Case 1:21-cv-00044-ADA Document 1 Filed 12/09/20 Page 1 of 12
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
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`FINTIV, INC.,
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`v.
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`STMICROELECTRONICS, INC.
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`§
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`Case No. ________________________
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`Civil Action No.: 1:19-cv-01238-ADA
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`MEMORANDUM OF LAW IN SUPPORT OF PLAINTIFF FINTIV’S
`EXPEDITED MOTION TO COMPEL COMPLIANCE WITH SUBPOENA
`DIRECTED TO NON-PARTY STMICROELECTRONICS, INC.
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`Fintiv, Inc. (“Fintiv”), respectfully submits this memorandum of law in support of its
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`motion to compel the production of documents and information by non-party STMicroelectronics,
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`Inc. (“ST”) in response to the subpoena duces tecum directed to ST, dated February 25, 2020 (the
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`“Subpoena”) in the underlying action pending in the Western District of Texas, Fintiv, Inc. v.
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`Apple, Inc., No.: 1:19-cv-01238-ADA (W.D. Tex.).
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`I.
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`PRELIMINARY STATEMENT
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`In February 2020, Fintiv served ST with a document subpoena seeking 11 discrete
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`categories of documents and a deposition subpoena seeking testimony on 12 narrowly tailored
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`topics. To date, ST has not produced a single document and refuses to present any witness for
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`deposition despite the fact that it never filed a motion to quash or for protective order.
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`Fintiv worked with ST over the course of several weeks in an effort to obtain its compliance
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`with the subpoenas at issue. Specifically, Fintiv has conferred with ST on at least two occasions
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`concerning the Subpoena. However, ST still refused to comply. Now faced with a fact discovery
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`Case 1:21-cv-00044-ADA Document 1 Filed 12/09/20 Page 2 of 12
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`deadline of December 11, 2020, Fintiv has no choice but to seek expedited relief to obtain ST’s
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`compliance with the Subpoena.
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`II.
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`FACTUAL BACKGROUND
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`A.
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`The Underlying Litigation Between Fintiv and Apple
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`The underlying lawsuit in this action (Fintiv, Inc. v. Apple, Inc., No.: 1:19-cv-01238-ADA
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`(W.D. Tex.) is a patent infringement suit brought by Plaintiff Fintiv against Defendant Apple Inc.
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`(“Apple”). Fintiv is the owner of United States Patent No. 8,843,125 (“the ’125 Patent”), issued
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`September 23, 2014 and titled “System and Method for Managing Mobile Wallet and its Related
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`Credentials.” See Ex. 1 (Subpoena Ex 1 (Fintiv’s Second Amended Complaint) at ¶ 2). Fintiv
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`asserts that Apple directly infringes the ’125 Patent by making, using, selling, offering for sale,
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`and/or importing infringing products (the “Accused Products”)1 – i.e., Apple devices that utilize
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`Apple Pay/ the Apple Wallet Application. (Id. at ¶ 16.) Fintiv further asserts that Apple indirectly
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`infringes the ’125 Patent by contributing to the infringement by others and/or inducing
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`infringement by others. (See id. at ¶ 28.)
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`B.
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`The Subpoena Served on ST
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`Fintiv issued a Subpoena to Testify at a Deposition in a Civil Action (the “Subpoena”) on
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`third party ST on February 25, 2020. (Ex. 1.) The Subpoena includes both a request for testimony
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`and production of documents. The Subpoena was served on ST’s agent for service of process in
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`Dallas, Texas. The Subpoena lists 12 topics on which it seeks oral testimony, and seeks
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`1 Accused Products are defined in the Subpoena as “Apple Pay, Apple’s Wallet Application, Apple
`iPhone devices (including, at least, iPhone 6, 6 Plus, 6s, 6s Plus, SE, 7, 7 Plus, 8, 8 Plus, X, XR,
`XS, XS Max, 11, and 11 Pro), Apple Watch devices (including, at least, Series 1, Series 2, Series
`3, Series 4, and Series 5), Apple iPad devices (including, at least, iPad Air 2, and iPad Mini 3),
`Apple Mac devices (including, at least, Mac devices with Touch ID), Apple’s related supporting
`infrastructure, and associated hardware and software. (Subpoena, Attachment A at 2.)
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`2
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`Case 1:21-cv-00044-ADA Document 1 Filed 12/09/20 Page 3 of 12
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`documents based on 11 requests. Fintiv decided to subpoena ST because reputable public sources
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`lead Fintiv to believe that ST provides or provided chips for the Accused Products. On March 9,
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`2020, STMicroelectronics, Inc.2 served its Responses and Objections (the “R&O’s”) to the
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`Subpoena. (Ex. 2) In response to each request, after listing a myriad of boilerplate objections
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`lacking in specificity, ST stated it either did not have witnesses or would not be producing any
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`documents. For each document request, ST responded that it “does not manufacture or design the
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`Accused Products listed in the Subpoena or STMicro Chips referenced in this Request” and that
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`“given the vagueness of the Request, ST is unable to conduct a reasonable or proportional search
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`for documents or information in response to the Request regarding STMicro Chips” (with some
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`slight variation on the ultimate wording depending on the request variation) (Ex. _). For each
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`testimony topic, ST responded that “Subject to and without waiving the foregoing specific and
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`general objections, ST responds that ST does not manufacture or design the Accused Products
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`listed in the Subpoena or the STMicro Chips referenced in this Topic, and that given ST's inability
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`to conduct a reasonable or proportional search in response to the Subpoena to Produce Documents,
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`Information, or Objects with regard to STMicro Chips as written, it does not have a witness with
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`knowledge of this Topic.” (Ex. _.)
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`ST’s responses were originally served at the start of the COVID-19 pandemic and
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`beginning of citywide stay-at-home orders on the West and East coasts. As a result of the
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`pandemic, the discovery deadline in this litigation was extended (from April 23 to August 25,
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`2 The Subpoena was served on STMicroelectronics, N.V., however STMicroelectronics, Inc.
`responded. ST made no objection related to this corporate distinction in its R&O’s (and thus any
`such objection is waived). In re DG Acquisition Corp., 151 F.3d 75, 81 (2d Cir. 1998) (Rule 45
`“require[s] the recipient of a subpoena to raise all objections at once, rather than in staggered
`batches, so that discovery does not become a ‘game.’”); Ott v. City of Milwaukee, 682 F.3d 552,
`558 (7th Cir. 2012) (party responding to subpoena could not reserve right to object at later date);
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`3
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`2020). Upon review of ST’s responses, and in light of the fact that those responses seemingly
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`contradicted public sources, Fintiv requested a meet and confer to see if the parties could discuss,
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`resolve any discrepancies or objections, and documents could be produced. In May 2020, Fintiv’s
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`counsel left a voicemail at the phone number provided for ST in their R&O’s, requesting to speak
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`to ST’s counsel (since no counsel name or direct contact information was provided in its R&O’s).
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`After some back and forth, a meet and confer was scheduled for June 16, 2020. At this meet and
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`confer, counsel for ST repeatedly expressed that the subpoena was generally overbroad, vague,
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`and that she did not understand how the requested information related to Fintiv’s patent
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`infringement claims. Counsel for Fintiv advised ST’s Counsel that, based on current information
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`and belief, including public internet sources, ST provided chips for the Accused Products.
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`Fintiv’s Counsel provided a link to ST’s Counsel via email to a website which supports Fintiv’s
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`understanding that ST provided chips for the Accused Products. Additionally, Fintiv’s Counsel
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`attempted to explain which exemplary patent claims the subpoena related to, while expressing
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`that an in-depth understanding of the claims at issue was not required for ST to be able to produce
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`responsive documents. Fintiv’s Counsel narrowed the information Fintiv was requesting via the
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`Subpoena for the sake of ongoing cooperation, by providing examples of the types of documents
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`Fintiv was primarily seeking (at least in the first instance).3 In response, ST’s Counsel advised
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`3 The below list is exemplary of the types of documents Fintiv is seeking to compel ST to produce
`via the Subpoena:
`• Documents identifying all STMicro Chips containing a secure element that have been used
`in the Accused Products;
`• Documents relating to all versions of GlobalPlatform specifications and/or standards that
`have been implemented in the STMicro Chips used in the Accused Products;
`• Documents relating to all versions of EMV specifications and/or standards that have been
`implemented in the STMicro Chips used in the Accused Products;
`• Documents relating to all versions of JCOP and Java Card OS specifications and/or
`standards that have been implemented in the STMicro Chips used in the Accused Products;
`and
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`4
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`that she would review the subpoena and the public source mentioning the ST chips, and conduct
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`further internal search and discussion at ST to figure out if there were responsive materials to
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`produce. The parties agreed to do a check in on ST’s progress in two weeks.
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`On July 1, Fintiv’s Counsel and ST’s Counsel set up a check in call for July 2. During the
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`July 2 call, it was apparent that ST’s Counsel had not conducted an investigation for responsive
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`materials since the last discussion. Indeed, ST’s Counsel was not able to confirm whether or not
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`ST provided Apple with chips that are used in the Apple devices for the Apple Wallet. ST also
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`would not state whether the chips were manufactured by another company under the ST corporate
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`umbrella. ST’s Counsel insisted that she needed to understand more about the claims at issue
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`despite having previously been directed to the specific relevant claims asserted in the litigation
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`during the meet and confer held in June. At the end of the meet and confer, Fintiv’s Counsel
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`asked that ST provide an update in one week on progress. Fintiv’s Counsel also advised ST’s
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`Counsel that if ST’s R&O’s were inaccurate, ST was required to amend its responses. ST’s
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`Counsel did not provide an update and has not provided any response as of the date of this motion,
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`nor has ST amended its R&O’s.
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`Fintiv believes that ST never intended to comply with the subpoena despite having the
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`documents and information requested in its possession, custody, and control that are directly
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`relevant to the patent litigation filed against Apple. In July 2020, Fintiv notified ST that it would
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`be filing a motion to compel. However, within days of notifying ST it would move to compel its
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`compliance, fact discovery in the case was temporarily stayed. Fact discovery has now resumed,
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`and Fintiv is faced with a fact discovery deadline of December 18, 2020. On November 13, 2020,
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`• Source code (including source code for the applets) relating to the implementation of
`GlobalPlatform, EMV, JCOP, and Java Card OS specifications and/or standards that have
`been implemented in the STMicro Chips used in the Accused Products.
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`5
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`Fintiv contacted ST again in a hope to resolve this issue – proposing that ST simply amend its
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`original Responses and Objections to address the seemingly contradictory public information, or
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`provide a document custodian for a short (10-15 minute) deposition so Fintiv could ensure ST’s
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`diligence in its document search. Counsel for ST indicated that ST would not be willing to do
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`either.
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`Fintiv has sought discovery from numerous other non-parties during the course of this
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`litigation, ranging from multi-national banks and corporations to smaller entities. Some non-
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`parties decided to produce documents outright, and some first moved to quash the subpoena.
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`However, in each case so far, Fintiv and those non-parties, either on their own initiative or at the
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`direction of the court, have been able to come to a resolution where the non-party produced a
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`narrowed set of responsive documents. There is no reason that such an outcome should not occur
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`here. Fintiv will be substantially prejudiced if ST is allowed to ignore its obligation to produce
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`responsive documents and provide a witness with knowledge.4
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`Accordingly, Fintiv respectfully requests that the Court issue an order directing ST to
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`comply with the Subpoena, so that Fintiv can effectively pursue its claims against Apple.
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`III.
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`Request for Expedited Relief
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`Fintiv is moving to compel ST at last resort because it is not confident that ST will engage
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`in good faith, produce documents, and a witness unless subject to a court order. However, after
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`a stay of discovery in this case, the scheduling order for this case sets fact discovery to close on
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`December 18, 2020 which is less than two weeks away. If this Motion to Compel and Enforce
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`Subpoena is resolved in accordance with the conventional briefing timeline dictated by Local
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`4 The Subpoena also requested deposition testimony, thus this Motion also seeks to compel
`compliance with the testimony element of the Subpoena, as Fintiv reserves the right to depose a
`witness if after reviewing the documents it believes testimony is necessary.
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`6
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`Rule 7.1, Fintiv would likely not receive documents until after the close of fact discovery. Fintiv
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`therefore respectfully requests expedited resolution of this Motion to Compel Compliance with
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`the Subpoena.
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`IV. Motion to Compel Compliance
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`A.
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`Standard
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`The documents sought by Fintiv are relevant and proportional to the needs of the case.
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`Federal Rule of Civil Procedure 26(b) governs the scope of discovery. The rule provides that
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`“parties may obtain discovery regarding any non-privileged matter that is relevant to any party's
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`claim or defense and proportional to the needs of the case.” Fed. R. Civ. P. 26(b)(1).
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`As further clarified during the meet and confers between the parties (discussed infra,
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`Section IV.B), Fintiv’s requests are reasonably calculated to lead to the discovery of admissible
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`evidence, including relevant technical documents and source code, which important at least to
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`Fintiv’s proof of infringement of claims 11 and 23. This information is highly probative and highly
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`relevant to the issues in this matter, and well within the broad scope of Rule 26(b). Without
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`meaningful access to this information, Fintiv will be lacking crucial information to prosecute its
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`case against Apple.
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`Federal Rule of Civil Procedure 45 establishes, inter alia, nonparties’ duties to respond to
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`Subpoenas. Rule 45(a)(D) directs that a “command in a subpoena to produce documents,
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`electronically stored information, or tangible things requires the responding party to permit
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`inspection, copying, testing, or sampling of the materials.” Rule 45(c)(2)(B) further provides:
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`A person commanded to produce documents or tangible things or to permit
`inspection may serve on the . . . attorney designated in the subpoena a written
`objection to inspecting, copying, testing or sampling any or all of the materials . . .
`If an objection is made, the following rules apply:
`(i) At any time, on notice to the commanded person, the serving party may
`move the issuing court for an order compelling production or inspection ...
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`7
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`Case 1:21-cv-00044-ADA Document 1 Filed 12/09/20 Page 8 of 12
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`(emphasis added). ST served objections to the Subpoena pursuant to Fed. R. Civ. P. 45(d)(2)(B).
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`For the reasons discussed below, ST's boilerplate objections are contrary to the Federal
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`Rules of Civil Procedure and controlling authorities, and ST should be compelled to produce
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`responsive documents.
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`B.
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`ST’s Boilerplate Objections are Unsupported
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`A non-party's Rule 45(d)(2)(B) objections to discovery requests in a subpoena are subject
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`to the “same prohibition on general or boiler-plate objections and requirements that the objections
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`must be made with specificity and that the responding party must explain and support its
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`objections.” Am. Fed'n of Musicians of the United States & Canada v. Skodam Films, LLC, 313
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`F.R.D. 39, 46 (N.D. Tex. 2015). Thus, it is the resisting party’s burden to show with specificity
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`that each request is not relevant, unduly broad and burdensome, or otherwise objectionable. Carr
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`v. State Farm Mut. Auto. Ins. Co., 312 F.R.D. 459, 463 (N.D. Tex. 2015) (A party resisting
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`discovery must show how the requested discovery was overly broad, burdensome, or oppressive
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`by submitting affidavits or offering evidence revealing the nature of the burden.”); see also S.E.C.
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`v. Brady, 238 F.R.D. 429, 437 (N.D. Tex. 2006) (In order to satisfy its burden, the objection party
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`must make a specific, detailed showing of how a request is burdensome. . . . A mere statement by
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`a party that a request is “overly broad and unduly burdensome” is not adequate to voice a
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`successful objection.”); Samsung Elecs. Am., Inc. v. Yang Kun Chung, 321 F.R.D. 250, 285 (N.D.
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`Tex. 2017) (“The basic allocation of the burden [under Rule 26(b) is] on the party resisting
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`discovery to—in order to successfully resist a motion to compel— [that party must] specifically
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`object and show that the requested discovery does not fall within Rule 26(b)(1)'s scope of relevance
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`(as now amended) or fails the required proportionality calculation or is otherwise objectionable.”).
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`8
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`Case 1:21-cv-00044-ADA Document 1 Filed 12/09/20 Page 9 of 12
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`ST responded to each request with a laundry list of nearly identical objections. None of
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`these objections are sufficiently specific or give proper explanation connecting facts to the
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`objections. Heller v. City of Dallas, 303 F.R.D. 466, 483 (N.D. Tex. 2014) (“So-called boilerplate
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`or unsupported objections—even when asserted in response to a specific discovery request and not
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`as part of a general list of generic objections preceding any responses to specific discovery
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`requests—are likewise improper and ineffective . . . .”); McLeod, Alexander, Powel & Apffel, P.C.
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`v. Quarles, 894 F.2d 1482, 1484-86 (5th Cir. 1990) (holding that simply objecting to requests as
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`“overly broad, burdensome, oppressive and irrelevant,” without showing “specifically how each
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`[request] is not relevant or how each question is overly broad, burdensome or oppressive,” is
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`inadequate to “voice a successful objection”).
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`Even if these generic objections were somehow sufficient on their face, they are no longer
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`applicable after the meet and confers between Fintiv and ST’s Counsel.5 First, rather than standing
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`entirely on the boilerplate objections, ST at the end of each response claims it does not manufacture
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`the STMicro Chips described in the subpoena. As discussed in Section I, Fintiv provided
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`information to ST during two meet and confers, including a public source which supports Fintiv’s
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`understanding that ST provides chips to Apple, seemingly contradicting ST’s Subpoena responses
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`about not manufacturing the chips described in the Subpoena. Thus, at a minimum, there is reason
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`to believe the R&O’s were submitted without a reasonable search, which ST was required to
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`undertake in response to the Subpoena pursuant to Rule 45. See Federal Rules of Civil Procedure,
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`Rules and Commentary Rule 45 (“When a subpoena requests documents, the recipient must
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`5 Given that all of ST’s objections are boilerplate and exhaustive, Fintiv does not believe it is
`necessary to respond to each individually. Instead, Fintiv addresses the objections specifically
`raised during the meet and confers (i.e., the objections that the Subpoena is overly broad, unduly
`burdensome, vague, and does not seek relevant information).
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`9
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`Case 1:21-cv-00044-ADA Document 1 Filed 12/09/20 Page 10 of 12
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`undertake reasonable efforts to locate and produce them. In general, the scope of this duty is the
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`same as it is for parties served with document requests under Rule 34. That is to say, just as a
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`party must design and implement a search process reasonably designed to find the requested
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`documents, so too must the recipient of a subpoena. Half-hearted and shoddy efforts will not do.”).
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`On that basis, ST was and is obliged to do an adequate search and cannot stand on such an
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`objection.
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`Fintiv also fielded questions on the subpoena from ST’s Counsel to clear up any confusion,
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`substantially narrowed the scope of the document requests, and clarified how the materials
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`requested are highly relevant to the litigation, including infringement issues. The materials
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`requested, including relevant technical documents and source code, are important at least to
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`Fintiv’s proof of infringement of claims 11 and 23.6 Fintiv also provided ST with specific
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`examples of technical document categories that are responsive with respect to the claims. Rather
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`than produce documents, as described supra, ST proceeded evasively. Fintiv now believes ST has
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`no genuine intent to cooperate despite its obligation under the Federal Rules. Andra Grp., LP v.
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`JDA Software Grp., Inc., 312 F.R.D. 444, 450 (N.D. Tex. 2015) (“‘[T]ransparency and
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`collaboration is essential to meaningful, cost-effective discovery,’ and a non-party's ‘attempt to
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`stand outside of these tenets because of its third-party status is unpersuasive.’”) (citing Apple, Inc.
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`v. Samsung Electronics Co. Ltd., No. 12–CV–0630–LHK (PSG), 2013 WL 1942163, at *3
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`(N.D.Cal. May 9, 2013). Being a non-party or third party “does not confer a right to obfuscation
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`or obstinacy” during discovery. Id. (citation omitted).
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`Thus, ST’s generic, boilerplate objections to the Subpoena are not sufficient, especially in
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`light of the subsequent meet and confers and the information that was provided to ST’s Counsel.
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`6 Supra, footnote 3.
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`10
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`The meet and confers reduced the scope, clarified subpoena terms, explained the requested
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`information’s relevancy, and even provided exemplary types of responsive technical documents.
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`The narrowed and simplified subpoena imposes little burden on ST, especially compared to
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`Fintiv’s need and the importance of the information. Thus, the Court should compel ST to comply
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`with the Subpoena.
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`V.
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`CONCLUSION
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`For the reasons set forth herein, the Fintiv respectfully requests that this Court enter an
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`Order compelling ST to produce the documents requested by Fintiv in the Subpoena.
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`Dated: December 9, 2020
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`RESPECTFULLY SUBMITTED,
`By: /s/ Constantine Z. Pamphilis
`
`Constantine Z. Pamphilis (Texas Bar No. 794419)
`(Admitted in this District)
`dpamphilis@kasowitz.com
`
`KASOWITZ BENSON TORRES LLP
`1415 Louisiana Street, Suite 2100
`Houston, Texas 77002
`Telephone: (713) 220-8852
`Facsimile: (713) 222-0843
`
`Jonathan K. Waldrop (CA Bar No. 297903)
`(pro hac vice application forthcoming)
`jwaldrop@kasowitz.com
`Marcus A. Barber (CA Bar No. 307361)
`(pro hac vice application forthcoming)
`mbarber@kasowitz.com
`
`KASOWITZ BENSON TORRES LLP
`333 Twin Dolphin Drive, Suite 200
`Redwood Shores, California 94065
`Telephone: (650) 453-5170
`Facsimile: (650) 453-5171
`
`Jeffrey M. Tillotson
`Texas Bar No. 20039200
`jtillotson@tillotsonlaw.com
`TILLOTSON LAW
`1807 Ross Ave., Suite 325
`Dallas, Texas 75201
`
`11
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`Case 1:21-cv-00044-ADA Document 1 Filed 12/09/20 Page 12 of 12
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`(214) 382-3041 Telephone
`(214) 292-6564 Facsimile
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`Counsel for Plaintiff Fintiv, Inc.
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`CERTIFICATE OF CONFERENCE
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`I hereby certify that prior to filing the instant Motion, I conferred with Counsel for ST
`regarding the relief sought herein. ST indicated it opposes the motion.
`
`/s/ Marcus A Barber
`Marcus A. Barber
`
`CERTIFICATE OF SERVICE
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`I hereby certify that I served the foregoing document on all Parties and/or their counsel of
`record via personal service as follows:
`
`Justin Cohen
`Thompson & Knight LLP.
`One Arts Plaza, 1722 Routh Street, Suite 1500
`Dallas, TX 75201
`214-969-1211
`
`/s/ Constantine Z. Pamphilis
`Constantine Z. Pamphilis
`
`12
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