Free Letter - District Court of Delaware - Delaware

Case 1:04-cv-00343-JJF Document 597 Filed O3/21/2007 Page 1 of 4
Rrcmuarnes, L.Av·rc>r~1 8. Furcsrzra
A PROFESSIONAL ASSOCEATIQN
Ona Romney 5c:•uAmz
920 NORTH Kms Srnasr
Wirmnmerow, DELAWARE tenor
ANNE SMH Gale t2.02) rss l·77OO “’"E°T ¤'*"·
Fax (302} ee E--;-ia. ‘i.‘Z§I§Et'riT§`éZ9
WWW..F!LF'iCOM
March 21, 2007
BY E·—MAIL & HAND DELIVERY
The I—Ion0rable Vincent J. Poppiti
BLANK ROME LLP
Chase Manhattan Center
i20i Market Street, Suite 800
Wilmington, DIE. i980l
Re: LG.P}1fhps LCD C0., Ltd v. ViewSonic Corp, et cu'., CA. No. 04—343~JJF
Dear Special Master Poppiti:
The Tatung Defendants respectfuliy submit this ietter brief in support of their Motion for
Protective Order limiting the scope of Plaintiff LPL’s third party subpoenas issued to Ingram Micro,
Edward Service, elviacltines, CLE, Inc., Arnazoncom, and American Dynamics to documents and
deposition testimony regarding accused products} Tatung also requests that LPL be required to withdraw
the subpoena issued to Gateway, inc., as Gateway has not purchased any of the accused products.? This
Motion originally was brought in the districts from which the subpoenas issued; those Courts have since
transferred the motions to the District ot Delaware.}
I. Procedural Background
In mid to tate February, LPL served 23 third party subpoenas out of 15 district courts on Tatung’s
customers. The subpoenas sought contidentiai technical information, pricing, negotiations, agreements,
and correspondence from the Tatung Det`endants’ customers.4 The subpoenas were not limited in any
way to the accused products. Tatung requested a meet and confer on this subject. After delaying the
process for a week, LPL finaliy indicated that it was unwilling to narrow or modify the subpoenas.5
Tatung then proposed to LPL that its motions for protective order be consolidated before Your l—Ionor.°
‘ The parties will soon stipulate to transfer the motions for protective order regarding the
subpoenas issued to Radio Shack and CompUSA to the District of Delaware.
2 See Gateway, Inc. subpoena at Exh. A.
3 See Orders of`W.D. Wash. and C.D.. Cal. at Exh. B. The S.D. Cal. has not yet issued an Order
but stated its decision to transfer at the hearing on March 20, 2007.
4 See, rz. g, Exh. A. The Gateway subpoena is representative ofail of LPL’s subpoenas.
5 See Letter from Valerie Ho to Cormac Connor and subsequent emails at Exit. C.
6 See excerpts of Transcript dated March 9, 2007, Exit. D; see also excerpts of Transcript dated
March E6, 2007, Exit E.
at r 1 -s129ssu~2

Case 1:04-cv-00343-JJF Document 597 Filed O3/21/2007 Page 2 of 4
The Honorable Vincent J. Poppiti
March 2i, 2007
Page 2
LPL refused, claiming that Tatung lacked standing to object to the subpoenas and that Your Honor had no
jurisdiction over the third parties.?
As a last resort and at great expense, Tatung retained local counsel and, beginning on March 9,
2007, filed its motions for protective order .8 Tatung has largely been successful with its motions? Last
week, LPL tiled its oppositionsw ln an about—face, LPL has now asked each of those courts to transfer
Tatung’s motions to Delaware?
II. Argument
A. The Tatung Defendants Have Standing To Move For Protective Orders
Under Federal Rule of Civil Procedure 26(c).
Tatung has stated from the outset and in its briefs that its motions are made pursuant to Rule 26(c)
ofthe Federal Rules of Civil Procedure, which expressly authorizes parties to move for protective orders
against subpoenas issued to third parties}? See crlso, e g., Regency Olcisnzobiie, Inc. v. GMC, 723 F.Supp.
250, 270 (D.N.1. 1989) (holding that party to a lawsuit had standing to obiect to third party deposition);
Springbrook Lenders v. Northwestern Na! ’r' Ins. C0., l2} PRD. 679, 680 (ND. Cal. l988) (holding that
defendant had standing to move for protective order under Rule 26(c)). However, LPL continues to
deliberately misconstrue Tatung’s position to manufacture a non—existing standing argument. Its
oppositions resort to citing inapposite case iaw under Rule 45 for the proposition that Tatung does not
have standing to bring this motion`} LPL’s opposition also mischaracterizes Tatung’s motions as
motions to qncrslr and as asserting objections "on behalf of the third parties."i° In fact Tatun has never
claimed to raise objections on behalf of rhirci parties; but only on its own befrab'.
B. LPI,. Should Not Be Allowed To Embark On A Fishing Expedition.
Tlie salient issue is whether LPL is entitled to receive from third parties discovery relating to
products that have not been accused by LPL of infringing the Patents—in—Suit and that Tatung treats as
highly conlidential. Your Honor has stated that discovery in this case likely will be limited to accused
products. LPL’s subpoenas are an attempt to circumvent an impending ruling from Your Honor. I..PL’s
subpoenas seek broad categories of information regarding every "visua1 display product" sold or offered
for sale by the Tatung Defendantsii The subpoenas are not limited in any way to the 20 accused products
7See Exit. E at 8-9.
8 See Tatung’s Motions for Protective Order in at Exhs. F, G, and l—I, exhibits excluded. Ex. F is
exemplar ofthe Motions in re Edward Service, eMachines, CLI, inc., and Gateway, lnc, all of which were
filed in the C.D.. Cal.
° The SD. Fla, WD. Ark., D.N.J., D. Minn. have all limited discovery to accused products. Only
one court, the N.D. Cal., denied Tatung’s motion.
W See LPL’s Oppositions to Motion for Protective Order at Exhs. l, 5, and K, respectively.
H See, eg., Exh. I at 6..
*2 See emails between counsel for Tatung and counsel for LPL at Enh. C.
ii See, ag, Exh. I at 7~8.
M See, ag., Exli. I at p. 5.
I5 See Gateway subpoena at Exh. A as an exeniplar.
RLF1~3l29l80-2

Case 1:04-cv-00343-JJF Document 597 Filed O3/21/2007 Page 3 of 4
The Honorable Vincent J. Poppiti
March 21, 2007
Page 3
identified by LPL and instead attempt to improperly delve into the confidential business relationships
between Tatung and their customers.
LPL should not be permitted to embark on a “liSl1iI’lg expedition" that serves no legitimate
purpose but is instead calculated to harass Tatung’s customers..“’ See Joy Technologies, Inc. v. Flrrkr, Inc.,
772 F.Supp.. 842 (l),Del. 199l) (iiarnan, J., holding that defendant was entitled to protective order to
prevent patent licensee from taking any discovery from defendant’s customers, and that "unless [patent
licensee] can demonstrate that it has a specific need for evidence available only from third party
customers of [defendant], the Court concludes that [defendant] and its customers are entitled to
protection"); see also Micro Motion, Inc, v. Kane Steel Co., 894 F .2d 1318, 132i•'—28 (Fed, Cir, l990)
(characterizing patent owner’s third party subpoenas as a "lishing expedition" and stating that "litigant[s]
may not engage in merely speculative inquiries in the guise of relevant discovery").
LPL claims that the broad categories of information it seeks are relevant to the issue of
inducement. However, in order for there to be indirect infringement (inducement), there must be direct
infringement and on irwirzgfrrg product, See Minnesota Mining and Mfg Co v. Chenrque, Inc., 303 F.3d
1294, l304 (lied, Cir. 2002), Here, there is no allegation of direct infringement with respect to the
hundreds of products for which LPL seeks information from T atung’s custornersu
C. LPL’s Opposition Contains Unfouruied Accusations.
LPL has represented both to Your Honor and to the various district courts that "fatung improperly
impeded third party discovery. Counsel for Tattmg denies that it has suggested or otherwise told third
parties not to comply with LPL’s subpoenas. Tatung merely informed some customers that it is tiling
motions for protective order. Indeed, many customers served their own objections or tiled motions to
quash LPL’s subpoenas. LPL’s insinuation that Tatung purposely timed its motions and expedited
hearings to coincide with key depositions and to "distract" counsel for LPL also lacks merit: counsel for
Tatung was likewise forced to address these issues during important depositions, and to suggest that
Tatung had control over the schedules of Federal Courts so as to orchestrate overlapping hearings is
disingenuous. Finally, LPL itself noticed third party depositions on the same day in different states,
Any delay or inconvenience asserted by LPL as a result of the recent motion practice is self—
inflicted. LPL waited until the eve of discovery cutoff to issue two dozen broad—ranging subpoenas. LPL
refused to limit the scope of its subpoenas in any way. LPL then rebuffed Tatung’s attempt to consolidate
these motions before Your Honor, forcing "fatung into courts across the country.
Accordingly, `1`atung respectfully requests that the Court grant its Motion for Protective Order and
limit discovery from third parties to documents and deposition testimony, if any, regarding products
specifically accused by LPL.
m LPI, has succeeded in this respect, as the majority of subpoenaed parties have served objections
and some have tiled motions to quash.
ll Tatung has submitted further briefing on this issue in opposition to LPL’s Motion to Compel
Discovery Regarding Indirect infringement and Damages. See Exh. L.
Rllil-3129lBG-2

Case 1:04-cv-00343-JJF Document 597 Filed O3/21/2007 Page 4 of 4
The Honcrabie Vincent J . Poppiti
March 21, 2007
Page 4
Respectfully,
U i
Anne Shea Gaza
(#4093)
ASG/afg
cc: Clerk of Court (via CM/EGF)
Richard Kirk, Esquire (via electronic mai!)
Cormac T, Connor, Esquire (via electronic mail)
Mark Krietzman, Esquire (via electronic maii)
Scott R. Miller, Esquire (via electronic maii)
Jeffrey B. Bcve, Esquire (via eiectronic maii)
ilLFl—3}29180-2

Case 1:04-cv-00343-JJF

Document 597

Filed 03/21/2007

Page 1 of 4

Case 1:04-cv-00343-JJF

Document 597

Filed 03/21/2007

Page 2 of 4

Case 1:04-cv-00343-JJF

Document 597

Filed 03/21/2007

Page 3 of 4

Case 1:04-cv-00343-JJF

Document 597

Filed 03/21/2007

Page 4 of 4