In re: Ex Parte Application Motorola Mobility LLC

Filing 4

ORDER GRANTING EX PARTE APPLICATION PURSUANT TO 28 U.S.C. SECTION 1782 PERMITTING DISCOVERY FOR USE IN FOREIGN PROCEEDING by Judge Paul S. Grewal, granting 1 Ex Parte Application. Signed by Judge Paul S. Grewal on 10/17/2012. (ofr, COURT STAFF) (Filed on 10/17/2012)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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United States District Court
For the Northern District of California

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SAN JOSE DIVISION

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In re Ex Parte Application of
MOTOROLA MOBILITY, LLC,
Applicant.

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Case No.: C 12-80243 EJD (PSG)
ORDER GRANTING EX PARTE
APPLICATION PURSUANT TO 28
U.S.C. § 1782 PERMITTING
DISCOVERY FOR USE IN FOREIGN
PROCEEDING
(Re: Docket No. 1)

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Motorola Mobility, LLC (“Motorola”) applies ex parte to obtain certain discovery from
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Apple, Inc. (“Apple”) for use in foreign proceedings pursuant to 28 U.S.C. §1782.
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I.

BACKGROUND

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Motorola has filed cases in German courts accusing Apple’s iPhone and iPad product lines
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of infringing Motorola patents, including patents essential to practice 2G and 3G wireless
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communication standards. Motorola’s alleged claims are pending before the Higher District Court
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of Karlsruhe, Germany and the District Court of Mannheim, Germany. Apple asserts in its defense
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to Motorola’s infringement allegations that Motorola has offered to license its essential cellular
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communication patents on terms that violate German and European competition laws.
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Motorola seeks discovery from Apple on the following topics:
all documents that grant, granted or purport to grant Apple rights, protections, or
licenses in any wireless intellectual property rights;
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Case No.: C 12-080243 EJD (PSG)
ORDER

all communications with Apple and/or third parties that relate to documents
produced in response to the request above;

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any and all transcripts , including exhibits, of Boris Teksler’s depositions in certain
matters and cases;

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any and all transcripts, including exhibits, of Richard “Chip” Lutton’s depositions in
certain matters and cases; and

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any and all transcripts, including exhibits, of Bruce “B.J.” Watrou’s deposition in
the Apple, Inc. v. Motorola, Inc., et al.,No. 1:11-cv-8540 (N.D. Ill.).

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II.

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United States District Court
For the Northern District of California

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LEGAL STANDARDS

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

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(3) the application is made by a foreign or internal tribunal or any interested person. 1

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Though the court has authority under Section1782 to permit discovery, it is not mandated to

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do so. 2 In Intel v. Advanced Micro Devices, Inc., the Supreme Court identified several factors that a

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court should consider in its exercise of discretion on a Section 1782 request:

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(1) Whether the material sought is within the foreign tribunal’s jurisdictional reach and thus
accessible absent Section 1782 aid; (2) the nature of the foreign tribunal, the character of
the proceedings underway abroad, and the receptivity of the foreign government or the
court or agency abroad to U.S. federal-court jurisdictional assistance; (3) whether the
Section 1782 request conceals an attempt to circumvent foreign-proof gathering restrictions
or other policies of a foreign country or the United States; and (4) whether the subpoena
contains unduly intrusive or burdensome requests. 3

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It is common for requests to obtain an order pursuant to Section 1782 to be conducted ex
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parte. 4 Such ex parte applications are typically justified by the fact that the parties will be given

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See 28 U.S.C. § 1782(a); In re Republic of Ecuador, Case No. 10-80225 MISC CRB (EMC),
2010 WL 3702427, at *2 (N.D. Cal. Sep. 15, 2010).
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See Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 264 (2004).

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See id.

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See In re Republic of Ecuador, 2010 WL 3702427, at *2.

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Case No.: C 12-080243 EJD (PSG)
ORDER

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adequate notice of any discovery taken pursuant to the request and will then have the opportunity

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to move to quash the discovery or to participate in it. 5
III.

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DISCUSSION

A. Authority to Issue Subpoena

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As noted above, for the court to have authority to grant Motorola’s request, three conditions

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must be satisfied: (1) the party from whom discovery is sought must be within the court’s district;

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(2) the discovery must be for use in a proceeding before a foreign tribunal; and (3) the application

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must be made by a foreign or international tribunal or any interested person. 6
Here, the conditions have been satisfied. Apple, the party from whom discovery is sought,

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United States District Court
For the Northern District of California

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is located in Cupertino, California, which is located within the court’s district. Motorola accuses

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Apple’s iPhone and iPad product lines of infringing Motorola patents, including patents essential to

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practice 2G and 3G wireless communication standards, in cases pending before the Higher District

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Court of Karlsruhe, Germany and the District Court of Manheim, Germany. This satisfies the

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second condition. 7 Because it is a party in the foreign proceeding, Motorola is an interested party,

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satisfying the third criterion. 8
B. Discretionary Factors

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Having concluded that it has authority to issue the subpoena, the court now turns to the

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question of whether the Intel discretionary factors weigh in favor of issuance of the subpoena.

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1. Jurisdictional Reach

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Because a “foreign tribunal has jurisdiction over those appearing before it, and can itself

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order them to produce evidence,” “the need for §1782(a) aid generally is not as apparent as . . .

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Id.

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See id.; 28 U.S.C. §1782(a).

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See Docket No. 1.

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Intel, 542 U.S. at 256 (noting that an interested person “plainly reaches beyond the universe of
persons designated ‘litigant,’” although there is “[n]o doubt that litigants are included among, and
may be the most common example).
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Case No.: C 12-080243 EJD (PSG)
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when evidence is sought for a nonparticipant in the matter arising abroad.” 9 Thus, discovery

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required from a non-party weighs in favor of granting the subpoena.
Here, although its products are at issue, Apple is not a party to Motorola’s patent

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infringement cases, and therefore this condition weighs in Motorola’s favor.

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2. Nature and Receptivity of Foreign Tribunals

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The “nature of the foreign tribunal, the character of the proceedings underway abroad, and

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the receptivity of the foreign government or the court or agency abroad to U.S. federal-court

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assistance” are relevant to the second condition. 10 Aside from noting that other cases have

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recognized the receptiveness of German courts to the use of discovery obtained through Section

United States District Court
For the Northern District of California

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1782, Motorola has not provided specific evidence regarding the receptivity of the German courts

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to discovery from Apple. As a result, the court has insufficient information to determine whether

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the German courts will accept the discovered evidence from Apple. The court, therefore, considers

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this factor neutral.

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3. Attempt to Circumvent Foreign Proof-Gathering Restrictions and Policies

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There is nothing to suggest that Motorola’s Section 1782 request is an attempt to

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circumvent German restrictions on discovery in civil proceedings. Because there is no indication in

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the record of an attempt to subvert a foreign tribunal’s restrictions, the court finds that this factor

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weighs in favor of Motorola.

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4. Undue Intrusion of Burden

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Motorola seeks discovery in five categories of information. Motorola’s request appears

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narrowly tailored to the allegations it advances in the civil proceedings in Germany. The court

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finds this factor weighs in Motorola’s favor.
IV.

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CONCLUSION

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Having determined the four criteria weigh in favor of allowing discovery, the court

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GRANTS Motorola’s request. This determination is without prejudice to Apple or any other party

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who may seek to quash or modify the subpoena.

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Id. at 264.
Id.
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Case No.: C 12-080243 EJD (PSG)
ORDER

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IT IS SO ORDERED.

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Dated: October 17, 2012

_________________________________
PAUL S. GREWAL
United States Magistrate Judge

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United States District Court
For the Northern District of California

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Case No.: C 12-080243 EJD (PSG)
ORDER