Apple Inc.

Filing 1

COMPLAINT 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 against Apple Inc. ( Filing fee $ 350 receipt number 0540-3410912.), filed by Apple Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Declarataion of Christine Saunders Haskett in Support, # 4 Haskett Ex. 1, # 5 Haskett Ex. 2, # 6 Haskett Ex. 3)(Haslam, Robert)

EXHIBIT 2

Case5:11-mc-80008-JF Document6 Filed04/07/11 Page1 of 4

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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IN RE EX PARTE APPLICATION OF
AMERICAN PETROLEUM INSTITUTE
FOR ORDER TO OBTAIN DISCOVERY
FOR USE IN FOREIGN PROCEEDINGS

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Case No.: C 11-80008 JF (PSG)
ORDER GRANTING EX PARTE
APPLICATION FOR ORDER
PURSUANT TO 28 U.S.C. § 1782(A)
(Re: Docket No. 1)

American Petroleum Institute (“API”) has applied to this court for an order to obtain

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discovery for use in foreign proceedings pursuant to 28 U.S.C. § 1782(a). API seeks an order to

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authorize a subpoena requiring Google Inc. (“Google”), a resident of Mountain View, California, to

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provide documents for use in connection with six cases in China involving copyright, trademark, and

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unfair competition claims asserted against the owners of the engineeringsky.com website

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(“Engineeringsky”). API argues that because Engineeringsky advertises its website online via

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Google, Google has information relevant to API’s actions against Engineeringsky in China. The

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proposed subpoena seeks documents sufficient to identify:

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all of Engineeringsky’s sponsored-link advertisements distributed by Google;
the amount and dates of Engineeringsky’s payments to Google;
the search terms that generated Google’s display of the Engineeringsky’s sponsored-link
advertisements on Google’s main google.com website;
the domain names which identify the Publishers’ Websites on which Engineeringsky’s
sponsored-link advertisements appeared and/or appear;
the Publishers’ names and contact information, including, but not limited to, the Publishers
for the apistandards.com website; and
ORDER, page 1

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the amounts of Google’s payments to each of the Publishers, including, but not limited to,
the Publishers for the apistandards.com website.

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I. LEGAL STANDARD
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A district court may grant an application pursuant to 28 U.S.C. § 1782 where (1) the
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person from whom the discovery is sought resides or is found in the district of the district court to
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which the application is made, (2) the discovery is for use in a proceeding before a foreign
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tribunal, and (3) the application is made by a foreign or internal tribunal or any interested person. 1

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However, simply because a court has the authority under § 1782 to grant an application
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does not mean that it is required to do so. 2 The Supreme Court has identified several factors that

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a court should take into consideration in ruling on a § 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 the process of presenting the request to a court to obtain the order

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authorizing discovery to be conducted ex parte. 4 Such ex parte applications are typically justified

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by the fact that the parties will be given adequate notice of any discovery taken pursuant to the

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request and will then have the opportunity to move to quash the discovery or to participate in it. 5

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II. DISCUSSION
A. AUTHORITY TO ISSUE SUBPOENA
As stated above, a district court is authorized to grant a § 1782 application where (1) the
person from whom the discovery is sought resides or is found in the district of the district court to

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See 28 U.S.C. § 1782(a); In re Republic of Ecuador, 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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In re Republic of Ecuador, 2010 WL 3702427, at *2 (citing Intel, 542 U.S. at 264-65).

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

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Id.

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ORDER, page 2

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which the application is made, (2) the discovery is for use in a proceeding before a foreign

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tribunal, and (3) the application is made by a foreign or internal tribunal or any interested person. 6

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The court has reviewed API’s application and has preliminarily determined that the

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statutory requirements have been satisfied. First, Google is located in Mountain View, California,

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which is located in this district. Second, there are six court actions that have been initiated against

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Engineeringsky in China. 7 Finally, there can be no real dispute that API qualifies as an interested

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person because it is the plaintiff in the cases in China. 8

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B. DISCRETIONARY FACTORS

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

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question of whether the discretionary factors identified by the Supreme Court weigh in favor of or

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against issuance of the subpoena. The court makes the preliminary determination that these factors

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largely weigh in favor of issuance of the subpoena.

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1. JURISDICTIONAL REACH OF FOREIGN TRIBUNAL

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The Supreme Court has noted that,

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“when the person from whom discovery is sought is a participant in the foreign
proceeding ..., the need for § 1782(a) aid generally is not as apparent as it
ordinarily is when evidence is sought from a nonparticipant in the matter arising
abroad. A foreign tribunal has jurisdiction over those appearing before it, and can
itself order them to produce evidence. In contrast, nonparticipants in the foreign
proceeding may be outside the foreign tribunal' s jurisdictional reach; hence, their
evidence, available in the United States, may be unobtainable absent § 1782(a)
aid.” 9

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In the instant case, Google is not a party in the China cases, and therefore this factor
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weighs in API’s favor.
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2. NATURE AND RECEPTIVITY OF FOREIGN TRIBUNAL
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See 28 U.S.C. § 1782(a); In re Republic of Ecuador, No. 10-80225 MISC CRB (EMC), 2010
WL 3702427, at *2 (N.D. Cal. Sep. 15, 2010).

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See 1/14/11 B. Brett Heavner Decl. ¶ 5 (Docket No. 2).

Intel, 542 U.S. at 256 (stating that an interested person under § 1782 “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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Id. at 264.
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API argues that China would be receptive to U.S. federal-court jurisdictional assistance.

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In support of this argument, API points outs that the Law of Civil Procedure of the People’s

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Republic of China allows for discovery in litigation, and thus there is no reason to believe that the

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Chinese court would be unreceptive to evidence collected through discovery conducted pursuant to

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this subpoena. 10 The court does not have sufficient evidence to determine whether China would

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be receptive to U.S. federal-court jurisdictional assistance. This factor therefore is treated as

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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 API’s § 1782 request is an attempt to circumvent foreign

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proof-gathering restrictions. API represents that no such restrictions or policies exist and the

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requested discovery is consistent with the type of discovery available in the Chinese proceedings.

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Accordingly, this factor weighs in API’s favor.

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4. UNDUE INTRUSION OR BURDEN

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API has requested six categories of documents, that on their face, do not appear to be

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unduly intrusive or burdensome and appear to be related to the claims in the Chinese proceedings.

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III. CONCLUSION

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For the reasons discussed above, API’s application is GRANTED. API may serve the

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subpoena attached as Exhibit B to its application, without prejudice to any motion to quash that

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Google or any other appropriate party may wish to file.

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Dated: April 7, 2011
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PAUL S. GREWAL
United States Magistrate Judge

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See 1/14/11 Ex Parte Application at 7:18-8:1 (Docket No. 1).
ORDER, page 4