Case 1:19-cv-01006-JDW Document 54 Filed 01/03/20 Page 1 of 8 PageID #: 1792
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`PACT XPP SCHWEIZ AG,
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`INTEL CORPORATION,
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`Defendant.
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`Plaintiff,
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`v.
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`C.A. No. 19-1006 (JDW)
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`INTEL CORPORATION’S BRIEF IN SUPPORT OF ITS
`MOTION TO COMPEL DISCOVERY
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`MORRIS NICHOLS ARSHT & TUNNELL LLP
`Jack B. Blumenfeld (#1014)
`Brian P. Egan (#6227)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@mnat.com
`began@mnat.com
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`Attorneys for Defendant
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`OF COUNSEL:
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`Gregory S. Arovas P. C.
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`(212) 446-4800
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`Adam R. Alper
`Brandon H. Brown
`KIRKLAND & ELLIS LLP
`555 California Street, Suite 2700
`San Francisco, CA 94104
`(415) 439-1400
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`Michael W. De Vries
`Christopher M. Lawless
`Sharre Lotfollahi
`Allison W. Buchner
`Kevin Bendix
`JB Schiller
`Mark D. Fahey
`KIRKLAND & ELLIS LLP
`333 South Hope Street
`Los Angeles, CA 90071
`(213) 680-8400
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`January 3, 2020
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`Case 1:19-cv-01006-JDW Document 54 Filed 01/03/20 Page 2 of 8 PageID #: 1793
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`PACT XPP Schweiz AG (“PACT”) filed this 12-patent lawsuit on February 7, 2019,
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`accusing numerous Intel Corporation (“Intel”) technologies, and nearly all Intel processors from
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`2013 forward. PACT is the successor to a German licensing company, PACT XPP
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`Technologies. D.I. 1 at 2. Before filing this case, PACT XPP Technologies went through a
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`restructuring process where it transferred its patent portfolio to PACT, changed its place of
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`incorporation from Germany to Lichtenstein, and opened an office in Switzerland. PACT, in its
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`current form, has only two employees: Martin Vorbach and Gotz Gleichmann.
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`Intel now seeks an Order (i) allowing each party to serve two Rule 30(b)(6) deposition
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`notices at different points in fact discovery (i.e., an early deposition now covering the existence
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`and location of key documents, and a second deposition later on the merits of the case),
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`(ii) compelling PACT to produce a witness in response to Intel’s 30(b)(6) deposition notice
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`served September 17, 2019 regarding document issues, and (iii) compelling PACT to make Mr.
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`Vorbach—an inventor on all 12 asserted patents—available at two different points during
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`discovery for the already-ordered 14-hours of deposition in his personal capacity. Intel requests
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`this relief so it can defend itself against PACT’s claims.
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`Intel served its September 30(b)(6) Notice to understand what documents exist and were
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`collected relating to, inter alia, the asserted patents and other PACT-related corporate issues.
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`Even though this case is nearly a year old, PACT, a foreign entity that acquired the patents-in-
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`suit from another foreign entity, has still not produced key categories of documents and many, if
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`not all, of PACT’s witnesses and relevant third-parties are located overseas. PACT refuses to
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`provide a witness to testify in response to Intel’s September 30(b)(6) Notice and to otherwise
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`agree to a plan for taking discovery of its overseas witnesses that will allow Intel to get the
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`Case 1:19-cv-01006-JDW Document 54 Filed 01/03/20 Page 3 of 8 PageID #: 1794
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`discovery it needs. Putting a discovery plan in place now will prevent future disputes between
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`the parties and ensure both sides a reasonable amount of deposition discovery.
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`Procedural Background
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`The Scheduling Order provides the following limitations on deposition discovery: (i) 120
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`hours per side; (ii) depositions of Mr. Vorbach in his personal capacity limited to 14 hours unless
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`otherwise agreed or ordered; (iii) that the parties meet and confer on time limits of Rule 30(b)(6)
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`witnesses; and (iv) the parties work together to avoid unnecessary duplication of deposition
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`topics where witnesses are deposed in both their 30(b)(6) and 30(b)(1) capacities. D.I. 20 at
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`3(e)(i). PACT has served Rule 26 disclosures and ESI disclosures that listed only two witnesses
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`likely to have discoverable information: Mr. Vorbach and Mr. Gleichmann.
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`Even though PACT requested a rapid substantial completion of document production
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`date of December 12, 2019 (D.I. 13 at ¶ 3(b), which the Court rejected) and stated in its Rule 26
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`disclosures that the sole location of relevant documents was the law offices of Quinn Emanuel in
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`Los Angeles, multiple categories of PACT documents critical to the case still have not been
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`produced to Intel, including: conception and reduction to practice documents, documents
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`showing the complete chain of title for the asserted patents, documents showing PACT’s and its
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`predecessors’ business organization, and documents relating to licensing of the asserted patents.
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`When asked to produce these documents (and others), PACT’s counsel repeatedly stated that it is
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`still investigating the existence and location of such documents.
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`Accordingly, Intel served its first 30(b)(6) notice on September 17, 2019, directed to
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`topics including the existence and location of documents critical to Intel’s defenses. D.I. 34.
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`Confirming the need for that discovery, three days later (and seven months after having sued
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`Intel), PACT disclosed for the first time the existence of an additional “server” and “archive
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`Case 1:19-cv-01006-JDW Document 54 Filed 01/03/20 Page 4 of 8 PageID #: 1795
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`room” located in Munich, Germany. PACT then objected to Intel’s Notice—claiming the
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`deposition would be too burdensome—and refused to produce a witness. The parties have since
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`met and conferred multiple times, and raised other issues, including (1) the number of 30(b)(6)
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`notices permitted (PACT would only agree to a single 30(b)(6) notice), and (2) whether Intel
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`may depose Mr. Vorbach in his personal capacity at two different points during fact discovery
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`(or whether the ordered 14 hours of deposition must occur on consecutive days). Intel made the
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`following compromise position to address all of these issues, which PACT rejected:
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`Intel’s Proposal to PACT (sent verbatim to PACT on November 13, 2019):
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`Within the 120-hour time limit set by the Court, the parties may serve up to three Rule
`30(b)(6) notices and those depositions may occur at different points in the litigation. The
`parties will meet and confer in good faith regarding the content and timing of Rule
`30(b)(6) depositions. As part of this agreement, PACT will work with Intel to promptly
`schedule a 30(b)(6) deposition of PACT on the topics set forth below. PACT may
`similarly take an early 30(b)(6) deposition of Intel. Once PACT serves the specific topics
`for that deposition, the parties will meet and confer regarding appropriate scope.
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`Within the current 14-hour deposition limit for Mr. Vorbach in his personal capacity, Mr.
`Vorbach may be deposed on non-consecutive days at two different points in the case,
`each at a date and location mutually agreed by the parties.
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`30(b)(6) Topics Relating to PACT’s Document Collection and Preservation Efforts
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`1. Relationship between PACT, Scientia Sol Mentis AG, and PACT XPP Technologies,
`including financial arrangements, contractual obligations to assist with litigation,
`overlapping employees, officers, and/or board members, and communications
`regarding Intel or the Patents-In-Suit.
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`2. Relationship between PACT and each inventor on the Patents-In-Suit, including
`financial relationship, contractual obligations
`to assist with
`litigation, and
`communications regarding Intel or the Patents-In-Suit.
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`3. Efforts by PACT and its corporate predecessors to identify, review, collect, obtain,
`preserve, or transfer documents concerning the Patents-In-Suit, Inventors, or Intel
`prior to the filing of the complaint.
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`4. When PACT or its corporate predecessors first anticipated potential litigation against
`Intel involving any of the Patents-In-Suit or any Related Patents or Patent
`Applications.
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`Case 1:19-cv-01006-JDW Document 54 Filed 01/03/20 Page 5 of 8 PageID #: 1796
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`5. PACT’s knowledge regarding the existence and location of potentially relevant
`documents to this litigation not in its possession, custody, or control.
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`PACT’s position is that Intel is limited to a single 30(b)(6) notice, that a deposition on the
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`existence and location of PACT’s documents is too burdensome on PACT, that Intel should
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`provide written deposition questions or Interrogatories to PACT in lieu of a deposition on the
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`above topics, and that Mr. Vorbach will only be made available for deposition once in the case.
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`PACT Should Be Compelled To Provide Reasonable Deposition Discovery
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`Intel seeks an Order requiring deposition discovery that will permit it to defend against
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`PACT’s claims. Although the parties negotiated, and the Court ordered, 120 hours of deposition
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`time per side, PACT did not disclose at that time that it has only two employees. PACT has not
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`produced basic documents relating to its claims and Intel’s defenses despite originally filing this
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`case in February 2019, and this discovery is gating Intel from further developing its defenses.
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`First, both parties should be permitted to serve two Rule 30(b)(6) notices during fact
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`discovery. It is important that Intel be permitted now to depose PACT on document issues. Intel
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`may need to initiate Hague discovery for third parties associated with PACT and its predecessor;
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`however, based on PACT’s limited document production and refusal to provide a witness, Intel
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`is in the dark about what documents PACT has in its possession and what is in the possession of
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`third parties scattered around Europe. Additionally, the parties’ deadline for joinder of other
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`parties is March 13, 2020, and Intel’s deadline to add a claim for inequitable conduct is just three
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`months later. Intel is entitled to take testimony on what documents exist now, what existed in
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`the past, where those documents are now, and who has them. Then, later in fact discovery, once
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`ESI and other documents are produced, Intel should also be permitted to depose PACT on other,
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`non-duplicative issues (e.g., the 12 asserted patents, Mr. Vorbach’s purported technology
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`development, PACT’s licensing efforts). Limiting Intel to a single 30(b)(6) deposition would
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`Case 1:19-cv-01006-JDW Document 54 Filed 01/03/20 Page 6 of 8 PageID #: 1797
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`unfairly require Intel to choose between (A) pursuing document discovery issues now, and
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`(B) obtaining corporate deposition testimony on core claims and defenses after production of
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`basic PACT documents, ESI, updated contentions, and written discovery responses. See 8A
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`Wright and Miller, Federal Practice and Procedure § 2104 (3d ed.) (“[I]t may happen—as with
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`an early Rule 30(b)(6) deposition to address a party’s electronic information systems—that there
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`is a strong reasons to take such depositions early in the case, and in such circumstances it could
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`readily be counterproductive for that early and narrow deposition to foreclose a later deposition
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`addressed to the merits of the case.”).
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`Second, for similar reasons, PACT should be required to produce Mr. Vorbach for
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`deposition in his personal capacity at two different points during discovery (within the 14-hour
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`limit). PACT’s burden objection should be rejected, particularly given existing protections in the
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`Scheduling Order against “unnecessary duplication” of 30(b)(1) and 30(b)(6) testimony. PACT
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`filed this 12-patent lawsuit, accusing practically every Intel processor of infringement, with its
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`employees living in Europe. PACT is a licensing/enforcement company, and PACT’s
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`employees’ job duties thus involve litigating this case. Considering the importance of the issues
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`and the amount in controversy, Intel’s request for non-consecutive deposition days is
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`proportional to the needs of the case. Indeed, Intel offered to be flexible and accommodate dates
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`and locations for PACT’s witnesses.
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`Undoubtedly, PACT will demand that Intel produce numerous employees for deposition
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`so that PACT may attempt to develop its sweeping claims. Intel asks for a modicum of
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`reciprocity in discovery to defend itself against PACT’s claims.
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`Case 1:19-cv-01006-JDW Document 54 Filed 01/03/20 Page 7 of 8 PageID #: 1798
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`MORRIS NICHOLS ARSHT & TUNNELL LLP
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`/s/ Brian P. Egan
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`Jack B. Blumenfeld (#1014)
`Brian P. Egan (#6227)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@mnat.com
`began@mnat.com
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`Attorneys for Defendant
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`OF COUNSEL:
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`Gregory S. Arovas P. C.
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`(212) 446-4800
`
`Adam R. Alper
`Brandon H. Brown
`KIRKLAND & ELLIS LLP
`555 California Street, Suite 2700
`San Francisco, CA 94104
`(415) 439-1400
`
`Michael W. De Vries
`Christopher M. Lawless
`Sharre Lotfollahi
`Allison W. Buchner
`Kevin Bendix
`JB Schiller
`Mark D. Fahey
`KIRKLAND & ELLIS LLP
`333 South Hope Street
`Los Angeles, CA 90071
`(213) 680-8400
`
`January 3, 2020
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`Case 1:19-cv-01006-JDW Document 54 Filed 01/03/20 Page 8 of 8 PageID #: 1799
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`CERTIFICATE OF SERVICE
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`I hereby certify that on January 3, 2020, I caused the foregoing to be electronically filed
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`with the Clerk of the Court using CM/ECF, which will send notification of such filing to all
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`registered participants.
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`I further certify that I caused copies of the foregoing document to be served on January 3,
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`2020, upon the following in the manner indicated:
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`Brian E. Farnan, Esquire
`Michael J. Farnan, Esquire
`FARNAN LLP
`919 North Market Street, 12th Floor
`Wilmington, DE 19801
`Attorneys for Plaintiff
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`Frederick A. Lorig, Esquire
`Danielle L. Gilmore, Esquire
`Pushkal Mishra, Esquire
`Nima Hefazi, Esquire
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`865 South Figueroa Street, 10th Floor
`Los Angeles, CA 90017
`Attorneys for Plaintiff
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`Mark Tung, Esquire
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`555 Twin Dolphin Drive, 5th Floor
`Redwood Shores, CA 94065
`Attorneys for Plaintiff
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`Ziyong Li, Esquire
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`Attorneys for Plaintiff
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`/s/ Brian P. Egan
`__________________________
`Brian P. Egan (#6227)
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