Motion for Leave to Take Deposition

Case No. 5:17-cv-00220-LHK

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

CRAVATH, SWAINE & MOORE LLP

Gary A. Bornstein (pro hac vice)

gbornstein@cravath.com

Yonatan Even (pro hac vice)

yeven@cravath.com

825 Eighth Avenue

New York, New York 10019-7475

Telephone: (212) 474-1000

Facsimile: (212) 474-3700

KEKER, VAN NEST & PETERS LLP

Robert A. Van Nest (SBN 84065)

rvannest@keker.com

Eugene M. Paige (SBN 202849)

epaige@keker.com

Justina Sessions (SBN 270914)

jsessions@keker.com

633 Battery Street

San Francisco, CA 94111-1809

Telephone: (415) 391-5400

Facsimile: (415) 397-7188

Attorneys for Defendant

QUALCOMM INCORPORATED

MORGAN LEWIS & BOCKIUS LLP

Richard S. Taffet (pro hac vice)

richard.taffet@morganlewis.com

101 Park Avenue

New York, New York 10178-0060

Tel: (212) 309-6000

Fax: (212) 309-6001

MORGAN LEWIS & BOCKIUS LLP

Willard K. Tom (pro hac vice)

willard.tom@morganlewis.com

1111 Pennsylvania Ave. NW 

Washington, DC 20004-2541

Telephone: (202) 739-3000

Facsimile: (202) 739-3001

MORGAN LEWIS & BOCKIUS LLP

Geoffrey T. Holtz (SBN 191370)

geoffrey.holz@morganlewis.com

One Market, Spear Street Tower

San Francisco, CA 94105-1596

Telephone: (415) 442-1000

Facsimile: (415) 442-1001

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SAN JOSE DIVISION

FEDERAL TRADE COMMISSION,

Plaintiff,

vs.

QUALCOMM INCORPORATED, a Delaware 

corporation,

Defendant.

Case No. 5:17-cv-00220-LHK

DEFENDANT QUALCOMM 

INCORPORATED’S MOTION FOR 

LEAVE TO TAKE THE TRIAL 

DEPOSITION OF AN IMMINENTLY 

UNAVAILABLE EXPERT WITNESS

Courtroom: 8, 4th Floor

Judge: Hon. Lucy H. Koh

REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED

Case 5:17-cv-00220-LHK Document 863-1 Filed 09/19/18 Page 1 of 9
1 Motion for Leave to Take Deposition

Case No. 5:17-cv-00220-LHK

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

INTRODUCTION

Defendant Qualcomm Incorporated (“Qualcomm”) respectfully moves pursuant to Federal 

Rule of Civil Procedure 16(b)(4) to amend the Court’s April 6, 2018 Case Management Order 

(ECF No. 678) solely to permit a trial deposition of Qualcomm’s designated expert on French 

law, Prof. Bénédicte Fauvarque-Cosson, to preserve her testimony prior to her becoming 

unavailable to testify due to her appointment as a judge on the Conseil d’État of France. 

Qualcomm’s request will not require any change to the remainder of the schedule in the April 6 

Case Management Order.

Prof. Fauvarque-Cosson’s appointment is likely to be publicly announced on 

September 19, 2018, and to take effect October 1, 2018. Upon taking 

judicial office, Prof. Fauvarque-Cosson would not be able to provide expert testimony in this 

matter

. (Fauvarque-Cosson Decl. ¶ 11.) 

Good cause therefore exists to modify the scheduling order pursuant to Rule 16(b)(4) to allow 

Qualcomm to examine Prof. Fauvarque-Cosson at deposition to preserve her testimony for 

presentation at trial. Qualcomm could not reasonably have anticipated the need to preserve the 

testimony of Prof. Fauvarque-Cosson through a trial deposition prior to the August 16 expert 

discovery deadline, and would suffer significant prejudice if it did not have an opportunity to 

preserve and present Prof. Fauvarque-Cosson’s testimony. There is no prejudice to the FTC 

because it previously deposed Prof. Fauvarque-Cosson during the expert discovery period, and it 

will have another opportunity to examine Prof. Fauvarque-Cosson after Qualcomm conducts its 

direct examination at the requested trial deposition. Depending on whether the appointment 

becomes effective on October 1, which will not become clear until the 

appointment is confirmed on September 19, the deposition could occur on 

September 28, just before Prof. Fauvarque-Cosson assumes office and thereby becomes 

unavailable to provide testimony in this litigation. 

Case 5:17-cv-00220-LHK Document 863-1 Filed 09/19/18 Page 2 of 9
2 Motion for Leave to Take Deposition

Case No. 5:17-cv-00220-LHK

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

STATEMENT OF FACTS

Qualcomm timely served an expert report by Prof. Fauvarque-Cosson on June 28, 2018. 

Prof. Fauvarque-Cosson is currently a Professor of Law at the University Panthéon-Assas 

(Paris II) in Paris, France. (Fauvarque-Cosson Decl. ¶ 2.) In her report, Prof. Fauvarque-Cosson

addressed allegations in the FTC’s Complaint regarding the IPR Policy of the leading cellular 

standard-development organization, the European Telecommunications Standards Institute 

(“ETSI”)—a contract that by its express terms is governed by French law.1 Prof. FauvarqueCosson’s testimony is the only expert testimony addressing the subject of her report. 

Prof. Fauvarque-Cosson was deposed by the FTC on August 16, 2018 for approximately five 

hours. At that time, Qualcomm expected Prof. Fauvarque-Cosson to testify at trial and therefore 

asked no questions at her deposition. Expert discovery closed on August 16, 2018. (ECF No. 

678.) 

On , Prof. Fauvarque-Cosson learned

. 

(Fauvarque-Cosson Decl. ¶ 10.) The Conseil d’État is the “supreme court for administrative law”

in the French judicial system. (Fauvarque-Cosson Decl. ¶ 5.) On , 

. (Fauvarque-Cosson Decl. ¶ 11.) She was 

also informed 

. (Fauvarque-Cosson Decl. ¶ 11.) 

Prof. Fauvarque-Cosson 

 

1

In its Complaint, the FTC alleged that the ETSI IPR Policy requires Qualcomm to provide 

licenses to its standard-essential patents for the manufacture and sale of modem chips (“chip level 

licensing”). The FTC has since filed a Motion for Partial Summary Judgment, seeking a 

determination that contractual commitments by Qualcomm to other standard-development 

organizations—ATIS and TIA—require chip-level licensing. (ECF No. 793.) The FTC asserts 

that its Motion, if granted, will “obviat[e] the need for evidence regarding the meaning of 

Qualcomm’s commitments [to ETSI]”. (ECF No. 793 at 3.) Qualcomm will oppose the Motion 

for Partial Summary Judgment and further disagrees that the FTC’s Motion, even if granted, 

would obviate the need for evidence concerning the ETSI IPR Policy, including Prof. FauvarqueCosson’s opinions. The FTC’s Motion for Partial Summary Judgment is due to be fully briefed 

and heard after Prof. Fauvarque-Cosson’s appointment becomes effective. 

Case 5:17-cv-00220-LHK Document 863-1 Filed 09/19/18 Page 3 of 9
3 Motion for Leave to Take Deposition

Case No. 5:17-cv-00220-LHK

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

. (Fauvarque-Cosson Decl. ¶ 11.) In light of this information, 

Prof. Fauvarque-Cosson 

. (Fauvarque-Cosson Decl. ¶ 11.) Prof. Fauvarque-Cosson was informed 

 (Fauvarque-Cosson Decl. 

¶ 11.) Prof. Fauvarque-Cosson was further informed 

. (Fauvarque-Cosson Decl. ¶ 11.) Prof. Fauvarque-Cosson 

provided this information to counsel for Qualcomm on September 10 and asked that it be kept in 

the strictest confidence. (Fauvarque-Cosson Decl. ¶ 11.)2 

Promptly after learning of these facts, on September 12, Qualcomm notified the FTC that 

it was likely that Prof. Fauvarque-Cosson would imminently become unavailable to provide 

expert testimony on behalf of Qualcomm, and asked that the FTC stipulate to a request for leave 

to take a trial deposition of Prof. Fauvarque-Cosson prior to the effective date of her appointment, 

subject to the Court’s approval. The parties met and conferred on September 14, and the FTC 

stated that it opposed Qualcomm’s request.

ARGUMENT

The Court may grant leave to take a deposition after the close of the relevant discovery 

period for “good cause”. See Fed. R. Civ. P. 16(b)(4) (“A schedule may be modified only for 

good cause and with the judge’s consent.”). Under the good cause standard, the primary 

consideration is the diligence of the party seeking the amendment, while a secondary 

consideration is any prejudice to the opposing party. See Johnson v. Mammoth Recreations, Inc.,

 

2 Although Prof. Fauvarque-Cosson 

. (Fauvarque-Cosson Decl. ¶¶ 5-11.)

Case 5:17-cv-00220-LHK Document 863-1 Filed 09/19/18 Page 4 of 9
4 Motion for Leave to Take Deposition

Case No. 5:17-cv-00220-LHK

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

975 F.2d 604, 609 (9th Cir. 1992); see also Coleman v. Quaker Oats Co., 232 F.3d 1271, 1294 

(9th Cir. 2000). 

Courts routinely grant motions to take out-of-time de bene esse depositions (i.e., 

depositions to preserve trial testimony) of witnesses who unexpectedly become unavailable to 

testify at trial. See GCIU-Employer Ret. Fund v. Quad/Graphics, Inc., 

No. 216CV00100ODWAFMX, 2017 WL 2469129, at *2 (C.D. Cal. June 5, 2017) (permitting an 

out-of-time trial deposition of a party’s witness who became unavailable to attend trial due to a 

serious medical condition); Maguire v. Coltrell, No. CV-14-01255-PHX-DGC, 2015 U.S. Dist. 

LEXIS 132719, at *4-5 (D. Ariz. Sept. 29, 2015) (permitting out-of-time trial deposition of fact 

witness, the party’s brother, who became unavailable to attend trial due to an unanticipated 

business trip abroad); Faulkner Press LLC v. Class Notes L.L.C., No. 1:08-CV-49-SPM-GRJ, 

2010 WL 11561395, at *1-2 (N.D. Fla. Oct. 7, 2010) (granting leave to depose witness after 

discovery deadline because witness’s job reassignment placed him outside the trial subpoena 

power of the Court). 

Qualcomm’s request to take the trial deposition of Prof. Fauvarque-Cosson should be 

granted for good cause. Qualcomm diligently complied with the Court’s expert discovery 

schedule in the April 6 Case Management Order. Before 

 (FauvarqueCosson Decl. ¶¶ 5-11.) Accordingly, Qualcomm could not have anticipated 

the need to take a deposition to preserve Prof. Fauvarque-Cosson’s testimony for trial, and it 

acted diligently to request such a deposition promptly after becoming aware of that need. During 

the parties’ meet and confer, the FTC took the position that Prof. Fauvarque-Cosson should not be 

considered unavailable to testify at trial based on her judicial appointment because she is not 

being “conscripted” to serve on the Conseil d’État, but would accept the appointment voluntarily. 

However, courts considering whether to allow trial depositions have not required a showing that 

the witness has been “conscripted”. See, e.g., Weist v. EI DuPont Nemours and Company, 

No. 05-CV-0534S(SR), 2009 WL 10681127, at *2 (W.D.N.Y. Aug. 27, 2009) (concluding that 

Case 5:17-cv-00220-LHK Document 863-1 Filed 09/19/18 Page 5 of 9
5 Motion for Leave to Take Deposition

Case No. 5:17-cv-00220-LHK

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

when a party’s expert would become unavailable “because of his nomination to a government 

position in which he would be precluded from testifying as an expert at trial . . . the better course 

is to preserve [the witness’s] testimony now”).

The FTC has contended that a trial deposition of Prof. Fauvarque-Cosson is not warranted 

because she has been deposed already. However, Qualcomm reasonably did not elicit testimony 

from Prof. Fauvarque-Cosson during her August 16 deposition because at that time Qualcomm 

expected her to appear live at trial. “[C]ourts recognize that attorneys do not normally depose 

their own witness for discovery purposes, because they already know what these witnesses will 

say when they testify”. Weist, 2009 WL 10681127, at *2. Accordingly, “[a]ny effort to eliminate 

or ignore these practical differences between depositions which parties need to take for purposes 

of discovery, and depositions which parties need to take for purposes of presenting the testimony 

at trial will likely lead to the exclusion from trial of testimony and evidence which, under the 

rules, a party is entitled to preserve and present. The result is a trial which is incomplete and 

unfair.” Id. (authorizing the trial deposition of an expert witness who had previously been 

deposed) (citation and alterations omitted); see also United States v. 474 Martin Lane, No. CV 

04-2788 ABC (MCX), 2006 WL 8421723, at *2 (C.D. Cal. 2006) (“Courts cannot ignore a 

party’s need to preserve testimony for trial, as opposed to the need to discover evidence, simply 

because the period for discovery has expired.”). Unless Qualcomm has the opportunity to 

preserve and present testimony by Prof. Fauvarque-Cosson concerning the proper interpretation 

of the ETSI IPR Policy under French law, Qualcomm’s defense to the FTC’s action will be 

unfairly prejudiced. Qualcomm should be granted leave to preserve the videotaped trial 

testimony of Prof. Fauvarque-Cosson.

 Under the good cause standard, prejudice to the opposing party is a secondary 

consideration. Johnson, 975 F.2d at 609. Qualcomm’s proposed trial deposition would not 

impose any substantial prejudice on the FTC. To the extent that the FTC believes that it needs 

further testimony from Prof. Fauvarque-Cosson beyond the five-hour deposition it took on 

August 16, it may conduct its own examination after Qualcomm’s direct examination at the trial 

deposition. Because the FTC conducted its own deposition of Prof. Fauvarque-Cosson on 

Case 5:17-cv-00220-LHK Document 863-1 Filed 09/19/18 Page 6 of 9
6 Motion for Leave to Take Deposition

Case No. 5:17-cv-00220-LHK

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

August 16 (and received her report on June 28), it should be prepared to conduct any further 

cross-examination . Further, other alternatives—such as the substitution of 

another French law expert, which could require the submission of additional expert reports in 

addition to an out-of-time deposition—could impose far more burden on the FTC and Qualcomm 

and potential disruption of the case schedule. See, e.g., Krueger v. Wyeth, Inc., No. 03cv2496-

JAH-MDD, 2016 U.S. Dist. LEXIS 113860, at *6-8 (S.D. Cal. Apr. 4, 2016) (granting a motion 

to extend a scheduling order to permit the substitution of an expert witness who unexpectedly 

became unavailable to attend trial due to her retirement). 

The FTC has asserted that, in the event Prof. Fauvarque-Cosson’s appointment 

, it would be inconvenient for the FTC to attend a deposition on 

. Any inconvenience, however, is unavoidable because 

Prof. Fauvarque-Cosson is not available to travel to the United States and testify 

. (Fauvarque-Cosson Decl. 

¶ 15.)3 In the event that Prof. Fauvarque-Cosson’s appointment becomes effective on October 1, 

she may be deposed on Friday, September 28. 

Because Prof. Fauvarque-Cosson also was disclosed as an expert in the coordinated 

Southern District of California case and as a result of Prof. Fauvarque-Cosson’s extremely limited 

availability between now and her judicial appointment, Qualcomm has proposed that her 

 or 28 trial deposition be taken jointly in both coordinated cases, as were many other 

depositions in the coordinated litigations. Qualcomm is willing to meet and confer further with 

the FTC regarding methods of conducting the deposition, such as the order in which the parties to 

the coordinated litigations ask questions, the allocation of time among the parties and whether 

 

3 The FTC has not moved to quash the deposition on the basis that it received insufficient advance 

notice of the deposition, pursuant to Federal Rule of Civil Procedure 32(a)(5). If it does so move, 

the Court has discretion to permit a deposition on less than 14 days’ notice where there is good 

cause to do so, as there is here. See Semitool, Inc. v. Tokyo Electron Am., Inc., 208 F.R.D. 273, 

275 (N.D. Cal. 2002). 

Case 5:17-cv-00220-LHK Document 863-1 Filed 09/19/18 Page 7 of 9
7 Motion for Leave to Take Deposition

Case No. 5:17-cv-00220-LHK

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

portions of the deposition would be deemed in advance to be taken in only one of the cases. See 

Weist, 2009 WL 10681127, at *3 (where an expert had been designated in multiple coordinated 

litigations, the court concluded that the parties were “free to organize their questioning of [the 

expert] as they deem appropriate for the potential presentation of such testimony to a jury in any 

one of these cases”). Qualcomm is also willing to meet and confer with the FTC regarding the 

location of the deposition, such as Washington, D.C., to minimize burden to the FTC.

CONCLUSION

For the foregoing reasons, Qualcomm respectfully requests that the Court grant 

Qualcomm’s motion for leave to take the trial deposition of Professor Bénédicte FauvarqueCosson to preserve her testimony for trial before her appointment to the Conseil d’État becomes 

effective.

Dated: September 15, 2018

Respectfully submitted,

CRAVATH, SWAINE & MOORE LLP,

 /s/ Gary A. Bornstein ___________

Gary A. Bornstein

Yonatan Even

Worldwide Plaza

825 Eighth Avenue

New York, NY 10019

Tel: (212) 474-1000

Fax: (212) 474-3700

gbornstein@cravath.com

yeven@cravath.com

Robert A. Van Nest

Eugene M. Paige 

Justina Sessions

KEKER, VAN NEST & PETERS LLP

633 Battery Street

San Francisco, CA 94111-1809

Tel: (415) 391-5400

Fax: (415) 397-7188

rvannest@keker.com

abhansali@keker.com

epaige@keker.com

Case 5:17-cv-00220-LHK Document 863-1 Filed 09/19/18 Page 8 of 9
8 Motion for Leave to Take Deposition

Case No. 5:17-cv-00220-LHK

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

Richard S. Taffet 

MORGAN, LEWIS & BOCKIUS LLP

101 Park Avenue

New York, NY 10178-0060

Tel: (212) 309-6000

Fax: (212) 309-6001

richard.taffet@morganlewis.com

Willard K. Tom

MORGAN, LEWIS & BOCKIUS LLP

1111 Pennsylvania Ave. NW

Washington, DC 20004-2541

Tel: (202) 739-3000

Fax: (202) 739 3001 

willard.tom@morganlewis.com

Geoffrey T. Holtz

MORGAN, LEWIS & BOCKIUS LLP

One Market, Spear Street Tower

San Francisco, CA 94105-1126

Tel: (415) 442-1000

Fax: (415) 442-1001

geoffrey.holtz@morganlewis.com

Attorneys for Qualcomm Incorporated

Case 5:17-cv-00220-LHK Document 863-1 Filed 09/19/18 Page 9 of 9