Case 6:20-cv-01215-ADA Document 56 Filed 02/16/22 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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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
`
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`Civil Action No.: 6:20-cv-1210-ADA
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`JURY TRIAL DEMANDED
`
`PATENT CASE
`
`
`
`Civil Action No.: 6:20-cv-01211-ADA
`
`JURY TRIAL DEMANDED
`
`PATENT CASE
`
`
`
`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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`
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`Plaintiff
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`Defendant.
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`
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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-01215-ADA Document 56 Filed 02/16/22 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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`
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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-01215-ADA Document 56 Filed 02/16/22 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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`MOTION FOR ISSUANCE OF LETTERS ROGATORY
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`(UNOPPOSED BY SIX DEFENDANTS)
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`Pursuant to Federal Rule of Civil Procedure 4(h)(2) and 4(f)(2)(B), Plaintiff Ocean
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`Semiconductor LLC (“Ocean”) respectfully requests that this Court issue Letters Rogatory in the
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`form attached hereto as Exhibit A to the addressed to the Appropriate Judicial Authority of
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`Taiwan, compelling the production of documents and testimony from third party United
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`Microelectronics Corporation (“UMC”). Ocean brings this motion in order to obtain relevant
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`evidence not available to it by any other means.
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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 containing identical requests for production and deposition
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`topics (“Discovery Requests”) to both UMC and its U.S. subsidiary UMC Group (USA)
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`(“UMC USA”). (Ex. B.)1 After receiving a requested extension to its deadline to respond to
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`1 Exhibits B and E are the subpoenas served on UMC and Exhibits C and F are the responses
`served, respectively, by UMC USA and UMC in case No. 6:20-cv-1210-ADA. Identical
`subpoenas and responses were served in cases No. 6:20-cv-1211-ADA, 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.
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`1
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`Case 6:20-cv-01215-ADA Document 56 Filed 02/16/22 Page 4 of 9
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`Ocean’s Discovery Requests, UMC USA served responses and objections on January 14, 2022.
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`(Ex. C.) UMC USA responded to each request for production that it either had no non-
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`privileged, relevant, responsive documents or no documents that were not equally available
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`from parties to the above-captioned cases. (Id. at 12-82.)
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`After subpoenas were mailed to UMC via FedEx and Registered Mail, UMC’s counsel
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`sent a letter to Ocean’s counsel on January 21, 2022 stating that UMC had no duty to respond
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`to Ocean’s subpoenas but that UMC “would be willing to discuss producing documents
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`responsive to certain document requests in the subpoenas if Ocean is willing to significantly
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`narrow the scope of its requests.” (Ex. D.) After Ocean sent UMC’s counsel amended
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`subpoenas with a significantly reduced number (from forty-five to twenty-two) of requests for
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`production on January 27, 2022 (Ex. E), UMC served responses on Ocean on February 11,
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`2022 stating that it considered the subpoenas improper and would produce neither documents
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`nor a witness. (Ex. F.) Specifically, UMC identified Ocean’s “fail[ure] to request and obtain
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`issuance of a letter rogatory to the Appropriate Judicial Authority of Taiwan requesting their
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`assistance in serving and enforcing the Subpoena.” (Id. at 2.)
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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-1210-ADA at ¶¶ 8-19), Ocean has reason to believe that UMC 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 Rogatory
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`requesting that UMC be compelled to produce all documents that are responsive to Ocean’s
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`requests for production, and a witness to testify on each of the deposition topics, as set forth in
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`Exhibit A.
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`2
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`Case 6:20-cv-01215-ADA Document 56 Filed 02/16/22 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, CIVIL ACTION NO. 2:17-CV-00424-JRG, 2019 U.S.
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`Dist. LEXIS 240026, at *2 (quoting United States v. El-Mezain, 664 F.3d 467, 516-17 (5th
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`Cir. 2011), as revised (Dec. 27, 2011)). Federal courts have “inherent power” to issue letters
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`rogatory. Nat. Gas Pipeline Co. of Am. v. Energy Gathering, Inc., 2 F.3d 1397, 1408 (5th Cir.
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`1993); accord 28 U.S.C. § 1781. In the Fifth Circuit, “[t]he decision to issue a letter rogatory
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`is . . . entrusted to the sound discretion of the district court . . . .” El-Mezain, 664 F.3d at 517.
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`Further, there “must be a ‘good reason’ to deny a request for letters rogatory, at least when the
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`request is made pursuant to Fed. R. Civ. P. 28(b).” Triump Aerostructures v. Comau, Inc., No.
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`3:14-cv-2329-L, 2015 U.S. Dist. LEXIS 125347, at *8 (N.D. Tex. Sep. 18, 2015) (internal
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`citations 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 UMC’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 UMC’s business relationships
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`3
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`Case 6:20-cv-01215-ADA Document 56 Filed 02/16/22 Page 6 of 9
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`with Defendants and the manufacturers of the infringing tools, sale of infringing
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`instrumentalities, and importation of infringing instrumentalities into the United States. All of
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`this information is directly relevant to Ocean’s claim of infringement under 35 U.S.C. §
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`271(g).
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`The requests for production also seek information related to Defendants’ control over
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`UMC with respect to its manufacture of integrated circuits, including all infringing products,
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`for Defendants, knowledge of the patents at issue in these cases, agreement to be indemnified
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`or to indemnify Defendants or manufacturers of infringing, tools, systems, platforms, software
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`and equipment with respect to infringement of the patents at issue in these cases, and
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`information on production costs and sales volume of infringing integrated circuits. All of
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`these topics are relevant to Ocean’s claims of indirect infringement and to the calculation of
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`reasonable damages.
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`There are no alternative means of obtaining the requested information from UMC as
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`UMC USA has responded either that “it has no relevant, non-privileged responsive
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`documents” (e.g., Ex. C at 23) or that “it has no non-privileged, relevant, responsive
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`documents that would not also be available from one or more parties to the underlying action.”
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`e.g., id. at 29). Based on UMC USA’s stated inability to produce any of the categories of
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`documents sought and refusal to produce others, as well as UMC’s repeated refusals to
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`produce any documents (Exs. D, F), even when presented with a narrowed version of the
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`original subpoena, there are no alternative means of obtaining the discovery it seeks. This is
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`particularly true where no Defendant has acknowledged that it possesses information relating
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`to UMC’s use of certain manufacturing tools, systems, platforms, software and equipment for
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`manufacturing or fabricating any of Defendants’ infringing products. (See, e.g. Ex. G,
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`4
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`Case 6:20-cv-01215-ADA Document 56 Filed 02/16/22 Page 7 of 9
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`Defendant MediaTek’s Responses to Plaintiff’s First Set of Requests for Production of
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`Documents at 13: “MediaTek is unable to identify products pursuant to Request for Production
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`No. 1 because it does not manufacture, fabricate, or assemble any product itself, nor does it
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`have knowledge as to what equipment is involved in the manufacturing, fabrication, or
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`assembly of its products.”)
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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 amended subpoena that Ocean previously conveyed to UMC and
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`represent a good-faith attempt to reduce any burden that responding might place on UMC.
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`The definitions have been further narrowed. Moreover, UMC has specifically indicated that
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`this information should be sought via Letters Rogatory. (Ex. F at 2.)
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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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`Judicial Authority of Taiwan. The information sought through this Motion and Letters
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`Rogatory is within the scope of discovery and necessary for Ocean to prosecute its claims in
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`the above-captioned actions.
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`5
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`Case 6:20-cv-01215-ADA Document 56 Filed 02/16/22 Page 8 of 9
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`Dated: February 16, 2022
`
`/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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`Case 6:20-cv-01215-ADA Document 56 Filed 02/16/22 Page 9 of 9
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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 Defendants MediaTek Inc. and MediaTek USA Inc, NVIDIA
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`Corporation, NXP USA, Inc., Renesas Electronics Corporation and Renesas Electronics
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`America, Inc., Silicon Laboratories Inc., and STMicroelectronics, Inc. and received
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`confirmation that they do not oppose this Motion. Counsel for Plaintiff also contacted counsel
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`for Western Digital Technologies, Inc. regarding this motion. After repeated requests, as of
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`this filing, Western Digital Technologies, Inc. has not expressed whether or not it opposes this
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`motion.
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` /s/ Alex Chan
`Alex Chan
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on February 16, 2022, all counsel of record who
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`are deemed to have consented to electronic service are being served with a copy of this
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`document 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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