Google Inc. v. Rockstar Consortium US LP et al

Filing 135

ORDER by Judge Claudia Wilken Granting 134 Motion for Issuance of Letters Rogatory to the Superior Court of Justice of Ontario, Canada for Nortel Networks Corporation, Jean-Pierre Fortin, Angela de Wilton, Jaspreet Harit, Yee-Ning Chan, Brian Finlay Beaton, Bruce Dale Stalkie, Mitch A. Brisebois, Laura A. Mahan, Paul Michael Brennan, Brian Cruickshank, and John Eric Lumsden. (Attachments: # 1 Letters Rogatory) (ndr, COURT STAFF) (Filed on 10/3/2014)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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GOOGLE INC.,

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Plaintiff,
v.
ROCKSTAR CONSORTIUM U.S. LP, and
MOBILESTAR TECHNOLOGIES, LLC,
Defendants.

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United States District Court
For the Northern District of California

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No. C 13-5933 CW

________________________________/

ORDER GRANTING
MOTION FOR
ISSUANCE OF LETTER
ROGATORY TO THE
SUPERIOR COURT OF
JUSTICE OF
ONTARIO, CANADA
(Docket No. 134)

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On September 29, 2014, Google Inc. filed this unopposed
motion for issuance of letters rogatory to the Superior Court of
Justice of Ontario, Canada.
Court GRANTS Google's motion.
BACKGROUND

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After considering the papers, the

The Court's prior order denying Defendants' motion to dismiss
or, in the alternative, to transfer (Docket No. 58) lays out the
underlying factual background in great detail, and so the Court
provides only the procedural history relevant to the present
motion.
On June 26, 2014, this Court entered a case management order.
Docket No. 88.

Under that order, the deadline to complete fact

discovery is January 23, 2015 with trial scheduled for September
14, 2015.

Id.

Google has served subpoenas for production of

documents on Nortel Networks, Nortel's American subsidiary, and
for the named inventors of the disputed patents.

This motion

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requests letters rogatory for the following Canadian residents and

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entities:

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(1)

Nortel Networks Corporation (Nortel);

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(2)

Jean-Pierre Fortin, Angela De Wilton, and Jaspreet Harit, former

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Nortel employees and the in-house attorneys who prosecuted the

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patent applications that issued as the '551, '937 and '591

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patents;

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(3)

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former Nortel employees and named inventors on the disputed

United States District Court
For the Northern District of California

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Yee-Ning Chan, Brian Finlay Beaton and Bruce Dale Stalkie,

patents;
(4)

Mitch A. Brisebois and Laura A. Mahan, former Nortel employees

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and named inventors on the disputed patents; they are also the

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named inventors of the '944 patent, which Google has asserted as

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part of its invalidity defense for the '572 patent; and

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(5)

Paul Michael Brennan, Brian Cruickshank and John Eric Lumsden,
named inventors of the '927 patent.

LEGAL STANDARD

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"[T]he term letters rogatory denotes a formal request from a
court in which an action is pending, to a foreign court to
perform some judicial act. Examples are requests for the
taking of evidence, the serving of a summons, subpoena, or
other legal notice, or the execution of a civil judgment. In
United States usage, letters rogatory have been commonly
utilized only for the purpose of obtaining evidence.
Requests rest entirely upon the comity of courts toward each
other, and customarily embody a promise of reciprocity. The
legal sufficiency of documents executed in foreign countries
for use in judicial proceedings in the United States, and the
validity of the execution, are matters for determination by
the competent judicial authorities of the American
jurisdiction where the proceedings are held, subject to the
applicable laws of that jurisdiction."
22 C.F.R. § 92.54.

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The legal standard by which a court considers letters

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rogatory is succinctly explained in Barnes and Noble, Inc. v. LSI

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Corp, 2012 WL 1808849, at * 2 (N.D. Cal.):

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United States District Court
For the Northern District of California

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A court has inherent authority to issue letters rogatory.
. . . Whether to issue such a letter is a matter of
discretion for the court. When determining whether to
exercise its discretion, a court will generally not weigh the
evidence sought from the discovery request nor will it
attempt to predict whether that evidence will actually be
obtained. A court's decision whether to issue a letter
rogatory, though, does require an application of Rule 28(b)
in light of the scope of discovery provided for by the
Federal Rules of Civil Procedure.
(citations omitted).
Pursuant to Federal Rule of Civil Procedure 28(b), "[p]arties
may obtain discovery regarding any nonprivileged matter that is
relevant to any party's claim or defense -- including the
existence, description, nature, custody, condition, and location
of any documents or other tangible things and the identity and
location of persons who know of any discoverable matter."
The discovery Google requests is relevant and discoverable
under the standard set in Rule 26.

Google asserts that it is

unable to obtain the information held by these individuals and
entities through any other means.

Google also asserts that given

the case management schedule for discovery, it is unable to wait
to seek these letters rogatory for these individuals and entities
until after Rockstar has completed its document production and
Google has the opportunity to depose them.
Rockstar does not oppose this motion.

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Google represents that

CONCLUSION

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Having considered the motion on the papers, the motion for
issuance of letters rogatory (Docket No. 134) is GRANTED.
The Court orders that after the Court signs the Letter

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Rogatory, the clerk shall authenticate the Court's signature by

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affixing the Court's seal thereto, and the Letter Rogatory be

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thereafter returned by the clerk to counsel for Google so that the

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Letter Rogatory may be promptly transmitted to the Appropriate

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Judicial Authority of Canada for execution.

United States District Court
For the Northern District of California

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IT IS SO ORDERED.

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Dated:

October 3, 2014
CLAUDIA WILKEN
United States District Judge

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