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determining a respondent's concerns over confidentiality "do not pertain to the intrusiveness or burdensomeness"
Summary of this case from In re Application of Gilead Pharmasset LLCOpinion
No. MISC 12-80013 JW
05-02-2012
In re Ex Parte Application of Apple Inc., Apple Retail Germany GMBH, and Apple Sales International
ORDER DENYING NON-PARTY NOKIA INC.'S MOTION TO QUASH
Presently before the Court is Nokia, Inc.'s ("Nokia") Motion to Quash a subpoena issued to Apple pursuant to 28 U.S.C. § 1782. The Court finds it appropriate to take the Motion under submission without oral argument. See Civ. L.R. 7-1(b). Based on the papers submitted to date, the Court DENIES Nokia's Motion. A. Background
(Non-Party Nokia Inc.s' [sic] Motion to Quash Apple Inc.'s Subpoena, hereafter, "Motion," Docket Item No. 4.)
Apple Inc., Apple Retail Germany GmbH, and Apple Sales International (collectively, "Apple").
Motorola Mobility Inc. and Motorola, Inc. (collectively, "Motorola") have filed lawsuits against Apple in the United States and in Germany. These lawsuits allege that Apple's products infringe patents that Motorola has declared essential to practice various telecommunications standards. (Id.)
(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 at 2, hereafter, "Application," Docket Item No. 1.)
On January 27, 2012, the Court granted Apple's Ex Parte Application for a Subpoena pursuant to 28 U.S.C. § 1782. On February 16, 2012, Nokia filed its Motion to Quash. (See Motion at 1.) On February 21, 2012, Non-Party Motorola filed a Memorandum in Support of Nokia's Motion to Quash. B. Standards
(Order Granting 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, Docket Item No. 3.)
(Non-Party Motorola Mobility's Memorandum in Support of Nokia's Motion to Quash Apple Inc.'s Subpoena, Docket Item No. 5.)
Under 28 U.S.C. § 1782, a district court may order a person residing or found within its district to produce documents or testimony for use in a foreign legal proceeding, unless the disclosure would violate a legal privilege. 28 U.S.C. § 1782(a); Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 246-47 (2004). The statute may be invoked where: (1) the discovery sought is from a person residing in 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 applicant is a foreign or international tribunal or an "interested person." See In re Republic of Equador, No. C-10-80225 MISC CRB (EMC), 2010 WL 3702427, at *2 (N.D. Cal. Sept. 15, 2010).
A district court is not required to grant the application, but instead retains wide discretion to determine what discovery, if any, should be permitted. See Intel, 542 U.S. at 264; see also Four Pillars Enters. Co. v. Avery Dennison Corp., 308 F.3d 1075, 1078 (9th Cir. 2002). In exercising that discretion, the court should consider the following non-exhaustive factors: (1) whether the "person from whom discovery is sought is a participant in the foreign proceeding"; (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 judicial assistance"; (3) whether the discovery request is an "attempt to circumvent proof-gathering restrictions or other policies of a foreign country or the United States"; and (4) whether the discovery requested is "unduly intrusive or burdensome." Intel, 542 U.S. at 264-65.
"The burden of persuasion in a motion to quash a subpoena issued in the course of civil litigation is borne by the movant." Green v. Baca, 226 F.R.D. 624, 653-54 (C.D. Cal. 2005) (citation omitted). C. Discussion
Nokia contends that the discretionary factors identified by the Supreme Court in Intel to guide courts in analyzing applications under § 1782 all weigh in favor of granting Nokia's Motion to Quash. (See Motion at 6-9.) Apple responds that the Intel factors weigh against granting Nokia's Motion. The Court considers each Intel factor in turn.
(Applicants' Opposition to Nokia, Inc.'s Motion to Quash at 4-7, hereafter, "Opp'n," Docket Item No. 12.)
1. Participation in the Foreign Proceeding
The Court first considers whether it is significant that Nokia is a nonparticipant in the foreign proceeding.
"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." Intel, 542 U.S. at 264. This is the case because a "foreign tribunal has jurisdiction over those appearing before it, and can itself order them to produce evidence," whereas "nonparticipants in the foreign proceeding may be outside the foreign tribunal's jurisdictional reach," which means that "their evidence, available in the United States, may be unobtainable absent § 1782(a) aid." Id.
Upon review, the Court finds that Nokia has not met its burden of persuasion that its nonparticipant status weighs in favor of granting its Motion. Indeed, the Supreme Court has indicated that the fact that a party is a nonparticipant in a foreign proceeding weighs in favor of granting a § 1782 subpoena. See Intel, 542 U.S. at 264.
Accordingly, the Court does not find that this discretionary factor weighs in favor of quashing the subpoena.
2. Receptivity of Foreign Governments and Circumvention of Foreign Proof-Gathering Restrictions
Nokia moves to quash Apple's subpoena on the ground that German laws normally forbid discovery, which means that Apple is using § 1782 to vitiate German discovery limitations. (Motion at 6-9.) Apple responds that "while Germany does not provide for discovery and thus does not facilitate collection of license evidence, Nokia provides no evidence that German courts restrict such evidence." (Opp'n at 6 (emphasis in original).)
"[N]othing in the text of § 1782 limits a district court's production-order authority to materials that could be discovered in the foreign jurisdiction if the materials were located there." Intel, 542 U.S. at 260. "A foreign nation may limit discovery within its domain for reasons peculiar to its own legal practices, culture, or traditions-reasons that do not necessarily signal objection to aid from United States federal courts." Id. at 261. "When the foreign tribunal would readily accept relevant information discovered in the United States, application of a foreign-discoverability rule would be senseless." Id. at 262.
Upon review, the Court finds that Nokia has not met its burden of demonstrating that the German courts would be unreceptive to U.S. judicial assistance or that Apple's request is an attempt to circumvent German proof-gathering restrictions. Here, the evidence at issue consists of certain licenses and communications that are sought by Apple in order to show that Motorola violated an obligation to provide Apple a license on fair, reasonable and nondiscriminatory ("FRAND") terms. (See Opp'n at 1-2.) Specifically, Apple seeks to show that Motorola violated its FRAND obligation by entering into license agreements with Nokia, an Apple competitor, on terms more favorable than those it offered to Apple. (See id.) Nokia presents no evidence to suggest that the German courts would disallow such evidence, once Apple has obtained it. Rather, Nokia contends only that German rules of procedure do not provide a mechanism for a party to obtain such evidence. (Motion at 6-9.) However, in recognizing that "[a] foreign nation may limit discovery within its domain for reasons peculiar to its own legal practices, culture, or traditions" the Supreme Court anticipated situations such as these, and nonetheless found that the objectives of § 1782 compelled discovery. See Intel, 542 U.S. at 261-62.
Accordingly, the Court does not find that these discretionary factors weigh in favor of quashing the subpoena.
3. Unduly Intrusive or Burdensome
In the event that the Court orders any production, Nokia requests that production be limited to certain license agreements, on the ground that requiring Nokia to search for, or produce, any related correspondence would be unduly intrusive or burdensome. Apple responds that it is reasonable to seek both the licenses and "a limited volume of correspondence between the parties concerning [the] licenses." (Opp'n at 10.) In particular, Apple agrees to cabin its request as follows:
(Non-Party Nokia Inc.s' [sic] Reply in Support of its Motion to Quash Apple Inc.'s Subpoena at 9-10, hereafter, "Reply," Docket Item No. 14.)
(1) Nokia would agree to search the email and electronic files of only the five people most likely to have correspondence concerning the Motorola/Nokia licenses, searching only for correspondence to or from email addresses with a Motorola domain name; and(Opp'n at 11.)
(2) Nokia would also search any centralized physical or electronic repositories whose principal purposes include the retention of this sort of correspondence (e.g., master licensing files).
Upon review, the Court finds that Nokia has not met its burden of persuasion that Apple's limited request for licenses and correspondence is unduly intrusive or burdensome. Although Nokia's argument in support of this contention is somewhat inchoate, the gravamen of the argument appears to be that: (1) Apple obtained a subpoena in a separate action in the Southern District of California to obtain evidence relating to agreements between Motorola and Qualcomm; and (2) as a result of that separate action, Apple obtained certain licenses between Motorola and Qualcomm which were introduced into evidence in the German court. However, the Court finds that the fact that Apple obtained certain licenses from Qualcomm in another action does not support Nokia's contention that Apple's request, in this case, for both licenses and correspondence is "overly burdensome." Further, the Court observes that Nokia itself concedes that "Qualcomm did not oppose Apple's ex parte application for a § 1782 subpoena," which means that the "Southern District of California was not asked to consider the issues Nokia raises in its Motion to Quash." (Reply at 9 n.2.) Thus, the Court finds that this argument is inadequate to meet Nokia's burden of showing that Apple's request for certain correspondence is unduly burdensome.
(Reply at 2, 10; see also Reply, Ex. 1, Declaration of Christine Saunders Haskett in Support of Applicants' Opposition to Nokia, Inc.'s Motion to Quash ¶ 4, Docket Item No. 12-1.)
Moreover, Nokia has not claimed that any privilege exists which would prevent the discovery of these materials under § 1782. (See Motion at 6-12.) Instead, Nokia's remaining contentions as to this factor center on confidentiality concerns, namely, the risk that the licenses and correspondence at issue may be publicly disclosed after they have been made available to Apple. (See Reply at 4-5, 7-9.) However, the Court finds that such concerns do not pertain to the intrusiveness or burdensomeness of the subpoena itself. Therefore, the Court does not find good cause to declare Apple's subpoena unduly intrusive or burdensome.
Any concerns about confidentiality can be addressed by the appropriate protective order. --------
Accordingly, the Court does not find that this discretionary factor weighs in favor of quashing the subpoena.
In sum, the Court finds that the Intel factors do not weigh in favor of quashing the subpoena. D. Conclusion
The Court DENIES Nokia's Motion to Quash. Dated: May 2, 2012
/s/_________
JAMES WARE
United States District Chief Judge
THIS IS TO CERTIFY THAT COPIES OF THIS ORDER HAVE BEEN DELIVERED TO:
Christine Saunders Haskett chaskett@cov.com
Brian C. Cannon briancannon@quinnemanuel.com
Donald Frederick Zimmer, Jr. fzimmer@kslaw.com
Laura S Huffman lhuffman@kslaw.com
Robert F. Perry rperry@kslaw.com
Cheryl A. Sabnis csabnis@kslaw.com Dated: May 2, 2012
Richard W. Wieking, Clerk
By: /s/ JW Chambers
Susan Imbriani
Courtroom Deputy