The California Institute of Technology v. Broadcom Limited et al

OPPOSITION re: MOTION to Compel Deposition of Dr. Henry Pfister 685

C.D. Cal.October 1, 2018

DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION REGARDING DR. HENRY PFISTER CASE NO. 2:16-CV-3714-GW (AGRX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MARK D. SELWYN (SBN 244180) mark.selwyn@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 950 Page Mill Road Palo Alto, California 94304 Tel: (650) 858-6000 Fax: (650) 858-6100 JAMES M. DOWD (SBN 259578) james.dowd@wilmerhale.com AARON S. THOMPSON (SBN 272391) aaron.thompson@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 350 South Grand Avenue, Suite 2100 Los Angeles, California 90071 Tel: (213) 443-5300 Fax: (213) 443-5400 Attorneys for Defendants and Counter- Claim Plaintiffs Broadcom Limited, Broadcom Corporation, Avago Technologies Limited, and Apple Inc. UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA THE CALIFORNIA INSTITUTE OF TECHNOLOGY, Plaintiff, vs. BROADCOM LIMITED, BROADCOM CORPORATION, AVAGO TECHNOLOGIES LIMITED, AND APPLE INC., Defendants. CASE NO. 2:16-cv-3714- GW(AGRx) DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION REGARDING DR. HENRY PFISTER The Hon. George H. Wu United States District Judge Hearing Date: October 22, 2018 Time: 8:30 AM Place: Courtroom 9D Case 2:16-cv-03714-GW-AGR Document 706 Filed 10/01/18 Page 1 of 11 Page ID #:33926 DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION REGARDING DR. HENRY PFISTER CASE NO. 2:16-CV-3714-GW (AGRX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BROADCOM LIMITED, BROADCOM CORPORATION, AVAGO TECHNOLOGIES LIMITED, AND APPLE INC., Counterclaim- Plaintiffs, vs. THE CALIFORNIA INSTITUTE OF TECHNOLOGY, Counterclaim- Defendant. Case 2:16-cv-03714-GW-AGR Document 706 Filed 10/01/18 Page 2 of 11 Page ID #:33927 -1- DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION REGARDING DR. HENRY PFISTER CASE NO. 2:16-CV-3714-GW (AGRX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 I. INTRODUCTION Caltech’s motion should be denied for five reasons. First, Caltech never served its subpoena on Dr. Pfister, and Defendants’ counsel never agreed to accept service on his behalf. Under Fed. R. Civ. P. 45(b)(1), service on the subpoenaed party is a prerequisite to any attempt to enforce the subpoena. Second, even if Caltech had served the subpoena on Dr. Pfister, the subpoena would have been deficient for requiring compliance in Redwood City, California, which is thousands of miles from where Dr. Pfister resides and is employed. Fed. R. Civ. P. 45(c)(1) requires that a subpoena can only command testimony or production of documents “within 100 miles of where the person resides, is employed, or regularly transacts business in person.” Third, even if the subpoena were served and procedurally proper, Rule 45(d)(2)(B)(i) requires that any motion to enforce the subpoena be brought only in the district “where compliance is required.” Because the unserved subpoena demands compliance (improperly) in Redwood City, California, the Northern District of California is the exclusive venue (at least initially) for any motion to enforce. Fourth, Caltech never identified Dr. Pfister as a witness in its Initial Disclosures, and Caltech has previously successfully precluded Defendants from relying on witnesses who were identified in their Initial Disclosures but found to have been disclosed late. Under the standard that Caltech has successfully imposed on Defendants, Caltech should not be permitted to depose a fact witness not identified in its Initial Disclosures. Fifth, Caltech mischaracterizes the agreement between the parties on October 26, 2017, which provides no basis to compel Dr. Pfister’s deposition. Defendants agreed that Dr. Pfister could be deposed as both a fact and expert Case 2:16-cv-03714-GW-AGR Document 706 Filed 10/01/18 Page 3 of 11 Page ID #:33928 -2- DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION REGARDING DR. HENRY PFISTER CASE NO. 2:16-CV-3714-GW (AGRX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 witness if he served an expert report. Defendants never agreed to make Dr. Pfister available as a witness if he did not serve an expert report. In fact, Dr. Pfister did not submit an expert report. Instead, Dr. Paul Siegel, who co-authored the relevant prior art with Dr. Pfister, submitted an expert report and will be deposed. Defendants have fully honored their agreement with Caltech. II. BACKGROUND Dr. Pfister is one of two authors of a prior art reference that Defendants assert renders obvious the patents-in-suit in combination with other art identified by Defendants. (Exs. A, B.) Dr. Pfister’s co-author, Dr. Siegel, is a witness in the case, has provided an expert report on behalf of Defendants, and will be deposed. On October 4, 2017, Defendants identified Dr. Pfister in their Third Amended Initial Disclosures as a witness who “may have discoverable information relevant to the claims or defenses in this case” and as someone who is “[b]elieved to have knowledge regarding prior art.” (Dkt. No. 687-2 at 2, 4.) In the same disclosure, Defendants also identified Mr. Eric Jacobsen (whom Caltech mentions in its brief) as a witness with potentially discoverable information. Following Defendants’ identification of Dr. Pfister and Mr. Jacobsen, Caltech supplemented its Initial Disclosures to identify Mr. Jacobsen as a potential witness for its case. (Ex. C.) But Caltech did not also identify Dr. Pfister. (Id.) On October 6, 2017 and October 12, 2017, Caltech provided a notice of subpoena to Defendants for Mr. Jacobsen and Dr. Pfister, respectively. (Ex. D and E; Dkt. Nos. 685-3.) With regard to Mr. Jacobsen, Caltech’s October 12, 2017 email included a notice of service of subpoena to Mr. Jacobsen stating that Caltech “will serve the attached subpoena.” (Dkt. No. 685-4.) With regard to Dr. Pfister, however, Caltech asked Defendants to “[p]lease confirm by Monday, October 9 at 10:00 am that WilmerHale will accept service of the Rule 45 subpoenas on behalf of Messrs. Frey, Pfister, and Siegel.” (Ex. D.) Caltech further stated that “[i]f Case 2:16-cv-03714-GW-AGR Document 706 Filed 10/01/18 Page 4 of 11 Page ID #:33929 -3- DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION REGARDING DR. HENRY PFISTER CASE NO. 2:16-CV-3714-GW (AGRX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 WilmerHale will not accept service, Caltech will personally serve the witnesses.” (Id.) WilmerHale was not authorized to accept service on Dr. Pfister’s behalf, and did not agree to do so. Caltech personally served Mr. Jacobsen with a subpoena on October 12, 2017. Caltech never personally served Dr. Pfister with any subpoena. At the time Caltech sought Dr. Pfister’s and Mr. Jacobsen’s depositions, Defendants were in the process of identifying potential testifying experts. Defendants believed it was possible that they would serve expert reports from Dr. Pfister, Dr. Siegel, and/or Mr. Jacobsen. Accordingly, Defendants agreed that, to the extent any of these witnesses served an expert report, they could be deposed as both a fact and expert at the same time. As such, in their October 26, 2017 email, Defendants noted that they intended to submit an expert report from Dr. Pfister. (Dkt. No. 685-7.) Defendants explained in their email to Caltech that “the Initial Disclosures include certain fact witnesses who will also be providing expert reports” and that “these witnesses will be deposed once, after they submit reports, in their capacities as both expert and fact witnesses.” (Id. (emphasis added).) Several months later, Defendants decided to rely on Dr. Siegel for an expert report and determined that it would be duplicative to have Dr. Pfister also provide an expert report, since both witnesses relate to the same reference. Following service of expert reports, Caltech sought the deposition of Dr. Pfister. However, because (1) Defendants did not serve a report from Dr. Pfister, (2) Caltech never served a subpoena on Dr. Pfister, (3) Defendants do not intend to present Dr. Pfister as a fact witness, and (4) Caltech never identified Dr. Pfister as a witness in its Initial Disclosures, Defendants declined to agree to a deposition of Dr. Pfister. (Dkt. No. 685-11.) Case 2:16-cv-03714-GW-AGR Document 706 Filed 10/01/18 Page 5 of 11 Page ID #:33930 -4- DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION REGARDING DR. HENRY PFISTER CASE NO. 2:16-CV-3714-GW (AGRX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 III. ARGUMENT The Subpoena May Not Be Enforced Because Dr. Pfister Was Never Served. Under Rule 45, a motion may be brought to enforce a subpoena only if it has first been served on the subpoenaed person. See Fed. R. Civ. P. 45(b)(1); Fed. R. Civ. P. 45(d)(2)(B)(i); Fed. R. Civ. P. 45(g) (“The court for the district where compliance is required—and also, after a motion is transferred, the issuing court— may hold in contempt a person who, having been served, fails without adequate excuse to obey the subpoena or an order related to it.”) (emphasis added). Proper service is described in Rule 45(b). It requires “delivering a copy [of the subpoena] to the named person and, if the subpoena requires that person’s attendance, tendering the fees for 1 day’s attendance and the mileage allowed by law.” Caltech never personally served its subpoena on Dr. Pfister; Caltech has provided no proof of service, and the proof of service in the notice of service of subpoena that Caltech attached to its brief is blank. (Dkt. No. 685-3 at 6.) While Caltech attempted service by email, Dr. Pfister never agreed to accept service of Caltech’s subpoena by email, and the rules provide no exception to the personal service requirement. See Fed. R .Civ. P. 5. The sole case that Caltech cites, Prescott v. Cty. of Stanislaus, No. 1:10-CV- 00592 JLT, 2012 WL 10617, at *3 (E.D. Cal. Jan. 3, 2012), is contrary to Caltech’s assertions that it properly served Dr. Pfister. That case specifically states that without personal service of the subpoena, a court has no jurisdiction. Id. at 3-4 (“Personal service of a deposition subpoena is required by Fed. R. Civ. P. 45(b)(1). Rule 45(b)(1) reads, ‘Any person who is at least 18 years old and not a party may serve a subpoena. Serving a subpoena requires delivering a copy to the named person and, if the subpoena requires that person’s attendance, tendering the fees for 1 day’s attendance and the mileage allowed by law.”; “Because the subpoena Case 2:16-cv-03714-GW-AGR Document 706 Filed 10/01/18 Page 6 of 11 Page ID #:33931 -5- DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION REGARDING DR. HENRY PFISTER CASE NO. 2:16-CV-3714-GW (AGRX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 was not properly served on Dr. Pick, the Court lacks the authority to compel compliance with it.”) (emphasis in original). Caltech argues that service was effectuated by e-mailing the subpoena to Defendants’ counsel on the ground that “Defendants stated in their initial disclosures that these witnesses ‘are to be contacted through’ Defendant’s counsel.” (Mot. at 2.) However, Caltech’s email to Defendants does not constitute effective service. Under Rule 5, electronic service to a person’s lawyer is insufficient unless both the lawyer and the represented party consent. Rule 5(b) allows electronic service only when a party consents in writing to receive service electronically. In Caltech’s October 6, 2017 email, Caltech asked Defendant to “[p]lease confirm by Monday, October 9 at 10:00 am that WilmerHale will accept service of the Rule 45 subpoenas on behalf of Messrs. Frey, Pfister, and Siegel.” (Ex. D.) Defendants did not agree to receive service on behalf of Dr. Pfister, nor did Dr. Pfister agree to be served in this manner.1 Accordingly, Caltech’s email to Defendants does not establish proper service of the subpoena. See Tubar v. Clift, No. C05-1154 JCC, 2007 WL 214260, at *6 (W.D. Wash. Jan. 25, 2007) (finding that plaintiff failed to meet the requirements of Rule 5(b) when e-mailing the subpoenas to counsel without written consent for service in this manner); Fujikura Ltd. v. Finisar Corp., No. 15-mc-80110-HRL (JSC), 2015 WL 5782351, at *5 (N.D. Cal. Oct. 5, 2015) (“[U]nlike service of most litigation papers after the summons and complaint, service [of a subpoena] on a person’s lawyer will not 1 Caltech also did not provide witness fees during its alleged “service” of Dr. Pfister’s subpoena. Rule 45(b)(1) requires both personal service of the subpoena and tendering witness fees for attendance. See Bailey v. Leonhardt, 481 F. App’x 381, 382 (9th Cir. 2012) (“The district court did not abuse its discretion in quashing Bailey’s subpoenas because Bailey failed to comply with personal service and witness fee requirements”); Wallis v. Centennial Ins. Co., No. 2:08-cv- 2558 WBS AC, 2013 WL 434441, at *4 (E.D. Cal. Feb. 1, 2013) (quashing deposition subpoena where plaintiff failed to tender requisite witness fees until after service); Mirana v. Battery Tai-Shing Corp., No. C 08-80142 MISC. JF, 2009 WL 290459, at *1 (N.D. Cal. Feb. 5, 2009) (quashing subpoena for failure to tender witness fees upon service). Case 2:16-cv-03714-GW-AGR Document 706 Filed 10/01/18 Page 7 of 11 Page ID #:33932 -6- DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION REGARDING DR. HENRY PFISTER CASE NO. 2:16-CV-3714-GW (AGRX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 suffice.”) (citing 9A Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedures § 2454 (3d ed. 2015) (collecting cases)). Moreover, because Caltech’s subpoena was never properly served, Defendants and Dr. Pfister did not waive any objections to the demands of the subpoena. Under Rule 45(d)(2)(B), no objections are due until the “earlier of the time specified for compliance or 14 days after the subpoena is served.” Moreover, Dr. Pfister also did not waive its objections by failing to move to quash the subpoena. There is no obligation or need to object before proper service of a subpoena. Even If It Had Served Dr. Pfister, Caltech’s Subpoena Would Still Be Improper To Enforce. Even if Caltech had properly served the subpoena on Dr. Pfister, it still would be improper to enforce. First, the subpoena is deficient on its face. Dr. Pfister is a professor at Duke University in Durham, North Carolina, and resides in Durham. However, the subpoena commands a deposition and a production of documents as defined in Attachment A at Quinn Emanuel’s Redwood City, CA office on October 26, 2017 (Dkt. No. 685-3), which is more than 100 miles from where Dr. Pfister resides and is employed. See City of Colton v. Am. Promotional Events, Inc., No. CV 05- 01479 JFW (Ex), 2011 WL 13224074, at *1 (C.D. Cal. Sept. 6, 2011) (“Under Federal Rule of Civil Procedure 45(c)(3), a court must quash a subpoena if it . . . requires a third party to travel more than 100 miles from the subpoenaed person’s residence, place of employment, or place where the person transacts business . . . .”). Second, a motion to compel must be brought in the district “where compliance is required.” See Fed. R. Civ. P. 45(d)(2)(B)(i) (explaining that “the serving party may move the court for the district where compliance is required for Case 2:16-cv-03714-GW-AGR Document 706 Filed 10/01/18 Page 8 of 11 Page ID #:33933 -7- DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION REGARDING DR. HENRY PFISTER CASE NO. 2:16-CV-3714-GW (AGRX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 an order compelling production or inspection”); Am. Home Assurance Co. v. Tutor-Saliba Corp., No. 15-00303 SC, 2015 WL 2228062, at *5 (N.D. Cal. May 12, 2015) (noting that a subpoena-related motion must be filed with court in district where compliance is required); Fed. R. Civ. P. 45(f) advisory committee’s note (2013) (“[S]ubpoena-related motions and applications are to be made to the court where compliance is required under Rule 45(c) . . . .”); see also Fed. R. Civ. P. 37(a)(2) (stating that a motion for an order compelling discovery “to a nonparty must be made in the court where the discovery is or will be taken”). Therefore, even if Caltech properly served Dr. Pfister’s facially defective subpoena (which it did not), Caltech should have brought its motion to compel Dr. Pfister’s deposition in the Northern District of California (where the subpoena purports to require compliance). See Am. Home Assurance Co., 2015 WL 2228062, at *5. Caltech Never Identified Dr. Pfister As A Witness In Its Initial Disclosures. Caltech asserts that “Defendants and Caltech both identified [Dr. Pfister and Mr. Jacobsen] in their initial disclosures.” (Mot. at 1.) That is incorrect. Caltech did not disclose Dr. Pfister in any of its disclosures. (Exs. C, F, G.) Accordingly, Caltech did not view Dr. Pfister as a necessary witness with “discoverable information.” Moreover, on December 18, 2017, Caltech successfully precluded Defendants from relying on witnesses who were identified in Defendants’ Initial Disclosures but found to have been disclosed late. (Dkt. No. 375.) The Court excluded 29 individuals initially disclosed in Defendants’ Third Amended Initial Disclosures served on October 4, 2017. (Id.) Dr. Pfister was likewise disclosed in Defendants’ October 4, 2017 amended initial disclosures, but Caltech decided not to challenge Dr. Pfister’s disclosure in its motion to exclude late disclosed witnesses. (Dkt. No. 333.) The Court observed that the prior art witnesses Case 2:16-cv-03714-GW-AGR Document 706 Filed 10/01/18 Page 9 of 11 Page ID #:33934 -8- DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION REGARDING DR. HENRY PFISTER CASE NO. 2:16-CV-3714-GW (AGRX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants disclosed in its October 4, 2017 disclosure should be excluded because they were disclosed late and the “added value of the reference’s author is usually minimal.” (Dkt. No. 375 at 6.) Under the standard that Caltech has successfully imposed on Defendants, Caltech should not be permitted to depose an author- witness not identified in its Initial Disclosures. Caltech Misstates The Parties’ Agreement. Caltech mischaracterizes the agreement between the parties on October 26, 2017, and cannot use it as a basis to compel Dr. Pfister’s deposition. First, Defendants explained in their email to Caltech that “the Initial Disclosures include certain fact witnesses who will also be providing expert reports” and that “these witnesses will be deposed once, after they submit reports, in their capacities as both expert and fact witnesses.” (Dkt. No. 685-7 (emphasis added).) Defendants’ agreement was premised on the assumption that these individuals would submit an expert report. However, Dr. Pfister did not submit an expert report. Second, Caltech’s assertion that it “would have proceeded with Dr. Pfister’s fact deposition in October 2017” absent assurance that it could depose him later is inaccurate because Caltech never disclosed Dr. Pfister in its Initial Disclosures or served him with a subpoena. (Exs. C, F, G.) Moreover, Dr. Pfister is one of two authors for the “Pfister/Pfister Slides.” (Mot. at 5; Exs. A, B.) The other author is Dr. Siegel, who will be deposed during the upcoming round of expert depositions. (Ex. H.) As the Court wrote in its December 18, 2017 Order, “[t]he added value of the reference’s author is usually minimal. Accordingly, there is no expectation that a party will bring a reference’s author rather than simply referring to the reference itself for purposes of motion practice and trial.” (Dkt. No. 375 at 6.) Case 2:16-cv-03714-GW-AGR Document 706 Filed 10/01/18 Page 10 of 11 Page ID #:33935 -9- DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION REGARDING DR. HENRY PFISTER CASE NO. 2:16-CV-3714-GW (AGRX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 IV. CONCLUSION For the foregoing reasons, Defendants respectfully request that the Court deny Caltech’s Motion to Enforce The Agreement Regarding the Deposition of Dr. Pfister And Compel Deposition Testimony of Dr. Henry Pfister. Respectfully submitted, DATED: October 1, 2018 By: /s/ James M. Dowd JAMES M. DOWD (SBN 259578) james.dowd@wilmerhale.com AARON S. THOMPSON (SBN 272391) aaron.thompson@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 350 South Grand Avenue, Suite 2100 Los Angeles, California 90071 Tel: (213) 443-5300 Fax: (213) 443-5400 MARK D. SELWYN (SBN 244180) mark.selwyn@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 950 Page Mill Road Palo Alto, California 94304 Tel: (650) 858-6000 Fax: (650) 858-6100 Attorneys for Defendants Broadcom Limited, Broadcom Corporation, Avago Technologies Limited, Apple Inc., and Cypress Semiconductor Corporation Case 2:16-cv-03714-GW-AGR Document 706 Filed 10/01/18 Page 11 of 11 Page ID #:33936