In a recent order, Judge Sue L. Robinson addressed a non-party’s motion to quash plaintiff’s subpoena and plaintiff’s cross-motion to compel. Cradle IP LLC v. Texas Instruments, Inc., C.A. No. 11-1254-SLR (D. Del. Apr. 29, 2013). Plaintiff had filed an action against defendant Texas Instruments, Inc. in late 2011, alleging infringement of U.S. Patent Nos. 6,647,450; 6,874,049; 6,708,259. Id. at 1. In late 2012 and early 2013, plaintiff served subpoenas on a non-party, Nokia Siemen Networks US LLC (“NSN US”), seeking documents and a deposition “related to Nokia Siemens base transceiver stations that [Texas Instruments] . . . identified as incorporating certain of the accused devices.” Id. at 1. Judge Robinson granted plaintiff’s motion to compel, but only to the extent that “NSN US has an employee or representative who has knowledge of the topics identified in the subpoena; does not need to obtain documents or information from [Nokia Siemens Networks Oy] for such knowledge; and lives, works, or regularly transacts business within 100 miles of the designated place of deposition.” Id. at 8. Further, Judge Robinson directed the deposition witness, if any, “to bring responsive documents that NSN US does not need to obtain from [Nokia Siemens Networks Oy], even if such documents are not located within 100 miles of the place of deposition or production.” Id. at 8-9.
With respect to the motions before the court, the “bulk” of the disagreement between plaintiff and NSN US surrounded whether NSN US had “control” over documents or information in the possession, custody, or control of Nokia Siemens Networks Oy (“NSN Oy”)—NSN US’s Finnish sister company that was also a non-party to the action. Id. at 4. Judge Robinson noted that “control is defined as the legal right to obtain the documents required on demand,” and that the court has “declined to apply a broader definition of ‘control’ that would also include an inquiry into the practical ability of the subpoenaed party to obtain documents.” Id. at 3. To determine whether such control was present, Judge Robinson was guided by the court’s previous decision in Power Integrations, Inc. v. Fairchild Semiconductor lnt’l, Inc., 233 F.R.D. 143 (D. Del. 2005). Id. at 3-6. Judge Robinson found that the relationship between NSN US and NSN Oy was similar to the “vendor relationship” between the parties in Power Integrations: “NSN US purchases the Nokia Siemens base station transceivers that are developed by NSN Oy, a separate and distinct corporate entity.” Id. at 4, 6. Although NSN US also conceded it “maintained” the products, the Court found that insufficient “to disregard the separate and distinct corporate identity of NSN US.” Id. at 6. Judge Robinson thus concluded that “NSN has no control over documents or information that it would have to obtain from NSN Oy.” Id.
Judge Robinson, however, was “concerned with certain aspects of NSN US’s motion to quash.” Id. Judge Robinson noted that “it [was] unclear from the record” whether NSN US was in the possession, custody, or control of other information it would not be required to obtain from NSN Oy, such as “supply chain” information or information regarding “certain hardware semaphores and software.” Id. Judge Robinson further found it unclear whether “any NSN US employee or representative within the court’s territorial limits may have knowledge that is responsive to the subpoena.” Id. at 7. Accordingly, Judge Robinson granted plaintiff’s motion to compel to the extent discussed above. Id. at 8-9.