fri by huangyuarong


                  COUNTY OF SANTA CLARA
              Department 1, Honorable James P. Kleinberg Presiding
                               _____________, Courtroom Clerk
                                ____________, Court Reporter
                          191 North First Street, San Jose, CA 95113
                     Telephone: 408.882.2110 - Facsimile: 408.882.2493
                  To contest the ruling, call (408) 808-6856 before 4:00 P.M.

                 DATE: January 18, 2013 TIME: 9 A.M.
                     (SEE RULE OF COURT 3.1312)

LINE #      CASE #            CASE TITLE                                RULING
LINE 1   105CV039231 Skold v. Intel Corporation Motion for admission pro hac vice
                                                unopposed and GRANTED
LINE 2   110CV164041 Rondone v. OSH             Continued to February 22, 2013 at 9:00 A.M.
LINE 3   111CV192991 Richtek USA, Inc. v. UPI Click on LINE 3 for ruling
LINE 4   112CV220636 Uribes v. 3M Company       Click on LINE 4 for ruling
LINE 5   112CV223170 Hummel v. Castle           Motion to add new parties off calendar as
                     Principal, LLC             moot. Motion to tax costs continued to
                                                February 22, 2013 at 9:00 A.M.
Calendar line 1

                  - oo0oo -
Calendar line 2

                  - oo0oo -
Calendar line 3

Case Name: Richtek USA, et al. vs. uPI Semiconductor Corp., et al.
Case No.:  1-11-CV-192991

This is an action for trade secrets misappropriation filed by plaintiffs Richtek USA, Inc.
(“Richtek USA”), a California corporation, and Richtek Technology, a Taiwanese corporation
(“Richtek Technology”) (collectively “Richtek”).1 The operative First Amended Complaint
(“FAC”) alleges that Richtek is a world-wide leader of power management integrated circuit
(“IC”) solutions, including DC-DC power controllers that regulate voltage and can convert a
high DC voltage to a low DC voltage such that devices can have lower DC power
consumption.2 Richtek alleges that its proprietary technologies and trade secrets include
innovative circuit designs, layouts, and methods that regulate power efficiently for modern
electronic devices.3 Richtek alleges that its “design-in” process is unique for each customer
and involves Richtek using its research, design, development and testing capabilities to provide
custom tailored solutions for its customers through a number of stages, including: market
survey, product definition to specify solutions, circuit design, physical design and layout, IC
fabrication and processing, sample release and verification and reliability testing, and mass
production.4 Richtek also claims trade secrets in proprietary information developed through
significant client development such as market survey data, customer contacts, product
definitions with tailored solutions, product roadmaps, pricing strategies, customer feedback and
verification data (“Business Trade Secrets”),5 as well as circuit schematics and related design
files and libraries, circuit simulation data and SPICE analysis, physical circuit design layout
and related graphic layout files (e.g., GDS files), command files and libraries, reference
designs for fabricating semiconductor devices according to specific foundry processes, masks
for fabricating multi-layer circuits and connections on wafers, evaluation boards and related
components for testing sample releases, verification, reliability and debugging testing data and
methodologies and feedback from application and field application engineering (FAE) testing
(“Technical Trade Secrets”).6

Richtek alleges that defendant uPI Corporation (“uPI”), a Taiwanese corporation, designs,
develops, has manufactured, offered for sale, sells and imports power controllers, regulators
and converters for use in products containing them, including uPI’s single buck controllers and
multiple phase buck controllers (“uPI’s Power Controllers”), which regulate and can convert a
high DC voltage to a low DC voltage and are based on Richtek’s misappropriated trade
secrets.7 The FAC lists various uPI power management products that are allegedly based on
Richtek’s misappropriated trade secrets.8 Richtek alleges that uPI has conducted business with
multiple American business (Advanced Micro Devices [“AMD”], Apple, Hewlett Packard
[“HP”], Intel, nVidia, Broadcom, Dell), resulting in the importation and sale of their products

  First Amended Complaint (“FAC”) ¶¶ 1-2.
  FAC ¶ 15.
  FAC ¶ 16.
  FAC ¶ 46.
  FAC ¶¶ 48, 50-59.
  FAC ¶¶ 49, 60-66.
  FAC ¶ 17.
  FAC ¶¶ 21-22.

into California and the United States containing uPI components illicitly designed and
manufactured by uPI with Richtek’s misappropriated trade secrets.9

Richtek alleges that various former employees were an important and integral part of Richtek’s
design and development of its IC products and had access to, knowledge of, and/or used
Richtek’s trade secrets during their employment. These former employees include: YP Huang
(director of R&D), Jacky Lee (layout engineer), Jay Tu (manager application engineering),
Eric Huang (IC circuit design engineer), George Chou (IC circuit design engineer), Ivy Yang
(engineer), Stone Hong (senior engineer), Owen Hsu (application engineer), Ken Wang
(deputy manager special project sales), JC Chen (R&D manager), Vincent Wen (senior
engineer), Doreen Liu (engineer), Mars Lin (application engineer), Wade Chen (field
application engineer), James Chang (marketing project manager), and Amanda Dai (marketing
manager).10 With regard to Chang, Dai, Huang, JC Chen and Ming Chen, Richtek alleges in
detail activities which purportedly demonstrate their access to and knowledge of Richtek’s
trade secrets and specific conduct directed at the United States.11 Richtek alleges the former
employees developed a plan to improperly take Richtek’s trade secrets for the purpose of
illicitly competing with Richtek and profiting from that theft.12 Upon leaving Richtek, the
former employees started soliciting business from Richtek’s customers on behalf of uPI and
others.13 By at least January 2008, most of the former Richtek employees were employed by
uPI and continued to use Richtek’s misappropriated trade secrets with the full knowledge and
cooperation of uPI to design, develop, manufacture, offer to sell, sell and import such products
into the United States.14 Richtek alleges on information and belief that the former Richtek
employees violated their duty to Richtek, Richtek’s policies and their employment agreements
by copying and/or not returning Richtek’s trade secret plans, documents, software and design
files containing Richtek’s confidential trade secret information and disclosing them to uPI,
SXC, Ming Chen, and Does 1-6 and XYZ Companies 1-3 without the consent of Richtek.15

Richtek further alleges that uPI engaged defendants Silicon Xtal (“SXC”) to use Richtek’s
misappropriated trade secrets to conduct marketing and sales in the U.S. and to promote uPI’s
Power Management IC Products to U.S. companies, many of which were previous Richtek
U.S. customers.16 Richtek alleges on information and belief that defendants and SXC have had
communications and meetings with representatives from AMD, Apple, nVidia, HP, and Dell in
this county and state.17 Richtek alleges it did not become aware of SXC’s involvement in the
misappropriation and unauthorized use of Richtek’s trade secrets until approximately April

  FAC ¶¶ 24-43.
   FAC ¶ 70.
   FAC ¶¶ 84-100.
   FAC ¶¶ 103-107.
   FAC ¶ 107.
   FAC ¶ 109.
   FAC ¶ 83.
   FAC ¶ 111.
   FAC ¶ 111.
   FAC ¶ 111.

Judicially-noticed records19 establish that on July 13, 2007, Richtek Taiwan filed a criminal
complaint in Taiwan for “disclosure of industrial and commercial secrets about business” and
“breach of trust” against various individual uPI defendants and filed a Civil Complaint alleging
patent infringement and trade secret misappropriation against uPI, Powerchip Semiconductor
Corp. and several individual uPI defendants on September 10, 2007 in a Taiwanese civil
court.20 On December 2, 2009, Richtek filed a complaint with the U.S. International Trade
Commission (“USITC”) against uPI under Section 337 of the Tariff Act of 1980 and also filed
claims for patent infringement and trade secrets misappropriation against uPI and several
corporate defendants in the U.S. District Court for the Northern District of California, Richtek
Technology Corp., et al. v. uPI Semiconductor Corp., et al., Case No. 3:09-cv-05659-WHA
(N.D. Cal., Dec. 2, 2009) (the “Federal Action”). Later, Richtek filed a Second Amended
Complaint in the Federal Action, adding several new defendants (including Chang, YP Huang,
and JC Chen) and causes of action. The ITC investigation terminated on September 9, 2010
based in part on a consent order that provides that uPI would not import into the U.S., sell, or
knowingly aid, abet, encourage, participate in, or induce importation into the U.S., sale for
importation into the U.S., or sale, offer for sale, or use in the U.S. after importation of any DC-
DC controllers or products using Richtek’s asserted trade secrets. On January 3, 2011, the U.S.
District Court dismissed the non-federal claims in the Federal Action and stayed all federal
claims pending re-examination of the asserted patents. On January 28, 2011, Richtek filed the
instant state action, asserting one cause of action for misappropriation of trade secrets against
all defendants.

On May 23, 2012, the Court sustained the demurrer of uPI, SXC, and various individual uPI
defendants (JC Chen, Wade Chen, Chang, Chou, Eric Huang, YP Huang, Hong, Hsu, Liu, Tu,
and Wen) on the ground that Richtek’s claim is time-barred under Taiwan’s borrowed two-year
statute of limitations. The Court denied the motion to dismiss under forum non conveniens,
since the untimeliness of the claim under Taiwanese law rendered Taiwan an unsuitable
alternative forum. The Court denied as moot the individual uPI defendants’ motion to dismiss
on the ground of forum selection agreement, and overruled separate demurrers by uPI and
Ming Chen.

On June 4, 2012, Richtek filed the FAC, which asserts eighteen counts for: (1) Richtek USA’s
trade secret misappropriation against uPI; (2) Richtek USA’s trade secret misappropriation
against SXC; (3) Richtek USA’s trade secret misappropriation against Chang; (4) Richtek
USA’s trade secret misappropriation against Dai; (5) Richtek USA’s trade secret
misappropriation against YP Huang; (6) Richtek USA’s trade secret misappropriation against
JC Chen; (7) Richtek USA’s trade secret misappropriation against Ming Chen; (8) Richtek
   The extensive litigation history between these parties was set forth in various papers filed in
connection with prior motions, including a request for judicial notice of filings in Taiwan civil
and criminal courts, the U.S. International Trade Commission (“USITC”), and the U.S. District
Court for the Northern District of California. Although the parties have not renewed this
request judicial notice in connection with the instant motions, the Court will again take judicial
notice of the existence of these relevant court and administrative records. (See Evid. Code, §
452, subds. (c), (d); Law Rev. Comm. com. Evid. Code, 452 [“[t]he court may take judicial
notice of [the matters listed in section 452], even when not requested to do so.”].)
   According to Richtek, on April 19, 2011, in the Taiwanese criminal proceeding, the
prosecutor indicted Chang, YP Huang, and Dai. (See Exh. B to Decl. Tsai-Yu April Chen ISO
Pltfs’ Opp. to Defs’ Dem.)

USA’s trade secret misappropriation against John Does 1-6; (9) Richtek USA’s trade secret
misappropriation against XYZ Companies 1-3; (10) Richtek Technology’s trade secret
misappropriation against uPI; (11) Richtek Technology’s trade secret misappropriation against
SXC; (12) Richtek Technology’s trade secret misappropriation against Chang; (13) Richtek
Technology’s trade secret misappropriation against Dai; (14) Richtek Technology’s trade
secret misappropriation against YP Huang; (15) Richtek Technology’s trade secret
misappropriation against JC Chen; (16) Richtek Technology’s trade secret misappropriation
against Ming Chen; (17) Richtek Technology’s trade secret misappropriation against John
Does 1-6; and (18) Richtek Technology’s trade secret misappropriation against XYZ
Companies 1-3.

Before the Court now are four motions against Richtek’s FAC: (1) a demurrer by uPI, Chang,
and YP Huang on the ground that the trade secret claims are time-barred; (2) a demurrer by
uPI, Chang, YP Huang, JC Chen, and SXC on the ground that Richtek lacks standing to sue;
(3) a motion to dismiss by uPI, Chang, JC Chen, YP Huang, and SXC on the ground of forum
non conveniens; and (4) a motion to dismiss by Chang, JC Chen, and YP Huang on the ground
of forum selection agreement.

Judicial Notice

uPI, Chang, and YP Huang request judicial notice of: (1) Chong-Fu-Min-Zi, No. 1 Intellectual
Property Court of 2012, Republic of China (Taiwan), in its original Chinese language (Exh. A);
and (2) a certified English translation of Exh. A (Exh. B). The Court may take judicial notice
of the law of foreign nations. (Evid. Code, § 452, subd. (f).) This decision involving the
company MediaTek Company Limited is specifically cited in the FAC and relates to the
parties’ arguments regarding the Taiwanese statute of limitations for trade secrets
misappropriation claims.21 The request is GRANTED.

Demurrer – Statute of Limitations

In its May 23, 2012 order, this Court held that under California’s statute of limitations
borrowing statute (Code Civ. Proc., § 361),22 the Taiwanese two-year statute of limitations for
trade secret misappropriation23 applied to Richtek Taiwan’s claims, and the statute of
limitations appears to have expired because Richtek Taiwan had knowledge of both the
misappropriation at issue in this lawsuit and the identity of the parties liable for damages more
   See FAC ¶ 148.
   “When a cause of action has arisen in another state, or in a foreign country, and by the laws
thereof an action thereon cannot there be maintained against a person by reason of the lapse of
time, an action thereon shall not be maintained against him in this state, except in favor of one
who has been a citizen of this state, and who has held the cause of action from the time it
   Article 12 of the Taiwan Trade Secrets Act states: “One who intentionally or negligently
misappropriates another's trade secret shall be liable for damages. If two or more parties
jointly misappropriate, such parties shall be jointly and severally liable. [¶] The right to claim
damages as referred to in the preceding Paragraph shall be extinguished if the right is not
exercised within two (2) years from the date when the owner of the right has knowledge of
both the act of misappropriation and the identity of the party liable for the damages, or within
ten (10) years from the act of misappropriation.” (RJN Exh. 29 at p. 4 [docket no. 53].)

than two years prior to the date in which Richtek filed its complaint in the Federal Action,
December 2, 2009, as demonstrated by the allegations made in the Taiwanese court filings.
The Court considered and rejected Richtek’s argument that under Taiwanese law, the statute of
limitations does not expire until the last act in a series of continuous acts giving rise to the
claim. The Court found that the Taiwanese statute of limitations, by its own terms, was
triggered not upon full knowledge of the “sum of damages” as Richtek asserted, but by
Richtek’s “knowledge of…the act of misappropriation and the identity of the party liable for
the damages[,]” both of which were demonstrated by the Taiwanese court filings to be the case
in September of 2007. As for Richtek USA, the Court held that under the governmental
interest analysis that governs choice-of-law issues, the relevant laws of the potentially affected
jurisdictions were different (e.g., two-year vs. three-year statutes of limitations), Taiwan’s
interest in the application of its own statute of limitations was greater because the location of
and parties connected with the misappropriation were all in Taiwan, and Taiwan’s interests
would be more impaired if California law were applied because it would allow a trade secrets
claim that was stale under Taiwanese law and that involved mostly Taiwanese individuals,
corporations and events that took place in Taiwan to survive in a foreign country’s court.

In the FAC, Richtek includes the same legal arguments made in opposition to the prior
demurrer regarding continuous misappropriation.24 The Court sees no basis to reconsider the
issue. These arguments are based on Taiwanese authorities regarding general torts or other
property rights distinct from trade secrets, and Plaintiff’s position tends to contravene the plain
language of the Taiwanese statute of limitations, which is triggered upon knowledge of the
misappropriation and the identity of the liable parties. Both parties discuss the MediaTek case,
which is the only Taiwanese case authority presented to this Court regarding the statute of
limitations for trade secrets misappropriation. There, the Taiwanese Intellectual Property
Court found that a civil trade secrets misappropriation case was untimely based on allegations
and filings made in a criminal case more than two years prior. The court found that the
representations made during the criminal case “suffice to prove that, with respect to
infringement, on December 11 of the 98th year [of the ROC], Plaintiff knew of the injury and
the liable party…[and] when Plaintiff filed this collateral civil case, the two year statute of
limitations had expired, as proven by 1 copy of indictment for the civil case collateral to
criminal proceedings[.]”25 Richtek argues the material facts of the instant case are different
from MediaTek because there was no continuing use issue in MediaTek. While the issue of
continuing use was not expressly discussed in MediaTek, there were allegations of the
defendants’ use of the chip design information to “evaluate and lower the BOM cost of”
MStar, the plaintiff’s competitor.26 “[Defendant] reproduced and stored the files in a computer
of MStar, who is in the same industry, allowing MStar to use them in its own business.”27
Tellingly, there is no discussion by the Intellectual Property Court in MediaTek as to whether
this use of the chip design information to lower MStar’s manufacturing costs tolled the statute
of limitations. The decision only discusses the plaintiff’s knowledge of the injury and liable
party based on the criminal filings.

   FAC ¶¶ 142-152.
   See Judgment No. 101, Chong-Fu-Min-Zi, 1 Intellectual Property Court of 2012, Republic of
China (Taiwan), at p. 12, Exh. B to uPI’s RJN.
   Id. at p. 2.
   Id. at p. 3.

Richtek’s FAC also adds allegations of more recent discoveries by Richtek of various
misappropriated trade secrets based on analyses of microphotographs,28 investigations
conducted prior to the USITC investigation,29 and investigations of motherboard and graphics
card products manufactured by uPI’s downstream customers.30 However, these do not appear
to be instances of new misappropriations, but rather, ongoing uses of the trade secrets
originally misappropriated from Richtek by its former employees. As discussed above, the
Court is not persuaded that the Taiwanese statute of limitations should be interpreted to run
from the last instance of ongoing misappropriation. None of the new allegations in the FAC
change the fact that Richtek knew of the act of misappropriation and the identity of the liable
parties in September 2007 when it filed a civil action against the targeted individuals. That
Richtek’s investigations in 2009-2011 “confirm[ed] its suspicions”31 about the ongoing nature
of uPI’s misappropriation does not negate its knowledge of facts asserted in the criminal and
civil filings in Taiwanese courts, including the involvement of uPI, Chang and YP Huang.

As for Richtek USA (which appears to fall under the exception in Code of Civil Procedure
section 361 for citizens of the state), the Court sees no basis to reconsider its conflict of laws
analysis from the prior order.

For all of these reasons, the demurrer by uPI, Chang, and YP Huang is SUSTAINED

Motion to Dismiss – Forum Selection Agreement

In this motion, Chang, JC Chen and YP Huang argue that the action should be dismissed
because the forum selection agreements between them and Richtek Taiwan mandate Taiwan as
the forum for this trade secret misappropriation claim. They argue the claim arises from their
employment agreements with Richtek which state that “Xinzhu local court is to be the court of
jurisdiction for the first instance.”32 Chang, YP Huang and JC Chen argue this forum selection
clause applies to the trade secret claim and not just breach of contract claims because a central
issue on the trade secret claim is their obligations to maintain the confidentiality of Richtek’s
trade secrets under their employment agreements. Chang, YP Huang and JC Chen further
argue the forum selection clause is “likely to be interpreted as exclusive” because under
Taiwanese law, when parties select a venue rather than accept the venue determined by
operation of law, and have not expressly stated that the venue determined by operation of law
is concurrent, the selected venue should be interpreted as exclusive.33 Chang, YP Huang and
JC Chen argue the forum selection clause should also be interpreted as binding on Richtek,
   FAC ¶¶ 125-130, 140.
   FAC ¶¶ 131-135.
   FAC ¶¶ 136-139.
   See FAC ¶¶ 136, 140.
   RJN Exh. 22 – Decl. Yang Shao at p. 11, filed in the Federal Action. According to Chang,
YP Huang and JC Chen, Yang Shao was Richtek’s translator, and her declaration was
submitted to challenge inaccuracies in the translations submitted by uPI. Chang, YP Huang
and JC Chen argue they are relying upon this translation in an effort to avoid unnecessary
disputes over immaterial differences in translations. (See Memo. Pts. & Auth. ISO Mot.
Dismiss (Forum Select.) at pp. 6-7, fn. 3.)
   See Declaration of Chi-Tung Steven Chen ISO Individual uPI Defendants’ Mot. Dismiss.
(Forum Select.) ¶ 10.

because the employees were essentially agreeing with Richtek that Xinzhu local court must be
the jurisdiction for first trial, and under Taiwanese law, the forum clause is binding on both
parties, no matter who brings suit.34 Chang, YP Huang and JC Chen further argue that Richtek
USA’s claim is also subject to the forum selection because (1) the FAC fails to show how
Richtek USA owns any trade secrets, took any reasonable efforts to maintain any trade secrets,
that trade secrets were misappropriated from Richtek USA, and that Richtek USA was harmed;
and (2) any access to Richtek USA’s trade secrets by the individual uPI defendants was
pursuant to their work for Richtek Taiwan.

In opposition, Richtek argues that the Individual uPI Defendants misread the forum selection
clause, which limits where “Party B” (employees) can bring suit, but has no restriction on
where “Party A” (Richtek Technology) can bring suit. Richtek also argues the forum selection
clause does not mention any tort claims or causes of action independent of the agreements
themselves. Richtek submits that under Taiwanese law, a forum selection clause that does not
explicitly state that the selected forum is “exclusive’ simply creates jurisdiction for the selected

Generally speaking, the parties’ knowing and voluntary agreement to litigate their dispute in a
particular state or county with which they have reasonable contacts is normally given effect.
 (Berg v. MTC Electronics Technologies Co. (1998) 61 Cal.App.4th 349, 358-359.) In fact,
“the existence of a contractual forum selection clause requires a court to decline
jurisdiction…absent a showing that enforcement would be unfair or unreasonable.” (Furda v.
Superior Court (1984) 161 Cal.App.3d 418, 424-425.) The reasoning for this rule is: “[A]
party which has contracted away its right to choose its home forum…has presumably done so
because the value it receives from the negotiated deal is worth the chance the party may be
required to litigate disputes elsewhere. To apply the general factors [of forum non conveniens]
in this context would in essence be rewriting the bargain struck between the parties, which
might not have been consummated in the absence of the forum selection clause.” (Cal-State
Business Products & Services, Inc. v. Ricoh (1993) 12 Cal.App.4th 1666, 1683 [Ricoh].)
Which disputes are covered by a forum selection clause is a matter of contract interpretation.
(Ricoh, supra, 12 Cal.App.4th at p. 1677.) Where there is no mandatory forum selection
clause, the general principles of forum non conveniens (e.g., suitable alternative forum, public
and private convenience) apply. (See Berg, supra, 61 Cal.App.4th at p. 360.)

As a threshold matter, in light of the ruling above regarding the demurrer based on the statute
of limitations, this motion is moot as to Chang and YP Huang, leaving only JC Chen.
Furthermore, although the judicially-noticed criminal complaint does not attach the
employment agreement for JC Chen,36 the defendants argue that there is no reason to believe
that there are any material differences in JC Chen’s employment agreement,37 and Richtek
does not dispute this in its opposition brief.

Richtek’s position is that the forum selection clause mandates submission to Xinzhu Local
Court of Taiwan only for “Party B”, defined in the subject agreement as the “approved
   See Decl. Hsiao-Lin Fan ISO Richtek’s Opp. to Individual uPI’s Mot. Dismiss (Forum
Select.) ¶ 17.
   See Richtek’s RJN Exh. 4 at pp. 27 (YP Huang), 41 (Chang).)
   See Memo. Pts. & Auth. ISO Mot. Dismiss Re Forum Select. Agmt. at p. 5, fn. 2.

appointee” or the employee, and does not expressly bind “Party A”, “defined as RichTek
Science and Technology Co., Ltd.”38 However, the context of the full paragraph supports a
broader interpretation. The paragraph states in full:

       Should Party B violate the above provisions, s/he is subject to the punishment of
       removal from the position. Should Party B’s violation involves any financial or
       loan embezzlement, dereliction of duty or negligence, disclosure of secrets or
       any other infringement, which results in losses to Party A, Party B shall bear
       any legal liabilities and indemnify Party A for any losses and claims, and
       relinquish the counterplea right, and agrees that Xinzhu local court shall be the
       court with governing jurisdiction for first trial.39

Thus, the context of the forum selection clause is violation of the employment agreement by
Party B, the employee. The paragraph provides that in the event of such a violation, the
employee will be terminated and shall bear legal responsibility for Richtek’s damages from,
among other things, “disclosure of confidential information,” and furthermore, the employee
will “relinquish the counterplea right[.]” Reasonably read, the contract’s language regarding
Richtek’s right to damages and the employee’s relinquishment of the counterplea right
presumes a lawsuit by Richtek for the employee’s breach, and the forum for any such lawsuit is
to be Xinzhu Local Court of Taiwan; Party B “agrees” to this forum. Thus, the Court finds that
under the plain language of the forum selection clause, Richtek and its former employee JC
Chen both agreed that Xinzhu local court is to be the court of jurisdiction for the first instance
for Richtek’s trade secrets misappropriation claims. The forum selection clause applies to
Richtek’s trade secret claims because the trade secret claim appears to relate to the same
confidential information and secrets that the employment agreements require the employees
not to keep, use or disclose. (See Bancomer v. Superior Court (1988) 44 Cal.App.4th 1450,
1461 [“forum selection clauses can be equally applicable to contractual and tort causes of
action” and “[w]hether a forum selection clause applies to tort claims depends on whether
resolution of the claims relates to interpretation of the contract”].)

Richtek USA’s claims against JC Chen are also subject to the forum selection agreement
because Richtek USA is “closely related to the contractual relationship” to subject it to the
forum selection clause. (See Lu v. Dryclean-U.S.A. of Cal., Inc. (1992) 11 Cal.App.4th 1490,
1493-1494.) There is nothing in the FAC or Richtek’s papers that suggest Richtek USA’s
claims are distinct from the claims of Richtek Taiwan, which are based on the employment
agreements and misappropriations by Richtek Taiwan’s former employees.40

For these reasons, the motion to dismiss is GRANTED as to JC Chen.

Motion to Dismiss – Forum Non Conveniens

   See Exh. 2 to Decl. Fan, ¶ 10.
   Ibid. Richtek’s translator takes the position that the last portion of this paragraph should
read: “…and agrees that Xinzhu local court is to be the court of jurisdiction for the first
instance.” (See Exh. 22 at p. 11.)
   See FAC ¶ 83.

uPI, Chang, JC Chen, YP Huang, and SXC move to dismiss the FAC on the ground of forum
non conveniens, arguing that the Court should decline to exercise jurisdiction because Taiwan
is a more convenient forum with a greater interest in this dispute.

Code of Civil Procedure section 410.30 provides, in pertinent part: “When a court upon motion
of a party or its own motion finds that in the interest of substantial justice an action should be
heard in a forum outside this state, the court shall stay or dismiss the action in whole or in part
on any conditions that may be just.” (Code Civ. Proc., § 410.30, subd. (a).) The statute
codifies the common law doctrine of forum non conveniens. This is not a jurisdictional
doctrine, but rather, “an equitable doctrine invoking the discretionary power of a court to
decline the exercise of jurisdiction (to stay or dismiss) it has over a transitory cause of action
when it believes that the action may be more appropriately and justly tried elsewhere.”
 (Stangvik v. Shiley, Inc. (1991) 54 Cal.3d 744, 751.) The inquiry is not whether some other
state or county provides a better forum than does California, but whether California is a
seriously inconvenient forum. (Ford Motor Co. v. Insurance Co. of No. America (1995) 35
Cal.App.4th 604, 611.) There must be a “suitable” alternative forum available, meaning one in
which a valid judgment may be obtained against defendant. (Stangvik, supra, 54 Cal.3d at p.
752.) An alternative forum is “suitable” if it has jurisdiction and an action in that forum will
not be barred by the statute of limitations. (Guimei v. General Elec. Co. (2009) 172
Cal.App.4th 689, 696.) Where there are multiple defendants, they must all be subject to
personal jurisdiction in the alternative forum, not just the “primary” defendants. (American
Cemwood Corp. v. American Home Assur. Co. (2001) 87 Cal.App.4th 431, 440.)

“On a motion for forum non conveniens, the defendant, as the moving party, bears the burden
of proof.” (Stangvik, supra, 54 Cal.3d at p. 751.)

In light of the rulings above, this motion is moot as to uPI, Chang, YP Huang, and JC Chen.
As for SXC, SXC fails to address whether an action against it in Taiwan would be barred by
the statute of limitations. Thus, SXC has not carried its burden to demonstrate that Taiwan is a
suitable alternative forum. The motion by SXC to dismiss on the ground of forum non
conveniens is DENIED.

Demurrer – Lack of Standing

uPI, SXC, Chang, YP Huang, and JC Chen demur to the FAC on the ground that Richtek lacks
standing to sue for trade secrets misappropriation. These defendants argue that Richtek fails to
plead facts establishing Richtek Taiwan or Richtek USA’s ownership of the alleged trade
secrets, because they expressly plead that their ownership is only “as a licensee or through
authorized possession, use and keeping secret this valuable information and technology.” The
defendants argue that under Epic Communications, Inc. v. Richwave Technology (2009) 179
Cal.App.4th 314, a licensee of a trade secret is insufficient to confer a right to sue for violation
of the licensor’s rights. The defendants further argue that Richtek USA cannot plead that it
owns the asserted trade secrets because Richtek Taiwan has previously admitted that it is the
owner in the criminal complaint filed in Taiwan.

In light of the rulings above, the motion is moot as to uPI, Chang, YP Huang, and JC Chen.

“Under the [Uniform Trade Secrets Act], a prima facie claim for misappropriation of trade
secrets requires the plaintiff to demonstrate: (1) the plaintiff owned a trade secret, (2) the

defendant acquired, disclosed, or used the plaintiff’s trade secret through improper means, and
(3) the defendant’s actions damaged the plaintiff. [Citations.]” (Sargent Fletcher, Inc. v. Able
Corp. (2003) 110 Cal.App.4th 1658, 1665.) A “trade secret” is defined as “information,
including a formula, pattern, compilation, program, device, method, technique, or process, that:
[¶] (1) Derives independent economic value, actual or potential, from not being generally
known to the public or to other persons who can obtain economic value from its disclosure or
use; and [¶] (2) Is the subject of efforts that are reasonable under the circumstances to maintain
its secrecy.” (Civ. Code, § 3426.1, subd. (d).)

The portion of the FAC that the defendants take issue with is found in paragraph 45, the last
sentence of which reads, “At all relevant times, Richtek USA and Richtek Technology have
been owners of their Trade Secrets as a licensee or through their authorized possession, use and
keeping secret this valuable information and technology.” However, paragraph 45 begins,
“Richtek USA and Richtek Technology have invested a substantial amount of time, money,
personnel, engineering, testing, marketing and customer development to create and exploit
their proprietary and Trade Secret information and technology for, among other things, the
design, use and sale of power management IC solutions including power controllers, regulators
and converters for its customers in the United States and in this county and state.” On a
demurrer, the Court must accept as true the material allegation that both Richtek USA and
Richtek Taiwan invested money and resources to “create” the subject trade secrets, and that
they have maintained the secrecy of this information. Although the defendants focus on
whether Richtek can claim ownership of the trade secret as a mere “licensee,” this is only a
portion of the cause of action. The assertion of Richtek Taiwan’s ownership is not necessarily
a statement of sole ownership, and the Court declines to read the pleadings at issue so narrowly
at this time. The demurrer for lack of standing is OVERRULED.

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Case Name: Uribes, et al. vs. 3M Company, et al.
Case No.:  1-12-CV-220636

This is an action for personal injury and loss of consortium by plaintiffs Raymond and Elia
Uribes (“Plaintiffs”) against defendants 3M Company, BASF Catalysts LLC (“BASF”),
Eastern Magnesia Talc Company (“Eastern Magnesia”), East Bay Color Service (“East Bay
Color”), E.T. Horn Company (“E.T. Horn”), Genuine Pars Company (“Genuine Parts”),
Honeywell International, Inc., Imerys Talc America, Inc. (“Imerys”), NMBFil, Inc.
(“NMBFil”), Pita Realty Limited (“Pita Realty”), Rio Tinto Materials, Inc., and Union Carbide
Corporation. The Complaint, filed on March 14, 2012, alleges causes of action for negligence,
strict liability, false representation, intentional failure to warn, and loss of consortium arising
out of the defendants’ manufacture, sale, and marketing of asbestos and products containing

Plaintiffs now move for an order granting preference in setting the case for trial in March of
2013 on the ground of Mr. Uribes’ poor health. Plaintiffs contend Mr. Uribes is over 70 years
of age and suffers from malignant mesothelioma, and there is substantial medical doubt of his
survival beyond 180 days. The motion is supported by the declaration of Barry R. Horn,

Opposition briefs have been filed by (1) E.T. Horn, (2) BASF, Eastern Magnesia, and Pita
Realty (“BASF et al.”); (3) Genuine Parts; (4) Imerys; and (5) NMBFIL, Inc. East Bay Color
has filed a joinder joins in these oppositions. BASF et al have filed evidentiary objections to
Dr. Horn’s declaration.

E.T. Horn argues the request for trial in March 2013 contravenes its due process right to have
an adequate opportunity to defend against the imposition of liability. E.T. Horn argues that
between now and March 2013, it cannot adequately determine the viability of any Proposition
51 defenses, file pretrial dispositive motions, consult and depose expert witnesses, and
adequately prepare for trial. E.T. Horn argues that if the Court is inclined to set trial on an
expedited basis, it should be no sooner than 120 days after entry of the order, with summary
judgment motions able to be heard on 20 days’ notice and up to 2 weeks before trial, with
discovery motions heard on 5 days’ notice and discovery proceedings to remain open until 2
weeks before trial, and with expert discovery remaining open until trial.

BASF et al argue that Plaintiffs fail to make a substantial showing of medical necessity, and
even if they did, the proposed trial in March 2013 would violate their due process rights.
BASF et al. argue that Dr. Horn is not one of Mr. Uribes’ treating physicians but a medical
professional who has conducted only a cursory examination of Mr. Uribes and relies almost
entirely on other doctors’ medical evaluations who have determined that his disease has been
stable and his chemotherapy was working. BASF et al further argue that Dr. Horn’s opinion is
undermined by the fact that he prepared it in October 2012, but the latest medical records he
relies upon are from May 2012. BASF et al further argue the motion is undermined by
Plaintiffs’ delay in seeking relief, which is demonstrated by the fact that they received Dr.
Horn’s declaration stating Mr. Uribes was at risk for imminent death in October 2012 but they

     Exh. B to Decl. Laurel Halbany ISO Mot. Pref.

did not file a motion for preference until late December 2012. BASF et al contend that as early
as May 2012, Plaintiffs stated their intention to have a preference motion heard on an
expedited basis and believed it would filed and served no later than November 1, 2012. BASF
et al argue there are many complicated issues in the case (e.g., multiple locations where Mr.
Uribes performed mechanical or auto-body repairs, multiple percipient fact witnesses), and due
process requires that they have sufficient time to investigate.

Imerys joins in E.T. Horn’s opposition, and argues that Dr. Horn’s declaration does not meet
the criteria of Code of Civil Procedure section 36 subdivision (d).

Genuine Parts joins in the other oppositions and argues that in order to lessen the prejudice to
all defendants from any trial preference, trial should be scheduled no sooner than 120 days
from the hearing on this motion (May 18, 2013), and there should be a shortened notice period
for summary judgment motions (e.g., 15 days), reduced time to respond to discovery (e.g., 20
days), required service of all documents through electronic, personal or facsimile service,
disclosure by Plaintiffs of the names and addresses of all percipient witnesses as against each
individual defendant 30 days before trial, and a status conference no less than 30 days before
trial to determine if all conditions have been met.

NMBFil argues Plaintiffs fail to submit clear and convincing evidence of Mr. Uribes’ inability
to survive 180 days, and the interests of justice will not be served by the requested trial
preference because NMBFil needs time to defend itself. NMBFil argues a minimum of 120
days is necessary, and additionally, Plaintiffs’ counsel must produce all pathology, including
blocks, to allow for destructive testing; must serve all submissions made to any bankruptcy
trusts on Mr. Uribes’ behalf; must list and complete contact information of any lay witnesses
and list of documents supporting his exposure claims within two weeks from the hearing on
this motion, and must stipulate that all expert discovery and other discovery remain open until
the trial date, and that summary judgment motions may be heard on shortened notice.

Analysis: Code of Civil Procedure section 36 provides, in relevant part:

       (a) A party to a civil action who is over 70 years of age may petition the court
       for a preference, which the court shall grant if the court makes both of the
       following findings:
        (1) The party has a substantial interest in the action as a whole.
        (2) The health of the party is such that a preference is necessary to prevent
       prejudicing the party’s interest in the litigation.
       (c) Unless the court otherwise orders:
        (1) A party may file and serve a motion for preference supported by a
       declaration of the moving party that all essential parties have been served with
       process or have appeared.
        (2) At any time during the pendency of the action, a party who reaches 70 years
       of age may file and serve a motion for preference.
       (d) In its discretion, the court may also grant a motion for preference that is
       accompanied by clear and convincing medical documentation that concludes
       that one of the parties suffers from an illness or condition raising substantial
       medical doubt of survival of that party beyond six months, and that satisfies the
       court that the interests of justice will be served by granting the preference.

        (e) Notwithstanding any other provision of law, the court may in its discretion
        grant a motion for preference that is supported by a showing that satisfies the
        court that the interests of justice will be served by granting this preference.
        (f) Upon the granting of such a motion for preference, the court shall set the
        matter for trial not more than 120 days from that date and there shall be no
        continuance beyond 120 days from the granting of the motion for preference
        except for physical disability of a party or a party’s attorney, or upon a showing
        of good cause stated in the record. Any continuance shall be for no more than
        15 days and no more than one continuance for physical disability may be
        granted to any party.

“Failure to complete discovery or other pretrial matters does not affect the absolute substantive
right to trial preference for those litigants who qualify for preference under subdivision (a) of
section 36. The trial court has no power to balance the differing interests of opposing litigants
in applying the provision. The express legislative mandate for trial preference is a substantive
public policy concern which supersedes such considerations. [Citation.] Accordingly,
subdivision (a) of section 36 is mandatory and absolute in its application in civil cases
whenever the litigants are 70 years old. [Citation.]” (Swaithes v. Superior Court (1989) 212
Cal.App.3d 1082, 1085-1086.) However, “the due process implications of this approach have
not yet been decided.” (Roe v. Superior Court (2009) 224 Cal.App.3d 642, 643.)

The defendants opposing this motion raise due process concerns and also challenge the
sufficiency and admissibility of the declaration from Dr. Horn. The challenges to Dr. Horn’s
declaration have some merit in terms of section 36 subdivision (d). The latest medical records
Dr. Horn reviewed were from May of 2012, and Dr. Horn fails to adequately square his
opinions with those of Mr. Uribes’ oncologist that “the chemotherapy is helping him and that
his disease has been ‘stable’”, or Dr. Hassan “who concluded that the chemotherapy was
working”,42 even though these observations were contained in the records Dr. Horn reviewed.
Thus, the defendants’ point is well-taken that Plaintiffs have not submitted “clear and
convincing” medical documentation that Mr. Uribes’ condition raises substantial medical doubt
of his survival beyond six months for purposes of section 36 subdivision (d).

Nevertheless, Dr. Horn is a qualified medical professional who has personally examined Mr.
Uribes in October 2012 and reviewed his medical history.43 Dr. Horn finds that Mr. Uribes’s
disease is progressive and terminal, his health and condition will not improve, and his
symptoms will worsen over time, culminating in his death.44 Defendants do not dispute that
Mr. Uribes is a party to this action over 70 years of age, and that as the named plaintiff, he has
a substantial interest in the action as a whole. “Elderly litigants are clearly entitled to have
their case effectively tried and to the opportunity to enjoy during their own lifetime any
benefits received.” (Swaithes, supra, 212 Cal.App.3d at p. 1086.) Nor do defendants dispute
the severe health issues Mr. Uribes faces in his current condition. The Court finds that Mr.
Uribes’ health is such that a preference is necessary to prevent prejudicing his interest in the
litigation. (Code Civ. Proc., § 36, subd. (a)(2).) Defendants’ due process concerns are
superseded by the mandate for trial preference in section 36(a). (See Swaithes, supra, 212
Cal.App.3d at pp. 1085-1086.) Moreover, these due process concerns can be addressed by

   See Nov. 5, 2012 letter at p. 2, Exh. 2 to Decl. Horn.
   Thus, BASF et al evidentiary objections to the Horn Declaration are OVERRULED.
   Decl. Horn ¶¶ 14-18.

shortened deadlines for discovery and pretrial motions and other pretrial scheduling

The Court hereby sets the matter for trial on May 13, 2013. Within 10 days, the parties shall
meet and confer on the following: (1) shortened deadlines for all parties’ responses to written
discovery and notice periods for discovery motions and motions for summary judgment; (2)
extending the discovery and motion cut-offs; (3) service of all documents through electronic,
personal or facsimile service; and (4) Plaintiffs’ disclosure of the names and addresses of all
percipient witnesses as against each individual defendant within a reasonable time before trial.

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