Apple Inc. et al
Filing
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APPLICATION for an Order Pursuant to 28 U.S.C., 1782 Granting Leave to Obtain Discovery for Use in Foreign Proceedings by Petitioners Apple Inc., Apple Retail Germany GMBH, Apple Sales International. (Attachments: # 1 Civil Cover Sheet, # 2 Proposed Order Granting Apple's Ex Parte Application, # 3 Declaration of Christine Haskett, # 4 Proposed Motion for Over-Length Brief, # 5 Proposed Order Granting Apple's Motion for Over-Length Brief)(LMK)
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UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
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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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No.
Applicants,
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For an Order Pursuant to 28 U.S.C.
§ 1782 Granting Leave to Obtain
Discovery from HTC Corporation and
HTC America, Inc. for Use in Foreign
Proceedings.
DECLARATION OF CHRISTINE S.
HASKETT IN SUPPORT OF APPLE’S
EX PARTE APPLICATION FOR AN
ORDER PURSUANT TO 28 U.S.C. §
1782 GRANTING LEAVE TO OBTAIN
DISCOVERY FOR USE IN FOREIGN
PROCEEDINGS
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I, Christine S. Haskett, an attorney admitted to practice in the State of California,
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declare as follows:
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1.
I am an attorney with Covington & Burling, LLP, counsel to Apple Inc.
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(“Apple”).
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2.
I am familiar with the facts set forth in this declaration from personal
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knowledge and documents I have reviewed.
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3.
I submit this declaration in support of Apple’s Ex Parte Application for an
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Order Pursuant to 28 U.S.C. § 1782 Granting Leave to Obtain Discovery for Use In Foreign
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Proceedings. The application relates to foreign proceedings in Germany before the
HASKETT DECL. I.S.O. APPLE’S EX PARTE APP.
FOR ORDER GRANTING LEAVE TO OBTAIN
DISCOVERY FOR USE IN FOREIGN PROCEEDINGS
Page 1
818 STEW ART STREET, SUITE 1400
SEATTLE W ASHINGTON 98101
T 206.516.3800 F 206.516.3888
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Mannheim District Court, the Dusseldorf District Court, and the Higher District Court of
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Karlsruhe.
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4.
Apple Retail Germany GmbH is the defendant in Case Nos. 4a O 69/11, 4a
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O 116/11, and 4a O 117/11 pending in the Dusseldorf District Court. These actions were all
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filed by Motorola Mobility, Inc. on April 12, 2011.
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5.
Apple Sales International is the defendant in Case No. 6 U 136/11, pending
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in the Higher District Court of Karlsruhe and filed on December 14, 2011, which is an
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appeal of a decision of the Mannheim District Court in Case No. 7 O 122/11, filed by
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Motorola Mobility, Inc. on April 1, 2011.
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6.
Apple Sales International is the defendant in Case Nos. 7 O 229/11 and 7 O
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230/11, both filed by Motorola Mobility Inc. on April 1, 2011 in the Mannheim District
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Court.
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7.
Apple, Inc. is the defendant in Case Nos. 7 O 169/11 and 7 O 443/11, filed
by Motorola Mobility, Inc. on April 26, 2011 in the Mannheim District Court.
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The Mannheim and Dusseldorf District Courts determine liability and, upon
a finding of infringement, may enter an injunction and order the infringer to pay damages.
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In Cases Nos. 4a O 69/11, 6 U 136/11, 7 O 122/11, 7 O 169/11 Motorola
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asserts that Apple products infringe European Patent No. EP 1 010 336 (“the ’336 cases”).
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In Cases Nos. 4a O 117/11, 7 O 230/11, and 7 O 443/11, Motorola asserts that Apple
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products infringe European Patent No. EP 1 053 613 (“the ’613 cases”).
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10.
HTC Corporation and HTC America, Inc. (collectively “HTC”) are
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headquartered in Bellevue, Washington, which is within the Western District of
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Washington. See excerpt of HTC’s webpage: http://www.htc.com/us/about/contact-us, a
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true and correct copy of which is attached hereto as Exhibit 1.
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11.
HTC is not a party to the German Actions.
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HASKETT DECL. I.S.O. APPLE’S EX PARTE APP.
FOR ORDER GRANTING LEAVE TO OBTAIN
DISCOVERY FOR USE IN FOREIGN PROCEEDINGS
Page 2
818 STEW ART STREET, SUITE 1400
SEATTLE W ASHINGTON 98101
T 206.516.3800 F 206.516.3888
EXHIBIT 1
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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___________________________________ )
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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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1.
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3.
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4.
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5.
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
Case5:11-mc-80008-JF Document6 Filed04/07/11 Page2 of 4
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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
Case5:11-mc-80008-JF Document6 Filed04/07/11 Page3 of 4
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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.
ORDER, page 3
Case5:11-mc-80008-JF Document6 Filed04/07/11 Page4 of 4
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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
EXHIBIT 3
Case5:08-mc-80142-JF Document9 Filed09/19/08 Page1 of 3
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*E-FILED 9/19/08*
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IN THE UNITED STATES DISTRICT COURT
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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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SAN JOSE DIVISION
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KWONG MEI LAN MIRANA,
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For the Northern District of California
United States District Court
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NO. C 08-80142 MISC. JF (RS)
ORDER GRANTING
APPLICATION FOR ISSUANCE
OF SUBPOENAS UNDER 28
U.S.C. § 1782
Applicant,
v.
BATTERY TAI-SHING CORP., et al.,
Respondents.
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In connection with divorce litigation now pending before the District Court of Hong Kong
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SAR, Matrimonial Cases No. 6100 of 2006, before the Court is the application of Kwong Mei Lan
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Mirana for an order under 28 U.S.C. § 1782 permitting her to serve subpoenas directing respondents
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to produce documents, to produce corporate representatives, and to appoint counsels Kathleen V.
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Fisher, William N. Hebert, and Seung Lee to issue, sign, and serve such subpoenas upon
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respondents. Good cause appearing, it is hereby ordered that:
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(1) Kwong may serve subpoenas in substantially the same form attached as Exhibits 1-11 to
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her application. The subpoenas shall specify the date for production of documents not less than 45
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days after service.
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(2) Fisher, Hebert, and Lee may issue, sign, and serve such subpoenas upon respondents.
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(3) A copy of this order shall be served with the subpoena.
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Case5:08-mc-80142-JF Document9 Filed09/19/08 Page2 of 3
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(4) This order is without prejudice to the rights of any person to seek a protective order, or to
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quash or modify the subpoena under Rule 45 of the Federal Rules of Civil Procedure. Any motion
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seeking such relief shall be filed under this case number, and shall be noticed for hearing before the
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undersigned in conformance with the Civil Local Rules.
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IT IS SO ORDERED.
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Dated: September 19, 2008
RICHARD SEEBORG
United States Magistrate Judge
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For the Northern District of California
United States District Court
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ORDER GRANTING APPLICATION FOR ISSUANCE OF SUBPOENAS UNDER 28 U.S.C. § 1782
C 08-80142 MISC. JF (RS)
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Case5:08-mc-80142-JF Document9 Filed09/19/08 Page3 of 3
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THIS IS TO CERTIFY THAT NOTICE OF THIS ORDER HAS BEEN GIVEN TO:
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Kathleen V. Fisher
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Seung Lee
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William N. Hebert whebert@calvoclark.com, cheryluntalan@calvoclark.com,
SF-Receptionist@calvoclark.com, swilson@calvoclark.com
kfisher@calvoclark.com, sf-receptionist@calvoclark.com
slee@calvoclark.com, lthornton@calvoclark.com, sf-receptionist@calvoclark.com
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Counsel are responsible for distributing copies of this document to co-counsel who have not
registered for e-filing under the Court's CM/ECF program.
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Dated: 9/19/08
Richard W. Wieking, Clerk
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By:
Chambers
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For the Northern District of California
United States District Court
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ORDER GRANTING APPLICATION FOR ISSUANCE OF SUBPOENAS UNDER 28 U.S.C. § 1782
C 08-80142 MISC. JF (RS)
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