United States District Court, C.D. California
IN RE APPLICATION OF PIONEER CORPORATION FOR AN PERMITTING ISSUANCE OF SUBPOENAS TO TAKE DISCOVERY IN A FOREIGN PROCEEDING
MEMORANDUM DECISION AND ORDER DENYING PIONEER
CORPORATION'S EX PARTE APPLICATION PURSUANT TO 28 U.S.C.
§ 1782 FOR AN ORDER TO CONDUCT DISCOVERY FOR USE IN
FOREIGN PROCEEDINGS [DKT. NO. 1]
SUZANNE H. SEGAL UNITED STATES MAGISTRATE JUDGE
March 23, 2018, Plaintiff Pioneer Corporation
(“Pioneer”) filed an Ex Parte Application
Pursuant to 28 U.S.C. § 1782 for an Order to Conduct
Discovery for Use in Foreign Proceedings. (“Appl.,
” Dkt. No. 1). The Application is supported by a
Memorandum of Points and Authorities (“P Memo., ”
Dkt. No. 1-2) and the declarations of Daniel R. Foster
(“Foster Decl., ” Dkt. No. 1-3) and Dr. Andreas
Von Falck. (“Von Falck Decl., ” Dkt. No. 1-7).
April 2, 2018, Respondent Technicolor, Inc.
(“Technicolor” or “Technicolor
Inc.”) filed an Opposition (“Opp., ”
Dkt. No. 10-1), supported by the declarations of Joseph
Opalach (“Opalach Decl., ” Dkt. No. 10-2), and
Ralph Nack (“Nack Decl., ” Dkt. No. 10-3), all of
which contained redactions, and the declaration of Sophie Le
Menaheze (“Le Menaheze Decl., ” Dkt. No. 10-4),
which was unredacted. On April 4, 2018, Technicolor filed a
Corporate Disclosure Statement pursuant to Federal Rule of
Civil Procedure 7.1. (“R Discl., ” Dkt. No. 15).
On April 6, 2018, with the Court's permission, (Dkt. No.
17), Technicolor filed unredacted versions of its Opposition
(Dkt. No. 18) and the Opalach (Dkt. No. 18-1) and Nack (Dkt.
No. 18-2) declarations under seal.
April 12, 2018, Pioneer filed a Reply (“Reply”)
in support of its Application and a second declaration of Dr.
Andreas Von Falck (“Von Falck Decl. II”). (Dkt.
No. 20). On April 19, 2018, Technicolor filed a Request for
Leave to File a Sur-Reply, (Dkt. No. 23), which the Court
granted. (Dkt. No. 23). On April 24, 2018, Technicolor filed
a Sur-Reply (“Sur-Reply) and a second declaration of
Ralph Nack (“Nack Decl. II”). (Dkt. No. 25).
8, 2018, the Court held a hearing. For the reasons stated
below, Pioneer's Ex Parte Application is DENIED.
Pioneer Corporation “is a global company, with
headquarters in Tokyo, Japan.” (P Memo. at 3). Pioneer
produces car entertainment and audio products.
Technicolor Inc. is a Delaware company headquartered in
Hollywood, California. (Le Mehaneze Decl. ¶ 3).
Technicolor sells “a variety of entertainment-related
products and services.” (P Memo. at 3). Technicolor
Inc. “is a wholly-owned subsidiary of Technicolor USA,
” (R Discl. at 2), which is also a Delaware corporation
headquartered in Hollywood. (Le Mehaneze Decl. ¶ 3).
Technicolor USA, in turn, “is a wholly-owned subsidiary
of Technicolor SA, a publicly-held French corporation.”
(R Discl. at 2; see also Le Mehaneze Decl. ¶ 4).
Licensing SAS (“Thomson”) is another subsidiary
of Technicolor SA and is similarly a French corporation.
(Id. ¶¶ 5-6). Thomson does not produce
products, “but instead licenses patents that have been
acquired from third party inventors.” (P Memo. at 3).
Thomson is a sister corporation of Technicolor USA, and is
not a subsidiary of either Technicolor USA or Technicolor
Inc. (Le Mehaneze Decl. ¶¶ 5, 7). Thomson Licensing
SAS has no direct presence in the United States.
(Id. ¶ 5). However, Thomson Licensing LLC is
located in Princeton, New Jersey. (Opalach Decl. ¶ 2).
Thomson also has a German-Austrian subsidiary called Thomson
Multimedia Sales Germany & Austria GmbH. (P Memo. at 3).
2001, Pioneer entered into an agreement with Thomson
Multimedia Sales Germany & Austria GmbH to license
certain MP3 technology patents (the “License
Agreement”). (Id.). Pioneer paid royalties
pursuant to the License Agreement for thirteen years.
(Id.). However, Pioneer eventually concluded that it
had overpaid its license fees by over $15 million due to
“the expiration of the majority of the Licensed patents
in October 2012.” (Id.).
states that it attempted to negotiate with Technicolor SA,
Thomson's parent company, for reimbursement of the
alleged overpayments. (Id. at 4). When those
negotiations failed, “on December 30, 2016, Pioneer
filed an action against Thomson Licensing SAS in the German
court, seeking recovery of some portions of the $15, 161,
393.00” overpayment (the “German Claim” or
“German proceedings”). (Id.). As
described by Pioneer, the German Claim alleges that
Pioneer's “products sold between October 2012 and
December 2014 did not practice any valid unexpired Licensed
patents.” (P Memo. at 3). The German court held a
hearing on Pioneer's claims on February 8, 2018. (Von
Falck Decl. ¶ 3; see also Nack Decl., Exh. 3 (minutes of
hearing)). On March 15, 2018, the German court dismissed
Pioneer's claims as “unfounded.”
(Id., Exh. 1 at 14 (German court's written
decision); see also Von Falck Decl. ¶ 3). Pioneer
represented at the hearing that it has filed an appeal, and
that argument will be heard in the German court of appeals on
June 22, 2018 (the “Appeal”).
Section 1782(a) provides in relevant 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 . . . . The order may prescribe the
practice and procedure, which may be in whole or part the
practice and procedure of the foreign country or the
international tribunal, for taking the testimony or statement
or producing the document or other thing. 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
A person may not be compelled to give his testimony or
statement or to produce a document or other thing in
violation of any legally applicable privilege.
28 U.S.C. § 1782(a); see also IPCom GmbH & Co. KG v.
Apple Inc., 61 F.Supp.3d 919, 921-22 (N.D. Cal. 2014)
(“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.”) (internal quotation marks and citation
the court must, at a minimum, make three findings before
granting a request for discovery pursuant to section 1782(a):
“(1) the application is made by a foreign or
international tribunal or ‘any interested person';
(2) the discovery is ‘for use in a proceeding in a
foreign or international tribunal'; and (3) the person or
entity from whom the discovery is sought is a resident of or
found in the district in which the application is
filed.” In re Dubey, 949 F.Supp.2d 990, 992 (C.D. Cal.
2013) (quoting 28 U.S.C. § 1782(a) and citing In re
Bayer, 146 F.3d 188, 193 (3d Cir. 1998)). The Supreme Court
instructs that the phrase “any interested person”
“plainly reaches beyond the universe of persons
designated ‘litigant.'” Intel Corp. v.
Advanced Micro Devices, Inc., 542 U.S. 241, 256 (2004). While
the discovery must be “for use” in a foreign
proceeding or tribunal, “[s]ection 1782(a) does not
limit the provision of judicial assistance to
‘pending' adjudicative proceedings.”
Id. at 258. “[T]he ‘proceeding' for
which discovery is sought under § 1782(a) must be in
reasonable contemplation, but [it] need not be
‘pending' or ‘imminent.'”
Id. at 247 (emphasis added). Additionally, the use
of the word “tribunal” in the statute is intended
“to ensure that ‘assistance is not confined to
proceedings before conventional courts, ' but extends
also to ‘administrative and quasi-judicial
proceedings.'” Id. at 249 (quoting S. Rep.
No. 1580, 88th Cong., 2d Sess., 7 (1964)).
as the Ninth Circuit has explained, “[t]he absolute
requirements under § 1782 are only part of the story . .
. . The courts have stressed that, even if those requirements
are met, a district court still retains the discretion to
deny a request.” In re Premises Located at 840 140th
Ave. NE, Bellevue, Wash., 634 F.3d 557, 563 (9th Cir. 2011);
see also In re Ex Parte Application of Qualcomm Inc., 162
F.Supp.3d 1029, 1035 (N.D. Cal. 2016) (‘[S]imply
because a court has the authority under Section 1782 to grant
an application does not mean that it is required to do
so.”). “‘Congress gave the federal district
courts broad discretion to determine whether, and to what
extent, to ...