Lufthansa Technik v. Panasonic Avionics Corporation

Filing 80

ORDER granting Petitioner Lufthansa Technick AG's 57 application for § 1782 discovery as to Intervenor. Any discovery conducted pursuant to this order must comply with the Federal Rules of Civil Procedure. Intervenor's motion to strike (Dkt. No. 77 ) is DENIED. Signed by U.S. District Judge John C Coughenour. (PM)

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THE HONORABLE JOHN C. COUGHENOUR 1 2 3 4 5 6 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE 7 8 9 10 11 12 13 14 In the Matter of the Application of LUFTHANSA TECHNICK AG, Petitioner, for an Order Pursuant to 28 U.S.C. § 1782 to Take Discovery, Pursuant to the Federal Rules of Civil Procedure, of Respondent PANASONIC AVIONICS CORPORATION, for Use in Foreign Proceedings, with ASTRONICS ADVANCED ELECTRONIC SYSTEMS as Intervenor. CASE NO. C17-1453-JCC ORDER This matter comes before the Court on Petitioner Lufthansa Technick AG’s petition for a 15 16 discovery order pursuant to 28 U.S.C. § 1782 compelling Intervenor Astronics Advanced 17 Electronic Systems to produce documents for use in foreign litigation (Dkt. No. 57). Having 18 thoroughly considered the briefing and the relevant record, the Court finds oral argument 19 unnecessary and GRANTS the motion for the reasons explained herein. 20 I. 21 BACKGROUND The Court has previously set forth the factual background of this case, and will not repeat 22 it here. (See Dkt. No. 39.) Petitioner commenced patent infringement proceedings against 23 Intervenor in Germany. (See Dkt. No. 1.) That proceeding was bifurcated, so that liability would 24 be established before damages would be calculated. (See Dkt. No. 39.) Thereafter, Petitioner 25 commenced similar proceedings in France and the United Kingdom (together with the German 26 proceedings, the “pending proceedings”). (Dkt. Nos. 54-3 at 2, 54-4 at 3.) If Petitioner ORDER C17-1453-JCC PAGE - 1 1 establishes liability in those countries, Petitioner reasonably contemplates initiating similar 2 proceedings in Spain and Japan (the “contemplated proceedings”). (See Dkt. No. 57 at 3.) 3 In 2011, Petitioner sought § 1782 discovery from for use in the German patent 4 enforcement proceedings. In re Lufthansa Technik AG, C11-1386-JCC (W.D. Wash. 2011.) The 5 Court granted in part and denied in part Petitioner’s petition, in part because damages-related 6 discovery was unwarranted prior to a finding of Intervenor’s liability. Id. at Dkt. No. 21. The 7 German tribunal has since ruled that Intervenor is liable for infringing Petitioner’s patent. (Dkt. 8 No. 1 at 3.) Petitioner sought § 1782 discovery from Respondent Panasonic Avionics 9 Corporation for use in the damages stage of the German proceedings and for sue in future 10 infringement actions. (Dkt. No. 39 at 2.) The Court granted in part and denied in part Petitioner’s 11 petition, largely because some of the discovery sought was more likely in Intervenor’s control. 12 (Id. at 9–11.) Petitioner now seeks § 1782 discovery from Intervenor for use in the pending and 13 contemplated proceedings. (Dkt. No. 57.) 14 II. DISCUSSION 15 A. Statutory Requirements 16 A party to a foreign proceeding may seek discovery in the United States pursuant to 28 17 U.S.C. § 1782, which provides in pertinent part that a federal district court “may order” a person 18 residing or “found” in the district to give testimony or produce documents “for use in a 19 proceeding in a foreign or international tribunal . . . upon the application of any interested 20 person.” The “proceeding” for which § 1782 discovery is sought “must be within reasonable 21 contemplation, but need not be ‘pending’ or ‘imminent.’” Intel Corp. v. Advanced Micro 22 Devices, Inc., 542 U.S. 241, 243 (2004). 23 First, Intervenor resides in this district or can be found in this district. Intervenor is a 24 subsidiary of Astronics Corporation, which is incorporated and has its principal place of business 25 in New York. (Dkt. No. 54-2 at 3.) Intervenor has a “main office” in Kirkland, Washington. (Id.) 26 Petitioner contends, and Intervenor does not dispute, that the documents Petitioner seeks are ORDER C17-1453-JCC PAGE - 2 1 either located in Washington or are within Intervenor’s control. (Dkt. No. 57 at 5.) Second, the 2 requested discovery is for use in the pending proceedings before tribunals in Germany, the 3 United Kingdom, and France. (Dkt. Nos. 54 at 4–5, 57 at 2–3.) The contemplated proceedings 4 are within reasonable contemplation, as Petitioner has prevailed in the German enforcement 5 litigation as to Intervenor’s liability for infringing the same patent that would be at issue in the 6 contemplated proceedings. (Dkt. Nos. 54 at 4–5, 57 at 2–3.) Third, Petitioner is an interested 7 person within the meaning of § 1782. See Intel, 542 U.S. at 256 (holding that a litigant is an 8 “interested person” within the meaning of § 1782); (see Dkt. Nos. 54-1 at 4, 54-3 at 2, 54-4 at 3). 9 Therefore, the basic requirements of § 1782 are met in this case. 10 B. 11 A district court is not required to grant a § 1782 petition simply because it has the Discretionary Factors 12 authority to do so. Intel, 542 U.S. at 264. Rather, once the statutory requirements are met, a 13 district court has discretion to determine whether, and to what extent, to honor a request for 14 assistance under § 1782. Four Pillars Enters. Co. v. Avery Dennison Corp., 308 F.3d 1075, 1078 15 (9th Cir. 2002). If the district court permits discovery under § 1782, it “may prescribe the 16 practice and procedure, which may be in whole or part the practice and procedure of the foreign 17 country,” for taking testimony or producing documents. 28 U.S.C § 1782(a). The district court 18 should consider the statute’s goals of “providing efficient assistance to participants in 19 international litigation and encouraging foreign countries by example to provide similar 20 assistance to our courts.” Intel, 542 U.S. at 252 (quoting Advanced Micro Devices, Inc. v. Intel 21 Corp., 292 F.3d 664, 669 (9th Cir. 2002)). 22 The Supreme Court has provided four factors for district courts to consider in ruling on 23 § 1782 petitions: (1) whether the person from whom discovery is sought is a participant in the 24 foreign proceeding; (2) “the nature of the foreign tribunal, the character of the proceedings 25 underway abroad, and the receptivity of the foreign government or the court or agency abroad to 26 U.S. federal-court judicial assistance;” (3) whether the request “conceals an attempt to ORDER C17-1453-JCC PAGE - 3 1 circumvent foreign proof-gathering restrictions” or policies of a foreign country; and (4) whether 2 the requests are unduly burdensome or intrusive. Intel, 542 U.S. at 264–65. 3 4 1. Participation in the Foreign Proceedings The Supreme Court has cautioned that “when the person from whom discovery is sought 5 is a participant in the foreign proceeding . . . the need for § 1782(a) aid generally is not as 6 apparent as it ordinarily is when evidence is sought from a nonparticipant in the matter arising 7 abroad.” Id. at 264. The foreign tribunal itself may order the parties before it to produce 8 documents or carry out other pretrial discovery as it sees fit, but may lack the ability to order 9 such discovery from a nonparticipant residing in a different jurisdiction. Id. 10 Intervenor is a participant in the pending legal proceedings. (Dkt. No. 57 at 6.) However, 11 the discovery procedures available to Petitioner in the pending proceedings are insufficient to 12 procure the requested discovery. (See Dkt. Nos. 54-1 at 7–8 (Germany), 54-3 at 3 (France), 54-4 13 at 3 (the United Kingdom).) Therefore, although Intervenor is a participant in the pending 14 proceedings, the lack of effective discovery mechanisms available to Petitioner in those countries 15 weighs in favor of allowing Petitioner to obtain the discovery material via § 1782. See In re 16 Lufthansa Technik AG, C11-1386-JCC, Dkt. No. 21 at 4 (W.D. Wash. 2011) (citing In re 17 Chevron Corp., 633 F.3d 153, 162 (3d Cir. 2011); In re Clerici, 481 F.3d 1324, 1334–35 (11th 18 Cir. 2007)). Further, if Petitioner obtains the requested discovery at this juncture, the foreign 19 tribunals presiding over future enforcement actions may address its admissibility in the context 20 of those actions. Therefore, the first Intel factor weighs in Petitioner’s favor. 21 2. Receptivity of the Foreign Tribunals to Judicial Assistance 22 The second Intel factor takes into account the “nature of the foreign tribunal, the 23 character of the proceedings abroad, and the receptivity of the foreign court to U.S. federal-court 24 judicial assistance.” Intel, 542 U.S. at 264. The receptivity of the foreign court to assistance from 25 a U.S. court is a critical consideration, given that one of the primary goals of § 1782 is to 26 encourage foreign courts to provide similar assistance to U.S. courts. See In re Premises Located ORDER C17-1453-JCC PAGE - 4 1 at 840 140th Ave. Ne., Bellevue, Wash., 634 F.3d 557, 563 (9th Cir. 2011). The Supreme Court 2 has not elaborated on how to evaluate the receptivity of the foreign court, other than to caution 3 against attempting to conduct in-depth analysis of the laws of the foreign jurisdiction. Intel, 542 4 U.S. at 263. In evaluating the nature of the tribunal and character of the proceedings, courts have 5 focused on the utility of the evidence sought. In re Ex Parte Application of Qualcomm Inc., 162 6 F. Supp. 3d 1029, 1040 (N.D. Cal. 2016); see also Intel, 542 U.S. at 264. 7 In support of its argument that German tribunals are receptive to § 1782 discovery 8 materials, Petitioner repeats the arguments it raised in its prior petitions seeking discovery from 9 Respondent. (See Dkt. Nos. 1 at 11–13, 54 at 14–15, 57 at 7–10.) The German tribunal has not 10 submitted a request for assistance or otherwise indicated that it has stayed proceedings while 11 awaiting resolution of this § 1782 petition, and the parties have not presented evidence that the 12 German tribunal would object to the present petition. In addition, the discovery sought is relevant 13 to the calculation of Petitioner’s damages claim against Intervenor in Germany, which is ripe and 14 being actively pursued by Petitioner. (Dkt. No. 54-1 at 6.) Therefore, the second Intel factor 15 weighs in favor of Petitioner as to the German proceedings. 16 In support of its argument that tribunals in the United Kingdom, France, Spain, and Japan 17 are receptive to § 1782 discovery, Petitioner cites examples of U.S. courts granting § 1782 18 discovery for use in those countries. (Dkt. No. 57 at 9–10.) Neither party presents specific 19 evidence or argument regarding the tribunals of those countries’ receptivity specific to these 20 proceedings. (See id., Dkt. No. 63.) Therefore, the second Intel factor is neutral at best as to the 21 pending litigation in the United Kingdom and France and the contemplated proceedings. 22 3. Circumvention of Foreign Proof-Gathering Restrictions 23 The Supreme Court has warned that a § 1782 request could conceal an attempt to 24 circumvent foreign proof-gathering restrictions. Intel, 542 U.S. at 265. Although the Supreme 25 Court made clear that the requested material need not be discoverable under the relevant foreign 26 law for the U.S. court to render assistance under § 1782, it did not further elaborate on what ORDER C17-1453-JCC PAGE - 5 1 2 would constitute an effort to circumvent proof-gathering restrictions abroad. Id. at 261–62. Petitioner’s argument in support of this factor is largely identical to its argument in its 3 prior petitions seeking discovery from Respondent, and Intervenor does not appear to have 4 provided substantive argument on this factor. (See Dkt. Nos. 1 at 13, 54 at 16, 57 at 10; see 5 generally Dkt. No. 63.) As previously noted by the Court, the restrictions on damages-related 6 discovery in the German proceeding no longer apply, as Petitioner’s claim for damages is ripe 7 and being actively pursued by Petitioner. (Dkt. Nos. 39 at 7, 54-1 at 6.) Further, as previously 8 established by Petitioner, tribunals in France, Japan, and Spain generally allow parties to gather 9 evidence of damages prior to determining liability, and tribunals in the United Kingdom may 10 order early disclosure of evidence of damages prior to adjudicating liability. (See Dkt. No. 39 at 11 8) (citing Dkt. Nos. 38-1 at 3, 38-3 at 2, 38-5 at 3, 36-4 at 1). Therefore, as the discovery sought 12 is relevant to Petitioner’s damages claim against Intervenor (Dkt. No. 57 at 2), the third Intel 13 factor favors Petitioner as to German proceeding, and does not weigh against granting 14 Petitioner’s petition as to the pending litigation in the United Kingdom and France or the 15 contemplated proceedings. (See Dkt. No. 39 at 8–9.) 16 4. Intrusiveness of the Requests 17 “[U]nduly intrusive or burdensome requests may be rejected or trimmed.” Intel, 542 U.S. 18 at 265. Petitioner has filed a proposed subpoena as an exhibit to its petition for § 1782 discovery. 19 (Dkt. No. 57-1.) Having reviewed the proposed subpoena, the Court is satisfied that the 20 requested discovery is relevant to the issues of Intervenor’s liability and resultant damages in the 21 pending and contemplated proceedings. (See Dkt. No. 57-1.) Intervenor does not argue in its 22 motion that the proposed discovery requests should be narrowed. (See Dkt. No. 63 at 9–13.) 1 23 Instead, Intervenor contends that the requested discovery is duplicative, premature, available in 24 other jurisdictions, burdensome, or not within Intervenor’s possession. (Id.) The requested 25 1 26 Intervenor has stated that it “reserves its right to object to [the discovery requests], including on the grounds that they are ambiguous and overbroad.” (Dkt. No. 63 at 7.) ORDER C17-1453-JCC PAGE - 6 1 discovery is not premature, as discovery on the issues of Intervenor’s liability and damages is 2 timely in the pending and contemplated proceedings. Further, to the extent that the proposed 3 discovery requests encompass discovery that Intervenor has previously provided, it need not 4 disclose such discovery again. Similarly, Intervenor is not required to produce discovery that it 5 can demonstrate is not within its possession. Finally, if complying with a particular discovery 6 request proves overly burdensome or costly, Intervenor may move for a protective order or other 7 relief after it has met and conferred with Petitioner regarding the request. Therefore, the fourth 8 Intel factor weighs in Petitioner’s favor. 9 III. 10 CONCLUSION The balance of factors set forth in Intel weigh in favor of granting Petitioner leave to 11 conduct its requested discovery pursuant to 28 U.S.C. § 1782. Therefore, the Court GRANTS 12 Petitioner’s application for § 1782 discovery as to Intervenor (Dkt. No. 57). Any discovery 13 conducted pursuant to this order must comply with the Federal Rules of Civil Procedure. 14 Intervenor’s motion to strike (Dkt. No. 77) is DENIED. 15 DATED this 25th day of January 2019. A 16 17 18 John C. Coughenour UNITED STATES DISTRICT JUDGE 19 20 21 22 23 24 25 26 ORDER C17-1453-JCC PAGE - 7

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