Nikon Corporation v. GlobalFoundries U.S., Inc.

Filing 26

ORDER RE 1 APPLICATION FOR AN ORDER DIRECTING GLOBALFOUNDRIES, U.S., INC. TO RESPOND TO REQUESTS FOR DOCUMENTS PURSUANT TO 28 U.S.C. 1782 FOR USE IN FOREIGN PROCEEDINGS. Signed by Magistrate Judge Susan van Keulen on 8/17/2017. (ofr, COURT STAFF) (Filed on 8/17/2017)

1
2
3
4
5
6
7
UNITED STATES DISTRICT COURT

8

NORTHERN DISTRICT OF CALIFORNIA

9

SAN JOSE DIVISION

10
11
12

In re: Application Pursuant to 28 U.S.C. § 1782 of
NIKON CORPORATION,
Petitioner,

13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

Case No. 5:17-mc-80071-SVK
[Proposed] ORDER

v.
GLOBALFOUNDRIES U.S. INC.
Respondent.

The Court has considered Nikon Corporation’s (“Nikon”) Application for an Order
Directing GlobalFoundries U.S. Inc. to Respond to Requests for Documents Pursuant to 28
U.S.C. § 1782 for Use in Foreign Proceedings, the opposition submissions by GlobalFoundries
U.S. Inc. (“GlobalFoundries”), Nikon’s reply submissions, and oral argument by counsel for both
parties during a hearing on August 15, 2017. The Court finds that the statutory requirements of 28
U.S.C. § 1782 have been satisfied, and that the discretionary Intel factors favor, for reasons stated
during the hearing, granting the requested discovery in this case. Good cause appearing,
It is HEREBY ORDERED that Nikon’s Application is granted. Nikon is authorized
pursuant to 28 U.S.C. § 1782 to obtain discovery from GlobalFoundries, as specified in
Attachment A to the subpoena submitted as Exhibit B to Nikon’s Application. The parties are
HEREBY DIRECTED to meet-and-confer regarding the scope of the requests set forth in
CASE NO. 5:17-MC-80071-SVK
[PROPOSED] ORDER

1

Attachment A, and may return to this Court to resolve any disputes regarding the proper scope of

2

those requests. GlobalFoundries shall produce documents within forty-five days of the date of this

3

Order, provided that it may report to this Court by Monday, August 21, 2017, if it believes that

4

good cause exists to allow a longer time period to complete its production.

5

It is FURTHER ORDERED that the parties shall meet and confer regarding a protective

6

order. The parties shall file their proposed protective order with the Court by August 31, 2017.

7

GlobalFoundries’s request that Nikon obtain protective orders from the foreign courts as a

8

condition for obtaining or using the ordered discovery is denied. This Court’s protective order

9

shall govern the use of information produced by GlobalFoundries. In addition, the protective

10

order shall require Nikon to take all reasonable steps to ensure that each foreign court maintains

11

the confidentiality of information obtained from GlobalFoundries that has been designated

12

pursuant to this Court’s protective order.

13

The parties shall also meet and confer about the scope of document production from

14

GlobalFoundries. GlobalFoundries has requested that the production of documents be sequenced

15

according to the subject matter covered in the foreign proceedings; but the Court declines to

16

impose that constraint on production, as it could encourage unnecessary disputes. The Court notes

17

that Nikon has filed a separate Section 1782 application seeking discovery from ASML US, Inc.

18

in the District of Arizona. Should that Court order production from ASML US, Inc., the parties to

19

this action shall meet and confer to address reasonable measures to avoid duplicative production.

20

Should a dispute arise regarding discovery pursuant to this Order, the parties will follow

21

this Court’s procedure regarding resolution of discovery disputes by submitting a joint letter brief

22

in accordance with this Court’s Standing Order. The Court will retain jurisdiction over this

23

proceeding for the purposes of supervising an orderly production of documents and enforcing the

24

protective order.

25

It is FURTHER ORDERED that Nikon will reimburse GlobalFoundries’s reasonable out-

26

of-pocket expenses in locating, copying and delivering to counsel for Nikon the documents

27

produced under this Order.

28
CASE NO. 5:17-MC-80071-SVK
[PROPOSED] ORDER

2

1
2

DATED: August

, 2017

3

_____________________________________
Susan van Keulen
United States Magistrate Judge

4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
CASE NO. 5:17-MC-80071-SVK
[PROPOSED] ORDER

3