MLC Intellectual Property, LLC v. Micron Technology, Inc., No. 3:2014cv03657 - Document 505 (N.D. Cal. 2019)
Court Description: ORDER GRANTING IN PART MOTION TO COMPEL COMPLIANCE WITH SUBPOENAS in case 3:14-cv-03657-SI; granting in part and denying in part (1) Motion to Transfer Case in case 3:19-mc-80047-SI. (Illston, Susan) (Filed on 5/6/2019)
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1 2 3 4 5 UNITED STATES DISTRICT COURT 6 NORTHERN DISTRICT OF CALIFORNIA 7 8 MICRON TECHNOLOGY, INC., Movant, 9 10 United States District Court Northern District of California 11 Case No. 19-mc-80047-SI Related to Case No. 14-cv-03657 SI v. McKOOL SMITH, P.C. Respondent. 12 ORDER GRANTING IN PART MOTION TO COMPEL COMPLIANCE WITH SUBPOENAS Re: Dkt. No. 1 13 14 15 MICRON TECHNOLOGY, INC., 16 17 18 19 Movant, v. Case No. 19-mc-80052-SI Related to Case No. 14-cv-03657 SI Re: Dkt. No. 1 U.S. INTERNATIONAL TRADE COMMISSION, Respondent. 20 21 On April 26, 2019, the Court held a hearing on Micron’s motions to compel compliance with 22 subpoenas issued to the U.S. International Trade Commission and McKool Smith, P.C. For the 23 reasons set forth below, the motions are GRANTED IN PART and DENIED IN PART. 24 25 BACKGROUND 26 These miscellaneous cases relate to a patent infringement case that is currently pending in 27 this Court, MLC v. Micron Technology, Inc., Case No. 14-cv-03657 SI. In that case, MLC 28 Intellectual Property (“MLC”) alleges that Micron Technology, Inc. (“Micron”) is infringing U.S. United States District Court Northern District of California 1 Patent No. 5,764,571 (“the ‘571 patent”). The case is set for trial on August 12, 2019. 2 In these miscellaneous actions, Micron seeks compliance with Rule 45 subpoenas that 3 Micron issued to the United States International Trade Commission (“ITC”) and McKool Smith, 4 P.C. (“McKool”), seeking documents from an ITC investigation, In the Matter of Certain MLC 5 Flash Memory Devices and Products Containing Same, Inv. No. 337-TA-683 (2009) (“the ’683 6 Investigation”).1 7 International, Inc. (“BTG”) alleging violations of 19 U.S.C. § 337 in the importation into the United 8 States, the sale for importation, and the sale within the United States after importation, of certain 9 multi-level flash memory devices and products by reason of alleged infringement of the ‘571 patent.2 10 McKool represented BTG in the ‘683 Investigation. The respondents in the ‘683 Investigation were 11 Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.; Samsung Semiconductor, Inc.; 12 Samsung Telecommunications America, LLC; Apple, Inc.; ASUStek Computer, Inc.; ASUS 13 Computer International; Dell, Inc.; Lenovo (Singapore) Pte. Ltd.; Lenovo (United States) Inc.; PNY 14 Technologies, Inc.; Sony Corporation; Sony Electronics, Inc.; Transcend Information, Inc.; 15 Research in Motion Corporation; and Research in Motion, Ltd. In the ‘683 Investigation, the ITC investigated a complaint filed by BTG 16 The Administrative Law Judge (“ALJ”) presiding over the ‘683 Investigation entered a 17 protective order governing the submission and treatment of confidential information submitted in 18 that investigation. The ALJ held an evidentiary hearing on June 21-23, 2010. Throughout the 19 proceedings, the parties submitted documents such as expert reports and witness statements and 20 designated those documents as “confidential” under the protective order. In addition, Mr. Gerald 21 Banks, the inventor of the ‘571 patent, was deposed in connection with the ‘683 Investigation, 22 submitted a written witness statement, and testified at the evidentiary hearing; all of Mr. Banks’ 23 testimony was designated as confidential pursuant to the protective order. The ‘683 Investigation 24 was terminated on January 11, 2011, based upon a settlement agreement reached between the 25 26 27 28 1 Micron filed the motions to enforce compliance with the subpoenas in the district courts of the District of Columbia and the Northern District of Texas, and then successfully moved to transfer those matters to this Court. At the time, BTG owned the ‘571 patent. MLC subsequently acquired all rights to the ‘571 patent. 2 2 United States District Court Northern District of California 1 parties. Due to the settlement, the ALJ never issued a determination regarding BTG’s complaint 2 and the alleged violations of 19 U.S.C. § 337. 3 In MLC v. Micron, Micron sought documents from the ‘683 Investigation through discovery 4 requests served on MLC and a Rule 45 subpoena served on BTG. Although Micron received some 5 documents through these efforts, Micron was unable to obtain most of the documents it sought, 6 including Mr. Banks’ witness statement and final deposition transcript,3 as well as his testimony 7 from the evidentiary hearing. 8 In December 2014, Micron also filed a Freedom of Information Act (“FOIA”) request 9 seeking sections of the ITC Staff’s Post-Hearing Brief and Reply Brief pertaining to the validity 10 and/or invalidity of the ‘571 patent. See Dowd Decl. Ex. F, ITC’s Feb. 9, 2015 Response to FOIA 11 Request (Dkt. No. 1-8 in Case No. 19-mc-80052 SI). According to the ITC’s letter responding to 12 the FOIA request, “pursuant to [ITC] Rule § 201.19(c), [the ITC] afforded the submitters of the 13 responsive documents notice of [Micron’s] request and an opportunity to provide comments since 14 the document identified had been granted confidential treatment.” Id. The ITC produced redacted 15 versions of the briefs after receiving the parties’ comments. See id. 16 In October 2018, Micron served the two Rule 45 subpoenas that are at issue in these 17 miscellaneous cases. Both subpoenas seek 32 categories of documents from the ‘683 Investigation, 18 including expert reports, witness statements, deposition transcripts, and transcripts of testimony 19 from the evidentiary hearing. The subpoena served on McKool also seeks additional documents 20 related to the ‘683 Investigation such as letters and e-mails between BTG and the ‘683 Investigation 21 respondents, as well as different types of non-privileged documents that do not contain the 22 confidential business information of third parties. 23 24 The ITC and McKool have not complied with the subpoenas, thus prompting the instant motions to enforce compliance. 25 26 27 28 Micron was able to obtain a copy of Mr. Banks’ rough deposition transcript from MLC, BTG and/or McKool. 3 3 LEGAL STANDARD 1 2 Under Rule 45(a), subpoenas may command a party to “produce documents, electronically 3 stored information, or tangible things requires the responding person to permit inspection, copying, 4 testing, or sampling of the materials.” Fed. R. Civ. P. 45(a)(1)(D). A subpoena may be quashed or 5 modified if it “requires disclosure of privileged or other protected matter, if no exception or waiver 6 applies or subjects a person to an undue burden. Fed. R. Civ. P. 45(d)(3)(A)(ii). The subpoena may 7 command the production of documents which are “not privileged” and are “relevant to any party’s 8 claim or defense” or “reasonably calculated to lead to the discovery of admissible evidence.” Fed. 9 R. Civ. P. 26(b). 10 DISCUSSION United States District Court Northern District of California 11 12 Micron contends that the documents that it seeks are the types of documents routinely 13 disclosed in patent litigation, including the prior statements and testimony of Mr. Banks, as well as 14 prior statements and testimony of the patent owners’ fact and expert witnesses. Micron argues that 15 neither the ITC nor McKool have asserted a valid basis for failing to comply with the subpoenas 16 because any confidentiality concerns can be addressed through the protective order in place in MLC 17 v. Micron, 14-3657 SI. Micron also argues that neither the ITC nor McKool have substantiated their 18 assertions that compliance with the subpoenas would be unduly burdensome. 19 The ITC and McKool assert numerous objections to complying with the subpoenas. The 20 ITC argues that in order to fulfill its mandate of conducting section 337 investigations “at the earliest 21 practicable time,” 19 U.S.C. § 1337(b)(1), it relies on the willingness of parties to voluntarily submit 22 confidential documents to the ITC with the understanding that those documents will only be used 23 for the purposes of the ITC’s investigation. The ITC argues that if the Court grants Micron’s motion 24 to enforce compliance with the subpoena, parties to ITC proceedings will no longer trust the 25 Commission’s ability to adequately protect confidential business information (“CBI”) it obtains 26 during the course of an investigation.4 The ITC also argues that if the Court grants Micron’s motion, 27 28 4 19 U.S.C. § 1337(n) governs the disclosure of information designated as CBI in a section 337 investigation. Section 1337(n)(1) provides, “Information submitted to the Commission or 4 United States District Court Northern District of California 1 it will “open the floodgates” for similar requests because the overwhelming majority of section 337 2 investigations concern intellectual property, and in particular, claims of patent infringement (and 3 invalidity). ITC’s Opp’n at 16 (Dkt. No. 7 in 19-80052 SI). The ITC and McKool argue that the 4 terms of the protective order in the ‘683 Investigation preclude the ITC and McKool from producing 5 any documents designated as confidential to non-parties for use in other proceedings, and that they 6 are prohibited from determining on their own whether any information was improperly designated 7 as CBI. The ITC and McKool also argue that complying with the subpoenas would be unduly 8 burdensome because, inter alia, the review process would require locating signatories to the 9 protective order in order to obtain their consent to disclosing their confidential business information, 10 and if such consent was not forthcoming, redacting confidential business information from each 11 requested document. McKool states that “the case files and production database [for the ‘683 12 Investigation] together represent some 165,000 documents.” McKool’s Opp’n at 3 (Dkt. No. 7 in 13 19-80047 SI). 14 The Court has carefully considered the parties’ arguments and is mindful of the ITC’s 15 institutional concerns, as well as the burden that would be imposed on the ITC and McKool if the 16 Court fully enforced the subpoenas. The Court also recognizes the importance of protecting third 17 parties’ confidential business information. While Micron may be correct in its assertion that the 18 parties to the ‘683 Investigation improperly designated significant portions of the record as CBI,5 19 the Court is not persuaded by Micron’s suggestion that either the ITC or McKool could now make 20 a determination as to the propriety of those designations without the involvement of the designating 21 parties. However, the Court also recognizes that Micron is entitled to seek relevant discovery, and 22 that Micron has unsuccessfully attempted to obtain the documents at issue from MLC and BTG. 23 24 25 26 27 28 exchanged among the parties in connection with proceedings under this section which is properly designated as confidential pursuant to Commission rules may not be disclosed (except under a protective order issued under regulations of the Commission which authorizes limited disclosure of such information) to any person (other than a person described in paragraph (2)) without the consent of the person submitting it.” 19 U.S.C. § 1337(n)(1); see also 19 C.F.R. § 201.6(a)(1) (defining CBI). 5 The Court notes that the parties in the underlying related case, MLC v. Micron, have themselves demonstrated a proclivity for designating large swaths of information as “confidential” when, in fact, it is not. 5 United States District Court Northern District of California 1 The Court concludes that Micron is entitled to receive three documents that are the most 2 relevant to this litigation – those containing the inventor’s prior testimony – and that the production 3 of these documents will not undermine the ITC’s mission, is permitted by the ‘683 protective order, 4 and will not impose an undue burden on the ITC or McKool. At the April 26, 2019 hearing, counsel 5 for the ITC stated that the ITC was in possession of Mr. Banks’ witness statement, which it estimated 6 as less than 20 pages, and the transcript of Mr. Banks’ testimony from the evidentiary hearing, which 7 it estimated as less than 130 pages. Counsel for McKool stated that McKool has Mr. Banks’ final 8 deposition transcript (counsel did not provide an estimate for the length of that document). As 9 demonstrated by the ITC’s response to Micron’s 2014 FOIA request, the ITC already has a process 10 in place for responding to third party requests for documents containing CBI. The Court finds that 11 requiring the ITC to undergo that same process for the three Banks’ documents will not be unduly 12 burdensome. Further, as counsel for the ITC acknowledged at the hearing, the ‘683 protective order 13 permits the ITC to disclose documents containing CBI if pursuant to a court order. See ‘683 14 Protective Order ¶ 1. However, with regard to the balance of the documents sought in Micron’s 15 subpoenas, the Court finds that it would be unduly burdensome for the ITC and McKool Smith to 16 engage in this process. 17 Accordingly, the Court ORDERS as follows: (1) within 4 days of the filing date of this 18 order, McKool shall produce Mr. Banks’ final deposition transcript to the ITC; (2) within 8 days of 19 the filing date of this order, the ITC shall provide notice to the parties to the ‘683 Investigation of 20 this Court’s order compelling the production of Mr. Banks’ witness statement, evidentiary hearing 21 testimony, and final deposition transcript, and provide a reasonable time to object to the disclosure 22 of any CBI.6 See generally 19 C.F.R. §§ 201.17, 201.19 (setting forth ITC’s process for responding 23 to a FOIA request); see also ‘683 Protective Order ¶ 9 (same). The ITC shall undergo the review 24 process as expeditiously as possible, and produce the Banks’ witness statement, evidentiary hearing 25 transcript, and final deposition transcript to Micron no later than June 14, 2019. 26 27 28 BTG and MLC have already provided their consent to the disclosure of any ‘683 Investigation documents that contain the CBI of BTG or MLC. 6 6 CONCLUSION 1 2 3 For the foregoing reasons, Micron’s motions seeking compliance with the subpoena are GRANTED IN PART and DENIED IN PART. 4 5 IT IS SO ORDERED. 6 7 8 Dated: May 6, 2019 ______________________________________ SUSAN ILLSTON United States District Judge 9 10 United States District Court Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 7
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