United States District Court, N.D. California, San Jose Division
IPCOM GMBH & CO. KG, Plaintiff,
APPLE INC., Defendant
For IPCom, GMBH & Co. KG, Plaintiffs: Brian C. Cannon, LEAD ATTORNEY, Cheryl Ann Galvin, Quinn Emmanuel Urquhart & Sullivan LLP, Redwood Shores, CA.
For Apple Inc., Respondent: Joseph J. Mueller, Wilmer Cutler Pickering Hale and Dorr LLP, Boston, MA; Mark Daniel Selwyn, Matthew James Hawkinson, Wilmer Cutler Pickering Hale and Dorr LLP, Palo Alto, CA.
ORDER DENYING APPLE'S MOTION TO QUASH SUBPOENA IN A CIVIL CASE (Re: Docket No. 7)
PAUL S. GREWAL, United States Magistrate Judge.
Before the court is Apple Inc.'s motion to quash IPCom GMBH & Co. KG's subpoena for Apple's license agreements, which was served pursuant to 28 U.S.C. § 1782. The matter was submitted without oral argument pursuant to Civ. L.R. 7-1(b). Having reviewed the papers, the court DENIES Apple's motion to quash.
On March 2, 2012, IPCom filed an infringement action against Apple in Germany, asserting European patent EP 1 841 268. On May 7, 2013, IPCom amended its complaint to include German patent DE 199 10 239. IPCom alleges that the '268 and '239 patents are essential to the 3GPP UMTS wireless standard and sought damages in excess of € 1.5 billion. The parties agree that it is common in German patent litigation for plaintiffs to seek judgment only on infringement and to defer judgment on damages to a second proceeding. They also agree that IPCom's decision to seek judgment on both infringement and damages in the initial proceeding is not barred by German procedural rules.
The parties engaged in extensive briefing on the patent infringement and damages issues before the Mannheim Regional
Court. As part of that briefing, Apple represented that it entered into license agreements with other manufacturers covering a number of patents essential to UMTS and GSM, GRPS and EDGE wireless standards. On February 11, 2014, the court conducted an oral hearing before a three-judge panel, which is the German equivalent of a trial. The court declined to hear evidence on damages, stating that it would first adjudicate the infringement claims. On February 28, 2014, the court dismissed IPCom's infringement claims, finding no infringement of the '268 and '239 patents. Because it found no infringement, the district court did not reach the damages issue. On March 6, 2014, IPCom filed a timely appeal with the Federal Court of Justice of Germany in Karlsruhe. " The entire case including the question of the amount of damages owed is now before the Court of Appeals." 
On February 7, 2014, in preparation for the German trial, IPCom filed an ex parte application in this court pursuant to Section 1782 seeking leave to obtain copies of Apple's license agreements for use in the German proceeding. IPCom argued that " such license agreements are directly relevant to the damages calculation in that action."  On April 10, 2014, IPCom complied with this court's status request and filed a status update explaining that the suit was pending before the German appeals court. IPCom also advised that unlike American appellate courts, German appellate courts may receive facts on appeal. Finding that the discovery sought remained warranted pursuant to Section 1782, the court granted IPCom leave to obtain copies of Apple's license agreements, without prejudice to any motion to quash. On May 5, 2013, Apple so moved.
II. LEGAL STANDARDS
" Under 28 U.S.C. § 1782, a district court may order a ...