IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
May 18, 2005
IN RE SUBPOENAS ISSUED TO INTEL CORPORATION
[RE: DOCKET NO. 43]
The opinion of the court was delivered by: Howard R. Lloyd United States Magistrate Judge
NOT FOR CITATION
ORDER GRANTING IN PART AND DENYING IN PART INTEL'S MOTION TO QUASH OR FOR PROTECTIVE ORDER
Respondents Cornell University and Cornell Research Foundation, Inc. (collectively, "Cornell") are the plaintiffs in a patent infringement lawsuit currently pending in the District Court for the Northern District of New York. In that action, Cornell claims that its U.S. Patent No. 4,807,115 (the "'115 patent") is infringed by Hewlett Packard's PA-8000 family of processors, as well as by any product which contains a PA-8000 processor as a component. As a defense, Hewlett Packard ("HP") asserts that it has acquired "licensed" PA-8000 family processors from Intel Corporation ("Intel"), a non-party to the underlying action. Cornell served a subpoena for Intel's deposition.
Before the court is Intel's "Motion to Quash and/or Modify Deposition Subpoena, or in the Alternative for Protective Order." Cornell opposed the motion.*fn1 Having considered the papers submitted by the parties, as well as the arguments presented at the May 17, 2005 hearing, the court issues the following order.
1. Preliminarily, the court notes that the deposition in question has not yet gone forward. The present dispute revolves around Intel's expressed concerns over questions which, hypothetically, might be asked at the deposition; and the parties have provided little guidance as to where the line properly should be drawn, if at all, on Cornell's examination. Moreover, as noted at the hearing, counsels' oral arguments suggest that several items may be non-issues after all. This court is disinclined to issue, in the abstract, an order which prospectively provides an exhaustive list of the questions that may be asked at the deposition. This order should not be construed as such.
2. Intel is willing to produce a witness to testify about the PA-RISC*fn2 processors, but argues that Cornell should not be permitted to inquire about Intel's Itanium technology, except to the extent necessary to ascertain which terms of the subject agreements apply solely to Itanium. At the hearing, Cornell confirmed that it does not claim that Itanium infringes the '115 patent. Further, Cornell's counsel stated that Cornell does not intend to seek testimony about the design, operation, function or other technological information about Itanium.
On this issue, Intel's motion is GRANTED IN PART as follows: Cornell shall be permitted to
(a) examine the designee(s) about any term of the subject agreements which apply, relate or pertain to the PA-RISC processors, notwithstanding that those terms might also apply to Itanium; (b) explore how it was that the agreement(s) came to apply to the PA-RISC processors, notwithstanding that an answer might involve some explanation concerning Itanium; and (c) ascertain the basis for the contention that a provision applies solely to Itanium.
3. Intel's motion for an order precluding Cornell from seeking testimony about other agreements (see, e.g., Topic (h)) is DENIED. Cornell shall be permitted to inquire about other agreements (if any) which bear upon or relate or pertain in any way to the PA-RISC processors.
4. Intel's motion for an order precluding Cornell from seeking any testimony about the negotiation, drafting and Intel's understanding of the agreements identified in the subpoena (see, e.g., Topic (h)) is DENIED. At the hearing, Intel indicated that it has no objection if, for example, Cornell wants to inquire about what the parties said or did and their subsequent course of dealing with respect to the agreements as relating to the PA-RISC processors; but it says that it has no witness who can testify about the noticed subjects in any event. Although Intel says that the pertinent individuals with knowledge have left the company, Intel is nonetheless obliged to make a reasonable investigation and to prepare a witness to the extent matters are reasonably available to it. If Intel, the corporation, has a current "understanding" of the meaning of the agreements with respect to PA-RISC processors that is beyond or different than the plain meaning of the language, then it should provide a witness to testify about the same.
5. Intel's motion for an order precluding questions which may impinge on the attorney-client privilege or the work product doctrine is DENIED without prejudice. Intel may assert an appropriate objection at the deposition to the extent it has a legitimate basis for doing so. Indeed, Cornell does not dispute Intel's right to do so. However, this court is not inclined to issue a blanket protective order now which prospectively prohibits examination on various subjects on the ground that it might call for privileged or otherwise protected information.
6. Intel's motion for an order prohibiting Cornell from seeking any testimony about Intel's document production efforts and the identities of persons most knowledgeable about the documents (see, e.g., Topic (i)) is DENIED. Nothing in this court's prior discovery orders precludes Cornell from exploring in deposition the sufficiency of Intel's document production efforts, and Cornell is entitled to seek testimony authenticating documents. Moreover, Intel has not convincingly demonstrated that an undue burden will be imposed.
7. With respect to Topic (f), Intel contends that it has no way of knowing which documents HP produced in the underlying action. At the hearing, HP's counsel agreed that if Cornell provides the Bates numbers of the documents in question, HP will provide copies of those documents to Intel.*fn3 Accordingly, Intel's motion as to Topic (f) is DENIED AS MOOT.
IT IS SO ORDERED.