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

Filing 6

ORDER TO SHOW CAUSE. Order to Show Cause Hearing set for 7/11/2017 at 10:00 AM in Courtroom 6, 4th Floor, San Jose before Magistrate Judge Susan van Keulen. Signed by Magistrate Judge Susan van Keulen on 6/13/2017. (ofr, COURT STAFF) (Filed on 6/13/2017)

1
2
3
4

UNITED STATES DISTRICT COURT

5

NORTHERN DISTRICT OF CALIFORNIA

6
NIKON CORPORATION,

7

Plaintiff,

8
v.

9

GLOBALFOUNDRIES U.S., INC.,

10

Defendant.

11
United States District Court
Northern District of California

Case No.17-mc-80071-SVK
ORDER TO SHOW CAUSE WHY
DISCOVERY SHOULD NOT BE
ORDERED PURSUANT TO
28 U.S.C. § 1782
Re: Dkt. No. 1

12
The Court has reviewed Nikon Corporation’s (“Nikon”) 1 application for an order to show

13
14

cause before this Court why an order should not be issued pursuant to 28 U.S.C. § 1782 permitting

15

Nikon to compel production of documents pursuant to subpoena,2 to be issued by Nikon’s

16

attorneys and served upon GlobalFoundries. ECF 1. Having considered the application and in the

17

interest of efficiency, the Court issues an order to show cause why Nikon’s application should not

18

be granted at a hearing on July 11, 2017, at 10:00 a.m., in Courtroom 6 on the 4th Floor of the

19

San Jose Courthouse, 280 South First Street, San Jose, California. Nikon shall complete service of

20

both its application and this Order by June 15, 2017. Nikon shall file a proof of service with the

21

court by June 16, 2017.

22

Under 28 U.S.C. § 1782, this Court may order discovery for use in a proceeding in a

23

foreign or international tribunal. 28 U.S.C. § 1782(a). Pursuant to the statute, a party in the

24

foreign litigation may seek such discovery by filing an ex parte application. Id. In such an

25
26
27
28

1

The Court acknowledges and discloses that the undersigned represented Nikon in a single matter
in 2001. ECF 5. That representation ended over ten years ago and does not bear on the Court’s
ability to be impartial in this matter.
2
Attached as Exhibit B to the Application For an Order Directing GlobalFoundries U.S. Inc.
(“GlobalFroundries”) to Respond to Requests For Documents Pursuant to 28 U.S.C. § 1782 For
Use in Foreign Proceedings, dated June 5, 2017 (“U.S. Subpoena”).

1

instance, the court would grant or deny the application after considering the relevant factors listed

2

below. If the court grants the application, the responding party would then be able to object to the

3

issued discovery requests, and the parties may return to court on a discovery motion such as a

4

motion to compel or motion to quash in order to resolve the dispute. In order to avoid the

5

inevitable subsequent motions and to allow the Court to make a decision on a more complete

6

record, the Court orders GlobalFoundries to show cause as described below in response to Nikon’s

7

application.

8

Preliminarily, the Court orders GlobalFoundries to file any opposition to Nikon’s

9

application under Section 1782. There are three statutory prerequisites for discovery pursuant to
Section 1782 to be granted: (1) the person from whom discovery is sought must reside or be found

11
United States District Court
Northern District of California

10

in the district of the district court where the application is made; (2) the discovery must be for use

12

in a proceeding before a foreign tribunal; and (3) the application must be made by the foreign

13

tribunal or “any interested person.” 28 U.S.C. § 1782.

14

However, simply because a court has the authority under Section 1782 to grant an

15

application does not mean that it is required to do so. See Intel Corp. v. Advanced Micro Devices,

16

542 U.S. 241, 264 (2004). The Supreme Court has identified several factors that a court should

17

take into consideration in ruling on a Section 1782 request:

18
19
20
21
22
23
24
25
26
27
28

(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.
In re Chevron Corp., No. M-19-111, 2010 U.S. Dist. LEXIS 47034, at *16 (S.D.N.Y. May 10,
2010); see also Intel, 542 U.S. at 264-65.
GlobalFoundries’s opposition should address both the Section 1782 statutory factors and
the Intel factors. GlobalFoundries shall file its opposition, if any, by June 28, 2017. Nikon may
file its reply by July 3, 2017.
2

1

The Court also orders the parties to meet and confer on the validity and scope of the

2

U.S. Subpoena under the Federal Rules of Civil Procedure. The parties shall submit a joint letter

3

brief that, for each disputed request, sets forth side-by-side each party’s position including any

4

proposed compromise. The parties shall submit the joint letter brief by June 30, 2017.

5

In addition, the parties shall meet and confer regarding a protective order. Should the

6

parties require the Court’s assistance regarding a protective order, the parties shall submit their

7

respective proposed protective orders redlined against the Court’s model protective order by

8

July7, 2017.

9
10

United States District Court
Northern District of California

11

SO ORDERED.
Dated: 6/13/2017

12
13
SUSAN VAN KEULEN
United States Magistrate Judge

14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
3