## Facts

- Tessera, Inc. sued Micron Technology, Inc. in federal court asserting patent-related and antitrust claims concerning semiconductor packaging technology and DRAM markets.
- Tessera served subpoenas seeking electronically stored information (ESI) from non-party Hynix Semiconductor America, Inc., which possessed potentially relevant materials.
- Hynix conducted an initial search using agreed search terms, spent more than $70,000, and produced over 100,000 pages of electronic documents.
- Tessera sought a second, expanded search using additional search terms, asserting further relevant evidence likely existed in Hynix’s databases (including materials connected to alleged coordinated conduct affecting synchronous RDRAM).
- Hynix objected that the expanded terms would be unduly burdensome and costly, estimating review of more than two million additional pages of ESI.
- Tessera moved to compel additional production from Hynix.

## Issues

1. Whether a non-party should be compelled to perform an additional, broader ESI search using expanded search terms when the likely relevance must be weighed against substantial burden and expense.
2. How the court should apply Rule 26 limits and Rule 45 protections to tailor non-party ESI discovery, including whether conditions or cost measures are appropriate.

## Decision

- The court granted Tessera’s motion to compel in substantial part but limited the scope to reduce undue burden on Hynix.
- The court ordered additional searching and production from specified electronic sources using a narrowed set of court-approved search terms.
- The court declined to require the full, unbounded expanded search proposed by Tessera, rejecting terms or approaches likely to generate large volumes with low incremental relevance.
- The court structured the order to use targeted, identifiable databases (including government-investigation-related collections) to obtain relevant information while limiting marginal burden.

## Legal Principles

- Discovery may be obtained for non-privileged matters relevant to a claim or defense, but courts must limit discovery that is unreasonably cumulative or where the burden or expense outweighs the likely benefit. (Fed. R. Civ. P. 26(b)(1), (b)(2) (as then in effect))
- Subpoena compliance by a non-party is subject to heightened protection from undue burden or significant expense; courts may impose conditions to mitigate burden. (Fed. R. Civ. P. 45(c) (as then in effect))
- In large-scale ESI disputes, courts may require additional searching where relevance is substantial, but should tailor databases searched and search terms to balance need against non-party burden.
- Search-term protocols are subject to judicial control; courts may narrow proposed terms and limit sources to improve proportionality and reduce unnecessary review volume.

## Conclusion

The court compelled further non-party ESI production because the requested information was important to the claims, but it limited the search sources and terms to prevent undue burden and expense on the non-party, applying proportionality limits under Rule 26 and non-party protections under Rule 45.


Tessera, Inc. v. Micron Tech., Inc., 2006 WL 733498 (N.D. Cal. Mar. 22, 2006)