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In re Application of Google Inc.

United States District Court, N.D. California

December 15, 2014

In re Application of Google Inc., et al.


DONNA M. RYU, Magistrate Judge.

Before the court is an ex parte application by Google Inc., Google Commerce Ltd., Google Germany GmbH, and Google Ireland Ltd. (collectively, "Google") for an order to obtain written discovery from Asus International ("Asus") for use in an international arbitration. Having considered Google's papers and accompanying submissions, the court grants the application.


Unwired Planet LLC ("UP LLC") has accumulated a portfolio of worldwide patents and has sued companies around the world for infringement. Application [Docket No. 1] at 1; Hermann Decl. [Docket No. 2] at ¶ 2. In Germany and the United Kingdom, [1] Unwired Planet International Limited ("UP Ltd.") has sued Google for patent infringement relating to features used in mobile phones. Id. UP Ltd. accuses Google of infringing six patents owned by UP Ltd. Hermann Decl. Exs. 2, 3. Asus is the original equipment manufacturer ("OEM") that manufactures the accused Google mobile devices of the Nexus series. Hermann Decl. at ¶ 3.

Google believes it has a "pass through" or exhaustion doctrine defense[2] against certain of UP Ltd.'s allegations of infringement. Five of the six patents-in-suit were acquired by UP LLC from Ericsson, a company that made cell phones. Application at 1-2; Hermann Decl. at ¶ 3. These five patents-in-suit have been declared to be essential for cellular standards UMTS and/or GSM and LTE. According to Google, Ericsson had a series of patent cross-licenses with other cell phone manufacturers and distributers, and the five patents-in-suit were likely licensed by Ericsson to Asus. Id. In addition, Asus has been granted the rights to other patents once owned or controlled by Ericsson, through licenses or agreements with other entities, including Qualcomm and/or Intel. Hermann Decl. at ¶ 7. Google's application seeks these license agreements, which Google contends are directly relevant to its defenses.


Google's application is brought pursuant to 28 U.S.C. § 1782, which states as follows:

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, including criminal investigations conducted before formal accusation. The order may be made... upon the application of any interested person and may direct that the testimony or statement be given, or the document or other thing be produced, before a person appointed by the court.... To the extent that the order does not prescribe otherwise, the testimony or statement shall be taken, and the document or other thing produced, in accordance with the Federal Rules of Civil Procedure.

28 U.S.C. § 1782(a). The purpose of Section 1782 is "to provide federal-court assistance in the gathering of evidence for use in a foreign tribunal." Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 247 (2004); see also Schmitz v. Bernstein Liebhard & Lifshitz, LLP, 376 F.3d 79, 84 (2d Cir. 2004) (noting that Section 1782 has the "twin aims" of "providing efficient means of assistance to participants in international litigation in our federal courts and encouraging foreign countries by example to provide similar means of assistance to our courts") (quotations omitted).

A district court is authorized to grant a Section 1782 application 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." 28 U.S.C. § 1782(a); see also In re Republic of Equador, No. C-10-80255-CRB (EMC), 2010 WL 3702427 at *2 (N.D. Cal. Sept. 15, 2010).

"However, simply because a court has the authority under § 1782 to grant an application does not mean that it is required to do so." In re Republic of Equador, 2010 WL 3702427 at *2 (citing Intel, 542 U.S. at 264). The Supreme Court has identified several discretionary factors that a court should take into consideration in ruling on a Section 1782 request:

(1) whether the material sought is within the foreign tribunal's jurisdictional reach and thus accessible absent Section 1782 aid; (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 jurisdictional assistance; (3) whether the Section 1782 request conceals an attempt to circumvent foreign proof-gathering restrictions or other policies of a foreign country or the United States; and (4) whether the subpoena contains unduly intrusive or burdensome requests.

Id. (citing Intel, 542 U.S. at 264-65).

It is both common and proper for the process of presenting a request to a court to obtain an order authorizing discovery pursuant to Section 1782 to be ...

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