Nichia Corporation v. Vizio, Inc.

MOTION for Issuance of Letters Rogatory

E.D. Tex.October 10, 2017

PUBLIC VERSION - REDACTED IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF TEXAS MARSHALL DIVISION NICHIA CORPORATION Plaintiff, go VIZIO, INC. et al. Defendants. ) ) ) ) ) ) ) ) ) ) ) ) C.A. No. 16-cv-1453-JRG LEAD CASE Jury Trial Demanded PLAINTIFF’S UNOPPOSED MOTION FOR ISSUANCE OF REQUESTS FOR INTERNATIONAL JUDICIAL ASSISTANCE (LETTER ROGATORY) Case 2:16-cv-01453-JRG Document 138 Filed 10/10/17 Page 1 of 15 PageID #: 2430 PUBLIC VERSION - REDACTED II. III. A. B. IV. A. B° go VI. TABLE OF CONTENTS NATURE AND STAGE OF THE PROCEEDINGS .......................................................... 4 SUMMARY OF THE ARGUMENT ................................................................................. 7 FACTUAL BACKGROUND ............................................................................................ 7 Supplier Background ........................................................................................................ 7 Case Background .......... " .................................................................................................... 8 ARGUMENT .................................................................................................................... 11 Letter Rogatory Are The Proper Method For a U.S. Court to Seek Discovery in China ................................................................................................................................ 11 Letters Rogatory to TCL’s Chinese Suppliers Will Result in Documents that are Critical to Proving Infringement and Damages ............................................................ 12 The Letters are Necessary because Plaintiff has no other Means to Obtain the Discovery at Issue, Which is Necessary to Prove Infringement and Damages ..................................... 14 CONCLUSION ................................................................................................................. 14 Case 2:16-cv-01453-JRG Document 138 Filed 10/10/17 Page 2 of 15 PageID #: 2431 PUBLIC VERSION - REDACTED TABLE OF AUTHORITIES Cases ]ntel Corp. v. Adv. Micro Devices, 542 U.S. 241 (2004) .............................................................................................................. 11 Tulip Comput. Int’l B. V. v. Dell Comput. Corp., 254 F. Supp. 2d 469 (D. DeE 2003) ....................................................................................... 12 Statutes 28 U.S. §§ 1781 ........................................................................................................................ 11 Rules Federal Rule of Civil Procedure 4(f)(2)(B) .................................................................................. 4 Case 2:16-cv-01453-JRG Document 138 Filed 10/10/17 Page 3 of 15 PageID #: 2432 PUBLIC VERSION - REDACTED Pursuant to Federal Rule of Civil Procedure 4(f)(2)(B), Plaintiff Nichia Corporation ("Nichia") respectfully requests that this Court issue the attached requests for international judicial assistance ("Letter Rogatory") to the People’s Republic of China ("China") pursuant to the Hague Evidence Convention. See Declaration of Jenny L. Colgate (Colgate Dec.) at Exhibits A-B. The Letter Rogatory will enable Nichia to obtain documents from several of TCL’s Chinese suppliers, including "TCL’s Chinese Suppliers") relating to the alleged acts of infringement that Nichia has asserted against TCL Multimedia Technology Holdings Limited and TTE Technology, Inc. (collectively, "TCL" or "Defendants"). See Case No. 16-cv-875, D.I. 1 and Case No. 16-cv-1452, D.I. 1. I. NATURE AND STAGE OF THE PROCEEDINGS On August 8, 2016, Nichia filed its Complaint against TCL Multimedia Technology Holdings, Limited and TTE Technology, Inc. (collectively, "TCL") alleging infringement of U.S. Patent No. 8,530,250 (the "’250 Patent"). Case No. 16-cv-875, D.I. 1. On October 4, 2016, the TCL case was consolidated with cases filed against Mary Elle Fashions, Inc. d/b/a/Meridian Electric ("Meridian"), Feit Electric Company, Inc. ("Felt"), Vizio, Inc. ("Vizio") and Lowe’s Home Centers, LLC et al. ("Lowes"), also alleging infringement of the ’250 Patent. Id., D.I. 16. A docket control order was entered on November 21, 2016. Case No. 16-cv-615, D.I. 76. The case was stayed on December 22, 2016, pending the Federal Circuit’s decision regarding Nichia’s earlier suit against Everlight Americas, Inc. and Everlight Electronics Co., Ltd. (collectively, "Everlight"), also regarding, inter al&, the ’250 Patent. Id., D.I. 108. Case 2:16-cv-01453-JRG Document 138 Filed 10/10/17 Page 4 of 15 PageID #: 2433 PUBLIC VERSION - REDACTED On December 27, 2016, Nichia filed suit against TCL alleging infringement of U.S. Patent No. 9,490,411 (the "’411 Patent"). Case No. 16-cv-1452, D.I. 1. On February 21, 2017, Nichia filed a First Amended Complaint, alleging infringement of one additional patent, U.S. Patent No. 9,537,071 (the ’"071 Patent"). Id., D.I. 15. On March 27, 2017, a Scheduling Conference was held in Case No. 16-cv-1452, regarding the case against TCL concerning the ’411 and ’071 Patents. See Case No. 16-cv-1452, D.I. 17. Thereafter, on April 12, 2017, the parties filed joint motions for entry of an Agreed Discovery Order and Agreed Docket Control Order. Id., D.I. 23, 24. The Court entered both the Discovery Order and the Docket Control Order on April 18, 2017. Id., D.I. 27, 28. The Court also entered the parties’ Stipulated Protective Order on April 19, 2017. Id., D.I. 29. On May 15, 2017, the Court consolidated all of the pending Nichia cases filed against TCL and other defendants (including Meridian, Feit, Vizio and Lowes) in the Eastern District of Texas, regarding the ’250, ’411 and ’071 Patents, lifted the stay of the consolidated ’250 Patent cases, and stayed all deadlines in Case No. 16-cv-1452 (against TCL regarding the ’411 and ’071 Patents), pending a May 31, 2017 scheduling conference in Lead Case No. 16-cv-1453. Id., D.I. 24. The Court also vacated the protective order (D.I. 29), discovery order (D.I. 27) and order referring the case to a mediator (D.I. 20) in Case No. 16-cv-1452. Id. On May 31, 2017, the Court held a scheduling conference in the now-consolidated Lead Case No. 16-cv-1453. See generally id. Judge Gilstrap issued a Sample Docket Control Order at the conference, which provides for, inter alia, an April 23, 2018 close to fact discovery and a September 10, 2018 trial. Case 2:16-cv-01453-JRG Document 138 Filed 10/10/17 Page 5 of 15 PageID #: 2434 PUBLIC VERSION - REDACTED On June 2, 2017, aider two extensions of time (Case No. 16-cv-1452, D.I. 18 and Case No. 16-cv-1453, D.I. 40), TCL responded to the Amended Complaint by filing a Motion to Dismiss. Case No. 16-cv-1453, D.I. 48. Due to the complex procedural history of this matter, TCL and Nichia began discovery in this case even prior to this Court’s May 31, 2017 scheduling conference. On October 20, 2016, Nichia served its infringement contentions and corresponding document production on, inter alia, TCL, regarding the ’250 Patent. See Case No. 16-cv-615, D.I. 48. Nichia also served a first set of common interrogatories on Defendants in Case No. 16-cv-615 on November 2, 2016, which TCL responded to on November 16, 2016. In that discovery, Nichia asked each Defendant to identify, inter alia, each manufacturer and supplier of the LEDs used in its Accused Products. In TCL’s response, TCL identified ~ ~ See Colgate Dec., Ex. C. TCL and Nichia have also begun discovery relating to the ’411 and ’071 Patents. On March 13, 2017, Nichia served on TCL its infringement contentions and accompanying document production regarding the ’411 and ’071 Patents, and on April 17, 2017, both sides served on each other their initial disclosures. No writ-ten discovery requests were served in Case No. 16-cv-1452, prior to the case being consolidated with Lead Case No. 16-cv-1453. Case 2:16-cv-01453-JRG Document 138 Filed 10/10/17 Page 6 of 15 PageID #: 2435 PUBLIC VERSION - REDACTED II. SUMMARY OF THE ARGUMENT Letter Rogatory are appropriate and warranted in this case because TCL’s Chinese Suppliers have key, non-duplicative documents and knowledge relating to the use, design, manufacture, and operation of the LEDs and LED backlighting assemblies in TCL’s accused products, which is important to the pending allegations of infringement and the issue of damages. III. FACTUAL BACKGROUND A. Supplier Background Colgate Dec., Ex. D. Colgate Dec., Ex. E. Colgate Dec., Ex. F. 7 Case 2:16-cv-01453-JRG Document 138 Filed 10/10/17 Page 7 of 15 PageID #: 2436 PUBLIC VERSION - REDACTED ~Colgate Dec., Ex. G. ~ See Colgate Dec., Ex. H. B. Case Background TCL’s accused products are LED televisions that are imported into the United States, and/or are made, used, sold, and/or offered for sale in the United States. Case No. 16-cv-875, D.I. 1 and Case No. 16-cv-1452, D.I. 1 at 1. The accused LED televisions are alleged to infringe Nichia’s ’250, ’411 and ’071 Patents (the "Patents-in-Suit") by virtue of TCL’s incorporation into its products of infringing LED and/or backlighting assemblies that contain infringing LEDs. As the asserted claims of the Patents-in-Suit cover the LEDs in the alleged LED televisions, and (to the best of Nichia’s knowledge) the LEDs are not made in the United States (or sold and/or offered for sale in the United States, or imported into the United States by the LED manufacturers and suppliers), Nichia has brought this Action against TCL. Further, to date, the only suppliers TCL has identified are ~. The Patents-in-Suit are related and share the same specification. All three are entitled "Light Emitting Device, Resin Package, Resin-Molded Body, and Methods for Manufacturing Light-Emitting Device, Resin Package and Resin-Molded Body." See ’250, ’411 and ’071 Patents. The Patents-in-Suit are directed to a novel process for manufacturing LEDs that greatly improves the product efficiency and design of the packaged LED device. The asserted claims of 8 Case 2:16-cv-01453-JRG Document 138 Filed 10/10/17 Page 8 of 15 PageID #: 2437 PUBLIC VERSION - REDACTED the Patents-in-Suit also concern, inter alia, an LED device with a new design and features that make it brighter and more reliable than other LEDs with similar dimensions. The asserted claims of the Patents-in-Suit also concern, inter alia, a method for manufacturing large numbers of bright and reliable LED packages quickly and efficiently, while preserving the structural and mechanical integrity of the individual LED packages upon "singulation" (i.e., separation) into individual devices. TCL imports into the United States, and manufactures, sells, and/or offers for sale in the United States, LED televisions that incorporate LED backlighting assemblies manufactured and supplied by, inter alia, ~, that infringe at least claims 1, 7, 17 and 21 of the ’250 Patent; at least claims 1, 2, 4-8, 10, 12, 13 and 15-20 ofthe ’411 Patent; and at least claims 1, 2, 4-9, 11, 12, 14- 19, 21-23 and 25 of the ’071 patent. As an example of asserted method claim, claim 1 of the ’250 patent recites: 1. A method of manufacturing a light emitting device, the method comprising: providing a lead frame comprising at least one notch; plating the lead frame; after plating the lead frame, providing an upper mold on a first surface of the plated lread frame and a lower mold on a second surface of the pleated lead frame, and transfer- molding a thermosetting resin containing alight reflecting material in a space between the upper mold and the lower mold to form a resin-molded body; and cutting the resin-molded body and the plated lead frame along the at least one notch to form a resin package, the resin package comprising a resin part and at least one lead, and the cutting step being performed such that an outer surface of the resin part and an outer surface of the at least one lead are planar at an outer side surface of the resin package; wherein the pleated lead frame is cut so as to form an unplated outer side surface on the lead. ’250 Patent, col. 19, 11. 37-55. Case 2:16-cv-01453-JRG Document 138 Filed 10/10/17 Page 9 of 15 PageID #: 2438 PUBLIC VERSION - REDACTED As an example of an asserted apparatus claim, claim 17 of the ’250 patent recites: 17. A light emitting device comprising: a resin package comprising a resin part and at least one lead, wherein an outer surface of the resin part and an outer surface of the at least one lead are planar at an outer surface of the resin package, wherein a plating is disposed on an upper surface and a lower surface of the at least one lead, wherein an outer side surface of the at least one lead is unplated, and wherein a portion of the resin part is disposed over a portion of the plating on the upper surface of the at least one lead. ’250 Patent, col. 20, 11. 56-67. The LED backlighting assemblies that TCL’s Chinese Suppliers have designed, manufactured and sold to TCL, which have been included in the accused LED televisions, contain light emitting devices ("LEDs") that include (among other things) a resin package comprising a resin part and at least one lead. In addition, the LEDs include at an outer surface of the resin part and an outer surface of the at least one lead that are planar at an outer surface of the resin package. The LEDs also include a plating disposed on an upper surface and a lower surface of the at least one lead, and an outer side surface of the at least one !ead that is unplated. The LEDs also include a portion of the resin part disposed over a portion of the plating on the upper surface of the at least one lead. LEDs that TCL’s Chinese Suppliers appear in the accused TCL televisions. Nichia’s infringement allegations relate directly to the incorporate into the LED backlighting assemblies that 10 Case 2:16-cv-01453-JRG Document 138 Filed 10/10/17 Page 10 of 15 PageID #: 2439 PUBLIC VERSION - REDACTED IV. ARGUMENT A. Letter Rogatory Are The Proper Method For a U.S. Court to Seek Discovery in China Letter Rogatory are formal requests sent by a court to a foreign court asking that a witness residing within that foreign court’s jurisdiction either provide documents, a deposition, or both for use in a pending action before the requesting court. Intel Corp. v. Adv. Micro Devices, Inc., 542 U.S. 241,247 n. 1 (2004) ("A letter rogatory is the request by a domestic court to a foreign court to take evidence from a certain witness."). See also 28 U.S. §§ 1781 (permitting the "transmittal of a letter rogatory or request directly from a tribunal in the United States to the foreign or international tribunal, officer, or agency to whom it is addressed and its return in the same manner"). Nichia’s request for issuance of a Letter Rogatory to obtain documents from TCL’s Chinese Suppliers is the appropriate and p.referred method of obtaining documents from these entities, as China and the United States are signatories to the Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters ("Hague Convention"). See The Hague Conference on Private International Law, https://hcch.net (last visited February 2, 2017). Although Letters Rogatory are the appropriate method for obtaining documents or deposition testimony from a third party entity located in a foreign country (Intel Corp v. Advanced Micro Devices, Inc., 542 U.S. 241,247 n. 1 (2004)), China does not permit the taking of depositions or witness statements (even from willing witnesses) in China for use in foreign courts. See http://travel.state.gov/content/travel/en!legal-cnsiderations/judicial/country/ china.html (explaining that "China does not permit attorneys to take depositions in China for use in foreign courts" and "[p]articipation in such an activity could result in the arrest, detention or deportation of the American attorneys and other participants"). Thus, Nichia seeks only documents from 11 Case 2:16-cv-01453-JRG Document 138 Filed 10/10/17 Page 11 of 15 PageID #: 2440 PUBLIC VERSION - REDACTED TCL’s Chinese suppliers, based on the understanding that there is no legal procedure allowing for the deposition of these entities. A party invoking the Hague Convention procedures bears the burden of persuading the trial court of the necessity of a Letter Rogatory. Tulip Comput. Int’l B. V. v. Dell Comput. Corp., 254 F. Supp. 2d 469, 474 (D. Del. 2003) (citation omitted). That burden is minimal, however, as the Convention procedures are available whenever they will facilitate the gathering of evidence by means authorized in the Convention. Id. (citation omitted). Factors relevant to the Court’s decision include "considerations of comity, the relative interests of the parties including the interest in avoiding abusive discovery, and the ease and efficiency of alternative formats for Id..(citation omitted). For the reasons discussed below, Nichia has satisfied its discovery." burden. B. Letters Rogatory to TCL’s Chinese Suppliers Will Result in Documents that are Critical to Proving Infringement and Damages The Letters Rogatory to TCL’s Chinese Suppliers are critical for several reasons. First, the Letters Rogatory seek documents that relate directly to Nichia’s allegations that TCL infringes the Patents-in-Suit. For example, Nichia requests that the Chinese Suppliers be asked to produce documents relating to the method by which the LEDs are manufactured. Because the Chinese Suppliers are either the direct purchasers of the LEDs in the TCL televisions, the technical documents in the Chinese Suppliers’ possession will confirm that TCL’s accused LED televisions infringe the asserted claims. In addition, because the Chinese Suppliers are closer to the LED manufacturers than TCL is, they are likely to have directly relevant documents that are not in TCL’s possession custody, or control. Second, the Letters Rogatory seek documents relating to the scope of infringement. While Nichia has identified a number of TCL accused LED televisions that infringe the Patents- 12 Case 2:16-cv-01453-JRG Document 138 Filed 10/10/17 Page 12 of 15 PageID #: 2441 PUBLIC VERSION - REDACTED in-Suit, it is unclear whether all televisions of the identified models contain infringing LEDs, whether only some televisions of the identified models contain infringing LEDs, and whether TCL televisions may contain infringing LEDs that Nichia has not been able to identify. Nichia needs the requested discovery to determine the scope of infringement, which is necessary for assessing the damages at issue in this case. Third, given that the Chinese Suppliers may not themselves be the manufacturers of the LEDs in TCL’s televisions, the Letter Rogatory seek documents identifying the LED manufacturers and suppliers. To be clear, Nichia originally sought this information directly from TCL; however, in response to Nichia’s request, TCL only identified the manufacturers and suppliers of the LED backlighting assemblies that it uses in its LED Televisions. Thus, Nichia now seeks to obtain the LED manufacturer and supplier information from the LED backlighting assembly manufacturers and suppliers (who, again, are one step closer to the LED manufacturers and suppliers in the supply chain). This information will allow Nichia, if necessary, to pursue further discovery directly fi’om LED manufacturers and suppliers. As set forth above, Nichia has tried to collect documents from TCL regarding its LED manufacturers and suppliers in the past, but thus far those efforts have been unsuccessful. Despite Nichia’s interrogatory requesting that TCL identify "each manufacturer and suppliers of the LEDs" in its accused products, TCL has not identified a single LED manufacturer or supplier. Rather, it has identified only manufacturers and suppliers of LED backlighting assemblies. Due to the time it takes to obtain discovery from entities pursuant to Letters Rogatory, as well as the procedural history of this matter, and the importance of the discovery Nichia seeks from the Chinese Suppliers to proving infi’ingement and damages against TCL, the 13 Case 2:16-cv-01453-JRG Document 138 Filed 10/10/17 Page 13 of 15 PageID #: 2442 PUBLIC VERSION - REDACTED prompt issuance of Letters Rogatory is likely to be the most effective means of obtaining the necessary information. V. The Letters are Necessary because Plaintiff has no other Means to Obtain the Discovery at Issue, Which is Necessary to Prove Infringement and Damages Nichia has no other means through which to obtain the requested discovery. Nichia has tried to collect discovery through voluntarily means from TCL, but thus far those efforts have proven unsuccessful. Also, Nichia tried to collect voluntary third party discovery from ~ See Colgate Dec., Exhibit VI. CONCLUSION For the foregoing reasons, Nichia respectfully requests that the Court approve, date, and execute the proposed Letters Rogatory accompanying this motion. After the Court signs the Letters Rogatory, Nichia further requests that the clerk authenticate the Court’s signature by affixing the Court’s seal thereto, and that the Letters Rogatory be thereafter returned by the clerk to counsel for Nichia so that the Letters Rogatory may be property transmitted to the Appropriate Judicial Authority of the People’s Republic of China for execution. 14 Case 2:16-cv-01453-JRG Document 138 Filed 10/10/17 Page 14 of 15 PageID #: 2443 PUBLIC VERSION - REDACTED DATED: June 6, 2017 Respectfully submitted, ROTHWELL, FIGG, ERNST & MANBECK, P.C. By:/s/Robert P. Parker (with permission by Otis Carroll Robert P. Parker* Martin M. Zoltick* Steven P. Weihrouch* Jenny L. Colgate* Michael H. Jones* Daniel McCallum* Nechama E. Potasnick* Mark T. Rawls* 607 14th Street, N.W.- Suite 800 Washington, D.C. 20005 Tel: (202) 783-6040 Fax: (202) 783-6031 Email: NichiaLiT@rt~m.com and IRELAND CARROLL & KELLEY Otis Carroll -- State Bar No. 03895700 Collin Michael Maloney -- State Bar No. 00794219 6101 S Broadway, Suite 500 Tyler, TX 75703 Tel: (903) 561-1600 Fax: (903) 581-1071 Email: cmaloney@icklaw.com Email: ...o....t..i..s....c..~!~;..c.?.Jj.@.i..c.....k.;!.’.a...~:~....~...q.~. Attorneys for Plaintiff CERTIFICATE OF SERVICE I hereby certify that on June 6, 2017, the foregoing document was filed electronically under seal in compliance with Local Rule CV-5(a), and served via email upon counsel of record. By: /s/ Otis Carroll Otis Carroll 15 Case 2:16-cv-01453-JRG Document 138 Filed 10/10/17 Page 15 of 15 PageID #: 2444