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Choice-Intersil Microsystems, Inc. v. Agere Systems, Inc.
Citations: 224 F.R.D. 471; 2004 U.S. Dist. LEXIS 21742; 2004 WL 2369904Docket: No. C 04-0153 MISC MMC(JL)
Court: District Court, N.D. California; September 30, 2004; Federal District Court
The court granted in part and denied in part the Motion to Compel Production of Documents filed by Choice-Intersil Microsystems against Infineon Technologies North America Corp. concerning the production of documents related to WMAC products. Infineon NA is ordered to provide all documents in Infineon AG’s possession related to WMAC technologies within thirty days. However, the request for documents exclusively related to the PHY chip was denied as irrelevant. Additionally, the court denied the request for a continued deposition due to a lack of specificity in the deposition subpoena regarding Infineon NA’s corporate relationship with Infineon AG. Background details reveal that Choice and Agere Systems developed a WMAC chip under a confidentiality agreement, and Agere later partnered with Infineon for a PHY chip. Choice alleges that Agere disclosed its confidential information to Infineon, prompting the lawsuit against Agere for breach of contract and trade secret misappropriation. The motion arose from a subpoena issued to Infineon NA, which claimed it did not possess control over Infineon AG's documents. The court found this unpersuasive, emphasizing the relevance of WMAC-related documents due to the interconnected functions of WMAC and PHY chips. The Pennsylvania court ruled that the joint-development plan of the PHY chip was unrelated to WMAC and irrelevant to the case at hand. It found that Infineon NA has access and control over documents held by Infineon AG for several reasons: Infineon NA is a wholly-owned subsidiary of Infineon AG; it would have marketed the product in North America if not for market changes; both entities share databases; and Infineon NA could obtain high-level documents from Infineon AG when needed. These findings are critical based on precedent from Camden Iron, Metal v. Marubeni America. During oral arguments, Infineon NA’s counsel referenced Securities and Exchange Commission v. Credit Bancorp to argue against producing documents for Infineon AG. However, the court noted that the cited precedent (Cooper v. British Aerospace) involved an American company being required to produce documents for its British affiliate because it was deemed inconceivable that it would not have access to those documents. The court rejected Infineon NA's argument that its situation was different, asserting that Infineon NA could obtain technical development documents from Infineon AG if it requested them. To safeguard the business interests of both Infineon NA and Infineon AG, any documents produced will be subject to a protective order from the Eastern District of Pennsylvania. Consequently, Infineon NA is ordered to produce all documents referencing WMAC technologies in Infineon AG's possession, granting Choice's Motion to Compel while denying its Motion to Continue Deposition.