In Re Apple Inc., et al, No. 3:2015cv01780 - Document 6 (S.D. Cal. 2015)
Court Description: ORDER granting Apple's 2 Ex Parte Motion for Order Pursuant to 28 USC 1782 Granting Leave to Obtain Discovery for Use in Foreign Proceedings. Applicant may serve Qualcomm with the proposed subpoena. Copy of this Order must be served with the subpoena. After service, Qualcomm may assert any rights it has to challenge the subpoena by filing a Motion to Quash in this docket. Signed by Magistrate Judge Ruben B. Brooks on 10/7/2015. (jah)
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In Re Apple Inc., et al Doc. 6 1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 12 13 14 15 16 17 18 19 20 Civil No. 15cv1780 BAS(RBB) In re Ex Parte Application of ) ) APPLE INC.; APPLE DISTRIBUTION ) INTERNATIONAL; APPLE SALES ) INTERNATIONAL; APPLE RETAIL UK ) LIMITED; APPLE RETAIL GERMANY ) GMBH; APPLE RETAIL NETHERLANDS ) B.V.; and APPLE BENELUX B.V., ) ) Applicants, ) ) For an Order Pursuant ) to 28 U.S.C. § 1782 ) Granting Leave to ) Obtain Discovery from ) Qualcomm Incorporated ) for Use in Foreign ) Proceedings. ) ) ORDER GRANTING APPLE'S EX PARTE APPLICATION FOR AN ORDER PURSUANT TO 28 U.S.C. § 1782 GRANTING LEAVE TO OBTAIN DISCOVERY FOR USE IN FOREIGN PROCEEDINGS [ECF NO. 1] 21 22 23 I. BACKGROUND On August 13, 2015, Apple Inc., Apple Distribution 24 International, Apple Sales International, Apple Retail UK Limited, 25 Apple Retail Germany GmbH, Apple Retail Netherlands B.V., and Apple 26 Benelux B.V. (collectively referred to as "Apple" or "Applicant"), 27 filed an "Ex Parte Application for an Order Pursuant to 28 U.S.C. § 28 1782 Granting Leave to Obtain Discovery for Use in Foreign 1 15cv1780 BAS(RBB) Dockets.Justia.com 1 Proceedings" (the "Ex Parte Application"), along with several 2 exhibits [ECF No. 1].1 3 seeks discovery from Qualcomm Incorporated ("Qualcomm") to use in 4 litigation in the United Kingdom, Germany, and the Netherlands. 5 (Ex Parte Appl. 1-2, ECF No. 1.) 6 infringement litigation that Ericsson initiated in these three 7 countries. 8 Applicant seeks to discover documents relating to any intellectual 9 property rights granted by Ericsson to Qualcomm, as well as (Id. at 2.) In the Ex Parte Application, Applicant Apple is a defendant in patent For use in these foreign actions, 10 communications relating to those documents. 11 at 9.) (Id. Attach. #3 Ex. B, Specifically, Apple makes two requests: All documents that grant or granted, or purport or purported to grant, to Qualcomm any rights, protections, or licenses in or to any Ericsson IPR–including without limitation Ericsson Wireless IPR, regardless of whether it is Essential Wireless IPR–and which provide or provided a covenant not to sue relating to any Ericsson IPR, or which otherwise authorize or authorized Qualcomm to practice any Ericsson IPR, including but not limited to all agreements, amendments, appendices, attachments, schedules, and addendums. 12 13 14 15 16 17 . . . 18 For each document produced in response to Request No. 1, all non-privileged Communications with Ericsson relating to that document, including Communications regarding the negotiation of the document and any Communications regarding any efforts to terminate any rights, protections, licenses, covenants not to sue, or other authorization provided by the document. 19 20 21 22 (Id.) 23 A briefing schedule was set for the Ex Parte Application on 24 August 18, 2015 [ECF No. 3]. There, the Court directed Applicant 25 to serve Ericsson and Qualcomm with a copy of the order setting the 26 briefing schedule. (Mins. 1, Aug. 18, 2015, ECF No. 3.) The Court 27 28 1 The Court will cite to all documents using the page numbers assigned by the electronic case filing system. 2 15cv1780 BAS(RBB) 1 additionally required any opposition to the Ex Parte Application to 2 be filed by September 21, 2015. 3 of service as to Qualcomm and Ericsson on August 19, 2015 [ECF No. 4 4]. 5 submission [ECF No. 5]. 6 opposition to Apple's application. 7 8 Apple filed a certificate On September 30, 2015, the Court took the matter under Neither Qualcomm nor Ericsson has filed an The Court has considered the Ex Parte Application. For the reasons discussed below, the Ex Parte Application is GRANTED. 9 II. 10 11 (Id.) DISCUSSION Section 1782(a) authorizes federal courts to provide certain assistance to litigants in foreign tribunals. 12 The district court of the district in which a person resides or is found may order him to give his testimony or statement or to produce a document or other thing for use in a proceeding in a foreign or international tribunal . . . . The order may be made pursuant to a letter rogatory issued, or request made, by a foreign or international tribunal or upon the application of any interested person and may direct that . . . the document[s] . . . be produced, before a person appointed by the court. 13 14 15 16 17 18 28 U.S.C.A. § 1782 (West 2006). 19 production of documents from corporations, companies, associations, 20 as well as individuals. 21 Cir. 2000) (citing the Dictionary Act, 1 U.S.C. § 1). 22 Court has jurisdiction to order a party to produce documents for 23 use in a proceeding in a foreign tribunal, 28 U.S.C.A. § 1782(a), 24 it "is not required to grant a § 1782(a) discovery application 25 simply because it has the authority to do so." 26 Advanced Micro Devices, Inc., 542 U.S. 241, 264 (2004). 27 // 28 // The section applies to the Al Fayed v. CIA, 229 F.3d 272, 274 (D.C. 3 While this Intel Corp. v. 15cv1780 BAS(RBB) 1 2 A. Statutory Requirements There are three statutory requirements under 28 U.S.C. § 1782. 3 See Ex parte Rigby, No. 13cv0271-MMA(MDD), 2013 WL 622235, at *1 4 (S.D. Cal. Feb. 19, 2013) (citing Lazaridis v. Int'l Ctr. for 5 Missing & Exploited Children, 760 F. Supp. 2d 109, 112 (D.D.C. 6 2011)). 7 10 A district court may grant an application pursuant to 28 U.S.C. § 1782 where: (1) the person from whom the discovery is sought resides or is found in the district of the district court to which the application is made; (2) the discovery is for use in a proceeding before a foreign tribunal; and, (3) the application is made by a foreign or internal tribunal or any interested person. 11 Id.; see also In re LG Electronics Deutschland GmbH, No. 12cv1197- 12 LAB(MDD), 2012 WL 1836283, at *1 (S.D. Cal. May 21, 2012) (citing 13 Lazaridis, 760 F. Supp. 2d at 112). 8 9 14 Apple has met the first requirement. In the Ex Parte 15 Application, Apple asserts that "Qualcomm has its principal place 16 of business at 5775 Morehouse Drive, San Diego, California, which 17 is located within this District." 18 (citing id. Attach. #4 Selwyn Decl. 4).) 19 located within this district, and did not file an opposition to 20 dispute this fact, the Court finds that Qualcomm is "found in the 21 district of the district court to which the application is made[.]" 22 Ex parte Rigby, 2013 WL 622235, at *1 (citing Lazaridis, 760 F. 23 Supp. 2d at 112). 24 (Ex Parte Appl. 5, ECF No. 1 As Qualcomm appears to be Regarding the second requirement, Applicant contends that it 25 "seeks the information for use in establishing at least the 26 defenses of license, unfair competition, and/or antitrust 27 violations in patent infringement actions brought by Ericsson in 28 one or more foreign tribunals [in the United Kingdom, Germany, and 4 15cv1780 BAS(RBB) 1 the Netherlands]." (Ex Parte Appl. 5, ECF No. 1.) Apple states 2 that "[t]hese venues are all courts of first instance for hearing 3 patent litigation[,]" and are "tribunals" under 28 U.S.C. § 1782. 4 (Id. at 5-6 (citing In re IKB Deutsche Industriebank AG, No. 09-cv- 5 7852, 2010 U.S. Dist. LEXIS 35924, at *5 (N.D. Ill. Apr. 8, 2010); 6 Cryolife, Inc. v. Tenaxis Med., Inc., No. C08-05124 HRL, 2009 U.S. 7 Dist. LEXIS 3416, at *1, *5 (N.D. Cal. Jan. 13, 2009); In re Qwest 8 Commc'ns Int'l, Inc., No. 3:08MC93, 2008 U.S. Dist. LEXIS 115845, 9 at *8, *15 (W.D.N.C. July 10, 2008).) The authorities cited by 10 Applicant support a finding that these courts are "tribunals" under 11 § 1782, and neither Qualcomm nor Ericsson filed an opposition to 12 dispute this. 13 proceeding before a foreign tribunal[,]" Ex parte Rigby, 2013 WL 14 622235, at *1 (citing Lazaridis, 760 F. Supp. 2d at 112), meeting 15 the second requirement. As a result, the discovery sought "is for use in a 16 As to the final statutory requirement, Apple maintains that it 17 qualifies as an interested person because it is a "named part[y] in 18 the foreign actions[.]" 19 "[L]itigants are included among . . . the 'interested person[s]' 20 who may invoke § 1782 . . . ." 21 omitted); see In re Global Energy Horizons Corp., No. 5:15-mc- 22 80078-PSG, 2015 WL 1325758, at *2 (N.D. Cal. Mar. 24, 2015) 23 (footnote omitted) ("[T]here can be no real dispute that GEHC 24 qualifies as an interested person [under § 1782] because it is a 25 party to the foreign proceeding and requires the information at 26 issue here to determine the extent of Gray's breach and the 27 monetary damages at play."). 28 as to Apple's status as a litigant in the foreign proceedings, the (Ex Parte Appl. 6, ECF No. 1.) Intel, 542 U.S. at 256 (citation Moreover, because there is no dispute 5 15cv1780 BAS(RBB) 1 Court finds that "the application is made by a foreign or internal 2 tribunal or any interested person." 3 622235, at *1 (citing Lazaridis, 760 F. Supp. 2d at 112). 4 Ex parte Rigby, 2013 WL Applicant has met all three statutory requirements under 28 5 U.S.C. § 1782. 6 B. 7 Discretionary Factors "[O]nce the statutory requirements are met, a district court 8 is free to grant discovery in its discretion." 9 v. Hodapp (In re An Order Permitting Metallgesellschaft AG to Take Metallgesellschaft 10 Discovery), 121 F.3d 77, 78 (2d Cir. 1997). The factors the Court 11 considers in deciding whether to exercise its discretion were 12 outlined in Intel. 13 whom discovery is sought is a participant in the foreign proceeding 14 . . . ." 15 1782 to obtain evidence is less apparent. 16 "the nature of the foreign tribunal, the character of the 17 proceedings underway abroad, and the receptivity . . . to U.S. 18 federal-court judicial assistance." 19 "conceals an attempt to circumvent foreign proof-gathering 20 restrictions or other policies of a foreign country or 21 the United States[,]" the Court should refrain from exercising its 22 discretion to order discovery. 23 whether the request is "unduly intrusive or burdensome." 24 In re Int'l Judicial Assistance from the First Circuit Court of Los 25 Santos, Los Santos Province, Panama, No. 13-mc-80173-JST, 2013 U.S. 26 Dist. LEXIS 125612, at *3-4 (N.D. Cal. Sept. 3, 2013) (applying 27 Intel factors and granting § 1782 application). 28 // First, it determines "[whether] the person from Intel, 542 U.S. at 264. If so, the need to resort to § Id. Id. Where the request Id. at 265. 6 The next factor is Equally important is Id.; see 15cv1780 BAS(RBB) 1 In addressing the first discretionary factor, Apple contends 2 that "[s]ince Qualcomm is not a party to the foreign litigations, 3 the material Applicant seeks, licenses in Qualcomm's possession, 4 may not be within the foreign tribunal's jurisdictional reach." 5 (Ex Parte Appl. 6, ECF No. 1 (citations omitted).) 6 not respond to the Ex Parte Application and, thus, does not dispute 7 that it is not a party to the litigation in the United Kingdom, 8 Germany, and the Netherlands. 9 Qualcomm did Though Qualcomm may not be a party to the foreign litigation, 10 this does not necessarily mean that this factor weighs in Apple's 11 favor. 12 relates to intellectual property rights granted to Qualcomm by 13 Ericsson. 14 the foreign litigation, (Ex Parte Appl. 2), and likely also 15 possesses this information. 16 obtain this information from Ericsson. 17 weighs against granting the Ex Parte Application. 18 Electronics Deutschland GmbH, 2012 WL 1836283, at *2 ("[T]he 19 information to be sought from Qualcomm . . . relates exclusively to 20 Qualcomm's licensing or authorized use of Mitsubishi intellectual 21 property. 22 LG has not explained why that information cannot be obtained from 23 Mitsubishi in either lawsuit."). 24 Specifically, all of the information sought from Qualcomm (Id. Attach. #3 Ex. B, at 9.) Ericsson is a party to Applicant has not shown that it cannot Accordingly, this factor See In re LG Mitsubishi is the plaintiff in the German action. . . . As to the second factor, Apple argues that "[b]ecause the 25 nature and character of the foreign proceedings involve Ericsson's 26 allegations of patent infringement, discovery regarding potentially 27 relevant license agreements is critical." 28 No. 1 (citation omitted).) (Ex Parte Appl. 7, ECF Although there was no response to the 7 15cv1780 BAS(RBB) 1 Ex Parte Application, given the multiplicity of foreign proceedings 2 and the potential complexity of foreign patent litigation, the 3 Court finds that this factor weighs in favor of granting the Ex 4 Parte Application. 5 2010 WL 8767266, at *3 n.5 (M.D. Tenn. Aug. 17, 2010) ("[T]he 6 nature and character of these complex, long-standing proceedings 7 argue for the application of § 1782 assistance."). 8 9 See In re Chevron Corp., No. 3:10-cv-00686, Discussing the next factor, Applicant maintains that it "is unaware of any restrictions on proof-gathering procedures that 10 would prohibit obtaining the discovery it seeks through Section 11 1782." 12 types of requests are frequently granted for use in litigation in 13 the foreign tribunals it has been sued in. 14 no opposition was filed, this factor does not support granting the 15 Ex Parte Application. 16 the Ex Parte Application "conceals an attempt to circumvent foreign 17 proof-gathering restrictions or other policies of a foreign country 18 or the United States," Intel, 542 U.S. at 265, Applicant "has not 19 addressed the availability of this information from [Ericsson] 20 utilizing the discovery procedures of the host courts." 21 Electronics Deutschland GmbH, 2012 WL 1836283, at *2 (finding that 22 the failure to address the ability to obtain the information from 23 the opposing party to the foreign litigation "does not help to 24 convince the Court to exercise its discretion in favor of the 25 Applicant[]"). 26 (Ex Parte Appl. 7, ECF No. 1.) Apple reasons that these (Id. at 7-8.) Though Specifically, while nothing suggests that In re LG Finally, with regard to the last discretionary factor, Apple 27 asserts that its "proposed discovery requests are narrowly tailored 28 and minimally burdensome." (Ex Parte Appl. 8, ECF No. 1 (citing 8 15cv1780 BAS(RBB) 1 Intel, 542 U.S. at 265).) 2 limited to "only two topics, targeted to a small, discrete set of 3 documents: intellectual property licenses between Qualcomm and 4 Ericsson and communications regarding these licenses." 5 Appl. 8, ECF No. 1.) 6 small number of responsive documents, precluding any undue burden 7 on Qualcomm. 8 Applicant contends that its requests are (Ex Parte Apple speculates that there are likely only a (Id.) Because Qualcomm did not file an opposition to address the 9 number of responsive documents in its possession, the Court cannot 10 determine whether an undue burden would be imposed by granting the 11 Ex Parte Application. 12 information to conclude that Apple's requests are narrowly 13 tailored. 14 result, this factor will be treated neutral, not weighing for or 15 against granting the application. 16 Council, Case No.: 5:13-mc-80237-LHK-PSG, 2013 WL 6073517, at *3 17 (N.D. Cal. Nov. 8, 2013) ("By narrowly tailoring the[] request[,] 18 Applicants have mitigated any burden to Topix or its users. 19 registration information sought by Applicants will be of obvious 20 aid to the foreign tribunal in evaluating the merits of Applicants' 21 defamation claim. 22 burdensome."). 23 Additionally, there is insufficient (See Ex Parte Appl. Attach. #3 Ex. B, at 9.) As a Cf. In re Ontario Principals' The The subpoena request does not appear unduly Accordingly, while some of Intel factors weigh against 24 granting the Ex Parte Application, this Court "is free to grant 25 discovery in its discretion." 26 see also In re LG Electronics Deutschland GmbH, 2012 WL 1836283, at 27 *3 ("The Court finds that the Intel factors do not clearly dictate 28 the manner in which the Court should exercise its discretion in Metallgesellschaft, 121 F.3d at 78; 9 15cv1780 BAS(RBB) 1 this case. But, considering that our courts favor broad discovery 2 generally, the Court will authorize the issuance of the requested 3 subpoena."). 4 Ex Parte Application should be granted. 5 potentially complex nature of the foreign proceedings supports 6 granting the application. 7 Ericsson filed an opposition to Apple's request, the Court is 8 unaware of any additional considerations warranting denial. Exercising this discretion, the Court concludes the Moreover, as neither Qualcomm nor 9 10 Specifically, the III. CONCLUSION For the reasons explained above, Apple's Ex Parte Application 11 [ECF No. 1] is GRANTED. Applicant may serve Qualcomm with the 12 proposed subpoena. 13 subpoena. 14 challenge the subpoena by filing a motion to Quash in this docket. A copy of this order must be served with the After service, Qualcomm may assert any rights it has to 15 16 IT IS SO ORDERED. 17 18 DATED: October 7, 2015 19 20 _____________________________ Ruben B. Brooks United States Magistrate Judge cc: Judge Bashant All Parties of Record 21 22 23 24 25 26 27 28 I:\Chambers Brooks\CASES\INREAPPLE1780\Order on Ex Parte Application.wpd 10 15cv1780 BAS(RBB)
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