In Re Apple Inc. et al

Filing 1

Ex Parte Application for an Order Pursuant to 28 U.S.C. 1782 Granting Leave to Obtain Discovery for Use in Foreign Proceedings by Apple Inc., Apple Retail Germany GMBH, Apple Sales International. (yeb)

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MARK D. SELWYN (SBN 244180)
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, California 94304
Telephone: [phone]
Facsimile: [phone]

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UNITED STATES DISTRICT COURT

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FOR THE SOUTHERN DISTRICT OF CALIFORNIA

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In re Ex Parte Application of

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APPLE INC.; APPLE RETAIL GERMANY
GMBH; and APPLE SALES
INTERNATIONAL,

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Applicants,

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For an Order Pursuant to 28 U.S.C. § 1782
Granting Leave to Obtain Discovery from
Qualcomm Incorporated for Use in Foreign
Proceedings.

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Case No.: '12CV0147 LAB POR
EX PARTE APPLICATION FOR AN
ORDER PURSUANT TO 28
U.S.C. § 1782 GRANTING LEAVE TO
OBTAIN DISCOVERY FOR USE IN
FOREIGN PROCEEDINGS AND
SUPPORTING MEMORANDUM

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Apple1 applies to the Court ex parte2 for an order pursuant to 28 U.S.C. § 1782

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granting Apple leave to obtain targeted discovery from Qualcomm Incorporated for use in
foreign litigations. This application is supported by the memorandum of points and authorities

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Except as otherwise indicated, as used herein, “Apple” means Apple Inc.; Apple Retail
Germany GmbH; and Apple Sales International.
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Courts within this Circuit have authorized the ex parte filing of applications for discovery
under 28 U.S.C. § 1782. E.g., In re Ecuador, No. C-10-80225 MISC CRB (EMC), 2010 U.S.
Dist. LEXIS 102158, at *7 (N.D. Cal. Sept. 15, 2010) (“[I]t is common for the process of
presenting the request to a court and to obtain the order authorizing discovery to be conducted
ex parte. Such ex parte applications are typically justified by the fact that the parties will be
given adequate notice of any discovery taken pursuant to the request and will then have the
opportunity to move to quash the discovery or to participate in it.”) (Internal quotations and
citations omitted).

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EX PARTE APPLICATION FOR
AN ORDER PURSUANT TO
28 U.S.C. § 1782

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below and the Declaration of Christine Haskett, filed concurrently herewith. The proposed order

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and subpoena are attached to this application as Exhibits A and B, respectively.

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I.

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INTRODUCTION
Motorola Mobility Inc. and Motorola, Inc. (collectively “Motorola”) have filed

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lawsuits against Apple in the United States and Germany. These lawsuits allege Apple’s

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products infringe patents that Motorola has declared essential to practice various

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telecommunications standards. Under 28 U.S.C. § 1782, interested parties, such as Apple, may

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obtain discovery for use in foreign litigations from companies located within the United States.

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In support of its defenses to the actions filed by Motorola against Apple in

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Germany, Apple seeks narrowly-tailored discovery from its supplier of certain wireless

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communication chips, Qualcomm Incorporated (“Qualcomm”). Specifically, Apple seeks

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documents relating to whether Qualcomm had or has a license or is or was otherwise authorized

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to practice some or all of the patents that have been asserted by Motorola against Apple.

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Apple’s application satisfies Section 1782’s three statutory requirements. First, it

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is in “the district in which [the] person resides,” 28 U.S.C. § 1782(a), because Qualcomm’s

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headquarters are in San Diego, California. Second, Apple seeks the discovery “for use in a

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proceeding in a foreign ... tribunal,” id., including the Higher District Court of Karlsruhe,

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Germany and the District Courts of Mannheim and Dusseldorf, Germany. Third, Apple and its

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foreign subsidiaries qualify as “interested persons” in those foreign proceedings. See id.; Intel

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Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 256 (2004) (litigants are common

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example of “interested persons”).

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Moreover, the factors identified by the Supreme Court to guide courts’ discretion

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in analyzing applications under Section 1782 all favor granting Apple’s request. Qualcomm is

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not a participant in the foreign proceedings, and Section 1782 provides an effective mechanism

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for obtaining this targeted discovery across various cases. In addition, the foreign jurisdictions at

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issue are receptive to the type of discovery sought by Apple, the discovery provides key

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EX PARTE APPLICATION FOR
AN ORDER PURSUANT TO
28 U.S.C. § 1782

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information for the foreign proceedings, and the request is not made to circumvent any

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limitation on discovery imposed by the foreign courts. Finally, the discovery request is narrowly

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tailored and is not unduly intrusive or burdensome.

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Accordingly, Apple respectfully requests that the Court enter the order attached

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as Exhibit A, allowing Apple to serve the subpoena attached as Exhibit B.

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II.

FACTUAL BACKGROUND

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Motorola has filed lawsuits against Apple in the United States, before the

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International Trade Commission, and in Germany. The functionalities accused by Motorola in

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many of these actions relate to the wireless communications chips within the iPhone and iPad,

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some of which are supplied by Qualcomm. (Decl. Haskett ¶ 12.) Motorola’s German lawsuits

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are pending in Germany’s Higher District Court of Karlsruhe, Mannheim District Court, and

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Dusseldorf District Court. (Id. ¶¶ 4-7 ).

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III.

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ARGUMENT
A.

Legal Standard
Section 1782 is “the product of congressional efforts, over the span of nearly 150

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years, to provide federal-court assistance in gathering evidence for use in foreign tribunals.”

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Intel Corp., 542 U.S. at 247. Over time, Congress has “substantially broadened the scope of

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assistance federal courts could provide for foreign proceedings.” Id. at 247-249. Section 1782

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provides in part:

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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 ...
upon the application of any interested person and may direct that
the testimony or statement may be given, or the document or other
thing be produced, before a person appointed by the court.

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28 U.S.C. § 1782(a). The statute thus sets forth three requirements, authorizing the district court

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“to grant a Section 1782 application where ‘(1) the person from whom discovery is sought

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resides or is found in the district of the district court to which the application is made, (2) the

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EX PARTE APPLICATION FOR
AN ORDER PURSUANT TO
28 U.S.C. § 1782

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discovery is for use in a proceeding before a foreign tribunal, and (3) the application is made by

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a foreign or international tribunal or ‘any interested person.” In re Ecuador, No. C-10-80225

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MISC CRB (EMC), 2010 U.S. Dist. LEXIS 102158, at *4 (N.D. Cal. Sept. 15, 2010) (quoting

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In re Chevron, 709 F. Supp. 2d 283, 290 (S.D.N.Y. 2010)).

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In Intel, the Supreme Court set forth several non-exclusive factors to aid district

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courts in determining how to exercise their discretion in granting section 1782 applications.

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These factors include: (1) whether “the person from whom discovery is sought is a participant in

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the foreign proceeding”; (2) “the nature of the foreign tribunal, the character of the proceedings

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underway abroad, and the receptivity of the foreign government or the court or agency abroad to

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U.S. federal-court judicial assistance”; (3) whether the request is “an attempt to circumvent

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foreign proof-gathering restrictions or other policies of a foreign country or the United States”;

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and whether the discovery is “unduly intrusive or burdensome.” Intel, 542 U.S. at 264-65.

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B.

Apple’s Application Meets the Section 1782 Requirements.
Apple’s request for discovery meets each of the three statutory requirements.

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First, the person from whom discovery is sought, Qualcomm, “resides or is found” in this

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District. 28 U.S.C. § 1782(a). Qualcomm has its principal place of business at 5775 Morehouse

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Drive, San Diego, California, which is located within this District. (Haskett Decl. Ex. 1 (excerpt

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of Qualcomm 2010 10K) at 1.)

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Second, the discovery is sought for use in a “proceeding before a foreign

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tribunal.” 28 U.S.C. § 1782(a). Specifically, Apple seeks the information for use in establishing

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at least the defense of license, unfair competition, and/or antitrust defenses in patent

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infringement actions brought by Motorola in three foreign tribunals: the Mannheim District

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Court, the Dusseldorf District Court, and the Higher District Court of Karlsruhe.

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As previous cases have recognized, these and related foreign adjudicative bodies

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qualify as “tribunals” for purposes of Section 1782. See, e.g., Cryolife, Inc. v. Tenaxis Medical,

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Inc., No. C08-05124 HRL, 2009 U.S. Dist. LEXIS 3416, at *1, 5 (N.D. Cal. Jan. 13, 2009)

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EX PARTE APPLICATION FOR
AN ORDER PURSUANT TO
28 U.S.C. § 1782

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(permitting discovery for use in patent infringement suit pending in “Dusseldorf Regional Court

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in Germany”).

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Third, as named parties in the foreign actions, Apple and its subsidiaries qualify

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as “interested part[ies].” 28 U.S.C. § 1782(a); Intel, 542 U.S. at 256 (“No doubt litigants are

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included among ... the ‘interested person[s]’ who may invoke § 1782”); see Heraeus Kulzer,

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GmbH v. Biomet, Inc., 633 F.3d 591, 594 (7th Cir. 2011).

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Accordingly, Apple has satisfied the statutory requirements for an application
under 28 U.S.C. § 1782.

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C.

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The Supreme Court’s Intel Factors Strongly Favor Granting Apple’s
Application.
In addition, the factors identified by the Supreme Court in Intel and later cases

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weigh heavily in favor of the Court exercising its discretion to grant Apple’s request for
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discovery.
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Qualcomm Is Not a Party to the Foreign Proceedings.

The Intel Court first asked whether “the person from whom discovery is sought is
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a participant in the foreign proceeding.” Intel, 542 U.S. at 264 (noting that “nonparticipants in
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the foreign proceeding may be outside the foreign tribunal’s jurisdictional reach; hence, their
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evidence, available in the United States, may be unobtainable absent § 1782 aid”). Here,
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Qualcomm is not a party to the foreign litigations, and the material sought—licenses and
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communications in Qualcomm’s possession—may not be within the foreign tribunal’s
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jurisdictional reach. See Heraeus Kulzer, 633 F.3d at 597 (authorizing section 1782 discovery
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because German litigant could not “obtain even remotely comparable discovery by utilizing
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German procedures”); Cryolife, 2009 U.S. Dist. LEXIS 3416 at * 13 (holding that “petitioner
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need only show that the information” sought under section 1782 “will be useful”).3

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Courts frequently grant Section 1782 discovery even from parties to foreign cases. E.g.,
Heraeus Kulzer, 633 F.3d at 596 (permitting Section 1782 discovery from opposing party in

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(continued…)
EX PARTE APPLICATION FOR
AN ORDER PURSUANT TO
28 U.S.C. § 1782

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The Intel Court next counseled courts to “take into account 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 judicial assistance.”
Intel, 542 U.S. at 264. Because the nature and character of the foreign proceedings involve
Motorola’s allegations of patent infringement, discovery regarding potentially relevant license
agreements would be critical. See London v. Does, 279 F. App’x 513, 515 (9th Cir. 2008)
(affirming order granting 1782 discovery when proof sought was “critical” in light of the
“nature and character of the foreign case”); In re Bayer AG, 146 F.3d 188, 195-96 (3d Cir.
1998) (documents relevant to the foreign proceedings are “presumptively discoverable” under
section 1782).

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Apple Seeks Highly Relevant Information That Will Assist the
Foreign Courts.

Moreover, prior cases have recognized the receptiveness of German courts to the
use of discovery obtained through Section 1782. E.g., Heraeus Kulzer, 633 F.3d at 597;
Cryolife, 2009 U.S. Dist. LEXIS 3416, at *8-9.

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3.
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No Foreign Discovery Restrictions Bar Apple’s Requested Discovery.

28 U.S.C. § 1782 does not require that the documents sought be discoverable in
the foreign courts. Intel, 542 U.S. at 260-63. However, a district court may consider whether an
applicant was seeking in bad faith “to circumvent foreign proof-gathering restrictions or other
policies of a foreign country or the United States.” Id. at 265.4 Here, Apple is unaware of any

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foreign suit and noting “[t]he importance of American-style discovery to [plaintiff/applicant’s]
ability to prove” its case); Cryolife, 2009 U.S. Dist. LEXIS 3416, at *1-2, 15 (same); In re
Procter & Gamble Co., 334 F. Supp. 2d 1112, 1113, 1118 (E.D. Wise. 2004) (granting Section
1782 request for discovery from entity involved in multiple foreign suits against applicant).
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See also In re Esses, 101 F.3d 873, 876 (2d Cir. 1996) (“[O]nly upon authoritative proof that a
foreign tribunal would reject evidence obtained with the aid of Section 1782 should a district
court refrain from granting the assistance offered by the act.”) (emphasis in original); Euromepa
S.A. v. R. Esmerian, Inc., 51 F.3d 1095, 1097, 1101 (2d Cir. 1995) (permitting discovery under
Section 1782 and observing that court “can simply refuse to consider any evidence that [1782
applicant] gathers by what might be—under French procedures—an unacceptable practice”);

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(continued…)

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EX PARTE APPLICATION FOR
AN ORDER PURSUANT TO
28 U.S.C. § 1782

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restrictions on proof-gathering procedures that would prohibit obtaining the discovery it seeks

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through Section 1782. To the contrary, as noted above, courts have routinely granted

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applications under Section 1782 for evidence to be used in the foreign courts at issue here. E.g.,

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Heraeus Kulzer, 633 F.3d at 597.

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The Intel Court finally noted that “unduly intrusive or burdensome requests may

Apple’s Discovery Is Narrowly Tailored to Avoid Undue Burden.

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be rejected or trimmed.” Intel, 542 U.S. at 265. Here, Apple’s proposed discovery requests are

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narrowly tailored and minimally burdensome. Apple is requesting document discovery on only

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two topics, targeted to a small, discrete set of documents: intellectual property licenses between

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Qualcomm and Motorola and communications regarding the licenses. The universe of

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responsive documents is thus likely to be small and easily searchable, avoiding any undue

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burden on Qualcomm.

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5.

Granting Apple’s Section 1782 Request Would Promote Efficient
Discovery.

Courts have also considered other evidence bearing on whether the discovery
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sought accomplishes the goals of the statute, which include “providing efficient means of
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assistance to participants in international litigation in our federal courts.” Marubeni Am. Corp. v.
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LBA Y.K, 335 Fed. App’x. 95, 96 (2d Cir. 2009) (internal quotation omitted). Here, given the
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multiple German cases between Apple and Motorola, Section 1782 provides an effective means
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for obtaining the discovery sought by Apple. Rather than seeking the same discovery in each of
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the foreign litigations, Apple can obtain the discovery with one application under Section 1782.
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Procter & Gamble, 334 F. Supp. 2d at 1115 (observing that it would be inefficient to require
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Procter & Gamble, 334 F. Supp. 2d at 1116 (holding that “to decline a § 1782(a) request based
on foreign nondiscoverability, a district court must conclude that the request would undermine a
specific policy of a foreign country or the United States”).

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EX PARTE APPLICATION FOR
AN ORDER PURSUANT TO
28 U.S.C. § 1782

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party to patent infringement actions in Germany, Japan, the Netherlands, France and the United

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Kingdom “to seek the same discovery” in each of them).

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Accordingly, the Intel factors strongly favor the Court exercising its discretion to

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grant Apple’s application. Indeed, courts in this Circuit have routinely permitted discovery

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under Section 1782, when, as here, the applicant has satisfied the statutory requirements and the

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above factors weighed in favor of granting relief. E.g., In re Am. Petroleum Institute, 11-80008-

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JF (PSG), slip op. (N.D. Cal. Apr. 7, 2011) (Haskett Decl. Ex. 3); In re Ecuador, 2010 WL

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3702427, at *2; London, 279 F. App’x at 513; Chevron Corp. v. E-Tech Int’l, 2010 WL

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3584520 (S.D. Cal. Sept. 10, 2010); Govan Brown & Assocs. v. Doe, No. 10-2704-PVT, 2010

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U.S. Dist. LEXIS 88673, at *7-8 (N.D. Cal. Aug. 6, 2010); Mirana v. Battery Tai-Shing Corp.,

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No. 08-80142, slip op. (N.D. Cal. Sept. 19, 2008) (Haskett Decl. Ex. 4).

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IV.

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CONCLUSION
Apple seeks narrowly tailored discovery for use in several currently pending

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foreign proceedings. Because Apple’s request satisfies the three statutory requirements of 28

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U.S.C. § 1782 and because the Intel factors all weigh in favor of granting the application, Apple

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respectfully requests that this Court issue the proposed order attached as Exhibit A, authorizing

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the issuance of a subpoena in substantially the same form as Exhibit B.

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Dated: January 17, 2012

/s/ Mark D. Selwyn
MARK D. SELWYN (SBN 244180)
WILMER CUTLER PICKERING
HALE AND DORR LLP

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EX PARTE APPLICATION FOR
AN ORDER PURSUANT TO
28 U.S.C. § 1782

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'12CV0147 LAB POR

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