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`EXHIBIT C
`EXHIBIT C
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`Case 5:22-mc-80014-SVK Document 1 Filed 01/13/22 Page 1 of 11Case 6:20-cv-01215-ADA Document 60-4 Filed 03/04/22 Page 2 of 12
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`JARED D. SCHUETTENHELM (SBN 267885)
`jared.schuettenhelm@bracewell.com
`BRACEWELL LLP
`701 Fifth Avenue, Suite 6200
`Seattle, Washington 98104-7018
`+1.206.204.6200
`+1.800.404.3970
`
`Attorney for
`KIOXIA AMERICA, INC.
`
`
`
`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`IN RE SUBPOENAS FROM OCEAN
`SEMICONDUCTOR LLP
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`Misc. Case No.
`
`Action Currently Pending in the U.S.
`District Court for W.D. Texas (Case No.
`6:20-cv-01210-ADA)
`
`KIOXIA AMERICA, INC.’S NOTICE
`AND MOTION TO QUASH OCEAN
`SEMICONDUCTOR LLP’S
`SUBPOENA
`
`Date:
`Time:
`Place:
`
`
`NOTICE OF MOTION AND MOTION
`
`
`
`
`
`01/13/2022
`TBD
`TBD
`
`PLEASE TAKE NOTICE that on _____, 2022, at _____, before a Judge to be assigned by
`the Clerk’s Office, KIOXIA America, Inc. will, and hereby does, move for an Order granting its
`Motion to Quash Ocean Semiconductor LLP’s Subpoena To Testify at a Deposition in a Civil
`Action and produce documents.
`The Motion will be based on this Notice and Motion, the Memorandum of Points and
`Authorities below, the Declaration of Jared D. Schuettenhelm, Esq., all exhibits attached thereto, all
`other pleadings and documents on file in this matter, and any evidence as may be presented at any
`hearing on this Motion.
`
`CASE No.
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`MOTION TO QUASH
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`ISSUES TO BE DECIDED
`1. Whether to grant the motion to quash the document subpoena for violations of Fed.
`R. Civ. P. 45(a)(2), (d)(3)(ii), and (d)(3)(iv).
`2. Whether to grant the motion to quash the deposition subpoena for violations of Fed.
`R. Civ. P. 45(a)(2), (d)(3)(ii), and (d)(3)(iv).
`RELIEF REQUESTED
`
`Pursuant to Fed. R. Civ. P. 45(d)(3)(A), KIOXIA America, Inc. (“KAI”) respectfully
`requests that the Court quash the improper subpoena served by Ocean Semiconductor LLC
`(“Ocean”) seeking documents and testimony in support of its case against MediaTek, Inc. and
`Mediatek USA, Inc., currently pending in the Federal District Court for the Western District of
`Texas (Civil Action No. 6:20-cv-01210-ADA). As explained below, Ocean’s subpoena, on its face
`and by its terms, violates at least Fed. R. Civ. P. 45(d)(3)(A)(ii) and Fed. R. Civ. P. 45(d)(3)(A)(iv).
`KAI further requests that the Court enter an Order, as required by Fed. R. Civ. P. 45(d)(1), imposing
`an appropriate sanction against Ocean for its failure to take “reasonable steps to avoid imposing
`undue burden or expense” on third-party KAI in the form of an award of attorneys’ fees and costs.
`MEMORANDUM OF POINTS AND AUTHORITIES
`
`PRELIMINARY STATEMENT
`
`On December 30, 2021, Ocean served KAI with the subpoena that is the subject of this
`motion to quash, as well as seven other subpoenas (which are the subject of concurrently-filed
`motions to quash in this Court and a motion to relate pursuant to Local Rule 3-12), in connection
`with a series of patent infringement lawsuits that Ocean has filed in the Western and Eastern
`Districts of Texas. The subpoena must be quashed for two independent reasons set forth in Fed. R.
`Civ. P. 45(d)(3)(A).
`First, although KAI is a California corporation, headquartered in this District, and was
`served with the subpoena by Ocean in California, Ocean’s subpoena seeks the production of
`documents, as well as production of a witness for deposition, nearly 3,000 miles away at the office
`of Ocean’s counsel in the District of Delaware. This is a flagrant violation of the 100-mile limitation
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`MOTION TO QUASH
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`under Fed. R. Civ. P. 45(c)(1)(A) and (c)(2)(A) and a mandatory basis to quash the subpoena
`pursuant to Fed. R. Civ. P. 45(d)(3)(A)(ii).
`Second, as a third party with no interest or involvement in Ocean’s litigation campaign, KAI
`must be protected under the Federal Rules from “undue burden.” Here, the undue burden of Ocean’s
`subpoena is self-evident from Ocean’s 37-page demand, which seeks compliance by third-party
`KAI with 44 expansive requests for production regarding thousands of products accused in ten
`different underlying lawsuits (two of which are currently stayed), as well as other broad categories
`of information concerning KAI’s relationships with other third-parties. Ocean has further demanded
`that KAI provide deposition testimony on 11 similarly overbroad topics. The vast overreach of
`Ocean’s requests provides a wholly independent, and mandatory, basis under Fed. R. Civ. P.
`45(d)(3)(A)(iv) for quashing Ocean’s subpoena.
`FACTUAL BACKGROUND
`
`Ocean launched a litigation campaign, primarily in Texas and entirely outside this District,
`alleging patent infringement against fifteen defendants across ten lawsuits.1 In each lawsuit, Ocean
`asserts some combination of ten patents that it has acquired from third parties. With one exception,2
`Ocean’s cases are in the infancy of discovery3 and two cases are stayed pending inter partes review
`of Ocean’s patents.4
`KAI is a California company headquartered in San Jose, California, with no involvement in
`Ocean’s underlying litigation campaign. See Schuettenhelm Decl., ¶¶ 4-5, Exs. C and D. KAI is
`not a defendant or named party in any of Ocean’s ten lawsuits. See id. ¶ 4.
`
`
`1 Ocean’s cases are identified in the definition of “Actions” included with the subpoena.
`Schuettenhelm Decl., Ex. A, at A-2, Definition No. 6.
`2 The sole exception is Ocean Semiconductor LLC v. Huawei Device USA Inc., et al., No. 4:20-cv-
`991, pending in the Eastern District of Texas. In that case, a mere thirty-six documents have been
`filed with court and the discovery period closes on April 6, 2022 according to the current scheduling
`order. Id., Dkt. 22 (Aug. 3, 2021).
`3 See, e.g., Ocean Semiconductor LLC v. MediaTek Inc., et al., No. 6:20-cv-01210, Dkt. 32, (July
`15, 2021, W.D. Tex.) (fact discovery opens December 9, 2021; closes July 6, 2022).
`4 See Ocean Semiconductor LLC v. Analog Devices, Inc., No. 1:20-cv-12310, Dkt. 37 (Sept. 20,
`2021, D. Mass.) (granting stay prior to discovery); Ocean Semiconductor LLC v. Infineon Tech. AG,
`et al., No. 1:20-cv-12310, Dkt. 38 (Sept. 20, 2021, D. Mass.) (same).
`CASE No.
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`MOTION TO QUASH
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`On December 22, 2021, Ocean’s counsel caused eight subpoenas to be issued to KAI in
`connection with its lawsuits in the Western and Eastern District of Texas. See id. ¶ 2, Ex. A. Ocean
`then delayed service of those subpoenas, waiting until December 30, 2021, to effect service on KAI
`via its corporate agent in Glendale, California. See id., Ex. A. Each subpoena demanded document
`production by January 5, 2022, and a deposition on January 19, 2022. See id. The subpoenas each
`specified the office of Ocean’s counsel in Wilmington, Delaware as the place of production and
`deposition. See id.
`On January 3, 2022, KAI retained the undersigned counsel, who contacted Ocean’s counsel
`seeking the courtesy of an extension of time to sort through Ocean’s voluminous requests. See id.,
`Ex. B (email from Doug Stewart, dated Jan. 4, 2022). In response, and despite having delayed
`service of the subpoena for eight days, leaving KAI only three business days to respond, Ocean’s
`counsel sought to condition any extension of the subpoena’s unreasonably short time frame on an
`agreement to produce documents by a date certain without objection.5 See id. (email from Joel
`Glazer, dated Jan. 4, 2022). KAI’s counsel declined to assent to Ocean’s proposed waiver of
`objections and mandatory production. See id. (email from Doug Stewart, dated Jan. 5, 2022).
`Ocean’s counsel only relented and agreed to an unconditional nine-day extension of time until
`January 14 on the morning of January 5—the date set for compliance in the subpoena. See id. (email
`from Joel Glazer, dated Jan. 5, 2020).
`A. Legal Standards
`
`Fed. R. Civ. P. 45(d)(1) commands that “[a] party or attorney responsible for issuing and
`serving a subpoena must take reasonable steps to avoid imposing undue burden or expense on a
`person subject to the subpoena.” Accordingly, “the court ‘must protect a person who is neither a
`party nor a party’s officer from significant expense resulting from compliance.’” Personal Audio
`LLC v. Togi Ent’mt, Inc., No. 14–mc–80025 RS (NC), 2014 WL 1318921, at *1 (N.D. Cal. Mar.
`31, 2014) (citing Fed. R. Civ. P. 45(d)(2)(B)(ii)). Consistent with this command, “[t]he Ninth
`Circuit has long held that nonparties subject to discovery requests deserve extra protection from the
`
`
`5 Despite the actual case schedules noted above, Ocean’s counsel claimed that “the time sensitive
`nature of the active litigations” justified its refusal to agree to a reasonable extension.
`Schuettenhelm Decl., Ex. B (email from Joel Glazer, dated January 4, 2020).
`CASE No.
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`courts.” Lemberg L. LLC v. Hussin, No. 16-MC-80066-JCS, 2016 WL 3231300, at *5 (N.D. Cal.
`June 13, 2016).
`Fed. R. Civ. P. 45(d)(3) mandates that a court must quash or modify a subpoena that: (i) fails
`to allow a reasonable time to comply; (ii) requires a person to comply beyond the geographical
`limits specified in Rule 45(c); (iii) requires disclosure of privileged or other protected matter, if no
`exception or waiver applies; or (iv) subjects a person to undue burden. Fed. R. Civ. P. 45(d)(3)(A).
`B. Quashing the subpoena is mandatory due to its violation of the 100-mile geographical
`compliance limitation.
`
`Ocean’s subpoena (and its seven other identical subpoenas) must be quashed pursuant to
`Fed. R. Civ. P. 45(d)(3)(ii) because it demands KAI’s compliance “beyond the geographical limits
`specified in Rule 45(c).” Rule 45(c)(2)(A) provides that a subpoena to produce documents may
`only require compliance “at place within 100 miles of where the person resides, is employed, or
`regularly transacts business in person.” Similarly, Rule 45(c)(1)(A) provides that the place of
`compliance for a subpoena to appear for a deposition must be “within 100 miles of where the person
`resides, is employee, or regularly transacts business in person.”
`KAI is a California corporation that is headquartered in San Jose, California, and therefore
`it resides in this District. Schuettenhelm Decl., ¶ 5, Exs. C and D. KAI does not reside, have
`employees in, or regularly transact business in Delaware. Id., ¶ 6. Ocean’s subpoena unequivocally
`violates Rule 45(c) by dictating production and appearance for deposition in Wilmington, Delaware,
`and therefore must be quashed under Rule 45(d)(3)(ii).
`C. The subpoena must be quashed because it imposes an undue burden on KAI.
`
`Ocean’s subpoena (and its seven other identical subpoenas) also violates Rule 45(d)(1)’s
`command that “[a] party or attorney responsible for issuing and serving a subpoena must take
`reasonable steps to avoid imposing undue burden or expense on a person subject to the subpoena,”
`and, as a result, must be quashed under Rule 45(d)(3)(iv). To determine whether a subpoena would
`impose undue burden under Rule 45, courts “weigh the burden to the subpoenaed party against the
`value of the information to the serving party” by considering “such factors as relevance, the need of
`the party for the documents, the breadth of the document request, the time period covered by it, the
`particularity with which the documents are described and the burden imposed.” AngioScore, Inc. v.
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`TriReme Med., Inc., No. 12-CV-03393, 2014 WL 6706873, at *2 (N.D. Cal. Nov. 25, 2014). Here,
`all of the applicable factors confirm the undue burden Ocean’s subpoena would impose on third-
`party KAI.
`Ocean’s subpoena is exceedingly overbroad in scope and time period.
`1.
`The document subpoena includes 44 requests primarily directed to any conceivable
`involvement by KAI with scores of different products made by three non-party “Equipment
`Manufacturers” in connection with the alleged manufacture of thousands of the underlying
`Defendants’ allegedly infringing products. See Schuettenhelm Decl., Ex. A at A-1 – A-2
`(definitions of the three non-parties); A-3 – A-16 (over a dozen pages listing thousands of allegedly
`infringing products); A-18 – A-19 (listing scores of the Equipment Manufacturer’s products). In
`addition, Request for Production No. 13 seeks any documents related to KAI’s “in-house and/or
`proprietary” products. See id., Ex. A at A-27. The document subpoena also seeks every conceivable
`contract and sale-related document corresponding to the foregoing amalgam of products. See id.,
`Ex. A at A-24 – A-29. The deposition subpoena contains 11 overly broad topics seeking testimony
`similar to that requested by the document subpoena, as well as on “the context or content” of every
`subpoenaed document. See id., Ex. A at A-36.
`Ocean’s requests far exceed the burden that can be reasonably imposed on a third-party. See
`Straight Path IP Group, Inc. v. Blackberry Ltd., No. C 14–80150 WHA, 2014 WL 3401723, at *
`(N.D. Cal. July 8, 2014) (ruling that a subpoena containing 46 document requests was “oppressive,”
`a “fishing expedition too burdensome to impose on a third party,” and an abuse of the discovery
`process); Angioscore, 2014 WL 6706873, at *3 (ruling that subpoenas requesting 9 deposition topics
`and categories of irrelevant documents was overbroad).
`Ocean’s expansive definitions further amplify the overbreadth of its requests by
`“broaden[ing] the horizons of [Ocean’s] oppressive subpoena[s].” Straight Path, 2014 WL
`3401723, at *4; see also Convolve, Inc. v. Dell, Inc., No. C 10–80071, 2011 WL 1766486, at *2
`(N.D. Cal. May 9, 2011) (“To further broaden the horizons of this already expansive purview, the
`subpoena includes exhaustive definitions.”). Ocean’s definition of the individual “Infringing
`Instrumentalities” alone spans 15 pages, encompasses broad categories of products allegedly
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`supplied by the Defendants, and purports to identify thousands of exemplary product model
`numbers of the Defendants. See Schuettenhelm Decl., Ex A at A-3 – A-16. Each definition of
`accused instrumentality further concludes with boilerplate, catch-all language for any other “similar
`systems, products, devices, and integrated circuits.” Id. Ocean’s definitions for the various
`“Equipment Manufacturers” and “Manufacturing Equipment” are similarly expansive, describing
`broad categories of systems and identifying numerous exemplary products. See id., Ex, A at A-1 –
`A-2, A-18 – A-19. Likewise, Ocean’s definition of individual “Defendants” includes 15 distinct
`companies, as well as “all predecessors, successors, assigns, parents, subsidiaries and divisions,
`affiliates, partners of any of the foregoing, and all persons acting, or purporting to act, on behalf of
`any of the foregoing.” See id., Ex. A at A-2 – A-3.
`Further compounding the undue burden of Ocean’s overbroad requests and topics, Ocean
`fails to place any temporal limitations on its requests. See Angioscore, 2014 WL 6706873, at *2
`(identifying that “the period covered by [a subpoena]” is a factor to assess undue burden). The
`complete absence of any temporal limitations warrants quashing the subpoena under Rule
`45(d)(3)(A)(iv). See id. (precluding enforcement of subpoenas requesting information from a five-
`year period).
`2.
`
`Ocean improperly burdens KAI with discovery that can and should be
`obtained from the Defendants in the underlying lawsuits.
`
`
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`Ocean violates its obligations under Rule 45 by subpoenaing KAI without first seeking to
`obtain any of the information from the Defendants in the underlying lawsuits. Numerous of Ocean’s
`requests for production are plainly directed to information within the Defendants’ possession, such
`as the “role played by any and all Defendants” in the design, development, manufacture, testing,
`importation of the accused products; all products allegedly manufactured for the Defendants; and
`any agreements and contracts with the Defendants. See, e.g., Schuettenhelm Decl., Ex. A, Requests
`for Production Nos. 3, 4, 5, 9, 11, 16, and 18. Ocean is required to ask for this information from
`Defendants, not KAI. See Nidec Corp. v. Victor Co. of Japan, 249 F.R.D. 575, 577 (N.D. Cal. 2007)
`(quashing subpoenas because “the vast majority of the discovery sought from TPGI is discovery
`obtainable from a source more direct, convenient, and less burdensome-namely, from Defendants”);
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`Personal Audio, 2014 WL 1318921, at *3 (“There is no reason to burden non-party EFF when the
`information sought should be in the possession of the party defendants.”).
`Discovery has just begun in Ocean’s seven cases in the Western District of Texas. Ocean’s
`single case in the Eastern District of Texas against Huawei, which does not reference KAI in the
`complaint, appears to be further along, yet Ocean made no attempt to serve the subpoena at an earlier
`time and nothing suggests that Ocean’s recently obtained discovery in that case would justify its
`subpoena. Ocean must first seek information from the Defendants in order to determine what, if
`any, relevant and non-cumulative information could possibly be in the possession of KAI in this
`District. See Glass Egg Digital Media v. Gameloft, Inc., No. 17-CV-04165, 2019 WL 4166780, at
`*5 (N.D. Cal., Sept. 3, 2019) (“[S]erving such broad subpoenas to third parties at such an early
`juncture in the case would subject those parties to unnecessary expense and undue burden to the
`extent that some or all of the necessary information can be secured from the other party to the
`action.”). Without first obtaining information from the Defendants in the underlying lawsuits, it is
`impossible for Ocean to make appropriate, narrowly tailored requests of KAI.
`At this juncture, it is apparent from the lack of particularity and overbreadth of Ocean’s
`requests that it has not determined any reason to believe that KAI, specifically, would have non-
`duplicative information that is relevant to Ocean’s claims. Rule 45 cannot authorize Ocean to
`engage in third party discovery without first obtaining available information from the Defendants
`concerning any alleged role that Ocean believes KAI has with respect to its allegations in the
`underlying cases. See Straight Path, 2014 WL 340172, at *7 (“This is a fishing expedition too
`burdensome to impose on a third party.”).
`Accordingly, Ocean cannot justify its subpoena requests where it has not attempted to first
`obtain discovery by less burdensome means, as required under Rule 45.
`Ocean cannot make a showing that its grossly overbroad requests are relevant.
`3.
`Ocean must “demonstrate that the information sought is relevant and material to the
`allegations and claims at issue in the proceedings.” Angioscore, 2014 WL 6706873, at *3.
`Moreover, because KAI is a non-party, “it is a generally accepted rule” that Ocean must make “a
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`stronger showing of relevance than for simple party discovery.” Monster Energy Co., v. Vital
`Pharm., Inc., No. 5:18-cv-01882, 2020 WL 2405295, at *6 (C.D. Cal. Mar. 10, 2020).
`The overbreadth of Ocean’s requests demonstrate that Ocean is on an improper fishing
`expedition, unjustified by any reasonable belief that the information sought is relevant to the claims.
`An evaluation of Ocean’s infringement allegations (which have not been provided) is not necessary
`to conclude that Ocean’s subpoenas request information that is irrelevant.
`As explained above, much of the information that Ocean requests is directed to KAI’s
`relationships to third-party “Equipment Manufacturers,” use of third-party “Manufacturing
`Equipment,” and other manufacturing processes. See, e.g., Schuettenhelm Decl., Ex. A at Requests
`for Productions Nos. 1-11, 13-19, 20-43. Ocean even requests indemnity agreements between KAI
`and third-party “Equipment Manufacturers.” Id., Requests for Production Nos. 6, 12, 19, 20.
`However, any contractual indemnity between KAI, as a non-party, and other third-parties is
`irrelevant to whether Defendants can be held liable for patent infringement. Similarly, whether KAI
`generally uses a variety of other third-party manufacturing equipment or other broad manufacturing
`processes has no relevance to any cognizable theory of infringement by the Defendants. Critically,
`Ocean’s definition of “Infringing Instrumentalities” does not identify any manufacturing methods
`or processes; it instead identifies thousands of allegedly infringing products supplied by the
`Defendants.
`Accordingly, Ocean cannot establish the relevance of its requests, much less demonstrate
`that any relevance is significant enough to justify Ocean’s unduly burdensome requests.
`D. Ocean’s subpoenas violate litigation stays in two cases.
`
`Ocean’s subpoena encompasses two cases in the District of Massachusetts—filed against
`Analog Devices and Infineon Technologies—in its definition of “Actions” and includes accused
`products manufactured by those two defendants among its requests and topics. See Schuettenhelm
`Decl., Ex. A at A-2, A-13 – A-16. Neither the subpoena at issue in this motion, nor the seven other
`subpoenas, were issued from the District of Massachusetts. In fact, because both cases are currently
`stayed pending the resolution of petitions for inter partes review, no subpoena could properly issue
`from that Court in either of those cases. See id., Ex. E (Order staying Ocean Semiconductor LLC v.
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`Analog Devices, Inc., 1:20-cv-12310-PBS (D. Mass.)); Ex. F (Order staying Ocean Semiconductor
`LLC v. Infineon Techs. AG, et al., 1:20-cv-12311-PBS (D. Mass.)).
`Ocean’s circumvention of the stays in place in the Massachusetts cases, even if the
`unintentional result of over expansive definitions, is an abuse of process. See Essociate, Inc. v. Blue
`Whaler Investments, LLC, No. CV 10–2107–JVS (MLGx), 2012 WL 12953823, at *3 (C.D. Cal.
`Apr. 12, 2012) (granting motion to quash where issuing party attempted to serve a subpoena in
`circumvention of a scheduling order); see also Elite Lighting v. DMF, Inc., No. CV 13-1920 JC,
`2013 WL 12142840, at *3 (C.D. Cal. May 6, 2013) (quashing subpoenas that were not authorized
`by the federal rules, stipulation, or court order). Ocean’s subpoenas also should be quashed for this
`independent reason.
`
`CONCLUSION
`
`For the reasons stated above, Rule 45 mandates that the Court quash Ocean’s subpoena
`because it violates the 100-mile limitation for compliance. Ocean’s subpoena must also be quashed
`under Rule 45 because the information sought is grossly overbroad, and would impose a burden on
`KAI far in excess of what can be reasonably expected of a non-party, particularly where Ocean has
`not attempted to first obtain the information from the parties to its lawsuits.
`
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`CASE No.
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`MOTION TO QUASH
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`Case 5:22-mc-80014-SVK Document 1 Filed 01/13/22 Page 11 of 11Case 6:20-cv-01215-ADA Document 60-4 Filed 03/04/22 Page 12 of 12
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`Dated: January 13, 2022
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`Respectfully submitted,
`
`BRACEWELL LLP
`
`By: /s/ Jared D. Schuettenhelm
`Jared Schuettenhelm (SBN 267885)
`jared.schuettenhelm@bracewell.com
`Bracewell LLP
`701 Fifth Avenue, Suite 6200
`Seattle, Washington 98104-7018
`(206) 204-6200 (t)
`(800) 404-3970 (f)
`
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