Case 1:10-cv-00838-RMB-KW Document 196 Filed 11/15/12 Page 1 of 14 PageID #: 5279

[Doc. No. 180] IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

TESSERA INC., Civil No. 10-0838-RMB-KMW Plaintiff, v. SONY ELECTRONICS, INC., et al., Defendants.

ORDER BEFORE THE COURT is Plaintiff Tessera Inc.'s ("Tessera") motion to compel discovery (Doc. No. 180). The Court has reviewed

the submissions of the parties in accordance with Fed. R. Civ. P. 78. Background This is a patent infringement case involving semiconductor packaging technology. business products. of Tessera is an American corporation in the and patenting semiconductor packaging

developing

Sony is a global electronics manufacturer, and provides

consumer electronics and related devices for sale throughout the world. Renesas is a corporation specializing in the manufacture, Defendants Sony Electronics Corp.

design, and sale of semiconductor products. Electronics, Inc. ("Sony") and Renesas

("Renesas") are Japanese corporations, with their principal places 1

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of business in Japan. Tessera holds a number of patents related to semiconductor packaging technology, and licenses its intellectual property to many manufacturers and packaging companies in the semiconductor industry. In the instant matter, Tessera alleges that defendants

have unlawfully used Tessera's technology by making and selling products that infringe patents held by Tessera. The patents-in-suit, U.S. Patent Nos. 6,054,337 (the "'337 patent") and 6,885,106 (the "'106 patent), both feature claims related to multi-chip semiconductor packages arranged in vertical stacks. That is, both patents relate to semiconductor products

where multiple chips are stacked, one on top of another, typically for the purpose of facilitating their use in electronic devices where space is at a premium. The '106 patent relates to stacked

semiconductor packages less than 1.2 millimeters high featuring moveable terminals, while the '337 patent relates to a method for assembling stacked semiconductor packages featuring, inter alia, a flexible substrate with conductive traces and flexible leads

connected to the outer ends of said conductive traces, as well as conductive terminals connected to some of said traces. Tessera filed its complaint against Defendants without

identifying allegedly infringing products with specificity. At the initial scheduling conference, the Court set forth a discovery schedule that directed Tessera to "provide to Defendants their preliminary infringement contentions. The infringement contentions 2

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shall include claim charts identifying patent claims and accused product(s) where each element of each asserted claim is allegedly found." (See August 3, 2011 Scheduling Order, Doc. No. 54).

Defendants allege that they understood said scheduling order to require Tessera to identify with specificity the products it was accusing in its preliminary infringement contentions (PICs). Tessera went on to provide PICs that identified 12 Renesas and 15 Sony products. Shortly thereafter, Tessera served Defendants with

a number of discovery requests that cover accused products beyond those identified in Tessera's PICs. Tessera's discovery requests

included a definition for accused products that Defendants allege is overly broad, and requires Defendants to identify allegedly infringing products in their own product lines. Defendants

subsequently objected to Tesseras definition of accused products (the "'Your Products' definition"). On August 6, 2012 the Court ordered that Tessera "revise the 'Your Products' definition so that same is sufficiently narrowed to the alleged infringement on the patents-in-suit and relevant time frame." (See August 6, 2012 Order at 15, Doc. No. 169). The Court

held that "Tessera's 'Your Products' definition . . . is overly broad, as it includes the production of information beyond the patents-in-suit and is not limited to the applicable time frame." (Id. at 7). The Court also specifically held that "the Court did

not intend to limit discovery to products identified in Tessera's PICs for the duration of the litigation," but rather "the PICs 3

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serve as a mechanism to facilitate discovery during the initial stages of the litigation." (Id. at 7-8).

On August 15, 2012, Tessera emailed counsel for Defendants Renesas and Sony with a revised definition of "Your Products" requesting that discovery be provided by August 30, 2012. Tessera Motion to Compel, Exh. A, Doc. No. 180). (See

Sony responded on

September 7, 2012, proposing an alternate revised "Your Products" definition. (Tessera Motion to Compel, Exh. B, Doc. No. 180).

Renesas and Tessera came to an agreement about which documents Renesas would produce to Tessera in response to discovery requests. (See Tessera Motion to Compel, Exh. D, No. 180). Sony and Tessera,

however, have been unable to agree upon a definition of "Your Products," and as a result, Sony has not yet responded to multiple discovery requests from Tessera. DISCUSSION Tessera requests that the Court compel Sony to produce all responsive documents pursuant to Tessera's Request for Productions Nos. 4-7, 26, 41, 44, 46-51, 54-56, 65-70, 90-91, and 93-97; substantive responses to Tessera's Interrogatory Nos. 1 and 2; and an identification of any Sony witnesses who Sony may call in this case pursuant to Fed. R. Civ. P. 26. Doc. No. 180). Prior to the Court's August 6, 2012 Order, Tessera defined "Your Products" in Plaintiff's Requests for Production of Documents and Interrogatories as: 4 (Tessera Motion to COmpel,

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All of [Defendants'] electronic components, packages, or assemblies (including package-onpackage modules and assemblies) made, used, sold, or offered for sale in the United States, or imported into the United States, since October 1, 2004, that contain two or more semiconductor chips arranged in a vertical stack, as well as any products, reference designs, modules, or circuit boards using (or designed to be used with) any of these components, packages or assemblies). (See Tessera Motion to Compel, Exhs. E-F, Doc. No. 180) (emphasis added). Following the Court's August 6, 2012 Order directing Tessera to revise the "Your Products" definition, Tessera revised the definition to: [A]ll of [Defendants'] electronic components, packages, or assemblies (including package-onpackage modules and assemblies) that [Defendants] know or have reason to believe were made, used, sold, or offered for sale in the United States, or imported into the United States, since October 1, 2010, that contain two or more microelectronic elements (e.g., semiconductor chips) and a dielectric element ('substrate') arranged in a vertical stack, wherein: a. conductive elements on or within the substrate are electronically connected with at least two of said microelectronic elements, and b. wherein the component, package, or assembly has a thickness of less than 1.2mm, not including the height of any solder balls, solder ball pads, solder paste, solder lands, or other external joining structures. [see '106 patent, claim 1] -ORa. the substrate has conductive traces, with 5

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wire bonds or lead bonds connected to the conductive traces, b. a first of said microelectronic elements has a surface, which faces the substrate, with contacts that connect to at least some of said conductive traces, c. a second of said microelectronic elements has a surface with contacts, d. the first microelectronic element is disposed between the substrate and second microelectronic element, and e. the first and second microelectronic elements and substrate are electrically interconnected with one another, in whole or in part through wire bonds or lead bonds. [see '337 patent, claim 27]. When chips are arranged in a 'vertical stack,' at least one horizontal surface of each chip is located, in whole or in part, above at least one horizontal surface of at least one other chip in the vertical stack; the chips need not be in contact with, adjacent, or perfectly aligned with one another. (Tessera Motion to Compel, Exh. A, Doc. No. 180]. Sony's proposed revised "Your Products" definition is: "[A]ll electronic components or packages manufactures by [Defendants] that [Defendants] know were made, used, sold, or offered for sale in the United States, or imported into the United States, since October 1, 2010, that contain two or more microelectronic elements (e.g., semiconductor chips) and a dielectric element ('substrate') arranged in a vertical stack, wherein: a. conductive elements on or within the substrate are electrically connected with at least two of said microelectronic elements, and b. wherein the component or package has a thickness of less than 1.2mm above the terminals. [see '106 patent, claim 1] 6

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-ORThe product is manufactured by [Defendants] according to the following steps: a. providing a substrate with (1) flexible leads connected to conductive traces and (2) terminals connected to at least some of the conductive traces; b. providing a first microelectronic element with a face that includes contacts, and assembling that face to the substrate; c. providing a second microelectronic element and assembling it with the first microelectronic element and the substrate, so that the second microelectronic element overlies the first microelectronic element; and d. electrically interconnecting the microelectronic elements and the conductive terminals by (1) connecting the flexible leads to the contacts of the second microelectronic element and (2) connecting at least some of the conductive traces to the contacts of the first microelectronic element. [see '337 patent, claim 27]. (Tessera Motion to Compel, Exh. B, Doc. No. 180). Finally, Tessera also offered an alternative to Sony to either "(1) comply with the revised 'Your Products' definition, or (2) enter into a compromise along the lines of what Renesas has agreed to provide, i.e., Sony would agree to produce wirebond drawings, substrate drawing and package outline drawings (including the underlying native versions of those documents) for all products that contain two chips) or and more a microelectronic dielectric element elements arranged (e.g. in a

semiconductor

vertical stack that Sony has sold, offered for sale, or imported 7

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into the United States since October 1, 2010 (whether individually or as a component of another product)." (Tessera Motion to Compel, Exh. D, Doc. No. 180). Tessera argues that Sony's proposed revised "Your Products" definition is "entirely improper," in particular because it

introduces numerous disputed claim terms, which would permit Sony to use its own interpretation of the claim terms. to Compel, at 3, Doc. No. 180). (Tessera Motion

Tessera also urges that Sony's

failure to provide documents without further delay will jeopardize depositions of Sony witnesses scheduled to occur during the first two weeks of December in Osaka, Japan. Sony argues that Tessera's (Id. at 4). definition of "Your

revised

Products," while it contains more words than did the original definition, "still has essentially the same improperly broad

technical scope."

(Sony Opp., at 1, Doc. No. 186).

In particular,

Sony argues that Tessera's revised definition of "Your Products" is overbroad since it (1) is not limited to products that Defendants know are being sold in the United States since it covers any products that Sony "know or have reason to believe were made, used, sold or offered for sale in the U.S."; (2) ignores the asserted claim of the '337 patent, as it is a method claim, and Tessera's proposed definition would cover products regardless of whether or not they were made using that particular method; and (3) the definition is not limited to products made by Sony only, but instead would include Sony products that use chips made by third 8

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parties.

(Id. at 3-4).

Sony does not address why Tessera's offer

to compromise, which was accepted by Renesas, is not an acceptable solution to the discovery dispute. In response to Sony's opposition, Tessera argues that Sony's proposed definition, with respect to the '337 patent, is unworkable since Sony uses the patent claim language verbatim, the meaning of which is vigorously disputed by the parties, in particular as it relates to the ordering of the method steps. (Tessera Reply, at 4,

Doc. No. 189). Tessera claims that "[u]sing this disputed language to define the scope of discovery would be nonsensical because Sony would produce nothing." limiting the definition (Id.). of Tessera further argues that Products," and therefore

"Your

discovery, to products containing chips that are made by Sony and products that Sony knows are being sold in the United States improperly limits Tessera's claims. (Id.). Tessera argues that

its allegations are not limited to Sony's own products that Sony knows are being sold in the United States, but instead encompasses "the full scope of Sony's patent infringement, which under the Patent Act extends to 'whoever makes, uses, offers to sell, or sells any patented invention, within the United States,' as well as to conduct which induces or contributes to such infringement by another." (Id. (citing 35 U.S.C. 271)). "[p]arties may obtain discovery regarding any

Generally,

nonprivileged matter that is relevant to any party's claim or defense." Fed. R. Civ. P. 26(b). 9 "Relevant information need not

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be admissible at the trial if the discovery appears reasonably calculated to lead to the discovery of admissible evidence." Id.

Tessera's claims are outlined in the Third Amended Complaint, which was filed on March 6, 2012. (Doc. No. 117). Tessera's Third

Amended Complaint sets forth two claims for patent infringement: one claim for infringement of the '106 patent and one claim for infringement of the '337 patent. More specifically, Tessera

alleges that "Sony has infringed and is currently infringing the '106 patent in violation of 35 U.S.C. 271 by, among other things, making, using, selling, offering to sell, and/or importing products falling within the scope of the '106 patent." 15, Doc. No. 68). (Third Amend. Comp.

Tessera also alleges that "Sony has infringed

and is current [sic] infringing the '337 patent in violation of 35 U.S.C. 271 by, among other things, making, using, selling, offering to sell, and/or importing infringing devices." 23). First, the Court will address Sony's arguments that Tessera's discovery should be limited to (1) Sony products that contain Sony chips only, and (2) Sony products that Sony knows are being made, used, sold, offered for sale in or imported into the United States. Since Tessera's claims include allegations that Sony has infringed and is infringing on the '106 patent and the '337 by both making and using, selling, offering to sell, and/or importing infringing devices, Tessera's claims purport to include not only chips (Id. at

manufactured by Sony and products using Sony chips, but also 10

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potentially Sony products including chips manufactured by other third party companies that allegedly infringe on Tessera's patents. Since Tessera is permitted, under the Federal Rules of Civil Procedure, to seek and obtain discovery on information relevant to its claims, the Court finds that Tessera may seek discovery

regarding not only Sony products containing Sony chips, but also Sony products containing third party chips that allegedly infringe on Tessera's patents. Similarly, Tessera's allegations regarding

Sony's infringement of the '106 and '337 patents are not limited to products that Sony knows are being sold into the United States. (See Third Amend. Comp. 15, 23, Doc. No. 68). Therefore, Tessera is likewise permitted to seek and obtain discovery regarding not only Sony products that Sony knew were being made, used, sold, offered for sale in or imported into the United States, but also Sony products that Sony had reason to believe were being made, used, sold, offered for sale in or imported into the United States.1 Next, the Court will address Sony's argument that Tessera's "Your Products" definition does not track the '337 patent Sony

infringement claim since that claim is a "method" claim.

argues that Tessera's definition of "Your Products" as it relates to the '337 patent infringement allegations would be overinclusive, 1. Sony argues that the Court "already rejected this impossibly vague language during the July 17, 2012 hearing on Tessera's last motion to compel." (Sony Opp. at 4, Doc. No. 186). However, the Court did not rule on this issue at the hearing on July 17, 2012 or in the Court's following August 6, 2012 Order (Doc No. 169). 11

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and therefore overbroad, as it could include products that could meet Tessera's definition but that were not made in accordance with the method covered by the '337 patent. 186). (Sony Opp., at 4, Doc. No.

However, Sony has failed to provide an example of such a

product or a specific argument as to the number of products that could fall into such a category. The Court finds that Tessera's

definition of "Your Products," as it relates to the '337 patent infringement allegations, is reasonably calculated to lead to the discovery of admissible evidence regarding Tessera's claims. The

Court further finds that Sony's argument that Tessera's definition is overinclusive, and therefore overbroad, fails to provide

specific examples of the definition's overbreadth.

Therefore,

Tessera's definition of "Your Products" seeks information within the permissible scope of discovery with respect to Tessera's '337 patent infringement claims. Accordingly, for the reasons set forth above and for good cause shown: IT IS on this 15th day of November 2012, ORDERED that Sony produce documents and information responsive to Tessera's discovery requests within seven (7) days of the date of this Order based upon the following definition of defined term "Your Products": "Your Products" means all of Your electronic components, packages, or assemblies (including package-on-package modules and assemblies) that you know or have reason to believe were made, used, sold, or offered for sale in the United States, or imported into the United 12

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States, since October 1, 2010, that contain two or more microelectronic elements (e.g., semiconductor chips) and a dielectric element ('substrate') arranged in a vertical stack, wherein: a. conductive elements on or within the substrate are electronically connected with at least two of said microelectronic elements, and b. wherein the component, package, or assembly has a thickness of less than 1.2mm, not including the height of any solder balls, solder ball pads, solder paste, solder lands, or other external joining structures. [see '106 patent, claim 1] -ORa. the substrate has conductive traces, with wire bonds or lead bonds connected to the conductive traces, b. a first of said microelectronic elements has a surface, which faces the substrate, with contacts that connect to at least some of said conductive traces, c. a second of said microelectronic elements has a surface with contacts, d. the first microelectronic element is disposed between the substrate and second microelectronic element, and e. the first and second microelectronic elements and substrate are electrically interconnected with one another, in whole or in part through wire bonds or lead bonds. [see '337 patent, claim 27]. When chips are arranged in a 'vertical stack,' at least one horizontal surface of each chip is located, in whole or in part, above at least one horizontal surface of at least one other chip in the vertical stack; the chips need not be in contact with, adjacent, or perfectly aligned with one another. and it is further; 13

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ORDERED that Sony identify pursuant to Rule 26 any individuals likely to have discoverable information, along with the subjects of that information, that Sony may use to support its claims and defenses, within seven (7) days of this Order.

s/ Karen M. Williams KAREN M. WILLIAMS UNITED STATES MAGISTRATE JUDGE cc: Hon. Rene Marie Bumb

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