Case 6:20-cv-01215-ADA Document 60 Filed 03/04/22 Page 1 of 9
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`
`Civil Action No.: 6:20-cv-1210-ADA
`
`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
`
`JURY TRIAL DEMANDED
`
`PATENT CASE
`
`
`Ocean Semiconductor LLC,
`
`
`
`
`
`MediaTek Inc. and MediaTek USA Inc.
`(“MediaTek”),
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`Plaintiff
`
`Defendants.
`
`
`Ocean Semiconductor LLC,
`
`
`
`
`
`NVIDIA Corporation,
`
`
`
`Plaintiff
`
`Defendant.
`
`
`
`v.
`
`
`
`
`
`
`
`
`Ocean Semiconductor LLC,
`
`
`
`
`
`NXP USA, Inc.
`
`
`
`Plaintiff
`
`Defendants.
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 6:20-cv-01215-ADA Document 60 Filed 03/04/22 Page 2 of 9
`
`
`
`Civil Action No.: 6:20-cv-1213-ADA
`
`JURY TRIAL DEMANDED
`
`PATENT CASE
`
`
`
`Civil Action No.: 6:20-cv-1214-ADA
`
`JURY TRIAL DEMANDED
`
`PATENT CASE
`
`
`
`Civil Action No.: 6:20-cv-1215-ADA
`
`JURY TRIAL DEMANDED
`
`PATENT CASE
`
`
`Ocean Semiconductor LLC,
`
`
`
`
`
`Renesas Electronics Corporation and Renesas
`Electronics America, Inc.,
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`Plaintiff
`
`Defendants.
`
`
`Ocean Semiconductor LLC,
`
`
`
`
`
`Silicon Laboratories Inc.,
`
`
`
`Plaintiff
`
`Defendant.
`
`
`
`v.
`
`
`
`
`
`
`
`
`Ocean Semiconductor LLC,
`
`
`
`
`
`STMicroelectronics, Inc.,
`
`
`
`Plaintiff
`
`Defendant.
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 6:20-cv-01215-ADA Document 60 Filed 03/04/22 Page 3 of 9
`
`
`Ocean Semiconductor LLC,
`
`
`
`
`
`Western Digital Technologies, Inc.
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`Plaintiff
`
`Defendant.
`
`
`
`Civil Action No.: 6:20-cv-1216-ADA
`
`JURY TRIAL DEMANDED
`
`PATENT CASE
`
`
`
`PLAINTIFF OCEAN SEMICONDUCTOR LLC’S
`UNOPPOSED MOTION FOR ISSUANCE OF LETTERS ROGATORY
`
`Pursuant to Federal Rule of Civil Procedure 4(h)(2) and 4(f)(2)(B), and the Consular
`
`Convention between Japan and the United States of America, Plaintiff Ocean Semiconductor
`
`LLC (“Ocean”) respectfully requests that this Court issue Letters Rogatory in the form attached
`
`hereto as Exhibit A to the addressed to the appropriate Central Authority for Japan, compelling
`
`the production of documents and testimony from third party Kioxia Corporation (“Kioxia”).
`
`Ocean brings this motion in order to obtain relevant evidence not available to it by any other
`
`means. Defendants were contacted about the substance of this Motion and stated that they do not
`
`oppose. A Proposed Order has been submitted in connection with the present motion.
`
`I.
`
`BACKGROUND
`
`Following the opening of discovery in the above-captioned cases on December 9, 2021,
`
`Ocean promptly served subpoenas in each of the seven captioned actions containing identical
`
`requests for production and deposition topics (“Discovery Requests”) to Kioxia’s subsidiary
`
`Kioxia America, Inc. (“Kioxia America”) on December 22, 2021. (Ex. B.)1 After receiving a
`
`
`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
`
`
`
`

`

`Case 6:20-cv-01215-ADA Document 60 Filed 03/04/22 Page 4 of 9
`
`requested extension of its deadline to respond until January 14, 2022, Kioxia America filed
`
`motions to quash the subpoenas in the Northern District of California on January 13, 2022.
`
`(Ex. C.)2 In response, Ocean withdrew its subpoenas and Kioxia America withdrew its motions
`
`on January 18, 2022. (Ex. D.) Ocean subsequently served amended subpoenas in each of the
`
`actions on counsel for Kioxia America on January that addressed the grounds for Kioxia’s
`
`withdrawn motions to quash. (Ex. E.) Nevertheless, Kioxia’s counsel responded that, based on
`
`the content of the amended subpoenas, “we presume you intend to stand by your overreaching
`
`demands” and that “[i]f that is the case, we will refile our motions to quash.” (Ex. F.)
`
`In response, Ocean narrowed the definitions in the Amended Subpoena and reduced the
`
`number of Requests for Production (“RFPs”) by half, from forty-four to twenty-two in a second
`
`set of amended subpoenas (the “Subpoenas”) served on January 26, 2022. (Ex. G.) Kioxia
`
`America served Responses and Objections to the Subpoenas on February 16, 2022. (Ex. H.)
`
`To each of the RFPs, Kioxia America responded that it “has no documents responsive to this
`
`request in its possession, custody, or control.” (Id.)
`
`As set forth in the Complaints filed in the above-captioned Actions (see, e.g., Docket
`
`No. 1 in case No. 6:20-cv-1216-ADA at ¶¶ 7-19), Ocean has reason to believe that Kioxia is in
`
`possession of information that is relevant to Ocean’s claims of infringement under 35 U.S.C. §
`
`271(g). Accordingly, Ocean respectfully requests that the Court issue Letters of Request
`
`seeking to compel Kioxia to produce all documents that are responsive to Ocean’s requests for
`
`production, and a witness to testify on each of the deposition topics, as set forth in Exhibit A.
`
`
`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.
`2
`
`
`
`

`

`Case 6:20-cv-01215-ADA Document 60 Filed 03/04/22 Page 5 of 9
`
`II.
`
`ARGUMENT
`
`“Federal courts may issue letters rogatory to foreign tribunals, agencies, or officers in
`
`order to seek ‘assistance in the production of evidence located in the foreign country.”
`
`Blitzsafe Tex. v. Jaguar Land Rover, No. 2:17-CV-00424-JRG, 2019 U.S. Dist. LEXIS
`
`240026, at *2 (quoting United States v. El-Mezain, 664 F.3d 467, 516-17 (5th Cir. 2011), as
`
`revised (Dec. 27, 2011)). Federal courts have “inherent power” to issue letters rogatory. Nat.
`
`Gas Pipeline Co. of Am. v. Energy Gathering, Inc., 2 F.3d 1397, 1408 (5th Cir. 1993); accord
`
`28 U.S.C. § 1781. In the Fifth Circuit, “[t]he decision to issue a letter rogatory is . . . entrusted
`
`to the sound discretion of the district court . . . .” El-Mezain, 664 F.3d at 517. Further, there
`
`“must be a ‘good reason’ to deny a request for letters rogatory, at least when the request is
`
`made pursuant to Fed. R. Civ. P. 28(b).” Triump Aerostructures v. Comau, Inc., No. 3:14-cv-
`
`2329-L, 2015 U.S. Dist. LEXIS 125347, at *8 (N.D. Tex. Sep. 18, 2015) (internal citations
`
`omitted); see also id. at *9 (stating that letters rogatory or letters of request should be
`
`consistent with Rule 26(b)(1)).
`
`Ocean’s Discovery Requests are within the scope of discovery as defined by Rule 26.
`
`Specifically, they narrowly seek information relating to Kioxia’s use of certain manufacturing
`
`tools, systems, platforms, software and equipment used to manufacture or fabricate integrated
`
`circuits (including all of the infringing products) on behalf of MediaTek Inc., MediaTek USA
`
`Inc., NVIDIA Corporation, NXP USA, Inc., Renesas Electronics Corporation, Renesas
`
`Electronics America, Inc., STMicroelectronics, Inc., Silicon Laboratories Inc. and Western
`
`Digital Technologies, Inc.—all of whom are defendants in the above-captioned actions before
`
`this Court ("Defendants").
`
`The requests and topics also seek information related to: (a) Kioxia’s business
`
`
`
`3
`
`

`

`Case 6:20-cv-01215-ADA Document 60 Filed 03/04/22 Page 6 of 9
`
`relationships with both Defendants and the manufacturers of the infringing tools; (b) sale of
`
`infringing instrumentalities; and (c) importation of infringing instrumentalities into the United
`
`States. All of this information is directly relevant to Ocean’s claims of infringement under 35
`
`U.S.C. § 271(g).
`
`The requests for production also seek information related to: (a) Defendants’ control
`
`over Kioxia with respect to Kioxia’s manufacture of integrated circuits, including all
`
`infringing products, for Defendants; (b) knowledge of the patents at issue in these cases; (c)
`
`agreement to be indemnified or to indemnify Defendants or manufacturers of infringing, tools,
`
`systems, platforms, software and equipment with respect to infringement of the patents at issue
`
`in these cases; and (d) information on production costs and sales volume of infringing
`
`integrated circuits. All of these topics are also relevant to Ocean’s claims of indirect
`
`infringement and to the calculation of reasonable damages.
`
`There are no alternative means of obtaining the requested information from Kioxia as
`
`Kioxia America has responded to each RFP in the Subpoenas that it “has no documents
`
`responsive to this request in its possession, custody, or control.” (Ex. F.) Based on Kioxia
`
`America’s stated inability to produce any of the categories of documents sought, even when
`
`presented with a narrowed version of the original subpoena, there are no alternative means of
`
`obtaining the discovery that Ocean seeks. This is particularly true where no Defendant has
`
`acknowledged that it possesses information relating to Kioxia’s use of certain manufacturing
`
`tools, systems, platforms, software and equipment for manufacturing or fabricating any of
`
`Defendants’ infringing products. (See, e.g. Ex. G, Defendant Western Digital Technologies
`
`Inc.’s Objections and Responses to Plaintiff’s First Set of Requests for Production at 22-23:
`
`“Due to the overbreadth of Plaintiff’s definition of “Infringing Instrumentalities,” which
`
`
`
`4
`
`

`

`Case 6:20-cv-01215-ADA Document 60 Filed 03/04/22 Page 7 of 9
`
`specifically identifies by name more than fifty products and by its terms likely covers
`
`additional, unspecified products, WDT is still investigating which products were manufactured
`
`using a process that incorporates any one of the tools specifically named in the Complaint and
`
`Preliminary Infringement Contentions and were sold in the United States during the relevant
`
`time period.”)
`
`The requests for production and deposition topics in Attachment A are substantially the
`
`same as those in the Subpoenas that Ocean previously served on Kioxia America and represent
`
`a good-faith attempt to reduce any burden that responding might place on Kioxia.
`
`Ocean respectfully requests that the Court return: (a) the original copy of the signed and
`
`issued Letters Rogatory; and (b) one certified copy to the undersigned counsel. Ocean will
`
`transmit the issued Letters Rogatory to the United States Department of State to oversee
`
`transmission of the Letters Rogatory to Taiwan through diplomatic channels as provided in 28
`
`U.S.C. § 1781(a)(2).
`
`III. CONCLUSION
`
`The Court should issue an order issuing Letters Rogatory directed to the appropriate
`
`Central Authority of Japan. The information sought through this Motion and Letters
`
`Rogatory is within the scope of discovery and is necessary for Ocean properly to prosecute its
`
`claims in the above-captioned actions.
`
`
`
`5
`
`

`

`Case 6:20-cv-01215-ADA Document 60 Filed 03/04/22 Page 8 of 9
`
`Dated: March 4, 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 
`  
`Attorneys for Plaintiff
`Ocean Semiconductor LLC 
`
`
`
`
`
`
`
`CERTIFICATE OF CONFERENCE
`
`Pursuant to Local Rule CV-7(G), the undersigned hereby certifies that counsel for
`
`Plaintiff contacted counsel for each of the Defendants and was informed that the Defendants
`
`do not oppose the relief sought in this Motion.
`
` /s/ Alex Chan
`Alex Chan
`
`
`
`
`
`6
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 6:20-cv-01215-ADA Document 60 Filed 03/04/22 Page 9 of 9
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that, on March 4, 2022, all counsel of record who are
`
`deemed to have consented to electronic service are being served with a copy of this document
`
`via the Court’s CM/ECF system per Local Rule CV-5(a).
`
` /s/ Alex Chan
`Alex Chan
`
`
`
`7
`
`
`
`
`
`
`
`
`
`
`
`
`