On June 18, 2014, ALJ David P. Shaw issued Order No. 21 denying non-parties Andrew B. Kahng and Puneet Gupta’s (collectively, “movants”) motion to quash subpoenas duces tecum and ad testificandum issued by Respondents Taiwan Semiconductor Manufacturing Co., Ltd. and TSMC North America (collectively, “TSMC”) in Certain Standard Cell Libraries, Products Containing or Made Using the Same, Integrated Circuits Made Using the Same, and Products Containing Such Integrated Circuits (Inv. No. 337-TA-906).
According to the Order, movants are named inventors to the two patents asserted in this investigation by Complainant Tela Innovations, Inc. (“Tela”). The subpoenas seek discovery on the asserted patents and related patents on topics such as conception and reduction to practice, prosecution before the PTO, and embodiments of the claimed inventions. Movants argued good cause exists to quash and/or limit the subpoenas because the definitions, document requests and deposition topics therein are vague, ambiguous, overly broad and unduly burdensome, particularly with respect to the definitions of “Related Tela Patents” and “Power Optimization Technology.” TSMC responded that the requested discovery is “narrowly aimed at information that related to (1) the Asserted Patents and patents/patent applications that claim priority to the same provisional application as the Asserted Patents (the ‘Related Tela Patents’); (2) power optimization technology implemented via gate-length biasing — the technical subject area of the Asserted Patents; and (3) the prosecution and/or enforcement of the Asserted and Related Tela Patents.” TSMC argued that documents and testimony from the inventors regarding these subjects are “highly likely to bear directly on the validity and enforceability of the Asserted Patents, including on issues such as inventorship, inequitable conduct, conception and reduction to practice, and relevant prior art.”
After reviewing the subpoenas, ALJ Shaw denied the motion on the grounds that the discovery sought is not overly broad, “especially in light of the fact that the subpoenaed parties are named inventors to the asserted patents, and in view of the limitations on discovery to which TSMC has already agreed” (i.e., to exclude email searches from the majority of document requests, to limit search term protocols for certain document requests, to limit the relevant time frame to before May 6, 2005 (the date on which the provisional application for the asserted and related patents was filed) for certain document requests, and to limit the definition of “Power Optimization Technology” to “design technology or services that relate to gate length biasing”).