Case 1:21-cv-00044-ADA Document 30 Filed 04/20/21 Page 1 of 5
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`FINTIV, INC.
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`v.
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`Movant,
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`STMICROELECTRONICS, INC.,
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`Respondent.
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`NO. 1:21-CV-00044-ADA
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`ORDER
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`Before the Court is Fintiv, Inc.’s Expedited Motion to Compel Compliance with
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`Subpoena Directed to Non-Party STMicroelectronics, Inc. (Dkt. No. 1). STMicroelectronics
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`filed a response (Dkt. No. 17), and included a request for fees under Fed. R. Civ. P. 45(d)(1) and
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`Fed. R. Civ. P. 37(a)(5)(B) (Dkt. No. 17 at 15). Fintiv filed a reply (Dkt. No. 22). The Court held
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`a telephonic hearing on January 26, 2021. Having considered the pleadings and counsels’
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`argument, and for the reasons set forth below, the Court finds that Fintiv’s motion should be
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`denied, and that under the specific facts of this case STMicroelectronics should recover its
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`reasonable attorney’s fees and costs incurred in opposing the motion.
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`Fintiv’s subpoena sought information that is not relevant to its suit against Apple. Under
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`Rule 26(b)(1), “[p]arties may obtain discovery regarding any nonprivileged matter that is
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`relevant to any party’s claim or defense and proportional to the needs of the case.” Fed. R. Civ.
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`P. 26(b)(1) (emphasis added). In the underlying action,1 Fintiv accuses Apple of infringing U.S.
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`1 Fintiv, Inc. v. Apple, Inc., Case No. 1:19-cv-01238-ADA (W.D. Tex.).
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`Case 1:21-cv-00044-ADA Document 30 Filed 04/20/21 Page 2 of 5
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`Patent No. 8,843,125. The accused technology is the mobile-wallet functionality on Apple
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`devices, including what is referred to as Near Field Communication (NFC) technology. As
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`discussed below, from the beginning of the underlying action through discovery in that action,
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`and even during briefing and hearing in the current action, no evidence has shown that Apple’s
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`accused functionality uses chips from STMicroelectronics,.
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`At the August 29, 2019 hearing on Apple’s venue-transfer motion in the underlying
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`action, Mr. Ravel, counsel for Apple, made it clear that “STMicroelectronics does not supply any
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`NFC secure element chip or controller used by Apple Pay, Apple Wallet”:2
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`During discovery in the underlying case—which was substantially completed before
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`Fintiv filed its motion to compel STMicroelectronics in December 2020—Fintiv did not uncover
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`any evidence to the contrary. During briefing on this motion, Fintiv admitted that “[t]he answers
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`and productions from Apple have not indicated that ST is providing the microchips at issue
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`here.”3 At the hearing in this action, Fintiv initially represented that “STMicroelectronics
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`manufactures secure elements for the phones that are accused products in this case.”4
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`STMicroelectroinics responded that “Apple has consistently told Fintiv that Apple does not use
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`2 Fintiv, Inc. v. Apple, Inc., Case No. 1:19-cv-01238-ADA, Dkt. No. 66, August 29, 2019 Venue Transfer Motion
`Hearing Transcript at 59.
`3 Dkt. No. 22 at 1.
`4 Dkt. No. 27 at 4.
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`Case 1:21-cv-00044-ADA Document 30 Filed 04/20/21 Page 3 of 5
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`the ST chips that would be at issue in this case.”5 The Court asked Fintiv “Do you have any
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`evidence from someone at Apple that you deposed that – either that STMicroelectronics does
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`supply anything to do with the NFC secure element or controller or anything that’s relevant to
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`your infringement case that is used by Apple Pay or Apple Wallet?”6 Fintiv responded that “No.
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`We do not.”7
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`Fintiv’s briefing points to a September 2018 website article that mentions
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`STMicroelectronics and Apple in the same article, but the article states that NXP—not
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`STMicroelectronics—provides the NFC chips in question. Fintiv had ample opportunity through
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`discovery of Apple to investigate the statements made in that article and determine whether
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`STMicroelectronics had relevant information. Nevertheless, in its briefing and at the hearing,
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`Fintiv has admitted that, despite the discovery it conducted of Apple, it still has no evidence that
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`STMicrolectronics supplies anything relevant to Apple’s alleged infringement.8
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`Fintiv has failed to show that it is entitled to compel production from STMicroelectronics
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`in light of the factors set forth in Wiwa v. Royal Dutch Petroleum Co., 392 F.3d 812, 818 (5th
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`Cir. 2004). The Court therefore DENIES Fintiv’s motion to compel STMicroelectronics.
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`The Court is concerned about litigants issuing subpoenas to third parties without any
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`evidence that the third parties have information relevant to the litigants’ claims or defenses.
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`Courts are obligated to protect third parties from significant expense resulting from compliance.
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`Id. at 818 & n.32. This is particularly true when there is no indication that the third party has
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`relevant information.
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`5 Id. at 7.
`6 Id. at 10.
`7 Id.
`8 See, e.g., Dkt. No. 22 at 1; Dkt. No. 27 at 10.
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`Case 1:21-cv-00044-ADA Document 30 Filed 04/20/21 Page 4 of 5
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`Federal Rules of Civil Procedure 37(a)(5)(B) and 45(d)(1) make the award of fees
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`mandatory when denying a motion to compel under these circumstances. Rule 37(a)(5)(B)
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`provides that when a motion to compel is denied, the party opposing the motion is entitled to
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`recover its reasonable costs and attorney’s fees incurred in defending the motion, unless the
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`motion was “substantially justified” or “other circumstances make an award of expenses unjust.”
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`The United States Supreme Court has defined “substantially justified” to mean “justified in
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`substance or in the main—that is, justified to a degree that could satisfy a reasonable person.”
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`Pierce v. Underwood, 487 U.S. 552, 565 (1988) (internal quotation marks omitted). Here, given
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`that Fintiv was on notice in 2019 through Apple’s representation that STMicroelectronics did not
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`provide NFC chips to Apple, and Fintiv uncovered no evidence to the contrary after significant
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`discovery directly from Apple, the Court concludes that Fintiv’s motion was not substantially
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`justified.
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`Rule 45(d)(1) required Fintiv to “take reasonable steps to avoid imposing undue burden
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`or expense on” STMicroelectronics. That rule further requires the Court to enforce this duty:
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`“The court for the district where compliance is required must enforce this duty and impose an
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`appropriate sanction—which may include lost earnings and reasonable attorney’s fees—on a
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`party or attorney who fails to comply.” Fed. R. Civ. P. 45(d)(1). Here, Fintiv moved to compel
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`compliance with 100% of its subpoena, which asked for a broad range of technical and financial
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`documents regarding all chips STMicroelectronics provides to Apple, regardless of whether such
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`chips were relevant to the underlying case against Apple. The Court finds that Fintiv made no
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`effort to avoid imposing an undue burden on STMicroelectronics.
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`Therefore, the Court finds that STMicroelectronics should be awarded its reasonable
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`attorney’s fees and costs incurred in opposing Fintiv’s motion to compel. The Court prefers that
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`Case 1:21-cv-00044-ADA Document 30 Filed 04/20/21 Page 5 of 5
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`the Parties work together to agree on the appropriate amount of such award. No later than May
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`28, 2021, Counsel for STMicroelectronics is directed to either: (1) notify the Court of the amount
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`of attorney’s fees and costs agreed to by the Parties, and provide the Court with a proposed order
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`regarding such award; or (2) file under seal an affidavit, supported by relevant billing statements
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`and/or invoices, setting forth the specific amount of attorneys’ fees and costs STMicroelectronics
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`incurred in connection with its efforts to defend against Fintiv’s motion to compel.
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`Signed on April 20, 2021.
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