United States District Court, D. Delaware
TESSERA, INC. and TESSERA ADVANCED TECHNOLOGIES, INC., Plaintiffs,
BROADCOM CORPORATION, Defendant.
CHRISTOPHER J. BURKE UNITED STATES MAGISTRATE JUDGE
before the Court are certain discovery disputes (hereinafter,
the "Motion") raised by Plaintiffs Tessera, Inc.
and Tessera Advanced Technologies, Inc. (collectively,
"Tessera"). (D.I. 171) Having considered Defendant
Broadcom Corporation's ("Broadcom") opposition,
the parties' letter submissions, (D.I. 173, 176, 179,
180), and the arguments made during the parties'
September 6, 2017 teleconference with the Court, the Court
hereby ORDERS that the Motion be DENIED.
instituted this patent infringement action against Broadcom
on May 23, 2016. (D.I. 1) In the now-operative Second Amended
Complaint, Tessera alleges direct and indirect infringement
of certain claims of seven patents: United States Patent Nos.
5, 666, 046; 6, 043, 699; 6, 046, 076; 6, 080, 605; 6, 218,
215; 6, 284, 563; and 6, 954, 001. (D.I. 30) On January 25,
2017, Chief Judge Leonard P. Stark referred the case to the
Court, inter alia, to resolve all discovery
disputes. (D.I. 62)
Motion was filed on August 23, 2017. (D.I. 171) With it,
Tessera asserts that Broadcom has refused to provide core
technical documents for certain specifically-identified
accused products (semiconductor chips) that Broadcom itself
did not ship into the United States in the past six years
(i.e., accused products without a "Ship To"
location located in the U.S.) and worldwide sales data for all
accused products. (See D.I. 173 at 1, 3;
id., ex. 16 at 4; id, ex. 17 at 2; D.I. 179
at 3; see also D.I. 176 at 4; id, ex. A at
1) Specifically, Tessera is seeking the following core
technical documents for specifically-accused products that
fall into the category above (products relating to the
"Interconnect and Packaging Patents" in-suit): (1)
die specifications; (2) GDS files; (3) RDL passivation,
substrate, bump and assembly drawings; (4) assembly
qualification reports/assembly instructions; (5) material
composition declarations; (6) data sheets; and (7) process
flows and recipes. (D.I. 179 at 3) Regarding worldwide sales
data, Tessera requests such data for all specifically-accused
products, such production to include information about the
end customer, including "Parent_End_Name,
Sold_To_Parent, and End_Cust_Name, or the
equivalent." (Id. at 3 (citing id.,
ex. 28 at 20))
STANDARD OF REVIEW
Rule of Civil Procedure 37 applies to motions to compel
discovery, providing that "[o]n notice to other parties
and all affected persons, a party may move for an order
compelling ... discovery." Fed.R.Civ.P. 37(a)(1). Under
Federal Rule of Civil Procedure 26(b)(1), "[p]arties may
obtain discovery regarding any nonprivileged matter that is
relevant to any party's claim or defense and proportional
to the needs of the case[.]" Fed.R.Civ.P. 26(b)(1). The
Rule further states that relevant information "need not
be admissible in evidence to be discoverable."
party objects to discovery requests, "the burden falls
on the party seeking the discovery to show the relevance of
the information requested." Kaiser v. Stewart,
Civ. A. No. 96-6643, 1996 WL 730533, at *2 (E.D. Pa. Dec. 10,
1996) (citations omitted); see also In re Wilmington
Trust Sees. Litig., Master Civ. No. 10-990-SLR-SRF, 2017
WL 2457456, at *4 (D. Del. June 6, 2017). Discovery is
relevant, inter alia, if used '"to flesh
out a pattern of facts already known to a party relating to
an issue necessarily in the case.'" Invensas
Corp. v. Renesas Elecs. Corp., 287 F.R.D. 273, 278 (D.
Del. 2012) (quoting Micro Motion, Inc. v. Kane Steel
Co., 894 F.2d 1318, 1326 (Fed. Cir. 1990)). However,
'"requested information is not relevant... if the
inquiry is based on the party's mere suspicion or
speculation.'" Id. (quoting Micro
Motion, Inc., 894F.2d at l326).
relevance is shown, the party opposing discovery may show why
discovery, even if relevant, should not be permitted."
Paoli v. Stetser, Civil Action No. 12-66-GMS-CJB,
2013 WL 2154393, at *3 (D. Del. May 16, 2013) (quoting
Kaiser, 1996 WL 730533, at *2).
Request for Core Technical Documents of Accused Products With
a Foreign "Ship To" Address
requests that this Court enter an order requiring Broadcom to
produce core technical documents relating to
specifically-accused products that Broadcom asserts were not
shipped to a U.S. recipient. (D.I. 173 at 1) Broadcom objects
to this request on relevance grounds, arguing that Tessera
has failed to show how this category of specifically-accused
products ("the accused products at issue") are
relevant to its case or theories. (D.I. 176 at 1) Put simply,
Broadcom argues that products not made, used, sold or
imported into the U.S. are not subject to the patent laws of
the U.S. and thus not relevant in this action. (Id.
at 2) Tessera, then, as the party moving to compel, bears the
burden of establishing how core technical documents regarding
products with "Ship To" addresses outside the U.S.
are relevant to its claims for direct patent infringement.
course, these core technical documents would be relevant to
Tessera's claims of direct infringement if the accused
products at issue were, inter alia, considered to
have been the subject of a U.S.-based sale by Broadcom.
See 35 U.S.C. § 271(a). Tessera argues that the
accused products at issue-even though they were initially
shipped to a foreign address-may still qualify as products
that were the subject of United States-based infringing
sales, pursuant to the rationale set out in Carnegie
Mellon Univ. v. Marvell Tech. Grp., Ltd., 807 F.3d 1283
(Fed. Cir. 2015). (D.I. 173 at 2) In Marvell, the
United States Court of Appeals for the Federal Circuit noted
that there is no "single, universally applicable fact
that determines the answer" as to where an infringing
sale is said to occur and, further, that it is not settled
whether a sale can have more than just one location.
Marvell, 807 F.3d at 1308. In determining where a
sale occurred, a court is to focus on, inter alia,
the "place of inking the legal commitment to buy and
sell and a place of delivery" and where
'"substantial activities of the sales
transactions' occurred[.]" Id. (quoting
Halo Elecs., Inc. v. Pulse Elecs., Inc., 769 F.3d
1371, 1379 (Fed. Cir. 2014)). Potentially relevant
information includes: (1) where specific orders of accused
products were negotiated and made final; and/or (2) (at least
in the context of a situation where a defendant/accused
infringer is working to obtain a "design win" with
regard to the design of a particular product that will be
sold to a particular customer) where design and testing of
accused products occurred, where the defendant shipped
samples of those products to the customer, and where the
defendant provided assistance to the customer with
incorporating the accused product into the customer's
product. Id. at 1309.
light of Marvell, Broadcom argues that "there
can be no serious dispute that the vast majority of allegedly
infringing activities relating to the international sale of
accused products in this case take place abroad-outside the
jurisdiction of U.S. patent law." (D.I. 176 at 2) For
support, Broadcom cites to a declaration from its Senior
Director of Worldwide Sales Operations (the "Broadcom
declaration"), which lists various activities relating
to the accused products at issue that are said to take place
outside the U.S.: (1) that manufacturing and distribution of
the products occur outside the U.S.; (2) that price
quotations and purchase orders for such products are provided
by non-U.S. employees; (3) that the purchase orders and final
invoices for the products all ...