In re Subpoena of Qualcomm Incorporated v. Tesla, Inc.

District Court, S.D. California·Decided July 1, 2026·No. 3:25-cv-03197·Unknown

Opinion

1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA 9

10 IN RE SUBPOENA OF QUALCOMM Case No.: 3:25-cv-03197-DMS-VET 11 INCORPORATED ORDER DENYING MOTION TO 12 COMPEL THIRD-PARTY INTELLECTUAL VENTURES II LLC, 13 SUBPOENA AND GRANTING Plaintiff, MOTION TO SEAL 14 v. 15 [ECF Nos. 1, 4, 5] TESLA, INC., 16 Defendant. 17 18 Before the Court is Intellectual Ventures II LLC’s (“IV”) Motion to Compel Rule 19 30(b)(6) Testimony and Document Production from Third-Party Qualcomm Incorporated. 20 (“Motion to Compel”). ECF No. 4. Therein, IV requests that the Court either transfer the 21 Motion to Compel to the Western District of Texas or, alternatively, compel Qualcomm 22 Incorporated (“Qualcomm”) to designate a witness to testify pursuant to Federal Rule of 23 Civil Procedure 30(b)(6).1 ECF No. 4 at 2–5.2 IV’s related Motion to File Document Under 24 Seal (“Motion to Seal”) is also before the Court. ECF No. 5. 25 26 1 Unless otherwise indicated, all references to a “Rule” are to the Federal Rules of Civil 27 Procedure. 2 Page numbers for docketed materials refer to those imprinted by the Court’s electronic 28 1 For the reasons set forth below, the Court DENIES the Motion to Compel and 2 GRANTS the Motion to Seal. 3 I. FACTUAL AND PROCEDURAL BACKGROUND 4 A. Factual Background 5 The Motion to Compel arises from a patent infringement action between IV and 6 Defendant Tesla, Inc. (“Tesla”), pending in the Western District of Texas, Intellectual 7 Ventures II LLC v. Tesla, Inc., Case No. 1:24-cv-00884-ADA (the “Underlying 8 Litigation”). ECF No. 4 at 2–3. IV alleges that Tesla infringes several patents through its 9 use of Qualcomm chips and software enabling connectivity. Id. IV also asserts that 10 Qualcomm has sole possession of certain source code and technical documents required by 11 IV in the Underlying Litigation. Id. According to Qualcomm, Tesla is not its direct 12 customer. ECF No. 8 at 7. Rather, Qualcomm sells chipsets and accompanying software to 13 another company, Quectel Wireless Solutions Co., Ltd. (“Quectel”). Id. Quectel loads 14 Qualcomm’s software onto Qualcomm chips before installing the chips into cellular 15 modules that Quectel then sells to Tesla for use in Tesla vehicles. Id. at 6–8, 13–14. Thus, 16 Qualcomm states, it does not know what version of Qualcomm’s software Quectel loads 17 onto the chips, or, indeed, whether the software is unmodified once installed in Tesla 18 vehicles as a component of Quectel’s cellular modules. Id. 19 B. The Parties’ Discovery Dispute 20 1. Rule 45 Subpoenas to Qualcomm 21 On May 12, 2025, IV served Qualcomm with a Rule 45 subpoena to produce 17 22 categories of documents and testify on 18 topics. See ECF No. 4-2 (Ex. 1 at 7, 17–21). IV 23 served Qualcomm with amended Rule 45 subpoenas on May 16, 2025 and November 3, 24 2025, respectively. ECF Nos. 4-3 (Ex. 2), 4-4 (Ex. 3). The three subpoenas are substantially 25 similar apart from the addition of Topic No. 19 (“authentication and correlation of source 26 code”) to the November 3, 2025 subpoena, and thus IV’s latest subpoena includes a total 27 of 17 requests for documents (“RFP”) and identifies 19 deposition topics (hereinafter the 28 “Subpoena”). ECF No. 4-4 (Ex. 3 at 19–21). 1 In response, Qualcomm timely objected on various grounds to each RFP and Topic 2 Nos. 1 through 18. See ECF No. 8-5 (Ex. B). Qualcomm also notified IV that it was unsure 3 which version of its software Quectel ultimately loaded onto the modules Quectel sold to 4 Tesla, and this information could not be identified without “a valid build ID.” ECF No. 8 5 at 7. IV subsequently provided information purportedly “relevant to Quectel modules and 6 information related to the IDs” but no actual build IDs. Id. In response, Qualcomm offered 7 IV software build IDs that Qualcomm’s engineering team thought “might have been” used 8 by Quectel.3 Id. Qualcomm also allowed IV to review the relevant software source code 9 for those build IDs at Qualcomm’s secure facility over several dates between July 28, 2025 10 and October 8, 2025. Id.; ECF No. 4 at 3. 11 2. Meet and Confer Efforts 12 On October 2, 2026, IV requested to meet and confer regarding scheduling a Rule 13 30(b)(6) deposition. ECF Nos. 8 at 7; 8-11 (Ex. H). The parties met and conferred 14 telephonically on October 22, 2025. ECF No. 8-3 (Decl. of D. Waslif at ¶ 12). During those 15 discussions, IV clarified that the purpose of the deposition would be to authenticate the 16 source code produced by Qualcomm and correlate it with the Qualcomm chips identified 17 by IV. ECF No. 8 at 8. Qualcomm proposed, rather than arranging a deposition, to provide 18 a correlation chart and for IV and Tesla to stipulate to the authenticity of Qualcomm’s 19 source code as a Qualcomm business record. ECF No. 4 at 3. IV subsequently sought 20 Tesla’s agreement to stipulate to (i) the authenticity of the source code and (ii) “that [the 21 source code] correlates to the chips in Tesla’s vehicles.” ECF No. 8-14 (Ex. K at 2) (IV 22 email to Tesla, dated October 23, 2026). Tesla confirmed that it agreed in principle but 23

24 25 3 Qualcomm notes that this list represented its engineers’ “best educated guess” based on their prior communications with Quectel and a list of Quectel chips IV identified as 26 having been installed in Tesla vehicles. ECF No. 8 at 7 n.3; see also ECF No. 8-1 (Decl. 27 of N. Subramanian at ¶¶ 3–4). Qualcomm cautions, however, that it has no “means to verify whether such software builds were indeed loaded unmodified on to Quectel 28 1 stated that it first wanted to “review the correlation information” provided by Qualcomm. 2 ECF No. 8-15 (Ex. L at 2) (Tesla email to IV, dated October 27, 2026). Qualcomm 3 provided IV and Tesla with the correlation chart on October 28, 2025. ECF Nos. 4 at 3, 4- 4 8 (Ex. 7 at 2). On November 4, 2025, Tesla informed IV that it had reviewed the chart, had 5 no objection to stipulating to authenticity, and requested that IV provide a proposed 6 stipulation. ECF No. 8-17 (Ex. N at 2). 7 On November 6, 2025, IV provided a proposed stipulation that, according to IV, had 8 Tesla stipulating “that the code produced is relevant to the Qualcomm chips provided in 9 Tesla vehicles and is utilized in Tesla’s vehicles.” ECF No. 4 at 3–4; see also ECF No. 4- 10 9 (Ex. 8 at 2) (IV email to Tesla and Qualcomm attaching draft stipulation).4 On November 11 13, 2025, IV produced a second draft of the proposed stipulation. ECF No. 8 at 8. This 12 draft of the proposed stipulation states, inter alia, that the Qualcomm source code described 13 in the Joint Stipulation is “representative for all Tesla automotive vehicles that include 14 Quectel cellular modules incorporating Qualcomm’s . . . chipsets” and that Qualcomm’s 15 source code for certain chipsets “is used in Tesla vehicles without any modification by 16 Tesla.” Id.; ECF No. 8-19 (Ex. P at 2–5) (draft stipulation). Tesla responded on November 17 18, 2025 that it did not know to what extent Qualcomm’s source code was representative 18 of the software in Tesla’s vehicles and was not “in a position to stipulate that Qualcomm’s 19 source code is [installed] unmodified” by Quectel. ECF Nos. 8 at 9, 8-20 (Ex. Q at 2). This 20 Motion to Compel followed.5 ECF No. 4. 21 On December 19, 2025, Qualcomm sent IV and Tesla a custodial declaration 22 authenticating as Qualcomm business records (i) the non-source code documents 23 Qualcomm produced to IV; (ii) the hardware source code produced by Qualcomm and 24

25 4 The draft of the first proposed stipulation is not before the Court. Thus, the Court relies 26 on IV’s description of the content of that proposed stipulation. See ECF No. 4 at 3–4. 27 5 IV initially filed a Motion to Enforce Out of District Subpoena on November 18, 2025, and then filed a “corrected” Motion to Compel on November 24, 2025. See ECF Nos.

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In re Subpoena of Qualcomm Incorporated v. Tesla, Inc., (S.D. Cal. 2026).

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