New Pacer--RECOMMENDED DISCOVERY ORDER NO. 1

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THOMAS HR DENVER, ESQ. (56872)

Mediation Masters

96 North Third Street

Suite 300

San Jose, CA 95112

NO. 1.
The motion of defendants and counter claimants, PATRIOT SCIENTIFIC
CORPORATION, TECHNOLOGY PROPERTIES, LTD. and ALLIACENSE, LTD, to compel
compliance with their subpoena issued to third party SEAGATE TECHNOLOGY came on
for hearing on February 7, 2012. Extensive briefing having been reviewed and oral
argument heard, it is ordered as follows:
The Order is granted as more particularly set forth below:
Third party SEAGATE, defined as “Seagate Technology, LLC, Seagate Technology
(US) Holdings, Inc. and Seagate Technology, Inc.” shall respond to the ten requests for
production at issue, producing documents sufficient to meet those requests. The
production here ordered shall be in regard to the following ACER and BARCO products:
Acer Desktop Aspire M31 00, Acer Desktop Veriton L41 0, Gateway Notebook T-
6321, Acer Notebook Aspire One (AOAI50-1750), Gateway Notebook P-172S FX, Barco
Media Server Axon and Barco Lighting Console Hog iPC. Further, the production is limited
to documents related to the following SEAGATE hard drives allegedly contained within the
accused ACER and BARCO products: Barracuda/7200.10, Momentus/5400.5 and
Momentus/7200.2. Responsive documents are to be produced on or before February 24, 2012.

REASONS FOR DECISION

Federal Rule of Civil Procedure No. 45 allows the Court to quash or modify a
subpoena. In doing so, the Court is to avoid undue burden or expense to the party to
which the subpoena is directed. Diamond State Ins. Com v. Rebel Oil Co., et al.
157F.R.D. 691 (D. Nev. 1994)

MEET AND CONFER SUFFICIENT –

Under Civil Local Rule No. 37-1, counsel are
required to meet and confer prior to bringing discovery motions. Here, they have met that
obligation. In fact, the parties attached to their moving and opposing papers approximately
an inch and a half of documentation reflecting the elaborate meet and confer efforts. No
purpose would be served by further meet and confer. THE SUBPOENA, AS ISSUED, WAS OVERLY BROAD: The subpoena, as issued, was overly broad in several particulars. First, its definition of the responding party was so broad as to require a search for records under the control of “all past and present directors,” all “consultants” and “others purporting to act on [Seagate’s] behalf.” This overly broad2 definition of “Seagate” is limited by this order to presently active Seagate entities likely to have responsive documents.The various requests as originally drafted call for “all documents,” “all specifications,” “all internal blocked diagrams …” etc. The parties have agreed that documents “sufficient to show” the various features of the Seagate hard drives sought by these requests will be an adequate response and that agreement is incorporated in the
present Order.

THIRD PARTY SEAGATE HAS NOT DEMONSTRATED UNDUE BURDEN:

While SEAGATE argues that the requests constitute an undue burden, it presents no evidence
whatever that this is the case. No declarations regarding burden by a knowledgeable
SEAGATE representative accompany the opposition nor do the opposition papers identify
just what the burden would be. Rather, SEAGATE makes an unpersuasive argument that
the requested documents are irrelevant to issues in the underlying case and therefore “by
definition” constitutes an undue burden. SEAGATE, however, does not support its
relevance argument with any persuasive facts or law. Neither does it demonstrate how
much effort would be required to gather the documents requested. Finally, in the course of
the meet and confer process, the request to produce was very substantially narrowed and
SEAGATE’S counsel, by his letter of October 14, 2011, agreed to search for and produce
the responsive documents, undercutting any present claim of undue burden.
INFRINGEMENT CONTENTIONS NEED NOT BE PROVIDED TO SEAGATE:
SEAGATE, in its opposition, asserts that it cannot produce responsive documents or, at
least, that its burden in producing would be increased if it is not provided with the
infringement contentions in the underlying case. SEAGATE cites no authority for the
proposition that the infringement contentions need to be provided, nor does it provide any
meaningful evidence that the production would be facilitated if they were provided.
THE EXISTING PROTECTIVE ORDER IS SUFFICIENT: In its opposition,
SEAGATE asserts that the documents requested implicate its confidential, trade secret
intellectual property and that the existing protective order is not sufficient to provide it with
protection. SEAGATE bases its argument, entirely, on the proposition that the attorneys
representing the moving parties here also represent their clients in past, existing or
threatened future litigation against SEAGATE. From this, SEAGATE argues that those
attorneys would be privy to SEAGATE’S intellectual property and thus better armed in the
future. The argument is unpersuasive. SEAGATE provides absolutely no evidence that
the attorneys representing the moving parties have in any way failed to adhere to the terms
of the existing protective order. That protective order is very much in keeping with the
language found in numerous litigated matters in this district. SEAGATE’S argument is further undercut by a second argument which it advances in opposition to the present motion. SEAGATE argues that the documents sought by the requests for production are unnecessary, in that is a simple matter of reverse engineering for the moving parties to discover that which is sought by the requests for production. The
argument is unpersuasive insofar as whether reverse engineering is an appropriate
substitute for the pending requests for production, but it is illuminating as to the question of
whether production of the documents, as requested, places SEAGATE’S intellectual
property in any greater jeopardy than would the reverse engineering for which it argues.
THE PARTIES, IN MEET AND CONFER, ARRIVED AT AN AGREEMENT WHICH
SHOULD HAVE ELIMINATED THE NEED FOR THE PRESENT MOTION AND THAT
AGREEMENT IS INCORPORATED IN THE PRESENT ORDER: On September 28, 2011,
Charles Hoge, counsel for moving parties, wrote to John Caracappa, counsel for
SEAGATE, identifying the ACER and BARCO products which contained Seagate hard
drives. Further, the letter sets forth the chips contained within the Seagate hard drives
incorporated in the accused products. On October 14, 2011, Mr. Caracappa responded to
Mr. Hoge, stating the “SEAGATE is in the process of searching for documents that may be
responsive to your requests, and we expect to be able to provide you with a substantive
response next week.” Since the time of that exchange, the number of Seagate hard drives
involved has been reduced further to the four identified in this present order. SEAGATE
has not responded to the requests with regard to the identified devices. It is herein ordered
to do so.

TIME TO RESPOND:

There is presently pending a motion by plaintiff BARCO to
strike portions of defendant TPL’S infringement contentions. That motion is to be heard by
the Special Master on February 27, 2012. It appears to the Special Master’s satisfaction
that the SEAGATE documents which are the subject of this order may well be relevant to
the moving parties reply to the pending motion to strike. Accordingly, SEAGATE is ordered
to provide responsive documents on or before February 24, 2012. Should SEAGATE, in
good faith, discover that it cannot produce some subset of the documents which it is
ordered to produce within this time frame, it is to immediately confer with counsel for
PATRIOT SCIENTIFIC to see if an accommodation can be reached with regard to that
subset. Failing agreement, the parties are to immediately approach the Special Master for
resolution of any such issues and must do so sufficiently in advance of February 24, 2012
so as to allow for full production, if that is then required by the Special Master.

Dated: February 8, 2012 /s/ Thomas HR Denver

THOMAS HR DENVER