Case 5:22-mc-80318-SVK Document 1 Filed 11/21/22 Page 1 of 25
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`
`
`Kalpana Srinivasan
` California State Bar No. 237460
` ksrinivasan@susmangodfrey.com
`SUSMAN GODFREY LLP
`1900 Avenue of the Stars, Suite 1400
`Los Angeles, CA 90067
`Telephone: (310) 789-3100
`Facsimile: (310) 789-3150
`
`Ravi Bhalla
` Pro hac vice forthcoming
` New York State Bar No. 5478223
` rbhalla@susmangodfrey.com
`SUSMAN GODFREY LLP
`1301 Avenue of the Americas, 32nd Fl.
`New York, NY 10019
`Telephone: (212) 336-8330
`Facsimile: (212) 336-8340
`
`
`Attorneys for Plaintiff California Institute of
`Technology
`
`
`UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
`
`CALIFORNIA INSTITUTE OF
`TECHNOLOGY,
`
`
`Plaintiff,
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.
`
`
`v.
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`Defendants.
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` Case No. 5:22-MC-80318
`
`E.D. Tex. Case No. 2:21-CV-0446-JRG
`
`PLAINTIFF CALIFORNIA INSTITUTE
`OF TECHNOLOGY’S NOTICE AND
`MOTION TO COMPEL SUBPOENA
`COMPLIANCE BY BROADCOM CORP.
`AND BROADCOM INC. AND
`MEMORANDUM IN SUPPORT
`
`Date: December 27, 2022
`Time: 10:00 AM PT
`
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`Case 5:22-mc-80318-SVK Document 1 Filed 11/21/22 Page 2 of 25
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`TABLE OF CONTENTS
`
`NOTICE OF MOTION .................................................................................................................1
`
`ISSUES TO BE DECIDED ...........................................................................................................1
`
`MEMORANDUM OF POINTS AND AUTHORITIES .............................................................1
`
`I.
`
`II.
`
`III.
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`IV.
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`Introduction ..............................................................................................................1
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`Background ..............................................................................................................3
`
`A.
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`B.
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`C.
`
`D.
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`The Asserted Patents ....................................................................................3
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`The C.D. Cal. Action against Broadcom and Apple ....................................4
`
`The E.D. Tex. Action against Samsung .......................................................5
`
`The Broadcom Subpoenas ...........................................................................6
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`Legal Standard .........................................................................................................8
`
`Argument .................................................................................................................8
`
`A.
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`B.
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`C.
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`D.
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`E.
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`The discovery sought from Broadcom is relevant. ......................................8
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`The discovery sought from Broadcom is proportional. ...............................9
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`Broadcom is not entitled to assert a claim preclusion defense. .................11
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`There is no claim preclusion. .....................................................................12
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`There is no claim splitting..........................................................................19
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`V.
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`Conclusion .............................................................................................................20
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`Caltech’s Notice and Motion to Compel Subpoena Compliance by Broadcom – 5:22-MC-80318
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`Case 5:22-mc-80318-SVK Document 1 Filed 11/21/22 Page 3 of 25
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`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
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`
`
`
`Cases
`
`Adams v. California Dep’t of Health Servs.,
`487 F.3d 684 (9th Cir. 2007) ...................................................................................................19
`
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
`672 F.3d 1335 (Fed. Cir. 2012)................................................................................................14
`
`Bell v. United States,
`No. CV F 02–5077, 2002 WL 1987395 (E.D. Cal. 2002) .......................................................11
`
`Brain Life, LLC v. Elekta Inc.,
`746 F.3d 1045 (Fed. Cir. 2014)..........................................................................................12, 13
`
`California Inst. of Tech. v. Broadcom Ltd.,
`25 F.4th 976 (Fed. Cir. 2022) ....................................................................................................4
`
`Foster v. Hallco Mfg. Co.,
`947 F.2d 469 (Fed. Cir. 1991)..................................................................................................13
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`721 F.3d 1330 (Fed. Cir. 2013)................................................................................................17
`
`Gonzales v. Google, Inc.,
`234 F.R.D. 674 (N.D. Cal. 2006) ...............................................................................................8
`
`Hartsel Springs Ranch of Colorado, Inc. v. Bluegreen Corp.,
`296 F.3d 982 (10th Cir. 2002) .................................................................................................19
`
`Hurd v. D.C.,
`864 F.3d 671 (D.C. Cir. 2017) .................................................................................................12
`
`Khalilpour v. CELLCO P’ship,
`No. C 09-02712 CW MEJ, 2010 WL 1267749 (N.D. Cal. Apr. 1, 2010) .................................8
`
`Mendenhall v. Barber-Greene Co.,
`26 F.3d 1573 (Fed. Cir. 1994)..................................................................................................17
`
`MLC Intell. Prop., LLC v. Micron Tech., Inc.,
`No. 19-CV-03345, 2019 WL 4963253 (N.D. Cal. Oct. 8, 2019) ............................................15
`
`Mpoyo v. Litton Electro–Optical Sys.,
`430 F.3d 985 (9th Cir. 2005) .............................................................................................12, 13
`ii
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`Case 5:22-mc-80318-SVK Document 1 Filed 11/21/22 Page 4 of 25
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`Oyster Optics, LLC v. Cisco Sys., Inc.,
`No. 2:20-CV-00211-JRG, 2021 WL 1530935 (E.D. Tex. Apr. 16, 2021)
`................................................................................................................................12, 15, 16, 17
`
`Republic of Ecuador v. Mackay,
`742 F.3d 860 (9th Cir. 2014) .....................................................................................................8
`
`Rivet v. Regions Bank of Louisiana,
`522 U.S. 470 (1998) .................................................................................................................12
`
`Rogers v. Rivera,
`No. 115CV00007MCASCY, 2017 WL 3405606 (D.N.M. Mar. 28, 2017) ............................11
`
`In re Samsung Elecs. Co.,
`No. 22-MC-80005-VKD, 2022 WL 425579 (N.D. Cal. Feb. 11, 2022) ....................................8
`
`SanDisk Corp. v. Kingston Tech. Co.,
`695 F.3d 1348 (Fed. Cir. 2012)................................................................................................15
`
`SanDisk Corp. v. Round Rock Rsch. LLC,
`No. 11-CV-05243-RS, 2014 WL 691565 (N.D. Cal. Feb. 21, 2014) ........................................8
`
`In re Schimmels,
`127 F.3d 875 (9th Cir. 1997) ...................................................................................................18
`
`Semtek Int’l Inc. v. Lockheed Martin Corp.,
`531 U.S. 497 (2001) .................................................................................................................16
`
`SimpleAir, Inc. v. Google LLC,
`884 F.3d 1160 (Fed. Cir. 2018)................................................................................................16
`
`Tahoe-Sierra Pres. Council, Inc. v. Tahoe Reg’l Plan. Agency,
`322 F.3d 1064 (9th Cir. 2003) .................................................................................................18
`
`Taylor v. Sturgell,
`553 U.S. 880 (2008) .................................................................................................................11
`
`XY, LLC v. Trans Ova Genetics, LC,
`968 F.3d 1323 (Fed. Cir. 2020)................................................................................................13
`
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`iii
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`Caltech’s Notice and Motion to Compel Subpoena Compliance by Broadcom – 5:22-MC-80318
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`Case 5:22-mc-80318-SVK Document 1 Filed 11/21/22 Page 5 of 25
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`NOTICE OF MOTION
`Plaintiff California Institute of Technology (“Caltech”) respectfully moves this Court for
`entry of an order under Rules 37 and 45 of the Federal Rules of Civil Procedure compelling
`Broadcom Corp. and Broadcom Inc. (together, “Broadcom”) to produce documents in accordance
`with subpoenas served on both entities in a case pending in the United States District Court for the
`Eastern District of Texas, California Institute of Technology v. Samsung Electronics Co., Ltd. et
`al., No. No. 2:21-CV-0446-JRG (the “E.D. Tex. Action”). In accordance with N.D. Cal. Civil
`Local Rule 7-2(a), Caltech notices this motion for December 27, 2022 at 10:00 AM PT. The
`grounds for this Motion are set forth in the Memorandum of Points and Authorities below and the
`accompanying Declaration of Ravi Bhalla (“Bhalla Dec.”).
`ISSUES TO BE DECIDED
`
`Whether non-parties Broadcom Corp. and Broadcom Inc. should be compelled to produce
`documents and source code in response to subpoenas seeking relevant information relating to Wi-
`Fi chips that they supply to Samsung.
`MEMORANDUM OF POINTS AND AUTHORITIES
`Introduction
`Non-party Broadcom is resisting straightforwardly relevant discovery regarding Wi-Fi
`chips that it sold to Samsung with a claim preclusion argument that is not an appropriate basis to
`resist discovery, that Broadcom is not entitled to assert as a third party, and that is, in any event, a
`meritless defense. And Broadcom raises no argument as to burden—nor could it do so given the
`clear nature of Caltech’s requests and that Broadcom has gathered similar discovery for another
`action. This Court should roundly reject Broadcom’s attempts to skirt its discovery obligations on
`the basis of its novel and inapplicable claim preclusion argument and order full compliance with
`the subpoenas Caltech served.
`In connection with patent litigation that Caltech has against Samsung, Caltech seeks from
`Broadcom documents and source code relating to Wi-Fi chips that Broadcom supplies to Samsung.
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`I.
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`Case 5:22-mc-80318-SVK Document 1 Filed 11/21/22 Page 6 of 25
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`Because Samsung identified these Broadcom chips as performing a relevant functionality in the
`accused infringing products, the discovery Caltech seeks from Broadcom about the operation of
`the chips is relevant to its case against Samsung.
`The discovery is also proportional, not only because it is tailored to the precise set of 20
`Broadcom chips that Samsung has identified, but also because Broadcom has already collected
`and produced much of the requested material for 18 of the chips in ongoing litigation that Caltech
`has against Broadcom in the Central District of California. See California Institute of Technology
`v. Broadcom Ltd., et al., No. 2:16-cv-03714 (C.D. Cal.) (the “C.D. Cal. Action”). The burden on
`Broadcom is thus minimal, and because the protective order in the C.D. Cal. Action prevents
`Caltech from using the discovery it received from Broadcom outside of that litigation, Broadcom
`is the appropriate party to provide the information at issue.
`Nonetheless, Broadcom will not comply with the subpoenas, straining to justify its refusal
`with a claim preclusion argument that is not a basis for a third party to refuse to produce responsive
`discovery to a subpoena, and, in any event, is also meritless. According to Broadcom, it need not
`comply with the subpoenas because the C.D. Cal. Action involves some of the same chips that are
`also used in Samsung products at issue in the E.D. Tex. Action and Caltech is therefore precluded
`from obtaining information about those chips in the E.D. Tex. Action.
`Broadcom is not a defendant in Caltech’s case against Samsung. It thus has no standing or
`basis to assert a claim preclusion defense in the E.D. Tex. Action because there are no claims
`against Broadcom in that case. Samsung, the actual defendant in the case, has not resisted
`providing discovery into its products that use Broadcom chips. Indeed, the whole reason Caltech
`subpoenaed Broadcom in the first place is because Samsung identified certain Broadcom chips as
`relevant to Samsung’s accused products.
`Moreover, claim preclusion does not apply at all. First, the E.D. Tex. Action and the C.D.
`Cal. Action do not involve the same claims or causes of action. Across the two suits, not only are
`different products at issue, but there is also an additional patent and additional patent claims at
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`Case 5:22-mc-80318-SVK Document 1 Filed 11/21/22 Page 7 of 25
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`issue in the E.D. Tex. Action that are not at issue in the C.D. Cal. Action. Caltech also expressly
`carved out damages based on Samsung products that use Broadcom chips from the relief it is
`seeking in the C.D. Cal. Action, further separating the claims at issue across the two Actions.
`Broadcom has explicitly acknowledged this in its correspondence with Caltech. See Ex. 5 at 4
`(Broadcom acknowledging “Caltech’s decision in the prior case to drop its claims against Samsung
`products containing Broadcom chips”). Second, there is no final judgment in the C.D. Cal. Action
`that can form the basis of any claim preclusion in the E.D. Tex. Action. And third, Broadcom and
`Samsung, two entities with an arms-length commercial relationship, are not in privity. No matter
`which way it’s sliced, claim preclusion simply does not apply.
`For all these reasons, and those that follow, this Court should order Broadcom’s
`compliance with the subpoenas at issue.
`Background
`II.
`The Asserted Patents
`A.
`The patents at issue are U.S. Patent Nos. 7,116,710 (the “‘710 patent”), U.S. Patent No.
`7,421,032 (the “‘032 patent”), U.S. Patent No. 7,916,781 (the “‘781 patent”), and U.S. Patent No.
`8,284,833 (the “‘833 patent”) (together, “the Asserted Patents”). The Asserted Patents disclose a
`class of error correction codes, and the claimed methods and apparatuses in the Asserted Patents
`are directed to encoders and decoders. The technology disclosed in the Asserted Patents can be
`used to correct errors in transmissions that occur over a wireless communications channel, such as
`Wi-Fi. E.D. Tex. Dkt. 75 ¶¶ 27, 32-33 (Second Amended Complaint).
`Wi-Fi is used in a wide array of modern consumer electronics, such as smartphones,
`televisions, and computers, and the functionality typically involves the use of a Wi-Fi chip
`installed in the consumer electronic device. The Institute of Electrical and Electronics Engineers
`(“IEEE”) develops and maintains standards for Wi-Fi. Three of the more recent versions of the
`IEEE Wi-Fi standard—IEEE 802.11n, 802.11ac, and 802.11ax—involve the use of specific low-
`density parity check (“LDPC”) error correction codes to improve performance and reduce errors
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`Case 5:22-mc-80318-SVK Document 1 Filed 11/21/22 Page 8 of 25
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`in transmission. Id. ¶¶ 31-33. These LDPC codes can be implemented by using the
`encoder/decoder technology disclosed by the Asserted Patents. Id. ¶ 33.
`The C.D. Cal. Action against Broadcom and Apple
`B.
`The C.D. Cal. Action was filed in 2016. Caltech initially asserted all four of the Asserted
`Patents against Apple Inc. and Broadcom, but two years before trial, Caltech voluntarily withdrew
`the ‘833 patent, without prejudice. C.D. Cal. Dkt. 397 (Caltech’s “Notice of Withdrawal of Certain
`Asserted Claims of Asserted Patents”). Caltech also voluntarily withdrew all but the following
`claims of the ‘781, ‘710, and ‘032 Patents prior to trial: claims 11 and 18 of the ‘032 Patent, claims
`13 and 22 of the ‘781 Patent, and claims 20 and 22 of the ‘710 Patent. C.D. Cal. Dkt. 1451
`(Caltech’s notice “withdrawing its infringement allegations with respect to all remaining claims”
`except for those listed).
`In 2020, a jury found that Wi-Fi products from Apple and Broadcom infringed claims 20
`and 22 of the ‘710 Patent, claims 11 and 18 of the ‘032 Patent, and claim 13 of the ‘781 Patent,
`and awarded Caltech over $1.1 billion in damages. C.D. Cal. Dkt. 2114 (Jury Verdict). In
`accordance with Caltech withdrawing the ‘833 Patent and various claims of the ‘781, ‘710, and
`‘032 Patents, the judgment entered by the Central District of California does not reflect any
`disposition with respect to that patent or those claims. C.D. Cal. Dkt. 2245.
`Apple and Broadcom appealed to the Federal Circuit, which, in February 2022, (1) upheld
`the jury’s verdict of infringement of the ‘710 and ‘032 Patent claims, (2) vacated the jury’s verdict
`of infringement of the ‘781 Patent claim, (3) vacated the damages award, and (4) remanded for a
`new trial on infringement of the ‘781 Patent claim and damages. California Inst. of Tech. v.
`Broadcom Ltd., 25 F.4th 976, 980 (Fed. Cir. 2022), petition for cert. filed Sept. 7, 2022. In short,
`after the Federal Circuit’s decision, there is no final judgment on remedy in the C.D. Cal. Action,
`and there is no final judgment on liability with respect to the ‘781 Patent. And the new trial will
`not happen until June 2023. See C.D. Cal. Dkt. 2453 (order setting a June 6, 2023 trial date).
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`Case 5:22-mc-80318-SVK Document 1 Filed 11/21/22 Page 9 of 25
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`In the C.D. Cal. Action, Caltech is not asserting any claims or seeking damages based on
`Broadcom’s sales of chips to Samsung for use in the accused Samsung products, as Broadcom
`itself has acknowledged. Ex. 5 at 4 (Broadcom acknowledging “Caltech’s decision in the prior
`case to drop its claims against Samsung products containing Broadcom chips”); Ex. 6 at 6 (“Q. . .
`. [A]part from these numbers were there additional WiFi chips with LDPC codes that Broadcom
`sold during the relevant time period here that are not included in these numbers? A. Yes. There’s
`other WiFi chips that Broadcom sold to other end customers, not Apple end customers, like
`Samsung . . . . [N]one of that’s in here. That’s not part of this case, but those are chips Broadcom
`sold.”) (Jan. 22, 2020 C.D. Cal. trial testimony from Caltech’s damages expert team).
`The E.D. Tex. Action against Samsung
`C.
`The E.D. Tex. Action is a suit brought by Caltech against Samsung Electronics Co., Ltd.
`and Samsung Electronics America, Inc. (“Samsung”) for infringement of the Asserted Patents.
`Caltech filed that action in December 2021, alleging that certain Wi-Fi products sold by Samsung
`infringe the Asserted Patents.
`Specifically, Caltech is accusing all Samsung products that are Wi-Fi enabled and comply
`with any of the IEEE 802.11n, 802.11ac, or 802.11ax standards. Caltech served a pair of
`interrogatories asking Samsung to identify all of its Wi-Fi-enabled products and, for each such
`product, to identify the chip that is used as part of the Wi-Fi functionality. Bhalla Dec. ¶ 2. In its
`initial and supplemental interrogatory responses, Samsung identified dozens of products that use
`20 different Wi-Fi chips manufactured by Broadcom. Id. ¶ 3. Samsung did not assert any
`objections or resist identifying any Broadcom chips on the basis of the C.D. Cal. Action. Id. ¶ 4.
`And, in fact, in later produced sales data, Samsung included information about the sales of
`Samsung products that use the same Broadcom chips that are at issue in the C.D. Cal. Action. Id.
`Because the Wi-Fi chip in each Samsung product performs a relevant functionality, Caltech
`has pursued discovery from each of the chipmakers identified by Samsung, including Broadcom.
`Of all the chipmakers, only Broadcom has resisted producing responsive materials. Id. ¶ 15.
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`Case 5:22-mc-80318-SVK Document 1 Filed 11/21/22 Page 10 of 25
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`The Broadcom Subpoenas
`D.
`In April 2022, Caltech issued two, identical third-party subpoenas to Broadcom Corp. and
`its parent entity, Broadcom Inc. See Exs. 1, 2. The subpoenas seek documents and source code
`pertaining to chips that Broadcom supplies to Samsung, identified by Samsung as relevant to the
`accused Samsung products.
`The subpoenas seek the following relevant information about Broadcom’s Wi-Fi chips:
`
`• Request Nos. 1 and 2: Technical documents and source code showing how the
`Broadcom Wi-Fi chips perform LDPC encoding and decoding and the inputs and
`outputs of the LDPC encoder/decoders.
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`• Request No. 3: Data sheets for the Broadcom Wi-Fi chips.
`
`• Request No. 4: Documents showing any third-party technology used by the
`Broadcom Wi-Fi chips.
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`• Request No. 5: Documents showing the compliance with the IEEE 802.11n,
`802.11ac, and 802.11ax standards by the Broadcom Wi-Fi chips.
`
`• Request No. 6: Documents provided to Broadcom by its customers pertaining to
`various performance metrics of the Wi-Fi chips.
`
`• Request No. 7: Documents relating to the testing of the LDPC functionality in the
`Wi-Fi chips that Broadcom sold to Samsung.
`
`• Request No. 8: Documents showing the amount and price for which Broadcom sold
`Wi-Fi chips to Samsung.
`
`• Request No. 9: Communications or agreements between Broadcom and Samsung
`pertaining to Caltech, the Asserted Patents, or the E.D. Tex. Action.
`
`• Request No. 10: Documents Broadcom produced in the C.D. Cal. Action.
`
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`Id.
`
`To the extent the materials sought by the subpoenas overlap with materials that Broadcom
`previously provided to Caltech in the C.D. Cal. Action, Caltech is not permitted under the C.D.
`Cal. Action’s protective order to use those materials for any purpose other than the prosecution of
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`Case 5:22-mc-80318-SVK Document 1 Filed 11/21/22 Page 11 of 25
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`the C.D. Cal. Action. See C.D. Cal. Dkt. 101 at 1 (“Protected Material designated under the terms
`of this Protective Order shall be used by a Receiving Party solely for this case, and shall not be
`used directly or indirectly for any other purpose whatsoever.”).
`Broadcom served its responses to the subpoenas in May 2022, asserting a variety of
`objections. See Exs. 3, 4. The parties met and conferred over a number of months—via telephonic
`conferences on June 8 and August 8 and via e-mail correspondence—to address those objections.
`Bhalla Dec. ¶ 7; Ex. 5 (meet-and-confer correspondence). The focus of those discussions was one
`of Broadcom’s global objections, which it stated as follows and incorporated into each of its
`individual objections:
`
`Broadcom objects to Caltech’s subpoena seeking documents related to The California
`Institute of Technology v. Broadcom Ltd., et al., C.D. Cal Case No. 2:16-cv-03714-GW-
`AGRx (“Broadcom case”) litigation for use in this matter. In the Samsung case, Caltech
`appears to accuse Samsung products that include the same Broadcom chips as were at issue
`in the Broadcom case and of infringing the same patents (or patents with materially similar
`claims) as those asserted and litigated to final judgment in the Broadcom case. As such,
`Caltech’s claims against Samsung are barred by the doctrine of claim preclusion, and thus
`the discovery sought by the subpoena is irrelevant, unduly burdensome, and not
`proportional to the needs of the case.
`Ex. 3 at 3; Ex. 4 at 3.
`Broadcom presented claim preclusion as a universal, gating issue to the entirety of
`Caltech’s requests. Id.; Bhalla Dec. ¶ 8. In Broadcom’s view, it was not obligated to produce any
`discovery in response to the subpoenas beyond documents sufficient to show the chips and patents
`at issue in the C.D. Cal. Action. Bhalla Dec. ¶ 11; Ex. 5 at 4.1 Anything beyond that, Broadcom
`maintained, would not be proportional to the needs of the case.
`After Caltech provided caselaw definitively establishing that there could be no claim
`preclusion based on the C.D. Cal. Action—because “a final judgment on liability without a final
`
`1 Of the 20 Broadcom chips at issue, Broadcom asserts that 18 of them are involved in the C.D.
`Cal. Action and discovery into those chips in the E.D. Tex. Action is barred by claim preclusion.
`Bhalla Dec. ¶¶ 11, 13. It asserts that discovery into the 19th chip is similarly barred because, even
`though it is not involved in the C.D. Cal. Action, it was “sold as early as 2018” and Caltech “could
`have” accused it in the C.D. Cal. Action. Id. ¶ 11. And Broadcom offered to produce a document,
`but not source code, showing that the 20th chip uses a direct parity encoder, which Broadcom
`asserts is non-infringing. Id.
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`judgment on remedy is not sufficiently final for purposes of claim preclusion,” Ex. 5 at 5—
`Broadcom switched gears from arguing claim preclusion to arguing claim splitting. Id. at 4
`(“Caltech’s claims against Samsung are barred by the doctrine of claim preclusion and, in
`particular, the prohibition against claim-splitting.”). At that point, the parties reached an impasse.
`III. Legal Standard
`The scope of permissible discovery under Rule 26 of the Federal Rules of Civil Procedure
`is “broad.” Republic of Ecuador v. Mackay, 742 F.3d 860, 866 (9th Cir. 2014) (citation omitted).
`“Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party’s
`claim or defense and proportional to the needs of the case.” Fed. R. Civ. P. 26(b)(1). A
`determination of proportionality is made “considering the importance of the issues at stake in the
`action, the amount in controversy, the parties’ relative access to relevant information, the parties’
`resources, the importance of the discovery in resolving the issues, and whether the burden or
`expense of the proposed discovery outweighs its likely benefit.” Id.
`Under Rule 45, a party may seek discovery from non-parties, and the permissible scope of
`that discovery is the same as the permissible scope under Rule 26. See In re Samsung Elecs. Co.,
`No. 22-MC-80005-VKD, 2022 WL 425579, at *1 (N.D. Cal. Feb. 11, 2022); Gonzales v. Google,
`Inc., 234 F.R.D. 674, 680 (N.D. Cal. 2006).
`On a motion to compel discovery, “[o]nce the moving party establishes that the information
`requested is within the scope of permissible discovery, the burden shifts to the party opposing
`discovery” to establish why the discovery should not be permitted. Khalilpour v. CELLCO P’ship,
`No. C 09-02712 CW MEJ, 2010 WL 1267749, at *1 (N.D. Cal. Apr. 1, 2010); SanDisk Corp. v.
`Round Rock Rsch. LLC, No. 11-CV-05243-RS, 2014 WL 691565, at *1 (N.D. Cal. Feb. 21, 2014).
`IV. Argument
`The discovery sought from Broadcom is relevant.
`A.
`The Asserted Patents disclose error correction codes, including LDPC codes, and the
`claimed methods and apparatuses in the Asserted Patents are directed to correct errors in
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`transmissions that occur over a wireless communications channel, such as a Wi-Fi channel.
`Samsung has identified dozens of “Wi-Fi products with LDPC functionality” that include 20
`different chips manufactured by Broadcom. Bhalla Dec. ¶ 3. Because Caltech’s infringement
`allegations focus on LDPC functionality and Samsung has identified specific Samsung products
`that use Broadcom chips to provide LDPC functionality, the requested materials are relevant.
`Broadcom has not contested the relevance of LDPC functionality to the Asserted Patents in its
`written objections or during the meet and confer process.
`Specifically, Request Nos. 1-7 pertain to the technical operation of the chips.
`Understanding the operation of the chips is directly relevant to the claim that Samsung products
`infringe the Asserted Patents, and the most direct evidence of how those chips operate is
`encompassed by these requests. Request Nos. 6-8 are relevant to Caltech’s damages. Documents
`responsive to these requests bear on the value of the functionality provided by the Broadcom chips.
`Request No. 9 seeks Broadcom’s communications or agreements with Samsung pertaining to
`Caltech, the Asserted Patents, and the E.D. Tex. Action—materials that will include any
`indemnification agreements between Samsung and Broadcom and communications about plainly
`relevant topics, such as the Asserted Patents. Finally, Request No. 10 simply seeks the materials
`that Broadcom produced in the C.D. Cal. Action, which will necessarily encompass relevant
`materials pertaining to the 18 chips that Broadcom claims are involved in both the E.D. Tex. and
`C.D. Cal. Actions.
`The discovery sought from Broadcom is proportional.
`B.
`The Rule 26(b)(1) proportionality factors all weigh in favor of Caltech.
`First, “the issues at stake in the action” and the “importance of the discovery in resolving
`th[ose] issues” are significant. Fed. R. Civ. P. 26(b)(1). The central issue of the E.D. Tex. litigation
`is whether the accused Samsung products infringe the Asserted Patents. Fundamental intellectual
`property rights are thus at stake and the discovery sought from Broadcom is integral to
`understanding the relevant Wi-Fi functionality of the accused Samsung products.
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`Second, the amount in controversy is significant, as evidenced by the $1.1 billion awarded
`by the jury in the C.D. Cal. Action and the fact that Samsung, like Apple (against which the jury
`assessed $838 million in damages in the C.D. Cal. Action, see C.D. Cal. Dkt. 2114), is a large and
`substantial manufacturer
`of Wi-Fi-enabled
`consumer
`electronics,
`see Samsung,
`https://www.samsung.com/us/ (listing for sale dozens of Wi-Fi enabled products across multiple
`product categories); Samsung Electronics Announces Third Quarter 2022 Results (Oct. 27, 2022),
`https://news.samsung.com/global/samsung-electronics-announces-third-quarter-2022-results
`(reporting $7.9 billion in operating profit).
` Third, as between Caltech and Broadcom, Broadcom has the best access to relevant
`information regarding its own chips and how they work. In fact, much of the information sought
`from Broadcom cannot be obtained anywhere else. For example, Broadcom is the sole steward of
`its source code, and Caltech is not permitted to use the discovery it received from Broadcom in the
`C.D. Cal. Action outside of that litigation. And as a large and profitable corporation, Broadcom
`certainly has the resources to provide the requested discovery. See Broadcom Inc. Announces Third
`Quarter Fiscal Year 2022 Financial Results and Quarterly Dividends, Broadcom (Sep. 1, 2022),
`https://www.broadcom.com