Case 5:16-cv-06371-BLF Document 250 Filed 06/03/19 Page 1 of 6
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`POWER INTEGRATIONS, INC.,
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`Plaintiff,
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`v.
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`ON SEMICONDUCTOR CORPORATION,
`et al.,
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`Defendants.
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`Case No.16-cv-06371-BLF (VKD)
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`ORDER RE DISCOVERY DISPUTE RE
`CIRCUIT SCHEMATICS AND RULE
`30(B)(6) TESTIMONY
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`Re: Dkt. No. 217
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`In this patent infringement action, plaintiff Power Integrations, Inc. (“PI”) and defendants
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`ON Semiconductor Corporation and Semiconductor Components Industries, LLC (collectively,
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`“ON”) dispute whether ON should be required to produce additional high-resolution schematics
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`for all of the representative accused products, or whether ON’s current production of schematics is
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`sufficient. The parties also dispute whether ON should be required to provide further deposition
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`testimony concerning certain deposition topics for which PI contends ON’s corporate
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`representative was unprepared.
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`The Court conducted a hearing on these disputes on May 21, 2019. Dkt. No. 241.
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`Following the hearing, at the Court’s direction, ON submitted the deposition transcripts of its
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`corporate representative, Ajay Hari. As explained below, the Court denies PI’s motion to compel
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`the further production of schematics for ON’s accused products, and grants in part and denies in
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`part PI’s motion to compel further deposition testimony.
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`I.
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`SCHEMATICS OF ACCUSED ON PRODUCTS
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`The Court understands that the parties are conducting discovery directed to seven
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`representative accused ON products. Dkt. No. 217 at 1. In the ordinary course of its business, ON
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`Case 5:16-cv-06371-BLF Document 250 Filed 06/03/19 Page 2 of 6
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`maintains the schematics for these products in an electronic format. The schematics may be
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`viewed using a schematic viewer provided by Cadence Design Systems. Id. at 5. The parties do
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`not dispute that for each of these products, ON has produced schematics in both TIFF format and
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`PDF format, and that ON has made available to PI a Cadence terminal for viewing the schematics
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`as they are maintained in their native format. Id. The parties dispute only whether ON has
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`produced its schematics in high-resolution PDF format. Dkt. No. 249 at: 4:19-24, 18:2-19, 40:23
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`–42:9. ON insists it has produced high-resolution PDFs; PI insists that, except for a set of
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`schematics for the NCP1246 produced during Mr. Hari’s deposition, ON has not produced high-
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`resolution PDFs.
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`The Court need not resolve this dispute, as it is clear that ON has made the schematics
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`available to PI in their native format by providing PI access to a Cadence terminal for viewing the
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`schematics in their native format. ON has satisfied its obligations under Rule 34(b)(2)(E) of the
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`Federal Rules of Civil Procedure. No further production is required.
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`II.
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`RULE 30(B)(6) TESTIMONY OF ON
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`A. Topics 2 and 4
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`PI served a Rule 30(b)(6) deposition notice on ON that included the following topics:
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`Topic 2. The structure, function, and operation of the circuits of the
`Accused ON Products.
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`Topic 4. The interpretation and explanation of ON’s technical
`documents describing the circuits or circuit design of the Accused
`ON Products.
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`Dkt. No. 214-2 at 4, 5. ON designated Ajay Hari as its corporate representative for these topics,
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`except as they concern the NCP105x products. Id. PI argues that Mr. Hari was not prepared to
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`testify about information known to ON within the scope of these topics. Dkt. No. 217 at 2. ON
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`argues that Mr. Hari was prepared but, given the breadth of these topics and the complexity of the
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`schematics, it would not be possible for ON to designate a witness capable of answering all
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`questions within the scope of these topics. Id. at 5–6.
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` Rule 30(b)(6) requires the party seeking discovery to describe “with reasonable
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`particularity the matters for examination.” Fed. R. Civ. P. 30(b) (6). The designating party must
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`Case 5:16-cv-06371-BLF Document 250 Filed 06/03/19 Page 3 of 6
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`make a good faith effort to prepare its designees so that they can answer questions fully,
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`completely, and unevasively. In re JDS Uniphase Corp. Sec. Litig., Case No. 02-CV-1486 CW
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`(EDL), 2007 WL 219857, at *1 (N.D. Cal. Jan. 29, 2007). A corporation may select one or more
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`officers, directors, managing agents, or other persons to testify on its behalf, but if the designee
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`cannot testify fully and completely on behalf of the corporation as to a particular topic based on
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`his or her own personal knowledge, the corporation has a duty to prepare the designee using other
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`sources of information available to the corporation. Id. (“The deponent must prepare the designee
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`to the extent matters are reasonably available, whether from documents, past employees, or other
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`sources.”); Gen. Elec. Co. v. Wilkins, No. 10-00674 LJO JLT, 2012 WL 2376940, at *11 (E.D.
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`Cal. June 22, 2012) (“A corporate designee need not have personal knowledge of the topics at
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`issue but must be sufficiently prepared on the topics such to be able to provide knowledgeable and
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`binding testimony.”).
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`ON is correct that PI’s deposition topics are extremely broad. While the topics are limited
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`to “the Accused ON Products,” they are not limited to the accused functionality within those
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`products. However, ON did not object to these deposition topics on the ground that they failed to
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`specify the subject matter of the examination with reasonable particularity. Instead, after making a
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`series of mostly boilerplate objections to both topics, ON designated Mr. Hari “subject to [ON’s]
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`general and specific objections,” without further specifying the scope of the matters about which
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`Mr. Hari would be prepared to testify, except to exclude the NCP105x product family.
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`The Court has reviewed not only the excerpts of Mr. Hari’s deposition testimony submitted
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`with the parties’ joint discovery dispute letter, but also the entirety of Mr. Hari’s deposition
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`testimony on March 28 and 29, 2019. Based on that review, the Court concludes that while Mr.
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`Hari was able to answer certain questions about the accused functionality, such as questions posed
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`with reference to ON’s product data sheets, he was not prepared to answer questions about the
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`operation of the accused circuits with reference to ON’s schematics. ON asserts that “Mr. Hari
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`studied the schematics before the deposition and was familiar with the operation of the accused
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`products.” Dkt. No. 217 at 5. That assertion is inconsistent with Mr. Hari’s own deposition
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`testimony in which he acknowledged that he did not review (let alone “study”) any of the
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`schematics for the representative accused products before his deposition, except for the schematics
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`of the NCP1246 product, which he merely “glanced at.” Hari Rule 30(b)(6) Dep. at 19:14-20:19.
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`During the deposition, Mr. Hari did not appear to be knowledgeable about the schematics he was
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`shown and required time to analyze them in order to respond to questions posed about the accused
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`functionality. When he did respond, his testimony suggests that he was interpreting the
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`schematics in real-time, rather than providing ON’s corporate knowledge about the operation of
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`the particular circuit in question. See, e.g., id. at 177:2–179:24.
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`The Court agrees that no designee could reasonably be expected to testify about all of the
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`circuits in all of the accused ON products. However, PI appears to have limited its questions to
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`the operation of the circuits related to the accused functionality, and ON should have expected to
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`prepare its designee to testify about that subject matter. ON explains that Mr. Hari studied specific
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`portions of the schematics in the evening between his first and second days of deposition, and that
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`he would have been able to answer PI’s questions had PI not abruptly terminated that portion of
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`the deposition with a question pending. Dkt. No. 217 at 5–6. The Court has reviewed the portion
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`of Mr. Hari’s second day of deposition in which he was questioned again about schematics. Mr.
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`Hari certainly seemed more familiar with the schematics on that second day, but he did not seem
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`particularly facile with or knowledgeable about them, and he appeared to still require time to study
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`and interpret the schematics during the deposition. It is not surprising that a corporate designee
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`would require some amount of time to examine a complex document when answering questions in
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`a deposition, but even on his second day of deposition, Mr. Hari seemed to be still in the process
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`of learning or understanding the schematics in the first instance. See, e.g., Hari Rule 30(b)(6) Dep.
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`at 364:4–367:20.
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`The Court concludes that ON did not adequately prepare a corporate designee to testify
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`about the portions of Topics 2 and 4 that concern the operation of the circuitry implementing the
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`accused functionality of the representative accused products. ON must prepare one or more
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`designees to testify on its behalf regarding this subject matter. The deposition will be limited to
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`three hours and will be limited to questions relating to the schematics for the representative
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`accused products. In advance of the deposition, PI must advise ON of the specific functionality
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`Case 5:16-cv-06371-BLF Document 250 Filed 06/03/19 Page 5 of 6
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`about which it will examine the designee, as it did towards the end of the first day of Mr. Hari’s
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`deposition.
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`B. Topics 12-17
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`PI’s Rule 30(b)(6) deposition notice also included the following topics:
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`Topic 12. The features that ON’s customers or potential customers
`prefer, or have requested, be incorporated or designed into the
`Accused ON Products.
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`Topic 13. Communications with any third parties related to the
`Accused Infringing Features or any functionally equivalent features
`in PI’s products, including the identity of those third parties,
`documents that refer to, relate to, or corroborate those
`communications, and the facts and circumstances relating to those
`communications.
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`Topic 14. ON’s internal efforts and work with customers to
`incorporate any Accused ON Produce into any Downstream
`Product, including work to design-in, qualify, or otherwise sell the
`Accused ON Products or Downstream Products containing the
`Accused ON Products.
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`Topic 15. ON’s internal efforts and work with customers to design
`or qualify any Downstream Product using any Accused ON Product
`to meet or conform to any U.S. regulatory standards, including
`Federal Communications Commission (“FCC”), Energy Star,
`California Energy Commission (“CEC”), or Underwriters’
`Laboratories (“UL”) standards.
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`Topic 16. The preparation, content, interpretation, and distribution
`of promotional materials used in marketing the Accused ON
`Products.
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`Topic 17. The existence, development, manufacturing, testing, and
`distribution of any reference design(s), demonstration board(s), or
`evaluation board(s) that incorporate any of the Accused ON
`Products.
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`Dkt. No. 214-2 at 12–16. ON also designated Mr. Hari as its corporate representative for these
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`topics, except as they concern the NCP105x products. Id. PI argues that Mr. Hari was not
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`prepared to testify about information known to ON within the scope of these topics, although it
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`focuses entirely on Topic 14, which concerns ON’s efforts to have customers design-in the
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`accused ON products. See Dkt. No. 217 at 3–4. ON argues again Mr. Hari was prepared but that
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`PI’s deposition topics are impossibly broad. Id. at 6.
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`The Court agrees that many of these topics are so broadly drafted that it would be difficult
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`Case 5:16-cv-06371-BLF Document 250 Filed 06/03/19 Page 6 of 6
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`to prepare a designee or designees to testify about their full scope. For example, unless the
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`communications are very few or are identified by PI in advance of the deposition, ON cannot
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`reasonably be expected to produce a designee prepared to testify about every single
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`communication with a third party within the scope of Topic 13. The problem is that ON did not
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`object in any meaningful way to the scope of these topics or limit its designation of Mr. Hari to a
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`narrower scope.
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`For purposes of this dispute, the Court focuses on Topic 14, as that was the topic
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`specifically addressed in the parties’ joint submission. Mr. Hari was not prepared to fairly respond
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`to questions about ON’s design-in efforts with respect to the accused products. He appeared to
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`testify solely on the basis of his personal knowledge, which was rather limited. See, e.g., Hari
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`Rule 30(b)(6) Dep. at 73:21–74:3, 80:15–84:23, 136:8-11, 139:23-25. ON must prepare one or
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`more designees to testify on its behalf regarding the subject matter of Topic 14. The deposition
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`will be limited to three hours. If PI wishes to ask the designee about specific customers or specific
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`design-in efforts, it must identify those customers and efforts to ON sufficiently in advance of the
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`deposition to allow ON an opportunity to prepare a designee or designees to testify about them.
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`III. CONCLUSION
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`ON shall produce for further deposition one or more corporate representative to testify as
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`to the matters set forth above. The Court expects the parties to cooperate to ensure that these
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`further depositions proceed expeditiously and do not delay further proceedings in the case.
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`IT IS SO ORDERED.
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`Dated: June 3, 2019
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`VIRGINIA K. DEMARCHI
`United States Magistrate Judge
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