Apple Inc. et al, No. 2:2012mc00010 - Document 1 (W.D. Wash. 2012)

Court Description: 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) (Entered: 01/25/2012)

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Apple Inc. et al Doc. 1 1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON 9 10 In re Ex Parte Application of 11 APPLE INC.; APPLE RETAIL GERMANY GMBH; and APPLE SALES INTERNATIONAL, 12 No. Applicants, 13 14 15 16 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. 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 Note on Motion Calendar: January 24, 2012 17 18 Apple 1 applies to the Court ex parte 2 for an order pursuant to 28 U.S.C. § 1782 19 granting Apple leave to obtain targeted discovery from HTC Corporation and HTC 20 America, Inc. for use in foreign litigations. This application is supported by the 21 22 23 24 25 26 1 Except as otherwise indicated, as used herein, “Apple” means Apple Inc.; Apple Retail Germany GmbH; and Apple Sales International. 2 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). APPLE’S EX PARTE APPLICATION FOR AN 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 Dockets.Justia.com 1 memorandum of points and authorities below and the Declaration of Christine Haskett, filed 2 concurrently herewith. 3 I. INTRODUCTION 4 5 6 7 8 9 Motorola Mobility Inc. and Motorola, Inc. (collectively “Motorola”) have filed lawsuits against Apple in the United States and Germany. These lawsuits allege Apple’s products infringe patents that Motorola has declared essential to practice various telecommunications standards. Under 28 U.S.C. § 1782, interested parties, such as Apple, may obtain discovery for use in foreign litigations from companies located within the United States. 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 In support of its defenses to the actions filed by Motorola against Apple in Germany, Apple seeks narrowly-tailored discovery from another wireless device manufacturer, HTC Corporation and HTC America, Inc. (collectively “HTC”). Specifically, Apple seeks documents relating to whether HTC had or has a license or is or was otherwise authorized to practice some or all of the patents that have been asserted by Motorola against Apple. Apple’s application satisfies Section 1782’s three statutory requirements. First, it is in “the district in which [the] person resides,” 28 U.S.C. § 1782(a), because HTC’s North American headquarters are in Bellevue, Washington. Second, Apple seeks the discovery “for use in a proceeding in a foreign ... tribunal,” id., including the Higher District Court of Karlsruhe, Germany and the District Courts of Mannheim and Dusseldorf, Germany. Third, Apple and its foreign subsidiaries qualify as “interested persons” in those foreign proceedings. See id.; Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 256 (2004) (litigants are common example of “interested persons”). Moreover, the factors identified by the Supreme Court to guide courts’ discretion in analyzing applications under Section 1782 all favor granting Apple’s request. HTC is not a participant in the foreign proceedings, and Section 1782 provides an effective mechanism APPLE’S EX PARTE APPLICATION FOR AN 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 1 for obtaining this targeted discovery across various cases. In addition, the foreign 2 jurisdictions at issue are receptive to the type of discovery sought by Apple, the discovery 3 provides key information for the foreign proceedings, and the request is not made to 4 circumvent any limitation on discovery imposed by the foreign courts. Finally, the 5 discovery request is narrowly tailored and is not unduly intrusive or burdensome. 6 Accordingly, Apple respectfully requests that the Court enter the proposed order 7 submitted herewith, allowing Apple to serve the subpoena attached as Exhibit A to that 8 proposed order. 9 II. FACTUAL BACKGROUND 10 Motorola has filed lawsuits against Apple in the United States, before the 11 International Trade Commission, and in Germany. The functionalities accused by Motorola 12 in many of these actions relate to the wireless communications functionality of the iPhone 13 and iPad. (Haskett Decl. ¶ 10.) HTC markets wireless communication devices. (Haskett 14 Decl. ¶ 10.) Motorola’s German lawsuits are pending in Germany’s Higher District Court of 15 Karlsruhe, Mannheim District Court, and Dusseldorf District Court. (Id. ¶¶ 4-7). 16 17 18 19 20 21 22 23 24 25 26 III. ARGUMENT A. Legal Standard Section 1782 is “the product of congressional efforts, over the span of nearly 150 years, to provide federal-court assistance in gathering evidence for use in foreign tribunals.” Intel Corp., 542 U.S. at 247. Over time, Congress has “substantially broadened the scope of assistance federal courts could provide for foreign proceedings.” Id. at 247-49. Section 1782 provides in part: 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. APPLE’S EX PARTE APPLICATION FOR AN ORDER GRANTING LEAVE TO OBTAIN DISCOVERY FOR USE IN FOREIGN PROCEEDINGS Page 3 818 STEW ART STREET, SUITE 1400 SEATTLE W ASHINGTON 98101 T 206.516.3800 F 206.516.3888 1 28 U.S.C. § 1782(a). The statute thus sets forth three requirements, authorizing the district 2 court “to grant a Section 1782 application where (1) the person from whom discovery is 3 sought resides or is found in the district of the district court to which the application is 4 made, (2) the discovery is for use in a proceeding before a foreign tribunal, and (3) the 5 application is made by a foreign or international tribunal or ‘any interested person.’” In re 6 Ecuador, No. C-10-80225 MISC CRB (EMC), 2010 U.S. Dist. LEXIS 102158, at *4 (N.D. 7 Cal. Sept. 15, 2010) (quoting In re Chevron, 709 F. Supp. 2d 283, 290 (S.D.N.Y. 2010)). 8 9 In Intel, the Supreme Court set forth several non-exclusive factors to aid district courts in determining how to exercise their discretion in granting Section 1782 applications. 10 These factors include: (1) whether “the person from whom discovery is sought is a 11 participant in the foreign proceeding”; (2) “the nature of the foreign tribunal, the character 12 of the proceedings underway abroad, and the receptivity of the foreign government or the 13 court or agency abroad to U.S. federal-court judicial assistance”; (3) whether the request is 14 “an attempt to circumvent foreign proof-gathering restrictions or other policies of a foreign 15 country or the United States”; and (4) whether the discovery is “unduly intrusive or 16 burdensome.” Intel, 542 U.S. at 264-65. 17 B. 18 Apple’s request for discovery meets each of the three statutory requirements. First, Apple’s Application Meets the Section 1782 Requirements. 19 the person from whom discovery is sought, HTC, “resides or is found” in this District. 28 20 U.S.C. § 1782(a). HTC has its North American headquarters at 13920 SE Eastgate Way, 21 Suite 200, Bellevue, Washington, which is located within this District. (Haskett Decl. Ex. 1 22 (excerpt of HTC’s webpage: http://www.htc.com/us/about/contact-us.)) 23 Second, the discovery is sought for use in a “proceeding before a foreign tribunal.” 24 28 U.S.C. § 1782(a). Specifically, Apple seeks the information for use in establishing at 25 least the defense of license, unfair competition, and/or antitrust defenses in patent 26 APPLE’S EX PARTE APPLICATION FOR AN ORDER GRANTING LEAVE TO OBTAIN DISCOVERY FOR USE IN FOREIGN PROCEEDINGS Page 4 818 STEW ART STREET, SUITE 1400 SEATTLE W ASHINGTON 98101 T 206.516.3800 F 206.516.3888 1 infringement actions brought by Motorola in three foreign tribunals: the Mannheim District 2 Court, the Dusseldorf District Court, and the Higher District Court of Karlsruhe. 3 As previous cases have recognized, these and related foreign adjudicative bodies 4 qualify as “tribunals” for purposes of Section 1782. See, e.g., Cryolife, Inc. v. Tenaxis 5 Medical, Inc., No. C08-05124 HRL, 2009 U.S. Dist. LEXIS 3416, at *1, 5 (N.D. Cal. Jan. 6 13, 2009) (permitting discovery for use in patent infringement suit pending in “Dusseldorf 7 Regional Court in Germany”). 8 9 Third, as named parties in the foreign actions, Apple and its subsidiaries qualify as “interested part[ies].” 28 U.S.C. § 1782(a); Intel, 542 U.S. at 256 (“No doubt litigants are 10 included among ... the ‘interested person[s]’ who may invoke § 1782”); see Heraeus 11 Kulzer, GmbH v. Biomet, Inc., 633 F.3d 591, 594 (7th Cir. 2011). 12 Accordingly, Apple has satisfied the statutory requirements for an application under 13 28 U.S.C. § 1782. 14 C. 15 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 16 weigh heavily in favor of the Court exercising its discretion to grant Apple’s request for 17 discovery. 18 1. HTC Is Not a Party to the Foreign Proceedings. 19 The Intel Court first asked whether “the person from whom discovery is sought is a 20 participant in the foreign proceeding.” Intel, 542 U.S. at 264 (noting that “nonparticipants in 21 the foreign proceeding may be outside the foreign tribunal’s jurisdictional reach; hence, 22 their evidence, available in the United States, may be unobtainable absent § 1782 aid”). 23 Here, HTC is not a party to the foreign litigations, and the material sought—licenses and 24 communications in HTC’s possession—may not be within the foreign tribunal’s 25 jurisdictional reach. See Heraeus Kulzer, 633 F.3d at 597 (authorizing Section 1782 26 discovery because German litigant could not “obtain even remotely comparable discovery APPLE’S EX PARTE APPLICATION FOR AN ORDER GRANTING LEAVE TO OBTAIN DISCOVERY FOR USE IN FOREIGN PROCEEDINGS Page 5 818 STEW ART STREET, SUITE 1400 SEATTLE W ASHINGTON 98101 T 206.516.3800 F 206.516.3888 1 by utilizing German procedures”); Cryolife, 2009 U.S. Dist. LEXIS 3416 at *13 (holding 2 that “petitioner need only show that the information” sought under Section 1782 “will be 3 useful”). 3 4 2. 5 Apple Seeks Highly Relevant Information That Will Assist the Foreign Courts. The Intel Court next counseled courts to “take into account the nature of the foreign 6 tribunal, the character of the proceedings underway abroad, and the receptivity of the 7 foreign government or the court or agency abroad to U.S. federal-court judicial assistance.” 8 Intel, 542 U.S. at 264. Because the nature and character of the foreign proceedings involve 9 Motorola’s allegations of patent infringement, discovery regarding potentially relevant 10 license agreements would be critical. See London v. Does, 279 F. App’x 513, 515 (9th Cir. 11 2008) (affirming order granting 1782 discovery when proof sought was “critical” in light of 12 the “nature and character of the foreign case”); In re Bayer AG, 146 F.3d 188, 195-96 (3d 13 Cir. 1998) (documents relevant to the foreign proceedings are “presumptively discoverable” 14 under Section 1782). In particular, licenses that Motorola has granted to other providers of 15 wireless devices are relevant to Apple’s potential liability in the foreign proceedings. 16 Moreover, prior cases have recognized the receptiveness of German courts to the 17 use of discovery obtained through Section 1782. E.g., Heraeus Kulzer, 633 F.3d at 597; 18 Cryolife, 2009 U.S. Dist. LEXIS 3416, at *8-9. 19 3. 20 21 22 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 23 24 25 26 3 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 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. Wisc. 2004) (granting Section 1782 request for discovery from entity involved in multiple foreign suits against applicant). APPLE’S EX PARTE APPLICATION FOR AN ORDER GRANTING LEAVE TO OBTAIN DISCOVERY FOR USE IN FOREIGN PROCEEDINGS Page 6 818 STEW ART STREET, SUITE 1400 SEATTLE W ASHINGTON 98101 T 206.516.3800 F 206.516.3888 1 applicant was seeking in bad faith “to circumvent foreign proof-gathering restrictions or 2 other policies of a foreign country or the United States.” Id. at 265. 4 Here, Apple is unaware 3 of any restrictions on proof-gathering procedures that would prohibit obtaining the 4 discovery it seeks through Section 1782. To the contrary, as noted above, courts have 5 routinely granted applications under Section 1782 for evidence to be used in the foreign 6 courts at issue here. E.g., Heraeus Kulzer, 633 F.3d at 597. 7 4. Apple’s Discovery Is Narrowly Tailored to Avoid Undue Burden. 8 The Intel Court finally noted that “unduly intrusive or burdensome requests may be 9 rejected or trimmed.” Intel, 542 U.S. at 265. Here, Apple’s proposed discovery requests are 10 narrowly tailored and minimally burdensome. Apple is requesting document discovery on 11 only two topics, targeted to a small, discrete set of documents: intellectual property licenses 12 between HTC and Motorola and communications regarding the licenses. The universe of 13 responsive documents is thus likely to be small and easily searchable, avoiding any undue 14 burden on HTC. 15 5. 16 Granting Apple’s Section 1782 Request Would Promote Efficient Discovery. Courts have also considered other evidence bearing on whether the discovery sought 17 accomplishes the goals of the statute, which includes “providing efficient means of 18 assistance to participants in international litigation in our federal courts.” Marubeni Am. 19 Corp. v. LBA Y.K, 335 F. App’x 95, 96 (2d Cir. 2009) (internal quotation omitted). Here, 20 given the multiple German cases between Apple and Motorola, Section 1782 provides an 21 effective means for obtaining the discovery sought by Apple. Rather than seeking the same 22 23 24 25 26 4 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”); 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”). APPLE’S EX PARTE APPLICATION FOR AN ORDER GRANTING LEAVE TO OBTAIN DISCOVERY FOR USE IN FOREIGN PROCEEDINGS Page 7 818 STEW ART STREET, SUITE 1400 SEATTLE W ASHINGTON 98101 T 206.516.3800 F 206.516.3888 1 discovery in each of the foreign litigations, Apple can obtain the discovery with one 2 application under Section 1782. Procter & Gamble, 334 F. Supp. 2d at 1115 (observing that 3 it would be inefficient to require party to patent infringement actions in Germany, Japan, 4 the Netherlands, France and the United Kingdom “to seek the same discovery” in each of 5 them). 6 * 7 * * Accordingly, the Intel factors strongly favor the Court exercising its discretion to 8 grant Apple’s application. Indeed, courts in this Circuit have routinely permitted discovery 9 under Section 1782, when, as here, the applicant has satisfied the statutory requirements 10 and the above factors weighed in favor of granting relief. E.g., In re Am. Petroleum 11 Institute, 11-80008-JF (PSG), slip op. (N.D. Cal. Apr. 7, 2011) (Haskett Decl. Ex. 2); In re 12 Ecuador, 2010 WL 3702427, at *2; London, 279 F. App’x at 513; Chevron Corp. v. E-Tech 13 Int’l, 2010 WL 3584520 (S.D. Cal. Sept. 10, 2010); Govan Brown & Assocs. v. Doe, No. 14 10-2704-PVT, 2010 U.S. Dist. LEXIS 88673, at *7-8 (N.D. Cal. Aug. 6, 2010); Mirana v. 15 Battery Tai-Shing Corp., No. 08-80142, slip op. (N.D. Cal. Sept. 19, 2008) (Haskett Decl. 16 Ex. 3). 17 18 // 19 20 // 21 22 // 23 24 // 25 26 APPLE’S EX PARTE APPLICATION FOR AN ORDER GRANTING LEAVE TO OBTAIN DISCOVERY FOR USE IN FOREIGN PROCEEDINGS Page 8 818 STEW ART STREET, SUITE 1400 SEATTLE W ASHINGTON 98101 T 206.516.3800 F 206.516.3888 1 IV. CONCLUSION 2 Apple seeks narrowly tailored discovery for use in several currently pending foreign 3 proceedings. Because Apple’s request satisfies the three statutory requirements of 28 U.S.C. 4 § 1782 and because the Intel factors all weigh in favor of granting the application, Apple 5 respectfully requests that this Court permit Apple to issue a subpoena to HTC. A proposed 6 order and the proposed subpoena are submitted herewith. 7 DATED: January 24, 2012. 8 YARMUTH WILSDON CALFO PLLC 9 10 By: _s/ Jeremy E. Roller______________________ Jeremy E. Roller, WSBA No. 32021 818 Stewart Street, Suite 1400 Seattle, WA 98101 Telephone: 206.516.3800 Facsimile: 206.516.3888 Email: jroller@yarmuth.com 11 12 13 14 Attorneys for Applicants Apple Inc., Apple Retail Germany GmbH, and Apple Sales International 15 16 17 18 19 20 21 22 23 24 25 26 APPLE’S EX PARTE APPLICATION FOR AN ORDER GRANTING LEAVE TO OBTAIN DISCOVERY FOR USE IN FOREIGN PROCEEDINGS Page 9 625.03 ma233503 1/24/12 818 STEW ART STREET, SUITE 1400 SEATTLE W ASHINGTON 98101 T 206.516.3800 F 206.516.3888

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