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Realtek Semiconductor Corporation v. Lsi Corporation&Nbsp;

United States District Court, N.D. California, San Jose Division

September 3, 2014



PAUL S. GREWAL, Magistrate Judge.

Before the court is Realtek Semiconductor Corporation's motion to compel LSI Corporation.[1] LSI opposes. On August 19, 2014, the parties appeared for a hearing.[2] Having considered the arguments, the Court GRANTS Realtek's motion.


On August 27, 2012, Commonwealth Scientific and Industrial Research Organisation filed a complaint in the Eastern District of Texas alleging Realtek infringed a patent relating to the IEEE 802.11 industry wireless local area network standard.[3] To support its defense that CSIRO failed to comply with its obligation to license the patent on reasonable and non-discriminatory terms, Realtek seeks to introduce materials from its prior litigation against LSI in this court.[4] In the Realtek-LSI litigation, the court held that LSI breached its contract with the IEEE to license two 802.11 standard essential patents.[5] On April 29, 2014, Realtek served a subpoena requiring LSI to produce all documents related to its 802.11 RAND patent licensing obligations and the calculation of a RAND patent royalty that were "relied on or referenced in any way at trial, summary judgment proceedings, hearings, depositions, post-trial proceedings, or in expert reports."[6]


Rule 45 of the Federal Rules of Civil Procedure authorizes the issuance of a subpoena to command a nonparty to "attend and testify; produce designated documents, electronically stored information, or tangible things in that person's possession, custody, or control; or permit the inspection of premises."[7] "It is well settled that the scope of discovery under a subpoena is the same as the scope of discovery under Rule 26(b)."[8] Rule 26(b) authorizes parties to "obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense."[9]

Although relevance is broadly construed pursuant to Rule 26, it does have "ultimate and necessary boundaries."[10] While discovery should not be unnecessarily restricted, a court may limit discovery if "the discovery sought" is "obtainable from some other source that is more convenient, less burdensome, or less expensive" or if "the burden or expense of the proposed discovery outweighs its likely benefit."[11] Discovery also may be limited to "protect third parties from harassment, inconvenience, or disclosure of confidential documents."[12] A "court determining the propriety of a subpoena balances the relevance of the discovery sought, the requesting party's need, and the potential hardship to the party subject to the subpoena."[13]

"Once the moving party establishes that the information requested is within the scope of permissible discovery, the burden shifts to the party opposing discovery."[14] "An opposing party can meet its burden by demonstrating that the information is being sought to delay bringing the case to trial, to embarrass or harass, is irrelevant or privileged, or that the person seeking discovery fails to show need for the information."[15] A nonparty withholding subpoenaed information on the grounds of privilege must serve a privilege log describing the nature of the documents withheld so that the other parties may assess the privilege claimed.[16]

Fed. R. Civ. P. 45(d)(2)(B)(ii) "states that, when a court orders compliance with a subpoena over an objection, the order must protect a person who is neither a party nor a party's officer from significant expense resulting from compliance.'"[17] Only "two considerations are relevant" under Fed.R.Civ.P. 45(d)(2)(B)(ii); "[1] whether the subpoena imposes expenses on the non-party, and [2] whether those expenses are significant. If these two requirements are satisfied, the court must protect the non-party by requiring the party seeking discovery to bear at least enough of the expense to render the remainder non-significant.'"[18]


LSI does not contest Realtek's authority to issue the subpoena.[19] LSI instead urges that Realtek's subpoena is not relevant to the CSIRO litigation nor reasonably calculated to lead to the discovery of admissible evidence, the subpoena seeks confidential information subject to a protective order, and the categories of information sought by the subpoena are overly broad.[20] The court disagrees.

First, LSI argues that the information is not relevant to the determination of a reasonable royalty rate because the patent royalties discussed in the Realtek-LSI dispute were limited to the particular patents at issue in that case.[21] LSI may be right when it points out that hundreds of patents are designated as essential to the 802.11 standard and that the CSIRO patent covers a different aspect of this standard than the inventions in the previous litigation. But the standard for discovery under Rule 26(b) only requires that the documents be reasonably calculated to lead to the discovery of admissible evidence.[22] Two houses on the same block may have very different features, and yet a real estate appraiser's report will usually consider both. The patents at issue here were all asserted against Realtek and were all declared essential to the 802.11 standard. In addition, the patents are all claimed to be subject to an identical RAND commitment. In short, while the factual differences between the LSI and CSIRO cases may dampen the probative value of the evidence, the discoverability of the evidence cannot be disputed.

Second, LSI's confidentiality concerns do not warrant any modification of the subpoena. The protective order in place in both lawsuits provides sufficient protection for whatever confidential information is included in the materials at issue.

Third, LSI again may be right that "courts tend to find document requests seeking all documents related to a claim or defense as lacking particularity."[23] Realtek requests "all documents related to RAND patent licensing obligations" and "all documents related to the calculation of a RAND patent royalty."[24] But LSI overlooks the additional requirement of the subpoena that limits the request to only those documents "which were relied upon or referenced at trial."[25] Because these documents are all gathered and are in the hands of counsel, LSI's burden of production is limited and does not warrant any shifting of expenses.

In sum, the discovery sought is warranted. LSI shall produce all responsive documents within 14 days.


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