Case 6:20-cv-01214-ADA Document 58 Filed 03/04/22 Page 1 of 9
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`Civil Action No.: 6:20-cv-1210-ADA
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`JURY TRIAL DEMANDED
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`PATENT CASE
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`Civil Action No.: 6:20-cv-01211-ADA
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`JURY TRIAL DEMANDED
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`PATENT CASE
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`Civil Action No.: 6:20-cv-1212-ADA
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`JURY TRIAL DEMANDED
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`PATENT CASE
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`Ocean Semiconductor LLC,
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`MediaTek Inc. and MediaTek USA Inc.
`(“MediaTek”),
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`v.
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`Plaintiff
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`Defendants.
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`Ocean Semiconductor LLC,
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`NVIDIA Corporation,
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`Plaintiff
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`Defendant.
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`v.
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`Ocean Semiconductor LLC,
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`NXP USA, Inc.
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`Plaintiff
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`Defendants.
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`v.
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`Case 6:20-cv-01214-ADA Document 58 Filed 03/04/22 Page 2 of 9
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`Civil Action No.: 6:20-cv-1213-ADA
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`JURY TRIAL DEMANDED
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`PATENT CASE
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`Civil Action No.: 6:20-cv-1214-ADA
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`JURY TRIAL DEMANDED
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`PATENT CASE
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`Civil Action No.: 6:20-cv-1215-ADA
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`JURY TRIAL DEMANDED
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`PATENT CASE
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`Ocean Semiconductor LLC,
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`Renesas Electronics Corporation and Renesas
`Electronics America, Inc.,
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`v.
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`Plaintiff
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`Defendants.
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`Ocean Semiconductor LLC,
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`Silicon Laboratories Inc.,
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`Plaintiff
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`Defendant.
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`v.
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`Ocean Semiconductor LLC,
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`STMicroelectronics, Inc.,
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`Plaintiff
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`Defendant.
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`v.
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`Case 6:20-cv-01214-ADA Document 58 Filed 03/04/22 Page 3 of 9
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`Ocean Semiconductor LLC,
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`Western Digital Technologies, Inc.
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`v.
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`Plaintiff
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`Defendant.
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`Civil Action No.: 6:20-cv-1216-ADA
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`JURY TRIAL DEMANDED
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`PATENT CASE
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`PLAINTIFF OCEAN SEMICONDUCTOR LLC’S
`UNOPPOSED MOTION FOR ISSUANCE OF LETTERS ROGATORY
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`Pursuant to Federal Rule of Civil Procedure 4(h)(2) and 4(f)(2)(B), and the Consular
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`Convention between Japan and the United States of America, Plaintiff Ocean Semiconductor
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`LLC (“Ocean”) respectfully requests that this Court issue Letters Rogatory in the form attached
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`hereto as Exhibit A to the addressed to the appropriate Central Authority for Japan, compelling
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`the production of documents and testimony from third party Kioxia Corporation (“Kioxia”).
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`Ocean brings this motion in order to obtain relevant evidence not available to it by any other
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`means. Defendants were contacted about the substance of this Motion and stated that they do not
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`oppose. A Proposed Order has been submitted in connection with the present motion.
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`I.
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`BACKGROUND
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`Following the opening of discovery in the above-captioned cases on December 9, 2021,
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`Ocean promptly served subpoenas in each of the seven captioned actions containing identical
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`requests for production and deposition topics (“Discovery Requests”) to Kioxia’s subsidiary
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`Kioxia America, Inc. (“Kioxia America”) on December 22, 2021. (Ex. B.)1 After receiving a
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`1 Exhibits B, E and G are the Subpoenas served on Kioxia America and Exhibit H is the
`Responses and Objections served by Kioxia America in case No. 6:20-cv-1210-ADA.
`Substantively identical subpoenas and responses were served in cases No. 6:20-cv-1211-ADA,
`1
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`Case 6:20-cv-01214-ADA Document 58 Filed 03/04/22 Page 4 of 9
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`requested extension of its deadline to respond until January 14, 2022, Kioxia America filed
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`motions to quash the subpoenas in the Northern District of California on January 13, 2022.
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`(Ex. C.)2 In response, Ocean withdrew its subpoenas and Kioxia America withdrew its motions
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`on January 18, 2022. (Ex. D.) Ocean subsequently served amended subpoenas in each of the
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`actions on counsel for Kioxia America on January that addressed the grounds for Kioxia’s
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`withdrawn motions to quash. (Ex. E.) Nevertheless, Kioxia’s counsel responded that, based on
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`the content of the amended subpoenas, “we presume you intend to stand by your overreaching
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`demands” and that “[i]f that is the case, we will refile our motions to quash.” (Ex. F.)
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`In response, Ocean narrowed the definitions in the Amended Subpoena and reduced the
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`number of Requests for Production (“RFPs”) by half, from forty-four to twenty-two in a second
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`set of amended subpoenas (the “Subpoenas”) served on January 26, 2022. (Ex. G.) Kioxia
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`America served Responses and Objections to the Subpoenas on February 16, 2022. (Ex. H.)
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`To each of the RFPs, Kioxia America responded that it “has no documents responsive to this
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`request in its possession, custody, or control.” (Id.)
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`As set forth in the Complaints filed in the above-captioned Actions (see, e.g., Docket
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`No. 1 in case No. 6:20-cv-1216-ADA at ¶¶ 7-19), Ocean has reason to believe that Kioxia is in
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`possession of information that is relevant to Ocean’s claims of infringement under 35 U.S.C. §
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`271(g). Accordingly, Ocean respectfully requests that the Court issue Letters of Request
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`seeking to compel Kioxia to produce all documents that are responsive to Ocean’s requests for
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`production, and a witness to testify on each of the deposition topics, as set forth in Exhibit A.
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`No. 6:20-cv-1212-ADA, No. 6:20-cv-1213-ADA, No. 6:20-cv-1214-ADA, No. 6:20-cv-1215-
`ADA, and No. 6:20-cv-1216-ADA.
`2 Exhibits C and D are, respectively, the motion to quash and its withdrawal of that motion
`related to the subpoena issued in case No. 6:20-cv-1210-ADA. Substantively identical motions
`and withdrawals were filed for the subpoenas issued in the other six cases.
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`Case 6:20-cv-01214-ADA Document 58 Filed 03/04/22 Page 5 of 9
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`II.
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`ARGUMENT
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`“Federal courts may issue letters rogatory to foreign tribunals, agencies, or officers in
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`order to seek ‘assistance in the production of evidence located in the foreign country.”
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`Blitzsafe Tex. v. Jaguar Land Rover, No. 2:17-CV-00424-JRG, 2019 U.S. Dist. LEXIS
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`240026, at *2 (quoting United States v. El-Mezain, 664 F.3d 467, 516-17 (5th Cir. 2011), as
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`revised (Dec. 27, 2011)). Federal courts have “inherent power” to issue letters rogatory. Nat.
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`Gas Pipeline Co. of Am. v. Energy Gathering, Inc., 2 F.3d 1397, 1408 (5th Cir. 1993); accord
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`28 U.S.C. § 1781. In the Fifth Circuit, “[t]he decision to issue a letter rogatory is . . . entrusted
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`to the sound discretion of the district court . . . .” El-Mezain, 664 F.3d at 517. Further, there
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`“must be a ‘good reason’ to deny a request for letters rogatory, at least when the request is
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`made pursuant to Fed. R. Civ. P. 28(b).” Triump Aerostructures v. Comau, Inc., No. 3:14-cv-
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`2329-L, 2015 U.S. Dist. LEXIS 125347, at *8 (N.D. Tex. Sep. 18, 2015) (internal citations
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`omitted); see also id. at *9 (stating that letters rogatory or letters of request should be
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`consistent with Rule 26(b)(1)).
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`Ocean’s Discovery Requests are within the scope of discovery as defined by Rule 26.
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`Specifically, they narrowly seek information relating to Kioxia’s use of certain manufacturing
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`tools, systems, platforms, software and equipment used to manufacture or fabricate integrated
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`circuits (including all of the infringing products) on behalf of MediaTek Inc., MediaTek USA
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`Inc., NVIDIA Corporation, NXP USA, Inc., Renesas Electronics Corporation, Renesas
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`Electronics America, Inc., STMicroelectronics, Inc., Silicon Laboratories Inc. and Western
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`Digital Technologies, Inc.—all of whom are defendants in the above-captioned actions before
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`this Court ("Defendants").
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`The requests and topics also seek information related to: (a) Kioxia’s business
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`Case 6:20-cv-01214-ADA Document 58 Filed 03/04/22 Page 6 of 9
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`relationships with both Defendants and the manufacturers of the infringing tools; (b) sale of
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`infringing instrumentalities; and (c) importation of infringing instrumentalities into the United
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`States. All of this information is directly relevant to Ocean’s claims of infringement under 35
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`U.S.C. § 271(g).
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`The requests for production also seek information related to: (a) Defendants’ control
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`over Kioxia with respect to Kioxia’s manufacture of integrated circuits, including all
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`infringing products, for Defendants; (b) knowledge of the patents at issue in these cases; (c)
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`agreement to be indemnified or to indemnify Defendants or manufacturers of infringing, tools,
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`systems, platforms, software and equipment with respect to infringement of the patents at issue
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`in these cases; and (d) information on production costs and sales volume of infringing
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`integrated circuits. All of these topics are also relevant to Ocean’s claims of indirect
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`infringement and to the calculation of reasonable damages.
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`There are no alternative means of obtaining the requested information from Kioxia as
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`Kioxia America has responded to each RFP in the Subpoenas that it “has no documents
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`responsive to this request in its possession, custody, or control.” (Ex. F.) Based on Kioxia
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`America’s stated inability to produce any of the categories of documents sought, even when
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`presented with a narrowed version of the original subpoena, there are no alternative means of
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`obtaining the discovery that Ocean seeks. This is particularly true where no Defendant has
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`acknowledged that it possesses information relating to Kioxia’s use of certain manufacturing
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`tools, systems, platforms, software and equipment for manufacturing or fabricating any of
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`Defendants’ infringing products. (See, e.g. Ex. G, Defendant Western Digital Technologies
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`Inc.’s Objections and Responses to Plaintiff’s First Set of Requests for Production at 22-23:
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`“Due to the overbreadth of Plaintiff’s definition of “Infringing Instrumentalities,” which
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`Case 6:20-cv-01214-ADA Document 58 Filed 03/04/22 Page 7 of 9
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`specifically identifies by name more than fifty products and by its terms likely covers
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`additional, unspecified products, WDT is still investigating which products were manufactured
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`using a process that incorporates any one of the tools specifically named in the Complaint and
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`Preliminary Infringement Contentions and were sold in the United States during the relevant
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`time period.”)
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`The requests for production and deposition topics in Attachment A are substantially the
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`same as those in the Subpoenas that Ocean previously served on Kioxia America and represent
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`a good-faith attempt to reduce any burden that responding might place on Kioxia.
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`Ocean respectfully requests that the Court return: (a) the original copy of the signed and
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`issued Letters Rogatory; and (b) one certified copy to the undersigned counsel. Ocean will
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`transmit the issued Letters Rogatory to the United States Department of State to oversee
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`transmission of the Letters Rogatory to Taiwan through diplomatic channels as provided in 28
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`U.S.C. § 1781(a)(2).
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`III. CONCLUSION
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`The Court should issue an order issuing Letters Rogatory directed to the appropriate
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`Central Authority of Japan. The information sought through this Motion and Letters
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`Rogatory is within the scope of discovery and is necessary for Ocean properly to prosecute its
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`claims in the above-captioned actions.
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`Case 6:20-cv-01214-ADA Document 58 Filed 03/04/22 Page 8 of 9
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`Dated: March 4, 2022
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`/s/ Alex Chan
`Timothy Devlin
`tdevlin@devlinlawfirm.com   
`Henrik D. Parker
`hparker@devlinlawfirm.com
`Alex Chan (State Bar No. 24108051)
`achan@devlinlawfirm.com   
`DEVLIN LAW FIRM LLC 
`1526 Gilpin Avenue 
`Wilmington, Delaware 19806 
`Telephone: (302) 449-9010 
`Facsimile: (302) 353-4251 
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`Attorneys for Plaintiff
`Ocean Semiconductor LLC 
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`CERTIFICATE OF CONFERENCE
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`Pursuant to Local Rule CV-7(G), the undersigned hereby certifies that counsel for
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`Plaintiff contacted counsel for each of the Defendants and was informed that the Defendants
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`do not oppose the relief sought in this Motion.
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` /s/ Alex Chan
`Alex Chan
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`Case 6:20-cv-01214-ADA Document 58 Filed 03/04/22 Page 9 of 9
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on March 4, 2022, all counsel of record who are
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`deemed to have consented to electronic service are being served with a copy of this document
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`via the Court’s CM/ECF system per Local Rule CV-5(a).
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` /s/ Alex Chan
`Alex Chan
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