incorporation of one type
of accused product into another are irrelevant to the local factor. Such meetings are necessarily
part of the developmental cycle for Dell Accused Products, which this Court has repeatedly found
is relevant to the local interest. And neither case finds that testimony describing the business
relationship between two defendants is irrelevant to the local factor. Given that Dell is
headquartered in this District, and Intel’s entire division dedicated to the sale and marketing of
products to Dell is similarly located in this District, the relationship between them is relevant to
the local factor.
Relief: Compel Intel to (1) produce all contracts with Dell relating to the Accused
Products; (2) produce documents evidencing Intel’s in-person meetings with Dell occurring in this
District; and (3) designate an individual to testify on Topics for Examination 22 and 26 no later
than 7 days after the Court rules on this motion.
Defendant’s Position on the First Issue:
Greenthread has failed to identify any unique local interest that supports its broad discovery
requests regarding Dell and Intel’s business relationship. In evaluating the local interest, this Court
considers the “significant connections between a particular venue and the events that gave rise to
a suit.” In re Apple Inc., 979 F.3d 1332, 1345 (Fed. Cir. 2020) (emphasis in original). As an initial
matter, Greenthread has not identified any “significant connections” giving rise to a localized
interest in the Waco Division—nor can it, as Intel has no employees located in the Waco Division.

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Moreover, as explained in the sworn declaration of Donnie Oliphant, Dell was not and is
not involved in the design, development, or manufacture of any Intel products, including the
accused functionality (i.e., graded dopant regions). See Oliphant Decl. ¶6. Consequently, any
meetings between Intel and Dell in this District, and Intel and Dell’s business relationship more
broadly, have little relation to the “events that gave rise” to Greenthread’s lawsuit—and certainly
no connection that would justify requiring Intel to identify all such meetings and other evidence
regarding the parties’ “business relationship” over an undefined time period.
Further, to the extent Intel’s sale and marketing of accused products to Dell is a relevant
event giving rise to this lawsuit, it does not create a unique local interest in this District. Intel sells
Dell the same processors and flash memory products that it sells and markets to customers
throughout the world, and Dell’s products that incorporate the Intel products likewise are sold
throughout the world. The Federal Circuit has held that “the sale of an accused product offered
nationwide does not give rise to a substantial interest in any single venue” (without singling out
retail sales for this proposition, as Greenthread contends). In re Hoffmann-La Roche Inc., 587 F.3d
1333, 1338 (Fed. Cir. 2009); see also In re Samsung Elecs. Co., Ltd., 2 F.4th 1371, 1380 (Fed. Cir.
2021) (“The fact that infringement is alleged in the Western District of Texas gives that venue no
more of a local interest than…any other venue.”). Greenthread cites no authority to support that
component sales to a company headquartered in this District create a local interest when that
component is otherwise sold to customers worldwide. In the absence of any specific local interest
in the sales from Intel to Dell, Greenthread has failed to demonstrate why discovery regarding
these sales is relevant to the transfer inquiry. 1

1

Greenthread also incorrectly states that “[a]ll of Intel’s employees responsible for the sale and
marketing of Intel’s products to Dell reside in this District.” Intel’s employees that are responsible
for sales and marketing to Dell are located throughout the world, including in this District.

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Greenthread’s request that Intel produce “all contracts” between Intel and Dell is not
proportionate to the needs of venue discovery. Because Greenthread’s request is not time-limited,
there are potentially hundreds of responsive documents, including invoices and purchase orders.
The burden of collecting these documents substantially outweighs their minimal relevance. First,
Greenthread contends these agreements are relevant to “Dell’s level of control or input into the
design or development of the Accused Products,” but Mr. Oliphant’s sworn declaration explains
that Dell is not involved in design and development of Intel products at all. Second, Greenthread
has not cited any authority to support that “execut[ing] or sign[ing]…agreements in this District”
creates a local interest that would render these agreements relevant. Third, the already-produced
master agreements govern the legal relationship between Intel and Dell (including Delaware
governing law) and do not include a forum selection clause in this District or otherwise.
Relief: Order that, in view of Intel’s production of its agreements with Dell, Intel need not
produce additional documents in response to RFP Nos. 3 and 8 and need not designate an
individual to testify on Topics for Examination 22 and 26.
Plaintiff’s Position on the Second Issue:
In the Motion to Transfer, Intel claims that all relevant employees are located in either
Oregon or California and Intel elected to disclose certain “key witnesses” as probative of this
assertion. Interrogatory 4 sought the identification of witnesses that Intel encountered during its
investigation but elected not to disclose in the Motion to Transfer. Intel refuses to identify these
individuals on two bases.
First, Intel claims that responsive individual’s names and job responsibilities are privileged.
But underlying facts are not privileged and parties may not use a privilege claim to prevent the
disclosure of such facts. There is nothing privileged in a name or a job title. Indeed, one of Intel’s

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cited cases, Mauze & Bagby, held that the identity of a person with knowledge of relevant facts
was not protected by either attorney client privilege or the work product doctrine and ordered it
disclosed. 2 And even assuming that these names were privileged (which Greenthread does not
concede), Intel has waived this privilege by “cherry picking” certain individuals to disclose in the
Motion to Transfer while shrouding in privilege the remainder. By electing to disclose certain
results of its investigation (i.e., the sword), Intel has waived its privilege claim as to the remaining
results (i.e., the shield). Intel claims that this position is “illogical” because it would waive
privilege over “every discovery response or pleading in a litigation.” Not so. Rather, it requires
parties to fully disclose facts a party chose to partially disclose. See, e.g., Fultz v. Federal Sign,
No. 94 C 1931, 1995 WL 76874 (N.D. Ill.) (“One cannot assert the attorney/client privilege to
keep an opponent from discovering facts about an investigation when the investigation is to be
used at trial as a defense to defeat the opponent’s allegations. . . Defense wishes to have its cake
and eat it too. It argues that the investigation should be deemed privileged matter and therefore
protected from any form of discovery, but at the same time wishes to reserve its right to use it to
rebut the plaintiff’s allegations. This I think would be an unfair advantage. While the investigation
. . . would ordinarily be privileged, that privilege is lost once the claimant of the privilege asserts
his right to use the investigation as part of his or her case in the litigation”). Second, Intel claims
that it has already provided the names and supervisory organizations of all Intel employees who
are located in Texas or Oregon. This partial disclosure does not obviate Intel’s obligation to
identify responsive employees who may reside outside Texas or Oregon and who would be
inconvenienced by transferring this case to Oregon. Further, Intel’s identification of Texas

2

Intel also cited AGS Enterprises for the proposition that Intel’s entire investigation is privileged.
But the plaintiff in AGS Enterprises sought the production of the communications themselves,
rather than the disclosure of facts contained therein.

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employees does not provide sufficient detail or information for Greenthread to identify the
responsive employees. Intel elected to disclose employees by supervisory organization, and these
supervisory organizations are so generally and vaguely defined (e.g., “Design Engineering Group”
or “Technology Development”) that Greenthread cannot identify the responsive employees by
only reviewing the provided spreadsheet.
Relief: Compel Intel to identify employees and teams that it encountered during its
investigation of the factual allegations and assertions made in the Motion to Transfer but elected
not to disclose no later than 7 days after the Court rules on this Motion.
Defendant’s Position on the Second Issue:
Just like any investigation performed in preparing a pleading (e.g., a complaint) or a
discovery response, Intel’s investigation related to its motion to transfer is privileged, and filing
the motion (and supporting declarations) based on non-privileged facts does not dissolve the
privilege that otherwise attaches to the investigation. See U.S. ex rel. Univ. Loft Co. v. AGS
Enterprises, Inc., No. SA-14-CA-528-OLG, 2016 WL 9462335, at *8 n.75 (W.D. Tex. June 29,
2016)

(communications

with

potential

witnesses

were

“part

of

[party’s]

witness

development…developed during the investigation of its claims, warrant[ing] protection as work
product”); In re Hardwood P–G, Inc., 403 B.R. 445, 470 (Bankr. W.D. Tex. 2009) (requesting a
party to “list ‘all persons that they interviewed during the course of their investigation’ … does
tend to reveal work product and ought to be proscribed”); Benevis, LLC v. Mauze & Bagby, PLLC,
No. 5:12-CV-36, 2015 WL 12763537, at *17 (S.D. Tex. Dec. 14, 2015) (same). Both Hardwood
and Benevis explain that the identities of individuals with relevant knowledge are discoverable,
but that the identities of all individuals interviewed in an investigation is protected work product.
Greenthread seeks discovery into the latter category, which impermissibly invades upon the work

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product protection. This stands in contrast to Benevis, where the court ordered the disclosure of
the identity of a consulting expert, not fact witnesses, who had relevant personal knowledge and
was paid to advise defendants regarding issues in the case.
The out-of-circuit case cited by Greenthread, Fultz v. Federal Sign, is inapposite. In that
case, the defendant sought to reserve its right to rely on a privileged internal investigation of an
employee’s termination to show that the termination was not retaliatory. Fultz, 1995 WL 76874,
at *2. The court found that defendant’s reliance on the investigation for its defense waived
privilege over the whole investigation. Id. Here, in contrast, Intel is not relying on any privileged
findings from its investigation in support of its motion to transfer, but rather only relies on
nonprivileged facts discerned through that investigation. Those nonprivileged facts, which have
been provided to Greenthread, include the identity of all employees in the transferee (Oregon) and
transferor (Texas) districts and all relevant NAND employees. Intel’s investigation into those
facts, including the identity of all individuals interviewed, is protected work product, and that
protection has not been waived.
Moreover, Intel did not “cherry pick[]” the individuals disclosed in its motion to transfer
and in its discovery responses. Rather, the sworn declarations from Intel employees identify the
locations of key witnesses based on the present allegations—which is the most important factor
when considering convenience of witnesses, see VLSI Tech. LLC v. Intel Corp., No. 6:19-CV00254-ADA, 2019 WL 8013949, at *4 (W.D. Tex. Oct. 7, 2019)—and Intel has identified all
employees in the transferee and transferor districts all relevant NAND employees, and all
Technology Development employees. In view of the information that Intel has already produced,
Greenthread has not articulated any valid basis to invade the privilege protecting Intel’s
investigation.

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Relief: Order that Intel need not reveal privileged information/work product related to its
investigation, including “the identity of employees and teams that it encountered during its
investigation but elected not to disclose,” to the extent such information exists.
Court’s Ruling on the First Issue:
Defendant makes three objections to producing information about its business evidence of
its business relationship, in-person negotiations, or local contracts with a company in Austin: 1)
that this request has no relevance under Federal Circuit transfer law, 2) that based on the Oliphant
Declaration, there is no likelihood of uncovering relevant evidence, and 3) that the discovery is
unfairly burdensome. The objections are overruled.
The Court overrules the relevance objection because Plaintiff’s argument relates to
disputed facts about Intel’s business ties to Dell in Austin, Texas. These events may give rise to a
local interest. Intel argues that under Federal Circuit interpretations of Fifth Circuit transfer law,
Plaintiff’s evidence is irrelevant. However, Plaintiff may make non-frivolous challenges to the
Federal Circuit’s interpretation of Fifth Circuit transfer law. See Motion Offense, LLC v. Google
LLC, No. 6:21-CV-00514-ADA, 2022 WL 3723303, at *4, *13 (W.D. Tex. Aug. 29, 2022).
The Court is not persuaded by Defendant that “as explained in the sworn declaration of
Donnie Oliphant, Dell was not and is not involved in the design, development, or manufacture of
any Intel products, including the accused functionality (i.e., graded dopant regions). See Oliphant
Decl. ¶6.” This paragraph of the Oliphant Declaration states,
To the best of my knowledge, Dell has no involvement in or knowledge of the
design, development, or manufacture of Intel products. Intel provides Dell with
high-level information regarding product tiers for its products, and Dell selects
which Intel components to include in its products based on that information. To the
best of my knowledge, Dell also does not alter or modify Intel’s products before
they are incorporated into Dell products.

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The Oliphant Declaration only proves that one individual named Donnie Oliphant lacks personal
knowledge about Dell’s involvement in the design, development, and manufacturer of Intel
Products. The limited nature of the declaration does not support the full scope of Defendant’s
argument.
As to the undue burden on Plaintiff, the Court agrees that discovery requests should be
time-limited. The Court otherwise overrules Defendant’s burden objection.
This Court’s Order Governing Proceedings protects defendants from frivolous plaintiffs
who seek settlements based not on merit but based on the burden of discovery. Hence, the Court’s
default schedule defers fact discovery until after the Markman hearing so that parties can costeffectively reach the first merit milestone in a case.
A defendant who files a transfer motion for convenience opens itself up to the burden of
early venue discovery and discards the opportunity to cost-effectively reach the Markman hearing.
The defendant imposes a discovery burden and burden of opposition on the plaintiff. The defendant
burdens the Court with venue discovery disputes and with the burden of opining on the motion to
transfer. A defendant’s argument that venue discovery is disproportionately burdensome carries
little weight when the discovery burden originated from the defendant’s motion, and when the
defendant’s motion imposes far greater burdens on opposing counsel and on this Court, all for the
marginally better convenience of the defendant at trial.
If Defendant truly believes that the burden of venue discovery is so great, then Defendant
can withdraw its motion to transfer, and the Court will cancel all pending venue discovery.
IT IS HEREBY ORDERED THAT Intel shall (1) produce all contracts with Dell relating
to the Accused Products after meeting and conferring on an appropriate time limit; (2) produce
documents evidencing Intel’s in-person meetings with Dell occurring in this District after meeting

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and conferring on an appropriate time limit; (3) designate an individual to testify on Topics for
Examination 22 and 26 no later than 7 days after the Court rules on this motion; and (4) if
Defendant has not yet done so, identify responsive employees who may reside outside Texas or
the proposed destination venue.
Court’s Ruling on the Second Issue:
By bringing a motion to transfer supported by a declaration on the location of relevant
employees, Defendant has raised a factual issue that Plaintiff may seek discovery on. This includes
the names of all relevant employees and how their job relates to the asserted patents in this case.
Plaintiff challenges the credibility of the declaration and alleges that Defendant has cherry-picked
relevant individuals. Plaintiff must be given an opportunity to investigate the underlying facts and
to cross-examine the declarant. This goes directly to whether the venue declarant performed an
investigation using a methodology adequate to uncover all relevant individuals. Plaintiff may
depose some of unselected individuals, and then Plaintiff may argue about why these individuals
are relevant to this case for purposes of transfer.
Generally, the people to whom a declarant spoke to when investigating the names,
locations, and job descriptions of employees are not privileged facts if the Defendant’s declarant
puts the outcome of this investigation and the underlying facts at issue to support a transfer motion.
Attorney-client privilege and work-product privilege protect the investigation of
Defendant’s counsel. If Defendant’s counsel spoke with someone while investigating this case,
then that conversation is privileged and need not be revealed.
IT IS HEREBY ORDERED that Intel shall identify employees and teams that its nonattorneys encountered during its investigation of the factual allegations and assertions made in the

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Motion to Transfer but elected not to disclose no later than 7 days after the Court rules on this
Motion.
SIGNED this 1st day of September, 2022.

ALAN D ALBRIGHT
UNITED STATES DISTRICT JUDGE