Free Redacted Document - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE PROMOS TECHNOLOGIES, INC., Plaintiff, v. FREESCALE SEMICONDUCTOR, INC., Defendant. ) ) ) ) ) ) ) ) ) REDACTED PUBLIC VERSION C.A. No. 06-788 (JJF)

FREESCALE'S MAY 20, 2008 LETTER TO SPECIAL MASTER IN RESPONSE TO CUSTOMER LETTER BRIEF OF PROMOS

DM ___
MORRIS, NICHOLS, ARSHT & TUNNELL LLP Mary B. Graham (#2256) James W. Parrett, Jr. (#4292) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347 302.658.9200 [email protected] Attorneys for Freescale Semiconductor, Inc.

OF COUNSEL: David L. Witcoff Kevin P. Ferguson John M. Michalik JONES DAY 77 West Wacker Chicago, IL 60601-1692 312.782.3939 James L. Wamsley III F. Drexel Feeling Thomas R. Goots JONES DAY North Point 901 Lakeside Avenue Cleveland, OH 44114-1190 216.586.3939 Dated: May 20, 2008
Redacted Filing Date: July 1, 2008

Case 1:06-cv-00788-JJF Dear Judge Poppiti:

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The second of ProMOS's four May 13, 2008 discovery letters demonstrates once again its attempt to use discovery motion practice as a strategic weapon.1 This time, ProMOS seeks to compel discovery under four of the same discovery requests under which it moved to compel in DM4: document requests 123, 124 and 125 and interrogatory 32. Having agreed only weeks ago with Freescale to a resolution regarding discovery under these very requests in a discovery dispute raised more than two months ago, ProMOS should not be heard at this late date to raise new demands for discovery under the same requests. The other relief sought by ProMOS's second letter concerns deposition testimony months ago to which ProMOS never before objected. Moreover, ProMOS has not disclosed the full record on these depositions, failing to disclose that Freescale produced a series of witnesses on the exact same deposition topic without objection or controversy. ProMOS's complaints about the Freescale 30(b)(6) testimony are without merit and come far too late in any event. Background The four written discovery requests on which ProMOS bases its second May 13 discovery letter were already the subject of an earlier ProMOS discovery motion. On March 10, 2008, ProMOS filed a discovery motion later designated by the Special Master as DM4. During a March 13 telephone conference with the parties, the Special Master directed ProMOS to identify the specific requests as to which it was seeking additional discovery in DM4. ProMOS responded with its March 14 letter identifying five interrogatories (including interrogatory no. 32) and thirty document requests (including nos. 123, 124 and 125) "that we believe are most critical in terms of Freescale's potential withholding of discovery and the need for court-ordered supplementation . . . ." (March 14, 2008 Letter attached as Exhibit 1.) The parties later participated in numerous conferences--including two all-day, in-person meetings--with the Special Master in an effort to resolve the issues with respect to "the need for court-ordered supplementation" of Freescale's responses to the discovery responses on which ProMOS had moved in DM4. With the Special Master's assistance, the parties were finally able to reach an agreement. (The memorialization of that agreement is attached as Exhibit 2 ("the Agreement").) In its second May 13 discovery letter, ProMOS now wants the Court to ignore DM4 and the agreement on those ProMOS discovery requests, and it moves once again to compel discovery under those very same requests. As demonstrated below, there is no justification for such harassing tactics. ProMOS's misrepresentations regarding Freescale's statements in the proceedings before the Special Master are likewise not justified.

1

ProMOS has exceeded the four-page limit for letter briefs without requesting permission and has directed the Special Master to the DM4 transcript without first obtaining (or even seeking) Freescale's agreement, in violation of the Special Master's explicit contrary directive. (4/4, 2008 Tr. at 3:1 ­ 5:3.) Freescale hereby seeks leave to exceed the fourpage limit to respond to ProMOS's letter brief. Given that ProMOS has cited to the DM4 agreement transcript, Freescale does the same herein.

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Document Request No. 125 Document Request No. 125 was the subject of hours of discussions in face-to-face meetings with the Special Master. The Special Master acknowledged early on in those discussions that this request is so broad on its face that it reaches every Freescale product. (4/9 Tr. at 47.) With the assistance of the Special Master, the parties eventually resolved issues regarding the scope of the documents to be produced and products for which production would occur, as memorialized in paragraph 7 of the Agreement. Throughout the negotiations leading up to the Agreement to resolve DM4, ProMOS's counsel was unwilling to compromise unless Freescale agreed to produce documents responsive to document request 125, not just for those products containing different "cores," but also for the other products that contained the cores ProMOS had previously identified and accused of infringement. At one point, ProMOS threatened to file "DM5" in the event that Freescale limited its production only to the "paragraph 4 products" that contained the new cores. (4/9 Tr. at 76-77.) Freescale responded by stating, "Judge, if I am being told that I am going to face a certain further discovery motion, then I have no incentive to do anything here" and "I do recoil with the idea that I am going to settle this, turn around, and find on my desk when I get back a new letter to Your Honor raising yet a new discovery issue now several weeks after the extended discovery cutoff date." (4/9 Tr. at 77-78.) The Special Master articulated the problem with ProMOS's position as follows: JUDGE POPPITI: I understand what Mr. Wamsley is saying. If you are saying we are going to close down this table on DM4 and in a week and a half we are going to be right back on DM5 focused on this same issue with different product, then there is no incentive to enter into an agreement. That's what I heard you say. MR. WAMSLEY: And that is what I said, yes. (4/9 Tr. p. 85). The Special Master continued: JUDGE POPPITI: [Y]ou can expect, and I have said it in many different ways and maybe I should just put a finer point on this, if there is the need, from ProMOS' point, for later discussion and then a later application, one of the questions I am going to have, even if Mr. Wamsley doesn't raise it, and I expect he would, is, if you are suggesting that, with respect to paragraph two products, information that you expect should have been given under 125 has not been given, my question is going to be: Why wasn't it raised earlier? If you hadn't been getting the information, then why wasn't it raised? I will ask that question. (4/9 Tr. p. 85-86). Eventually, the document request 125 issue was resolved by Freescale's agreement to compromise by producing documents responsive to this request not just for the products identified pursuant to paragraph 4, but also for those identified pursuant to paragraph 2

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of the Agreement. (4/9 Tr. at 130-131.) Although the parties spent countless hours working out this aspect of the Agreement, ProMOS is now asking the Court to compel Freescale to produce documents that are responsive to request 125 related to different products. In short, even though ProMOS reached an agreement on this request, it now wants a different one. This behavior exemplifies ProMOS's "moving target" approach to discovery about which Freescale has long complained. The time has long since come and gone for discovery to close and ProMOS has no justification for reopening it now for this purpose. Not only does ProMOS seek to avoid its prior Agreement, in doing so, it misrepresents the record by claiming that Freescale disclosed during the April 9 conference that it had failed to search for documents responsive to request 125. Freescale indicated nothing of the sort. ProMOS's claim relating to Freescale's argument concerning the "location of usage" documents in the Texas case is a classic red herring. Freescale's arguments regarding the Order of Magistrate Judge Bush in the Texas case were made in an effort to minimize its burden to produce documents going forward. In fact, Freescale did not restrict its document production responsive to request 125 in the past based on that agreement, and stated on the record that it was not aware of withholding documents. (4/9 Tr. at 46.) Moreover, while ProMOS suggests in its letter brief that it "agreed to address the issue by separate letter to Freescale following resolution of DM4" (Letter Br. At 2), Freescale certainly did not agree to anything of the sort, and the pages ProMOS cites in support of this supposed "agreement" do not support ProMOS's claim. All of them refer instead to the parties' discussions which took place before Freescale agreed to compromise and to produce documents for additional products beyond the paragraph 4 products. (4/9 Tr. at 130.) There was never any "agreement" for ProMOS to come back again and raise the issue all over again with respect to even more products at this stage in the proceedings. Furthermore, contrary to ProMOS's claim, Freescale has produced application notes for Freescale products. With respect to evaluation boards, those were not identified by ProMOS as allegedly infringing products in its original list. Indeed, ProMOS made those boards one of the bases for its request for relief under DM4. Consistent with its obligations under the Agreement resolving DM4, Freescale has produced technical documentation with respect to the paragraph 4 evaluation boards and sales data with respect to the paragraph 2 and paragraph 4 evaluation boards. Nothing more is required. Document Request Nos. 123 and 124 and Interrogatory 32 As with Request No. 125, the Agreement to resolve DM4 disposes of the issue that ProMOS now attempts to raise under document requests 123 and 124 and interrogatory 32.2 Just as it did with request 125, ProMOS specifically identified these two document requests and this interrogatory in its March 14 letter relating to DM4, and raised the issue of "the need for court-ordered supplementation" in this regard. (See Exhibit 1.) As with its request 125 discussed above, ProMOS could and should have raised any additional issues it now seeks to
2

Moreover, Freescale has provided an answer to interrogatory 32 pursuant to Rule 33(d), and ProMOS has made no showing that Freescale's answer is deficient. This alone is reason enough to deny the ProMOS motion with respect to interrogatory 32.

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raise with respect to requests 123 and 124 and interrogatory 32 as part of DM4. In particular, ProMOS could have raised any issue with the documents which are the subject of these requests and this interrogatory months ago when it asserted that Freescale's production of documents related to ProMOS's original list of accused products was deficient. ProMOS did not complain about Freescale's responses to request 123 or 124, interrogatory 32, or otherwise refer to "customer documents" during any of the conferences with the Special Master in January or February. In January, the parties engaged in extensive negotiations intended to forge an agreement defining the additional document production to be made by Freescale with respect to the accused products identified by ProMOS. During the very first telephone conference held by the Special Master, Freescale made it clear that it had no intention of holding documents back but wanted to put all document issues to rest by producing those types of documents that ProMOS wanted. (1/17 Tr. at 34-38.) Those documents were described in some detail by Freescale on the record during the January 17 teleconference and that description was ultimately set forth in the Court's January 25 stipulated order extending the discovery deadline. "Customer documents" were not among the documents that Freescale was asked to look for at that time. (See D.I. 132.) By moving now to compel further documents responsive to request nos. 123 and 124 and for a further response to interrogatory 32, ProMOS seeks not only a do-over of its DM4 motion, but also of its agreements which resulted in the January 25, 2008 stipulated order as well. It is simply too late for ProMOS to change its mind to raise this issue now. Deposition Testimony Regarding Documents Provided to Customers ­ Topic No. 8 ProMOS's final complaint relates to deposition testimony with respect to Topic No. 8 of its Third 30(b)(6) notice. This issue is yet another one that ProMOS should have raised long ago if it truly believed there was a problem with the deposition testimony--which was given months ago. The only support that ProMOS cites for its motion on this issue is the deposition transcript of Mr. Nash.3 ProMOS fails to mention that the Nash deposition occurred on January 23, 2008, almost four months ago. ProMOS's counsel never complained during the deposition that the witness was not prepared to testify regarding Topic No. 8. In fact, the cited testimony relates only to evaluation boards ­ a single area within Topic No. 8. At the conclusion of the deposition, Freescale's counsel stated on the record that the deposition was closed. ProMOS's counsel did not object. In the intervening months since the deposition was taken, ProMOS never raised any issue about Mr. Nash's testimony until the day before filing its discovery letter. ProMOS also fails to mention that Freescale produced not only Mr. Nash, but at least eight other Freescale witnesses testify on Topic No. 8 in ProMOS's Third 30(b)(6) Notice.
3

ProMOS also suggests that other Freescale witnesses were unable to provide testimony on this issue, citing to the deposition of Mr. Branson. ProMOS does not provide any page cites to the Branson deposition transcript, so there is no indication what testimony ProMOS believes purportedly supports its position. Additionally, ProMOS never complained about this subject at the Branson deposition or in the two months since the deposition. And, like the Nash deposition, ProMOS's counsel made no objection whatsoever to the closing of the deposition by Freescale's counsel.

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In addition to Mr. Nash, Freescale produced Messrs. Bobrov, Branson, Hui, Hunter, Nuckolls, Short and Todd, as well as Ms. Sullivan.4 The last of these depositions was taken more than two months ago, while several occurred more than three months ago. Until days ago, at no time had ProMOS suggested that any of these witnesses was not able to provide testimony on Topic No. 8. Even more damning to ProMOS's motion regarding Freescale's alleged failure to produce a witness to discuss documents provided to customers is the fact ­ not disclosed in ProMOS's letter ­ that Freescale also produced a witness who testified in response to Topic No. 2 in ProMOS's Fifth 30(b)(6) Notice, which is almost identical to Topic No. 8, as seen below. 2. [Fifth Notice] Documents (such as data sheets, promotional or marketing materials) provided by Freescale to its customers or Distributors concerning the use of any Freescale Products, including communications between Freescale and its customers and/or Distributors relating to the installation, operation, structure, function, implementation and use of any of the Freescale Products. 8. [Third Notice] Documents (such as communications, data sheets, promotional or marketing materials) and things (such as demonstration boards or other implementations) provided by Freescale to or used by Freescale with its customers or distributors concerning the use of each Freescale Product and/or each product that incorporates or includes a Freescale Product, including those relating to the installation, operation, structure, function, implementation and use of each Freescale Product and/or each product that incorporates or includes a Freescale Product. In response to Topic No. 2, Freescale produced Fawzi Behmann on February 8, 2008. ProMOS's counsel asked Mr. Behmann numerous questions regarding communications with Freescale's customers. (Exhibit 3, Behmann Dep. Tr., see, e.g., pp. 23-35.) ProMOS has never complained that the witness was not responsive and it never complained in the intervening months that it needed another witness.
4

It cannot be disputed that ProMOS's counsel never truly explored Topic No. 8 with any of these witnesses. The Bobrov deposition lasted 16 minutes. The Todd deposition lasted only 41 minutes and the word "customer" is used in only two questions, both of which Mr. Todd answered. The Short deposition lasted less than an hour and the word "customer" was used in only seven questions, to each of which Mr. Short provided a response. While the deposition of Ms. Sullivan lasted over three hours, ProMOS's counsel asked Ms. Sullivan only two questions using the word "customer." Moreover, after asking Ms. Sullivan what she did to prepare for Topic No. 8, ProMOS's counsel never asked a single question about the topic. Similar circumstances exist with respect to the other deponents, including Messrs. Nuckolls and Hui whose depositions lasted only about an hour each, though they, like the others, were produced to testify regarding all or part of 16 topics, including Topic No. 8.

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Another thing that ProMOS does not tell the Court is that Freescale objected to Topic No. 8 of the Third Notice as duplicative of Topic No. 2 of the Fifth Notice. (Exhibit 4, Freescale's Objections to ProMOS's Third Notice of 30(b)(6) Deposition.): Freescale further objects to this topic as unduly burdensome to the extent it is duplicative of Topic No. 2 in ProMOS' Fifth Notice of 30(b)(6) deposition. Freescale will only produce a witness to provide testimony regarding this topic in response to one 30(b)(6) notice. The overlap between Topic No. 2 (Fifth Notice) and Topic No. 8 (Third Notice) is undeniable. ProMOS's complaint that it never had a proper witness on Topic No. 8 further lacks merit because it had a witness on Topic No. 2 and ProMOS never objected to that testimony. In sum, ProMOS had ample opportunity to take discovery regarding Topic No. 8 (and Topic No. 2). Freescale produced ten witnesses to testify on those topics. ProMOS never fully explored the issue with any of Freescale's witnesses, other than Mr. Behmann. Moreover, ProMOS never complained, at the depositions or in the intervening months, that any of those witnesses was not prepared on the topic. ProMOS's complaint here has no merit. It is time to move on with the merits of this case rather than deal with unwarranted discovery complaints on requests that have already been brought before the Court. Conclusion For the forgoing reasons, the relief sought by ProMOS in its second of four May 13 discovery letters should be denied. Respectfully,

/s/ Mary B. Graham
Mary B. Graham (#2256) MBG/lmc cc: All counsel on service list
2337547

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CERTIFICATE OF SERVICE The undersigned hereby certifies that on July 1, 2008, the foregoing was caused to be electronically filed with the Clerk of the Court using CM/ECF which will send electronic notification of such filing to all registered participants. In addition, the undersigned hereby certifies that on July 1, 2008 true and correct copies of the foregoing were caused to be served upon the following parties in the manner indicated: BY HAND DELIVERY: Vincent J. Poppiti, Esq. BLANK ROME LLP 1201 North Market Street, Suite 800 Wilmington, DE 19801-4226 BY E-MAIL: Vincent J. Poppiti, Esq. [email protected] BLANK ROME LLP
WITH A COPY TO:

BY E-MAIL John G. Day, Esq. Steven J. Balick, Esquire ASHBY & GEDDES 500 Delaware Avenue, 8th Floor Wilmington, DE 19899 [email protected] [email protected] BY E-MAIL Sten A. Jensen, Esq. HOGAN & HARTSON LLP 555 Thirteenth Street, NW Washington, DC 20004 [email protected] BY E-MAIL: Steven J. Routh, Esq. [email protected] William H. Wright, Esq. [email protected] HOGAN & HARTSON LLP William C. Gooding, Esq. [email protected] GOODING & CRITTENDEN, L.L.P.

Elizabeth Oestreich [email protected] Mary Levan [email protected] Carrie David [email protected] BLANK ROME LLP

/s/ James W. Parrett, Jr.
______________________________________ James W. Parrett (#4292)
1383169

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EXHIBIT 1

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EXHIBIT 2

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CONFIDENTIAL EXHIBIT

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EXHIBIT 3

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CONFIDENTIAL EXHIBIT

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EXHIBIT 4

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