On March 19, 2014, ALJ David P. Shaw issued Order No. 11 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).

By way of background, this investigation is based on a December 23, 2013 complaint filed by Tela Innovations, Inc. (“Tela”) alleging violations of Section 337 by Taiwan Semiconductor Manufacturing Company, Ltd. and TSMC North America in the importation into the U.S. and sale of certain standard cell libraries, products containing or made using the same, integrated circuits made using the same, and products containing such integrated circuits that infringe U.S. Patent No. 8,490,043.  See our December 31, 2013 and January 24, 2014 posts for more details on the complaint and notice of investigation, respectively. 

According to the Order, the following companies filed a motion to quash or limit the subpoena served by complainant Tela: Marvell Semiconductor, Inc. (“Marvell”), Qualcomm Incorporated (“Qualcomm”), LSI Corporation (“LSI”), Altera Corp. (“Altera”), Broadcom Corporation (“Broadcom”), Advanced Micro Devices, Inc. (“AMD”), MediaTek USA Inc. (“MediaTek USA”), NVIDIA Corporation (“NVIDIA”) (collectively, “Movants”).  Tela filed a combined opposition to Marvell and Qualcomm’s motions as well as a combined opposition to the motions filed by LSI, Altera, Broadcom, AMD, and NVIDIA.  Tela also opposed MediaTek USA’s motion.  Respondents Taiwan Semiconductor Manufacturing Company, Ltd. and TSMC North America (collectively, “TSMC”) filed a combined statement in support of Marvell and Qualcomm’s motions and later extended it to subsequently filed motions.  Movants subsequently filed a motion seeking leave to reply which was granted by ALJ Shaw. 

Movants argued that the subpoenas sought “irrelevant” information regarding Movants’ use, if any, of standard cell libraries other than the accused TSMC standard cell libraries, and Movants’ customers and downstream products incorporating Movants’ semiconductor devices.  Movants also argued that the subpoenas sought discovery (1) regarding integrated circuits that could not support a finding of a Section 337 violation, (2) that should first be obtained from TSMC, (3) concerning purported acts of infringement that occurred before asserted U.S. Patent No. 8,490,043 (the ‘043 patent) issued, and (4) that was overly broad and unduly burdensome.  Tela argued that the motions to quash “improperly attempt to redefine the scope of investigation” and that the subpoenas properly sought discovery on information identified in the notice of investigation, including standard cell, libraries, products containing or made using the same, integrated circuits using the same, and products containing such integrated circuits.  TSMC argued that the subpoenas were overly broad and sought irrelevant information.

ALJ Shaw determined that the scope of discovery in the investigation was limited to standard cell libraries originating from TSMC, and did not include standard cell libraries provided to Movants by third parties or developed by the Movants themselves.  As such, ALJ Shaw found that the subpoenas were overlybroad because they sought information regarding standard cell libraries provided to Movants by other third parties or developed by Movants and because they sought information regarding activities that occurred prior to the issuance of the ‘043 patent. 

In addition to the joint arguments made by the Movants, MediaTek USA also argued that it was “not in possession, custody, or control of responsive documents and information as to many of the discovery requests” since its parent company, MediaTek Inc., worked on the design of semiconductors and had controlled the documents and information related to the requested topics.  In assessing whether MediaTek USA had control over the subpoenaed documents, ALJ Shaw looked to the five factors regarding a subsidiary corporation’s control over documents in a parent company’s possession laid out inCamden Iron & Metal, Inc. v. Marubeni Am. Corp., 138 F.R.D. 438, 441 (D.N.J 1991).  Using those factors, ALJ Shaw found that MediaTek USA had control over the subpoenaed information because it could access the information to meet its own business needs, when the need arose in the ordinary course of business, and as a function of its marketing and servicing of MediaTek Inc.’s products in the U.S.  Accordingly, ALJ Shaw granted the motions in part, limiting them to information relating to standard cell libraries originating with TSMC, products containing or made using such standard cell libraries, integrated circuits using the same, and products containing such integrated circuits.