By Eric Schweibenz and Lisa Mandrusiak
On May 26, 2015 ALJ David P. Shaw issued the public version of Order No. 8 (dated May 13, 2015) granting non-party Taiwan Semiconductor Manufacturing Company North America's ("TSMC NA") motion to quash a subpoena filed by Complainants in Certain Graphics Processing Chips, Systems On A Chip, And Products Containing the Same (Inv. No. 337-TA-941).

By way of background, this investigation is based on a November 21, 2014 complaint filed by Samsung Electronics Co., Ltd. of South Korea and Samsung Austin Semiconductor, LLC of Austin, Texas (collectively, "Samsung") alleging violation of Section 337 in the importation into the U.S. and sale of certain graphics processing units ("GPUs"), systems on a chip ("SoCs"), and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,147,385; 6,173,349; 7,056,776; and 7,804,734.  See our November 26, 2014 and December 24, 2014 posts for more details on the complaint and Notice of Investigation.

The subpoena was served on TSMC NA, but sought information from TSMC NA's parents and affiliates, including non-party Taiwan Semiconductor Manufacturing Co., Ltd. ("TSMC").  The ALJ explained that the potential involvement of TSMC was already the subject of a motion filed by TSMC seeking intervention to disqualify Samsung's counsel, Kirkland.  TSMC sought disqualification because two of the four patents asserted in this investigation were asserted against certain TSMC products in Investigation No. 337-TA-906, where TSMC was represented by Kirkland. ALJ Shaw denied TSMC's motion to disqualify Kirkland, determining that TSMC did not establish that Kirkland's representation of Samsung is directly adverse.  This determination was based on numerous strong representations made by Samsung such as "Samsung does not accuse TSMC's standard cell libraries or wafer-manufacturing processes of infringement at all.  TSMC has the burden of proving that these matters are substantially related and has failed to do so" (emphasis in original).  Further, Samsung repeatedly emphasized that infringement in this case depends on the structure of the product, not the process used for making it, and that the focus of the case would be on NVIDIA products "regardless of how they are made" and that the case is not about the process of making these products, "let alone any TSMC electronic libraries" (emphasis in original).

Since the ALJ accepted Samsung's representations in determining not to disqualify Kirkland, he determined that applying the same expectations here illustrates that the discovery requested by the subpoena is not relevant, granting the motion to quash.  The ALJ stated that Samsung is now seeking discovery on topics "ranging from design and layout, through process information and testing, to material composition and work processes" for numerous products.  As noted by the ALJ, "[t]here is not a single Topic of the subpoena at issue that conforms to the representations that Samsung made in order to avoid having the Kirkland firm disqualified."

Finally, the ALJ stated that if it turns out that the case actually involves how TSMC makes the accused products, it is unclear whether the disposition of the motion to disqualify Kirkland would be the same as he previously ordered.