On July 11, 2014, ALJ David P. Shaw issued Order Nos. 23 and 24 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 Order No. 23, non-party James H. Hogan filed a motion to quash and/or limit the subpoena duces tecum and ad testificandum issued upon request by respondents Taiwan Semiconductor Manufacturing Co., Ltd. and TSMC North America (collectively, “TSMC”).  Mr. Hogan argued that he was subject to the “apex deposition rule, which protects such executives from depositions when the executive has no unique first-hand knowledge of the facts of the case, or where the testimony would be repetitive.”  Accordingly, Mr. Hogan argued that he had limited knowledge of the facts at issue, no unique, first-hand knowledge relevant to any claims or defenses, and that TSMC did not exhaust other less intrusive discovery methods to get the information it seeks.  Mr. Hogan further argued that the subpoena’s definition of “Related Tela Patents” should be limited.  In opposition, TSMC asserted that Mr. Hogan has unique, first-hand knowledge of Complainant Tela Innovations Inc. (“Tela”) because he was one of the co-founders and is directly involved in Tela’s business decisions.

ALJ Shaw determined that Mr. Hogan was subject to the apex deposition rule and that TSMC failed to prove that his deposition is necessary.  Specifically, ALJ Shaw held that “TSMC has not established that Mr. Hogan has relevant information that could not be obtained from the other founders of Tela, or from other persons included on the emails and other communications attached as exhibits to TSMC’s opposition papers.”  As to Mr. Hogan’s request to limit the subpoena’s definition of “Related Tela Patents,” ALJ Shaw denied this request.  Accordingly, ALJ Shaw granted-in-part Mr. Hogan’s Motion.

According to Order No. 24, non-parties Rajiv Bhateja, Jacob Jacobsson, and Martine Penilla Group (“MPG”) (collectively, “movants”) filed a motion to quash subpoenas duces tecum and ad testificandum issued upon request by TSMC.  In opposition, TSMC argued that both Mr. Bhateja and Mr. Jacobsson had information relevant to TSMC’s defenses because the men were vice president and CEO, respectively, at Blaze DFM, Inc. (“Blaze”) and that Tela acquired Blaze’s assets in 2009, including the patents asserted in this investigation.  TSMC further argued that MPG possessed relevant information because MPG is Tela’s patent prosecution firm, and prosecuted the patents at issue in this investigation.  In support of the motion, movants argued that neither Mr. Bhateja nor Mr. Jacobsson were with Blaze when the inventors invented the claims of the asserted patents.  Additionally, MPG argued that their “email repository contains numerous privileged and confidential communications with clients other than Tela,” and that “TSMC’s subpoena would require MPG to either turn over its entire email repository containing these privileged communications to an outside vendor and its attorneys in this Investigation, or review and produce emails on its own.”

ALJ Shaw determined that Messrs. Bhateja and Jacobsson are in possession of information relevant to issues raised in this investigation based on their previous employment at Blaze.  As to MPG, ALJ Shaw held that MPG must produce the requested documents because “[t]he fact that MPG will have to perform screens for relevance and privilege before producing documents responsive to the subpoenas is not a reason to quash those subpoenas.”  ALJ Shaw also rejected movant’s request to limit the definitions of certain terms.  ALJ Shaw held that the definitions were not overly broad.  Accordingly, ALJ Shaw denied movant’s Motion.