In re ex parte Application of IPCom GMBH & Co. KG, No. 5:14-mc-80037 (N.D. Cal. Apr. 10, 2014) [click for opinion]

In 2012, IPCom filed a patent infringement action against Apple in Germany. As a part of that litigation, IPCom requested that Apple produce several license agreements related to wireless communications technology pursuant to 28 U.S.C. § 1782(a). Apple failed to produce these license agreements. Despite the dismissal of IPCom’s patent infringement litigation, the production of the license agreements remained relevant because the suit was pending on appeal before the Court of Appeals in Germany. And, unlike in American appellate courts, German appellate courts can consider facts on appeal.

Pursuant to Section 1782, a U.S. court has the authority to grant a discovery request where: (1) the person from whom the discovery is sought resides or is found in the district of the district court to which the application is made; (2) the discovery is for use in a proceeding before a foreign tribunal; and (3) the application is made by a foreign or internal tribunal or any interested person.

Because (1) Apple resides in the Northern District of California; (2) the discovery would be of use in German litigation; and (3) the application was brought by IPCom, a party to that German litigation, the district court for the Northern District of California determined it had the legal authority to grant the requested discovery. The court then addressed the discretionary factors the Supreme Court identified in Intel Corp. v. Advanced Micro Devices, Inc. for consideration when faced with a Section 1782 request.

The first factor considered was whether the material sought was within the foreign tribunal's jurisdictional reach and thus accessible absent the aid provided by Section 1782. Here, since Apple was a party to the suit in Germany, and thus subject to the German court's jurisdiction, Apple must abide by Germany's discovery rules. However, German law lacks the far-reaching discovery available in the United States. The court thus determined that this factor was neutral.

The second Intel factor evaluates the nature of the foreign tribunal, the character of the proceedings underway abroad, and the receptivity of the foreign court to U.S. federal-court judicial assistance. The court determined that because the license agreements were relevant to the German litigation and no suggestion that German judges would be not receptive to U.S. discovery was raised, this factor favored IPCom.

The third Intel factor is whether an applicant seeks in bad faith to circumvent the foreign proof-gathering restrictions or other policies of a foreign country or the United States. The court found no bad faith on the part of IPCom and pointed out that U.S. courts have routinely granted applications under Section 1782 for discovery of evidence to be used in German proceedings. Thus, the third Intel factor favored IPCom.

The final Intel factor is whether the subpoena contains unduly intrusive or burdensome requests. The court determined that since IPCom’s discovery request for the license agreements related to wireless communications technology was narrowly tailored, the discovery sought was not unduly intrusive or burdensome. Therefore, the final Intel factor favored IPCom.

After balancing all Intel factors, the court held that the discovery sought by IPCom was warranted pursuant to Section 1782. Therefore, the court allowed IPCom to serve the subpoena attached to its application, without prejudice to any motion to quash that Apple or other appropriate party may wish to file.