IN THE UNITED STATES BANKRUPTCY COURT FOR THE DISTRICT OF DELAWARE In re: : Chapter 11 : SPANSION, INC., et al. : Case No. 09-10690 (KJC) : (Jointly Administered) Debtors. :Hearing Date: August 11, 2009 at 3:30 p.m. (EST) :Objection Deadline: August 4, 2009 at 4:00 p.m. (EST) MOTION OF TESSERA, INC. FOR ORDER PURSUANT TO BANKRUPTCY RULE 2004 COMPELLING EXAMINATION OF A DESIGNEE OF THE DEBTORS PURSUANT TO FED. R. CIV. P. 30(B)(6) AND FOR THE PRODUCTION OF DOCUMENTS Tessera, Inc. ( Tessera ) hereby respectfully moves (the Motion ) this Court for entry of an order pursuant to Rule 2004 of the Federal Rules of Bankruptcy Procedure (the Bankruptcy Rules ) compelling examination of a Designee of the above-captioned debtors (the Debtors ) pursuant to Federal Rule 30(b)(6) of the Federal Rules of Civil Procedure (the Federal Rules ) and for the production of documents. In support of this Motion, Tessera respectfully states as follows: JURISDICTION 1. The Court has jurisdiction over this Motion under 28 U.S.C. 157 and 1334. This matter is a core proceeding within the meaning of 28 U.S.C. 157(b)(2). Venue of this proceeding and this Motion in this District is proper under 28 U.S.C. 1408 and 1409. The statutory predicates for relief requested herein are Bankruptcy Rule 2004 and Rule 2004-1 of the Local Rules of this Court (the Local Rules). BACKGROUND 2. Tessera, Inc. invented certain fundamental small format semiconductor packaging technology and holds hundreds of patents addressing such technology. Semiconductor packaging allows a semiconductor chip to interface with the rest of the system and protects the
delicate semiconductor from contamination and damage. Tessera s technology has enabled the semiconductor industry to meet the demand for smaller, faster, more efficient and more reliable electronics products and is used in a myriad of products, ranging from medical devices to defense equipment for the U.S. military. In a detailed written opinion, the International Trade Commission held Tessera s patented technology to constitute a paradigm shift in the field. 3. While most of the semiconductor industry, including Intel, Texas Instruments, Samsung and Motorola, have licensed Tessera s patented technology, Debtors have chosen to unlawfully use Tessera s patented technology when manufacturing their products. As a consequence, in late 2005, Tessera filed a complaint against certain Debtors in the Northern District of California for infringement of Tessera s patents (the California Action ). 4. In April 2007, Tessera filed a complaint against Spansion Inc. and Spansion LLC ( Spansion ) for infringement of two of the five patents asserted in the California Action in the International Trade Commission ( ITC ). The ITC action is styled Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same, Investigation No. 337-TA- 605 ( 605 Investigation ). The California court stayed the California Action until determination of the International Trade Commission in the 605 Investigation, including appeals becomes final. 5. On March 1, 2009, the Debtors filed voluntary petitions for relief under chapter 11 of title 11 of the United States Code, as amended (the Bankruptcy Code ). The ITC determined that the automatic stay provision of the Bankruptcy Code does not apply to an ITC section 337 investigation, and denied Spansion s motion to stay the 605 Investigation in light of Spansion s bankruptcy petition. 2
6. On May 20, 2009, the U.S. International Trade Commission (the ITC ) issued a final determination in the 605 investigation ruling that Spansion infringed Tessera s asserted patents and reaffirming the validity of those patents. It issued a Limited Exclusion Order, which in pertinent part, orders that all products found infringing ( Covered Products ) that are manufactured by or on behalf of, or imported by or on behalf of [Spansion], or any of their affiliated companies, parents, subsidiaries, or other related business entities, or their successors or assigns, are excluded from entry for consumption into the United States, entry for consumption from a foreign-trade zone, or withdrawal from a warehouse for consumption. 7. In addition, the Commission issued a Cease and Desist Order, which applies to Spansion and any of its principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled or majority-owned business entities, successors, and assigns and which prohibits, among other things, marketing, advertising, distributing, offering for sale or selling any covered products in the United States. 8. After the filing of this bankruptcy action, Spansion has continued to infringe Tessera s patents by selling parts that the ITC recently found to infringe. Tessera has information that Spansion may still be infringing Tessera s patents even after the issuance of the ITC orders. For example, Spansion s website continues to advertise certain Covered Products even after the ITC Order. Recently, Spansion s CEO filed a sworn declaration asserting under penalty of perjury that these Debtors will lose $500 million in revenue as a result of the ITC Orders. Tessera is entitled to damages from Debtors for its patent infringement. 9. Tessera has repeatedly sought information from Debtors regarding their apparent ongoing infringement of Tessera s products in violation of the U.S. Patent Law and the ITC Orders. Debtors have thus far refused to answer any of Tessera s questions informally. 3
10. Accordingly, discovery regarding the Debtor s sale of infringing products and technolgies is necessary to fully determine the extent of Spansion s patent infringement of Tessera s patents, and the according amount that Debtor owes to Tessera relating to such infringement. RELIEF REQUESTED 11. By this 2004 Motion, Tessera respectfully requests the entry of an order compelling the examination of a designee of the Debtors pursuant to Federal Rule 30(b)(6) 1 and to issue a subpoena to the Debtors, calling for the production of the documents and requesting information set forth on the attached Exhibit B. BASIS FOR RELIEF 12. Bankruptcy Rule 2004 provides in relevant part: Fed. R. Bankr. P. 2004. (a) Examination on Motion. On motion of any party in interest, the court may order the examination of any entity. (b) Scope of Examination. The examination of an entity under this rule may relate only to the acts, conduct, or property or to the liabilities and financial condition of the debtor, or to any matter which may affect the administration of the debtor s estate, or to the debtor s right to a discharge. In a reorganization case under chapter 11 of the Code, the examination may also relate to the operation of any business and the desirability of its continuance, the source of any money or property acquired or to be acquired by the debtor for the purposes of consummating a plan and the consideration given or offered therefore, and any other matter relevant to the case or to the formulation of a plan. (c) Compelling Attendance and Production of Documentary Evidence. The attendance of an entity for examination and for the production of documents may be compelled as provided in Rule 9016 for the attendance of a witness at a hearing or trial. 13. While in this instance Tessera seeks tailored discovery addressing the specific nature of debts due from Debtor, it is well established that the scope of an examination under 1 The topics to be governed in the course of the examination are attached hereto as Exhibit A. 4
Rule 2004 is unfettered and broad. In re GHR Energy Corp., 33 B.R. 451, 453 (Bankr. D. Mass. 1983); see also In re Mittco, Inc., 44 B.R. 35, 36 (Bankr. E.D. Wis. 1984); In re Vantage Petroluem Corp., 34 B.R. 650, 651 (Bankr. E.D.N.Y. 1983). Indeed, the examination can legitimately be in the nature of a fishing expedition. In re Wilcher, 56 B.R. 428, 433 (Bankr. N.D. Ill. 1985). See also In re Johns-Manville Corp., 42 B.R. 362, 364 (S.D.N.Y. 1984) (same); Matter of Frigitemp Corp., 15 B.R. 263, 264 n. 3 (Bankr. S.D.N.Y. 1981) (noting that examinations under the predecessor to Rule 2004 have been likened to fishing expeditions and inquisitions ). 14. The purpose of a Rule 2004 examination is to show the condition of the estate and to enable the Court to discover its extent and whereabouts, and to come into possession of it, that the rights of the creditor may be preserved. In re Coffee Cupboard, Inc., 128 B.R. 509, 514 (Bankr. E.D.N.Y. 1991) (citing Cameron v. United States, 231 U.S. 710, 717 (1914)). Accordingly, examinations under Rule 2004(a) and (c) may include within their scope, among other things: any matter which may relate to the property and assets of the estate; the financial condition of the debtor; any matter which may affect the administration of the estate; and, in a chapter 11 case, any matter relevant to the case or the formulation of a plan. See Fed. R. Bank. P. 2004(a) and (c). 15. Moreover, "[b]ecause the purpose of the Rule 2004 investigation is to aid in the discovery of assets, any third party who can be shown to have a relationship with the debtor can be made subject to a Rule 2004 investigation." In re Ionosphere Clubs, Inc., 156 B.R. 414, 432 (S.D.N.Y. 1993), affd, 17 F.3d 600 (2d Cir. 1994). 16. In addition, "[o]ne of the most fundamental crucial duties of a debtor-in-possession upon the filing of a Chapter 11 petition is to keep the Court and creditors informed about the nature, status and condition of the business undergoing reorganization." In re V. Savino Oil & Heating Co., 5
99 B.R. 518, 526 (Bankr. E.D.N.Y. 1989). "'Full and fair' disclosure is required during the entire reorganization process; it begins on day one, with the filing of the Chapter 11 petition. Momentum Manufacturing Corp. v. Employee Creditors Committee (In re Momentum Manufacturing Corp'), 25 F.3d 1132, 1136 (2d Cir. 1994). 17. The purpose of this examination is to fully determine the extent by which Spansion has continued to infringe Tessera s patents post-petition, as such infringements committed after the Petition Date give rise to post-petition administrative claims. 18. Although the scope of an examination under Rule 2004 is unfettered and broad, Tessera has narrowly tailored the information and documentation sought from the Debtors specifically relate to any matter which may affect the administration of the debtor s estate. See In re GHR Energy Corp., 33 B.R. 451, 453 (Bankr. D. Mass. 1983); Fed. R. Bankr. P. 2004. Tessera has sought to limit its discovery to only Spansion s continued infringement of its patents after filing for bankruptcy. 19. As set forth in the Certification (the Astin Certification ) of Carl D. Neff, Esquire of Ciardi Ciardi & Astin, Counsel to Tessera in these cases, Tessera has conferred with, or attempted to confer with, counsel for each examinee set forth herein and no agreement can be reached with regard to the relief requested in this Motion. A copy of the Neff Certification is attached hereto as Exhibit C. NOTICE 20. Notice of this Motion has been served on counsel to the Debtors, the Office of the United States Trustee, and Counsel to the Classes, and all other parties who have requested notice in these cases pursuant to Bankruptcy Rule 2002. Under the Circumstances, Tessera submits that such notice is adequate and sufficient and that no other or further notice is required. 6
NO PRIOR REQUEST FOR RELIEF 21. No previous motion for the relief sought herein has been made to this or any other Court. Tessera reserves the right to conduct further depositions and other discovery, or otherwise, as appropriate. WHEREFORE, Tessera, Inc. respectfully requests that this Court (i) grant this 2004 Motion in its entirety; (ii) compel the examination of a designee of the Debtors pursuant to Federal Rule 30(b)(6) to be conducted by Tessera; (iii) compel the Debtors to produce the documents and information listed on Exhibit B attached hereto and to the proposed order within ten (10) days from the date of the issuance of the subpoenas as authorized by the proposed order; and (iv) grant such further and additional relief as this Court deems just and proper. Dated: July 28, 2009 Wilmington, Delaware CIARDI CIARDI & ASTIN /s/ Carl D. Neff Daniel K. Astin (No. 4068) Anthony M. Saccullo (No. 4141) Mary E. Augustine (No. 4477) 919 Market Street, Suite 700 Wilmington, DE 19801 Telephone: (302) 658-1100 Facsimile: (302) 658-1300 dastin@ciardilaw.com asaccullo@ciardilaw.com maugustine@ciardilaw.com -and- IRELL & MANELLA LLP Howard J. Steinberg, Esquire 1800 Avenue of the Stars 9th Floor Los Angeles, California 90067 Phone: (310) 277-1010 Fax: (310) 203-7133 7
hsteinberg@irell.com Attorneys for Tessera, Inc. 8