MOTiO3 CCCdET
`MU BEH
`
`1
`I
`
`w
`W
`W E I L , GOTSHAL MANGES
`
`A PARTNERSHIP INCLUDING PROFESSIONAL CORPORATIONS
`
`1615 L STREET, N . W .
`
`W A S H I N G T O N , D . C . 20036-56 IO
`
`( 2 0 2 1 6 8 2 - 7 0 0 0
`FAX: 1 2 0 2 ) 857-0939
`(202) 857-0940
`TELEX: ITT 440045
`
`M. JEAN ANDERSON
`DIRECT LINE (202) 6 8 2 - 7 2 1 7
`
`DALLAS
`
`HOUSTON
`
`MENLO PARK
`(SILICON VALLEY)
`MIAMI
`NEW YORK
`
`BRUSSELS
`BUDAPEST
`
`LONDON
`
`PRAGUE
`
`WARSAW
`
`The Honorable Donna R. Koehnke
`Secretary
`U . S . International Trade Commission
`Room 112-A
`500 E Street, S.W.
`Washington, DC 20436
`Re: Certain Memory Devices with Increased Capacitance
`and Products Containins Same, Inv. No. 337-TA-371
`Dear Secretary Koehnke:
`Enclosed for filing please find the original and six
`copies of Respondents OK1 Electric Industry Co., Ltd. and OK1
`America, Inc.'s Motion to Compel Compliance With and Production
`Under Subpoenas Duces Tecum and Request for Shortened Response
`Time.
`
`wspectfully/Ssubmitted,
`
`C A W for Respondents
`OK1 lectric Industry Co.,
`Ltd. and OK1 America, Inc.
`
`CC: The Honorable Sidney Harris (2 copies)
`
`

`
`3 7/- /a 4
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`_ - _ _ _ _ _ - - - - - - - -
`Office of the
`Before The Honorable Sidney Harris
`SocretarY
`Administrative Law Judge
`\nt'l Trade Commission
`
`Washington, D . C .
`
`MOTION OF RESPONDENTS OK1 ELECTRIC INDUSTRY CO., LTD. AND OK1
`AMERICA, INC. TO COMPEL COMPLIANCE WITH AND PRODUCTION UNDER
`SUBPOENAS DUCES TECUM AM) REQUEST FOR SHORTENED RESPONSE TIME
`
`Pursuant to 19 C.F.R. Section 210.33, Respondents OK1
`Electric Industry Co., Ltd, ("OK1 Electric") and OK1 America, Inc.
`("OK1 Americaft) (collectively, lIOKIIO or the IIOKI Respondents")
`move for an order compelling Complainants Emanuel Hazani and
`Patent Enforcement Fund, Inc. to comply with and produce all
`documents responsive to the subpoenas duces tecum served on
`Advanced Materials Engineering Research (I1AMERl1) and International
`Business Machines Corporation (IIIBM"), which Complainants have
`withheld from production.' The OK1 Respondents also request a
`shortened response time and expedited treatment of this motion,
`
`1. This motion is directed to Complainants, rather than the
`subpoenaed companies, because Complainants injected themselves
`into the subpoena process by gathering and reviewing responsive
`documents in the possession of AMER and IBM before production and
`by directing AMER and IBM not to produce certain documents.
`
`DCFSOI . . .0:\98\66098\0011\1657\M0T8225L.420
`
`

`
`Complainants hired AMER and IBM to perform tests,
`including TEM and SEM analysis, on DRAMS of OK1 and other
`Respondents. Complainants and their designated expert witnesses
`rely on the TEMs and SEMs produced by AMER and IBM as grounds for
`their contentions of alleged infringement by OKIIs second
`generation 16M and 64M DRAMS.'
`When Respondents served subpoenas on MER and IBM,
`Cornplainants injected themselves into the document production
`procedure by reviewing the responsive documents and instructing
`AMER and IBM to withhold numerous documents on the basis of the
`work product doctrine. Complainants, however, have waived any
`work product protection by expressly relying on the TENS and SEMs
`of OKIIs DRAMS to support their infringement contentions.
`Complainants have further waived any work product protection by
`voluntarily producing many documents of the type which they
`contend are covered by the work product doctrine. Fundamental
`fairness dictates that Complainants cannot have it both ways:
`they cannot use the AMER and IBM tests as a I1swordl1 to support
`their infringement contentions and then use the work product
`doctrine to I1shieldt1 documents about these tests from production.
`
`See, e.u., Expert Witness Statement of Ron Maltiel at 4 &
`2.
`Exhibits 4 & 5; Expert Witness Statement of Richard Greene at 7 ;
`Expert Report of William G. Oldham at 10; Complainants1 Response
`in Opposition to the Motion of OK1 for Summary Determination of
`Non-Infringement of U . S . Patent No. 5,166,904, dated July 6, 1995,
`at 3, 11, 14; Declaration of Ron Maltiel, dated July 6, 1995, qq
`4, 5, 22 & Exhibits A, B & C.
`
`2
`
`

`
`I.
`
`Based upon Complainants' conduct in putting the tests of AMER and
`IBM at issue, the OK1 Respondents are entitled to discovery of all
`documents that relate to those tests,
`COMPLAINANTS WITHHELD DISCOVERABLE DOCUMENTS FROM PRODUCTION
`UNDER THE SUBPOENAS DUCES TECUM OF AMER AND IBM
`Because of Complainants' reliance on test results
`produced by AMER and IBM to support their infringement
`contentions, Respondents served subpoenas ad testificandum and
`duces tecum on AMER and IBM. Each subpoena included document
`requests for
`documents relating to, among other things,
`analysis and testing of Respondents' DRAM devices, preparation of
`the devices for analysis, and procedures used for the analysis.
`- See Exhibit A (Subpoena Duces Tecum and Ad Testificandum of M E R ,
`dated June 19, 1995 ("MER Subpoenal'), Attachment B) ; Exhibit B
`(Subpoena Ad Testificandum and Subpoena Duces Tecum of IBM, dated
`July 6, 1995 (I'IBM Subpoena"), Attachment B) .3
`Prior to the deposition of Harry Kawayoshi of AMER held
`on July 6 & 17, 1995, Complainants reviewed the responsive
`documents requested under the AMER Subpoena and withheld selected
`documents from production, presumably on the basis of the work
`product doctrine. See Exhibit C (Deposition of Harry Kawayoshi
`(''Kawayoshi Depo.") at 336:16-21). Complainants did not withhold
`TEMs or SEMs of Respondents' accused devices. Mr. Kawayoshi
`testified that a number of documents responsive to the subpoena
`
`3. The AMER and IBM Subpoenas are attached as exhibits without
`Attachment C to the subpoenas--the Amended Protective Order.
`
`3
`
`

`
`documents reflecting the OK1
`were not produced, including:
`devices which AMER received from Complainants for examination,
`documents discussing the specifications of the equipment used to
`obtain TEMs of the OK1 DRAMS, documents reflecting any test
`requests concerning Respondents1 devices, notes relating to the
`testing, analysis, or inspection of OK1 devices, and
`correspondence and notes reflecting communications between AMER
`and Complainants1 counsel about the tests and test procedures.
`--
`See id. (Kawayoshi Depo. at 222:15-25, 266:16-267:3, 334:17-335:6
`& 335:8-336:18).
`Similarly, prior to the deposition of Tom Joseph of IBM,
`held on August 15, 1995, Complainants obtained and reviewed the
`responsive documents requested under the IBM Subpoena and
`instructed IBM to withhold from production 219 of 4 2 4 pages of
`documents responsive to the Subpoena on the basis of the work
`product doctrine. - See Exhibit D (Deposition of Tom Joseph
`(ItJoseph Dep0.I') at 8:18-9:23); Exhibit E (Letter from Venable to
`IBM dated August 7, 1995); Exhibit F (Letter from Venable to Weil,
`Gotshal & Manges dated August 11, 1995). The withheld documents
`included correspondence between Complainants1 counsel and IBM
`employees, as well as some of Mr. JosephIs notes regarding his
`communications with Complainants1 counsel.
`Exhibit D (Joseph
`Mr. Joseph also testified that IBM had
`Depo. at 9:lO-21).
`prepared a written analysis of OKIIs 16M second generation DRAM.
`
`4
`
`

`
`See id. (Joseph Depo. at 139:2-17). That analysis, however, was
`not produced.
`At the same time, when Complainants saw it in their
`interests to produce documents of the same type which they are
`withholding on work product grounds, they did so. As an example
`of Complainants' selective disclosure, Complainants chose not to
`withhold the following IBM documents: (1) a March 13, 1995 draft
`of a "Plan for Analyzing Memory Chipsv1 drafted by Complainants1
`counsel and sent via facsimile to IBM (attached as Exhibit G ) ; (2)
`a March 28, 1995 letter from Complainants1 counsel to IBM
`instructing IBM to Itperform an SEM and a TEM/EDSII on each of the
`enclosed samples of OKIIs DRAMS (attached as Exhibit H) ; and (3)
`an April 12, 1995 written analysis of IBMIs test results of OKIIs
`first generation 16M DRAM addressed to Complainants' counsel
`(attached as Exhibit I). During the deposition, Complainants1
`counsel did not object to the introduction of any of these
`documents as exhibits or to the examination of Mr. Joseph
`regarding these documents.
`The OK1 Respondents made requests for the withheld
`documents during the AMER and IBM depositions. See Exhibit C
`(Kawayoshi Depo. at 336:16-337:3); Exhibit D (Joseph Depo. at
`The OK1 Respondents also made a written request to
`10:8-14).
`Complainants1 counsel on August 10 for the withheld AMER
`
`5
`
`

`
`Iv'
`
`V
`
` document^.^
`Complainants have produced neither the withheld
`documents nor a privilege log identifying the documents. 5
`11. COMPLAINANTS HAVE WAIVED ANY PROTECTION PROVIDED BY THE WORK
`PRODUCT DOCTRINE
`Complainants' Express Reliance And Voluntary Disclosure
`A.
`Of The TEMs And SEMs Of OK1 DRAMS Waived Work Product
`Protection
`The voluntary disclosure of allegedly privileged
`documents, as opposed to inadvertent disclosure, waives the
`privilege as to the remaining documents of that subject matter.
`- See j, 132
`By their express and
`204, 207-08 (N.D. Ind. 1990).
`F.R.D.
`repeated reliance on the TEMs and SEMs produced by AMER and IBM,
`Complainants have placed the tests and analyses performed by AMER
`and IBM at issue and thereby voluntarily disclosed their work
`product. Complainants seek to use certain test results to their
`advantage while withholding certain documents related to the tests
`from production, thereby using the work product doctrine as both a
`sword and a shield. Such use of the work product doctrine is
`fundamentally unfair.
`Because of Complainants' reliance on tests conducted by
`IBM and AMER, the OK1 Respondents are entitled to review all
`documents related to the tests, including correspondence from
`
`4 . The August 16, 1995 response of Complainants' counsel is
`attached as Exhibit J.
`5. Section 2 ( 0 ) of the Ground Rules for Hearing attached to Order
`No. 40 expressly requires the production of a privilege log when
`documents are withheld.
`
`6
`
`

`
`Complainants' counsel on how to test samples of OK1 devices and
`how to prepare the samples, the chain of custody of the samples,
`results and analysis of
`tests performed, including unfavorable
`results, and reasons for performing or not performing certain
`tests. Complainants' voluntary disclosure of the test results has
`opened the door to OKIIs review of all documents relating to the
`AMER and IBM tests.
`Complainants Waived Any Work Product Protection By
`B.
`Selectively Producing Some Allegedly Privileged
`Documents, But Not Others
`I1A [litigant] cannot choose to disclose only so much of
`allegedly privileged matter as is helpful to his case.Il
`Burlinston Indus. v. Exxon Corp., 65 F.R.D. 26, 4 6 (D. Md. 1974).
`"Once the party begins to disclose any confidential communication
`for a purpose outside the scope of the privilege, the privilege is
`lost for all communications relating to the same matter.#' - Id.
`(citation omitted).
`In this Investigation, Complainants have waived any
`claims of work product protection of documents related to the
`testing of OKI's DRAMS by selectively and intentionally directing
`AMER and IBM to produce some documents responsive to the subpoenas
`to support their claims, while withholding others. In the process
`of reviewing 424 pages of responsive IBM documents for production,
`and in withholding 219 pages of these documents, Complainants
`chose not to withhold certain correspondence containing test
`instructions from Complainants' counsel to IBM and some test
`
`7
`
`

`
`results produced by IBM, while withholding other documents in the
`same categories.
`Complainants' production of some of these
`documents has waived any work product protection asserted with
`regard to other documents responsive to the subpoenas. Thus, on
`the basis of Complainants1 disclosures, the OK1 Respondents are
`entitled to see all documents related to the testing by AMER and
`IBM.
`111. THESE DOCUMENTS ARE NOT PROTECTED BY THE COURT'S RULING
`REGARDING TESTS PERFORMED BY ICE CORPORATION
`Complainants will likely argue that the documents
`responsive to M E R and IBM Subpoenas are protected by the Court's
`June 30, 1995 ruling regarding tests performed on certain
`Respondents DRAMS by ICE Corporation ( I'ICE'I) .
`During the
`telephonic conference of June 30, Judge Harris indicated that
`correspondence between ICE and Complainants after July 1, 1994 was
`work product. See June 30, 1995 Telephonic Conference at 49:4-8.
`This ruling, however, has no application to the AMER and
`IBM Subpoenas. Complainants chose not to rely upon any tests
`conducted by ICE to support their infringement contentions. By
`not injecting the ICE tests into this Investigation, Complainants
`attempted to protect their communications with ICE from discovery.
`In contrast, Complainants and their expert witnesses exmessly
`rely on the TEMs and SEMs performed by AMER and IBM to support
`their infringement contentions in this Investigation.
`
`8
`
`

`
`IV. THE OK1 RESPONDENTS HAVE A SUBSTANTIAL NEED FOR THESE
`DOCUMEWTS AND CANNOT OBTAIN THEM FROM ANOTHER SOURCE
`Because Complainants rely so heavily on the TEMs and
`SEMs of OK1 DRAMS performed by AMER and IBM, the OK1 Respondents
`have a substantial need to examine all documents related to those
`tests, including test requests and instructions, sample
`preparation, test performance, and test results.
`The OK1
`
`Respondents need to fully evaluate these documents in order to
`effectively cross-examine Complainants' expert witnesses--who rely
`so heavily on these test results. By injecting themselves into
`the production of documents under the AMER and IBM Subpoenas,
`Complainants have effectively prevented OK1 from obtaining these
`documents from their only source, to the substantial prejudice of
`the OK1 Respondents.
`The OK1 Respondents request that the period for filing
`and service of responses to this motion be shortened until 5:OO
`p.m. on August 25, 1995 and that this motion receive expedited
`consideration, in order to ensure the OK1 Respondents timely
`access to the documents and to prevent further prejudice to them
`in their preparation for the hearing of this Investigation.
`WHEREFORE, the OK1 Respondents respectfully request that
`the Judge issue an Order compelling Complainants to comply with
`and produce all documents responsive to the AMER and IBM
`Subpoenas.
`
`9
`
`

`
`U
`
`Dated: August 2 3 , 1 9 9 5
`
`MATTHEW D. POWERS
`JARED BOBROW
`ANN E. DIBBLE
`PAUL M. SARACEN1
`WEIL, GOTSHAL & MANGES
`Silicon Valley Office
`2882 Sand Hill Road, Suite 2 8 0
`Menlo Park, CA 9 4 0 2 5
`( 4 1 5 ) 9 2 6 - 6 2 0 0
`M. JEAN ANDERSON
`DAVID W. OLIVER
`WEIL, GOTSHAL & MANGES
`1615 L Street, N.W.
`Washington, D.C. 2 0 0 3 6
`( 2 0 2 ) 682-7000
`
`By: Q%e!CL%Wk&
`I Jared Bobrog
`Attorneys for Respondents
`OK1 ELECTRIC INDUSTRY CO., LTD.
`AND OK1 AMERICA, INC.
`
`VERIFICATION OF CONFERENCE
`Pursuant to Section 2 ( k ) of Judge Harris' Ground Rules
`for Hearing attached to Order No. 4 0 , this confirms that the OK1
`Respondents made reasonable, good faith efforts to resolve this
`matter with Complainants but were unable to do so.
`Q f a d - ~ / h *
`L/ Jared Bobrow(
`
`10
`
`

`
`c
`
`a
`
`

`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
`Before the Honorable Sidney Harris
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN MEMORY DEVICES WITH
`INCREASED CAPACITANCE AND
`PRODUCTS CONTAINING SAME
`
`1
`)
`)
`)
`)
`)
`
`Investigation No.
`337-TA-371
`
`SUBPOENA DUCES TECUM AND AD TESTIFICA NDUM
`
`TO: Advanced Materials Engineering Research, Inc.
`250 Santa Ana Court
`Sunnyvale, California 94086
`
`PLEASE TAKE NOTICE that, pursuant to Section 337 of the Tariff Act of
`1930, as amended, and Rules 210.28 and 210.32 of the Commission’s Rules of Practice
`and Procedure (19 C.F.R 55 210.28,210.32):
`Advanced Materials Engineering Research, Inc.
`250 Santa Ana Court
`Sunnyvale, California 94086
`(referred to herein as “AMER”) is hereby ordered to testify at the taking of a deposition
`upon oral examination under oath for the above-captioned investigation commencing
`July 6,1995, at 9:30 a.m. at the offices of Weil, Gotshal & Manges, 2882 Sand Hill Road,
`Suite 280, Menlo Park, California 94025-7022, or such other time and place as the
`parties agree, and continuing day to day until complete. Advanced Materials
`Engineering Research shall designate one or more officers, agents, or other persons who
`
`consent to testify on its behalf and who are most knowledgeable regarding the matters
`
`listed in Attachment A hereto.
`
`

`
`The deposition will be taken before a court reporter, notary public, or
`other person authorized by law to administer oaths, and will be conducted in
`accordance with the Commission’s Rules of Practice and Procedure and the Federal
`Rules of Civil Procedure. The deposition will be taken for the purposes of discovery,
`for use at the trial in this matter, and for any other purpose permitted under the
`
`Commission’s Rules of Practice and Procedure and the Federal Rules of Civil
`Procedure.
`
`PLEASE TAKE FURTHER NOTICE that, pursuant to section 337 of the
`Tariff Act of 1930, as amended, and Rule 210.32(a)(2) of the Commission’s Rules of
`Practice and Pracedure, the third party witness is hereby ordered to produce and
`permit inspection and copying, on or before June 19,1995, the documents, papers,
`books, or other physical exhibits in its possession, custody or control as described and
`specified in Attachment B hereto.
`If production of any document or thing is withheld under a claim of
`privilege, each withheld document should be separately identified in a privileged
`document list. The privileged document list must identify each document separately,
`specifying for each document at least: (1) the sender(s); (2) recipient(s), including copy
`recipients; (3) date; (4) a description of the document; (5) the portion(s) of the document
`as to which privilege is claimed. The type of privilege claimed (e.g., attorney client
`privilege, attorney work product privilege) must also be stated, together with a
`certification that all elements of the claimed privilege have been met and have not been
`waived with respect to each document.
`If any of the documents or things listed and described in Attachment B are
`considered ”confidential business information” as that term is described in the attached
`Amended Protective Order (APO) (Attachment C), such documents or things should be
`produced pursuant to the terms and provisions of the Order. All documents and things
`
`- 2 -
`
`

`
`produced in response to this subpoena are subject to and may be used solely in
`accordance with the Protective Order.
`For the purpose of this notice, the definitions and instructions set forth in
`Attachment D hereto are hereby incorporated by reference into this order and the
`Attachments hereto.
`Any motion to limit or quash this subpoena shall be filed no later than
`June 27 ,1995.
`
`U.S. International Trade Commission
`
`Dated: June @, 1995
`
`- 3 -
`
`

`
`Oral testimony will be taken concerning the following categories:
`
`Analysis of Respondents’ DRAM devices or any portion thereof by, at the
`1.
`direction or request of, or for Advanced Materials Engineering Research, Inc.
`(“MER”).
`
`2.
`
`Procedures used by AMER (including, without limitation, procedures
`used by facilities used by AMER) for preparation of semiconductor devices for analysis.
`
`3.
`
`Facilities owned or used by AMER for analysis of semiconductor devices.
`
`Preparation of Respondents’ DRAM devices, or any portion thereof,
`4.
`before and during analysis thereof by or for AMER and treatment of Respondents’
`DRAM devices before, during and after analysis thereof by or for AMER.
`
`

`
`All documents relating to analysis of Respondents' DRAM devices or any
`1.
`portion thereof by, at the direction or request of, or for Advanced Materials Engineering
`Research, Inc. ("AMER).
`
`All documents relating to procedures used by AMER (including, without
`2.
`limitation, procedures used by facilities used by AMER) for preparation of
`semiconductor devices for analysis.
`
`All documents relating to facilities owned or available for use by AMER
`3.
`for analysis of semiconductor devices.
`
`All documents relating to preparation of Respondents' DRAM devices, or
`4.
`any portion thereof, before analysis thereof by or for AMER and treatment of
`Respondents' DRAM devices during analysis thereof by or for AMER
`
`To the extent not produced in response to the above requests, Documents
`5.
`relating to, describing, or concerning any of the deposition subjects identified in the
`preceding Attachment A.
`
`

`
`ATTACHMENT D
`
`DEFINITIONS
`
`The term ”complainants” or “PEF~ or “Hazani” shall include Emanuel
`A.
`Hazani, Patent Enforcement Fund, Inc., its divisions, departments, parents, affiliates,
`branches, partners, subsidiaries, joint ventures, related companies, predecessors-in-
`interest, present and former officials, executives, directors, agents, officers, employees,
`attorneys, sales representatives, consultants, contractors, subcontractors, or any
`representatives thereof.
`
`C .
`
`B.
`The term ”Respondents” shall refer to Samsung Electronics Co., Ltd.,
`Samsung Semiconductor, Inc., Samsung Electronics America, Inc., Mitsubishi Electric
`Corp., Mitsubishi Electronics America, Inc., NEC Corporation, NEC Electronics, Inc.,
`Oki Electric Industries Co., Ltd. and Oki America, Inc., their divisions, departments,
`parents, affiliates, branches, partners, subsidiaries, joint ventures, related companies,
`predecessors-in-interest, present and former officials, executives, directors, agents,
`officers, employees, attorneys, sales representatives, consultants, contractors,
`
`subcontractors, or any representatives thereof.
`
`C.
`
`The term “analysis” shall refer to any form of physical, visual, chemical,
`
`and or structural analysis, including, but not limited to, Scanning Electron Microscopy,
`Transmission Electron Microscopy, Atomic Force Microscopy, Electron Energy Loss
`Spectroscopy, High Resolution Electron Energy Loss Spectroscopy, Secondary Ion Mass
`Spectrometry, X-Ray Photoelectron Spectroscopy, and/or Rutherford Backscattering
`spectrometry.
`
`

`
`D. The term "related company" refers to any parent, subsidiary (either wholly
`or partly-owned), division, proprietorship, joint venture, subcontractor, partnership or
`other business cooperation.
`
`The term "document" is used in its broadest sense to include everything
`E.
`that is contemplated by Fed. R. Civ. P. 26 and 34.
`
`The term "relating to" includes referring to, concerning, alluding to,
`F.
`responding to, connected with, commenting on, in respect of, about, regarding,
`explaining, supporting, dii$cussing, showing, describing, reflecting, analyzing,
`
`constituting or setting forth.
`
`G.
`
`The term "facility" refers to any person, device, or equipment.
`
`H. The term "person" refers to any natural person, corporation, partnership,
`firm, association, government agency or other organization recognizable at law, and its
`agencies and employees.
`
`1.
`Documents to be produced include all documents, wherever located, in
`the possession, custody or control of Applied Materials Engineering Research, Inc.
`
`Selection of documents, and the numbering of such documents, shall be
`2.
`performed in such a manner as to ensure that the source of each document may be
`determined.
`
`Documents and materials attached to or enclosed with other documents
`3.
`should be produced together.
`
`- 2 -
`
`

`
`Any document bearing on any sheet or side thereof any marks not a part
`4.
`of the origunal text or any reproduction thereof, is to be considered a separate document
`for purposes of responding to the following document requests.
`
`5.
`
`The singular indicates the plural as circumstances may make appropriate.
`
`- 3 -
`
`

`
`r
`
`EXHIBIT
` EXHIBIT_12_
`
`
`
`

`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
`Before the Honorable Sidney Harris
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN MEMORY DEVICES WITH
`INCREASED CAPACITANCE AND
`PRODUCTS CONTAINING SAME
`
`1
`1
`1
`1
`
`Investigation No.
`
`337-TA-371
`
`SUBPOENA AD TESTIFICANDUM AND SUBPOENA DUCES TECUM
`
`TO: IBM
`1580 Route 52
`Hopewell Junction, NY 12533-6531
`PLEASE TAKE NOTICE that, pursuant to Section 337 of the
`Tariff Act of 1930, as amended, and Rules 210.28 and 210.32 of the
`Commission's Rules of Practice and Procedure (19 C.F.R. SS 210.28,
`210.32) :
`
`YOU ARE HEREBY ORDERED to appear for purposes of
`deposition upon oral examination commencing July 24, 1995, at 9:30
`a.m. at the offices of Weil, Gotshal C Manges, 767 Fifth Avenue,
`New York, NY
`10153, or at such other time and place as the
`parties agree. This deposition will be taken before a Notary
`Public or other person authorized to administer oaths and will
`continue from day to day until completed. IBM shall designate one
`
`or more officers, agents, or other persons who consent to testify
`
`

`
`on its behalf and who are most knowledgeable regarding the matters
`listed in Attachment A hereto.
`YOU ARE SEREBY FUR-
`ORDERED to produce at the offices
`of Weil, Gotshal t Manges, 2882 Sand Hill Road, Suite 280, Menlo
`Park, California 94025, on July 21, 1995, at 9:30 a.m. or at
`another time and place agreed upon by the parties, all documents
`and things in your p-ossession, custody, or control described in
`Attachment B hereto. Such production will be for the purpose of
`inspection and copying, as desired.
`If production of any document listed and described in
`Attachment B hereto is withheld on the basis of a claim of
`privilege or other claim of immunity from discovery, each withheld
`
`document should be separately identified on a privilege log. The
`
`privilege log must identify each document separately, specifying
`(1) the date; (2) sender(s); (3)
`for each document at least:
`recipient (s) ; and (4) general subject matter of the document. The
`type of privilege claimed (e.u,, attorney-client privilege, work
`product doctrine, etc.) must be stated, together with a
`
`certification that all elements of the claimed privilege have been
`
`met and have not been waived with respect to each document.
`
`If any of the documents or things listed and described
`in Attachment B hereto are considered Itconfidential business
`information,tt as that term is defined in the Amended Protective
`Order, attached as Attachment C hereto, such documents or things
`
`2
`
`

`
`-W
`
`should be produced subject to the terms and provisions of the
`Amended Protective Order.
`For purposes of this subpoena, the definitions and
`instructions set forth in Attachment D hereto are hereby
`incorporated by reference into this subpoena and the Attachments
`hereto.
`
`Any motion -to limit or quash this subpoena shall .be
`filed within 10 days of the issuance of this subpoena.
`IN WITNESS WHEREOF the undersigned of the United States
`International Trade Commission has hereunto set his hand
`and caused the seal of said United States International
`at Washington, D.C. , on
`Trade Co ission
`, 1995.
`of
`this &*day
`
`/-
`
`/
`Sidney Harrw%
`Administra&.ve Law Judge
`United States International Trade Commission
`
`3
`
`

`
`Oral testimony will be taken concerning the following
`
`categories:
`
`Preparation or treatment of Respondents' DRAM
`1.
`devices, or any portion thereof, for analysis, testing, or
`photography before, during, or after such analysis, testing, or
`photography thereof.
`Procedures used by, at the direction or request of,
`2.
`or for IBM for prepaxing or treating semiconductor devices for
`analysis, testing, or photography.
`Analyses, tests, or photographs of Respondents'
`3.
`DRAM devices, or any portion thereof.
`Facilities, machines, and equipment owned or used
`4.
`by IBM for analysis, testing, or photography of semiconductor
`
`devices .
`
`

`
`All documents that evidence, relate, or refer, in
`1.
`whole or in part, to preparation or treatment of Respondents' DRAM
`devices, or any portion thereof, €or analysis, testing, or
`photography before, during, or after such analysis, testing, or
`photography thereof.
`All documents that evidence, relate, or refer, in
`2.
`whole or in part, to procedures used by, at the direction or
`request of, or for IBM for preparing or treating semiconductor
`devices for analysis, testing, or photography.
`All documents that constitute, evidence, relaee, or
`3 .
`refer, in whole or in part, to analyses, tests, or photographs of
`Respondents' DRAM devices, or any portion thereof.
`All documents that evidence, relate, or refer, in
`4 .
`whole or in part, to facilities, machines, or equipment owned or
`used by IBM for analysis, testing, or photography of semiconductor
`devices.
`
`

`
`' V
`
`ATTACHWENT D
`The term @@Respondents@@ shall refer to OK1 Electric
`1.
`Industry Co., Ltd.. , OK1 America, Inc., Samsung Electronics Co.,
`Ltd., Samsung Semiconductor, Inc., Samsung Electronics America,
`Inc., Mitsubishi Electric Corp., Mitsubishi Electronics America,
`Inc. , NEC Corporation, NEC Electronics, Inc .., Hitachi, Ltd.,
`Hitachi America, Ltd., Hyundai Electronics America, Inc., Hyundai
`Industries Co., Ltd., their respective divisions, departments,
`parents, affiliates, branches, partners, subsidiaries, joint
`ventures, related companies, predecessors-in-interest, present and
`former officers, executives, directors, agents, employees,
`attorneys, sales representatives, consultants, contractors,
`subcontractors, or ahy representatives thereof.
`
`The terms @*analysis@@ and "analyses@* shall refer to
`2.
`any form of physical, visual, chemical, or structural analysis,
`including without limitation Scanning Electron Microscopy,
`Transmission Electron Microscopy, Atomic Force Microscopy,
`Electron Energy Loss Spectroscopy, High Resolution Electron Energy
`Loss Spectroscopy, Secondary Ion Mass Spectrometry, X-Ray
`Photoelectron Spectroscopy, and Rutherford Backscattering
`Spectrometry.
`
`The term @@document@@ is used in its broadest sense
`3.
`and includes the original and each copy of any written, printed,
`typed, photographed, recorded, computerized, electronic, magnetic,
`taped, graphic, or other matter, in whatever form, whether in
`final or draft, including but not limited to all materials and
`things that constitute @lwritingsl@ or @*recordings1@ within the
`meaning of Rule 1001 of the Federal Rules of Evidence and all
`materials and things that constitutes "documentst@ within the
`meaning of Rules 34 of the Federal Rules of Civil Procedure. The
`word @@document@@ includes without limitation electronic mail, data
`stored on computer hard drives, diskettes, tapes, or other
`computer media, and any other information stored magnetically or
`electronically. Any document bearing any marks, including without
`limitation initials, stamped indicia, comments, highlighting,
`marginalia, or other notations not a part of the original text or
`reproduction thereof, is a separate document.
`
`The words @Iandt@ and @@or@@ shall be construed
`4.
`conjunctively or disjunctively, whichever makes the request more
`inclusive. The singular shall include the plural and vice versa.
`
`

`
`c
`
`EXHIBIT C
` EXHIBIT__Q___
`
`

`
`CERTAIN MEMORY DEVICES DEPO OF: HARRY KAWAYOSHI VOL.11 July 17,
`1995
`
`Page 165 to Page 339
`
`CONDENSED TRANSCRlPT AND CONCORDANCE
`PREPARED BY:
`
`COMP- U-SCRIPTS
`OFFICIAL REPORTERS AND NOTARIES
`275 Saraloga Drive, Suite 140
`Sanra Clara, CA 95050
`Phone: 408-261 -9795
`
`\
`
`

`
`BSA
`
`CERTAIN MEMPrlY DEVICES DEPO O F HARRY KAW* “OSHI VOL.11 July 17, 1995
`
`xMAx(i/i)
`
`I n the Matter of
`I 7 )
`( 81 CERTAIN HEWRV DEVICES UlTH
`INCREASE0 CAPACITANCE
`( 9)
`(10) AM) PROOUCTS CONTAINING WE
`OEPMITlW Cf WRY WAYMHI
`(12)
`WOLUlE I1
`1131
`JULY 17. 1995
`115) Date:
`9:34 A . M .
`1161 Tim:
`U e i l . totshal 6 Manges
`(I71 Location:
`2882 Sand H i l l Road
`(10
`Menlo Park. CA
`(191
`Carol Fusco. CSR 3269
`(20) Reporter:
`CCHP-U-SCRIPTS
`(231
`275 Saratoga Avenue. Suite 140
`(24)
`Santa Clara. CA 95050
`125)
`(408) 261.9795
`(26)
`
`Paae 166
`A P P E A R A N C E 5-
`I I I
`( 1) For the C m l a i n a n t V E W L E . BAETJER
`HO(iAR0 6 CIVILETII. LLP
`BY. HERBERT C WITH. I 1
`ATTWNEV AT LA2
`
`( 4 )
`
`I 6)
`
`I 8)
`
`I 9)
`
`(11)
`
`(12)
`
`(13)
`114)
`
`115)
`
`(161
`
`(I71
`(111)
`
`(19)
`(m
`
`(211
`122)
`
`(231 -
`1211
`
`1241
`I 61
`I 7)
`I 81
`( 9)
`1101
`111)
`(14)
`(15)
`116)
`( I l l
`(181
`19)
`(20)
`(21) 25
`Copies of phorograpns nmbered
`PEFl1430.11436 marked Cmf i dentid I
`(22)
`In) 2U-L Prints frm negatives
`(24) 27A-L Prints Wtained fran