Case 5:16-cv-06371-BLF Document 254 Filed 06/05/19 Page 1 of 5
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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
`PRIVITY DISCOVERY
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`Re: Dkt. No. 218
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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 provide discovery relating to its communications
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`with Fairchild Semiconductor before ON and Fairchild Semiconductor (“Fairchild”) merged. PI
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`contends that this discovery is critical to the issue preclusion defense it has asserted in this action.
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`The Court conducted a hearing on these disputes on May 21, 2019. Dkt. No. 241. As
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`explained below, the Court denies PI’s motion to compel.
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`I.
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`BACKGROUND
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`ON acquired or merged with Fairchild in September 2016. Dkt. No. 218 at 4; Dkt. No. 1 ¶
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`4. Prior to that transaction, PI and Fairchild were engaged in patent litigation involving some of
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`the same patents at issue in this action. In particular, in April 2012 a jury found that Fairchild had
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`infringed PI’s U.S. Patent No. 6,249,876 (“the ’876 patent”) and that the asserted claims were not
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`invalid. See Dkt. No. 224 at 5. In March 2014, a jury found that Fairchild had infringed PI’s U.S.
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`Patent No. 6,212,079 (“the ’079 patent”). Id. Here, PI contends that ON is barred from
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`challenging the validity of the ’876 and ’079 patents because it believes that ON was in privity
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`Northern District of California
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`United States District Court
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`Case 5:16-cv-06371-BLF Document 254 Filed 06/05/19 Page 2 of 5
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`with Fairchild when Fairchild unsuccessfully challenged the validity of these patents in prior
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`litigation.1 In aid of this contention, PI moves to compel documents, interrogatory responses, and
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`deposition testimony regarding ON and Fairchild’s communications and activities prior to the
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`September 2016 merger. Dkt. No. 218.
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`ON opposes this discovery on several grounds. First, ON argues that it will produce the
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`documents PI seeks because it has already been ordered to do so in parallel litigation pending
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`before Judge Stark in the District of Delaware and those documents may be used in this
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`proceeding. Dkt. No. 218 at 4; see ON Semiconductor Corp. et al. v. Power Integrations, Inc., No.
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`17-247, Dkt. No. 202 (D. Del. Apr. 25, 2019). Second, ON argues that the Court should not
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`require it to respond to PI’s interrogatories, as those interrogatories essentially seek information
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`describing the documents ON has represented it will produce. Finally, ON argues that PI is not
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`entitled to deposition testimony, either from a corporate representative or from ON’s Chief IP
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`Counsel Rob Tuttle, because that testimony is not relevant to any claim or defense in the case and
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`because PI’s motion as to Mr. Tuttle is untimely.
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`II.
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`LEGAL STANDARD
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`A party may obtain discovery of any matter that is relevant to a claim or defense and that is
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`“proportional to the needs of case, considering the importance of the issues at stake in the action,
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`the amount in controversy, the parties’ relative access to relevant information, the parties’
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`resources, the importance of the discovery in resolving the issues, and whether the burden or
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`expense of the proposed discovery outweighs its likely benefit.” Fed. R. Civ. P. 26(b)(1). Here,
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`the Court considers whether the discovery PI seeks is both relevant to the claims or defenses in the
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`action and proportional to the needs of the case.
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`III. DISCUSSION
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`A.
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`Pre-Merger Communications Between ON and Fairchild
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`1.
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`Privity-Related Discovery
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`PI’s principal justification for seeking discovery of pre-merger communications between
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`1 PI has moved for summary judgment on this issue, and that motion is set for hearing before
`Judge Freeman on June 6, 2019. Dkt. No. 224.
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`2
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`Northern District of California
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`United States District Court
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`ON and Fairchild is that such communications are relevant to the question of whether ON is or
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`was in privity with Fairchild, such that ON should be precluded from challenging the validity of
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`’876 and ’079 patents.
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`The parties’ arguments in support of their respective positions on this discovery dispute
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`parallel the arguments they have made with respect to PI’s pending motion for summary
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`judgment. See Dkt. Nos. 224, 235. After the Fairchild trials challenging the validity of the patents
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`had concluded in 2012 and 2014, PI says that ON and Fairchild entered into a confidentiality
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`agreement and a definitive merger agreement in 2015, and that as part of the due diligence process
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`related to the merger, ON began communicating with Fairchild on strategy regarding the validity
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`of the ’876 and ’079 patents. PI argues that ON is bound by the judgments against Fairchild
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`because Fairchild is now a subsidiary of ON. Dkt. No. 218 at 1; Dkt. No. 224 at 2–6. PI notes
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`that Judge Freeman concluded that the issue preclusion question could not be decided without
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`considering matters outside the pleading, and PI says it now seeks discovery to develop the factual
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`record. Dkt. No. 218 at 2.
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`ON argues that it did not participate in the trials involving Fairchild’s invalidity challenges
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`to these patents and did not even begin to engage with Fairchild at all until after those trials were
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`concluded. ON also argues that the products at issue in this case are not Fairchild legacy products,
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`but rather ON products developed prior to ON’s acquisition of Fairchild. ON argues that absent
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`evidence that it controlled the prior Fairchild trials, it may not be considered in privity with
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`Fairchild because it did not have an “opportunity to present proofs and argument” on the question
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`of validity in those trials. See Dkt. No. 235 at 4 (quoting Taylor v. Sturgell, 553 U.S. 893, 895
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`(2008)); Dkt. No. 218 at 5. ON denies that it exercised such control. In these circumstances, ON
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`says, there could be no privity between ON and Fairchild and no basis for obtaining discovery
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`directed to that issue.
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`PI refers to communications between ON and Fairchild about the validity of the asserted
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`patents after the Fairchild trials had concluded but before the merger had closed, but PI does not
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`explain how the existence of those communications supports its request for all pre-merger
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`communications between ON and Fairchild. PI does not suggest it has any basis to believe that
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`Case 5:16-cv-06371-BLF Document 254 Filed 06/05/19 Page 4 of 5
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`ON and Fairchild began communicating about the validity of the ’876 and ’079 patents until well
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`after Fairchild’s invalidity challenges to the two patents had been tried to juries. Even assuming
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`ON became actively engaged in Fairchild’s efforts to reverse those jury verdicts post-trial and on
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`appeal, PI does not explain how discovery of such activity bears on the question of ON’s privity
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`with Fairchild. Conversely, if, as PI contends, ON is bound by the judgments against Fairchild
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`because ON is Fairchild’s successor-in-interest, pre-merger communications between ON and
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`Fairchild would appear to be irrelevant.
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`ON says that it will comply with Judge Stark’s order to produce documents reflecting pre-
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`merger exchanges and communications between ON and Fairchild. Because PI has not
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`demonstrated that any of the other discovery it seeks is relevant to the question of ON’s privity
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`with Fairchild, the Court’s denies PI’s motion on this ground.
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`B.
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`Other Justifications for the Discovery
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`PI also contends that the discovery it seeks is relevant to establishing ON’s knowledge of
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`the asserted patents and its valuation of the asserted patents. These arguments are not well
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`developed, and in any event, they could only support a fraction of the discovery PI now seeks.
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`The Court notes that Judge Stark has already ordered ON to produce its “non-privileged
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`evaluations of PI’s patents (if any exist).” ON Semiconductor Corp. et al. v. Power Integrations,
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`Inc., No. 17-247, Dkt. No. 202 (D. Del. Apr. 25, 2019). Assuming ON will produce documents in
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`compliance with Judge Stark’s order, this Court denies PI’s request for broader discovery on these
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`additional grounds as well.
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`C.
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`Deposition of Mr. Tuttle
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`ON objects to PI’s motion to compel the deposition of Mr. Tuttle on several grounds,
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`including that the motion is untimely. ON is correct that PI did not move to compel the deposition
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`of Mr. Tuttle within the time set by Civil Local Rule 37-3. PI has not shown good cause for the
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`Court to consider the motion out of time. Accordingly, PI’s motion to compel Mr. Tuttle’s
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`deposition is denied.
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`IV. CONCLUSION
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`For the reasons explained above, the Court denies PI’s motion to compel documents
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`Case 5:16-cv-06371-BLF Document 254 Filed 06/05/19 Page 5 of 5
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`responsive to PI’s Requests for Production Nos. 33-37, answers to PI’s Interrogatories Nos. 19-21,
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`and testimony about Rule 30(b)(6) deposition topics 36 and 42. The Court also denies PI’s motion
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`to compel the deposition of Rob Tuttle.
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`IT IS SO ORDERED.
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`Dated: June 5, 2019
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`VIRGINIA K. DEMARCHI
`United States Magistrate Judge
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