United States District Court, N.D. California, San Jose Division
IN RE EX PARTE APPLICATION OF BAYERISCHE MOTOREN WERKE AG AND BMW BANK GMBH, Applicants.
ORDER RE EX PARTE APPLICATION FOR DISCOVERY PURSUANT
TO 28 U.S.C. § 1782 RE: DKT. NO. 1
VIRGINIA K. DEMARCHI UNITED STATES MAGISTRATE JUDGE
Bayerische Motoren Werke AG ("BMW AG") and BMW Bank
GmbH ("BMW Bank") (collectively "BMW")
have filed an ex parte application for an order
pursuant to 28 U.S.C. § 1782 authorizing service of
subpoenas for documents and deposition testimony on five
entities: (1) Broadcom Corporation, (2) Broadcom Inc., (3)
Broadcom Technologies Inc., and (4) Avago Technologies
Dkt. Nos. 1, 8. BMW says it requires this discovery for use
in connection with patent litigation proceedings in Germany.
Court grants the application without prejudice to any
subpoena recipient filing a motion to quash or to modify a
subpoena or a motion for a protective order.
to the application, BMW AG is a well-known innovator and
manufacturer of premium automobiles and motorcycles,
headquartered in Germany. Dkt. No. 1 at 4. BMW Bank is a
wholly owned subsidiary of BMW AG. Id. Broadcom
Corporation designs, develops, manufactures, and supplies
semiconductor products. Dkt. No. 2 ¶ 7. It is a party to
some of the German proceedings. Dkt. No. 1 at 12. Broadcom
Inc. is Broadcom Corporation's parent company.
Id. Broadcom Technologies Inc. is the parent company
of Avago Technologies International Sales Pte. Ltd., a
Singapore entity that is not a target of BMW's proposed
subpoenas but is a party to some of the German proceedings.
Id. Avago Technologies Ltd. is "a Singapore
entity with a principle place of business ... in San Jose,
California." Id. at 10. Its specific connection
to the other entities named in the application is unclear.
BMW generally asserts that the Avago and Broadcom entities
are part of the "same corporate family."
Id. at 4.
Corporation and Avago Technologies International Sales Pte.
Ltd. have filed three actions between them against BMW AG and
BMW Bank in Regional Courts in Mannheim and Hamburg, Germany,
asserting infringement of three patents. Dkt. No. 1 at 4-5;
Dkt. No. 2 ¶¶ 5, 12-14. In response, BMW AG has
filed a nullity action in the Federal Patent Court in
Germany, seeking to invalidate one of the three patents, and
intends to file additional nullity actions to invalidate the
other two. Dkt. No. 1 at 5; Dkt. No. 2 ¶ 15.
seeks permission to serve identical document and deposition
subpoenas on each of the four entities named in the
application, regarding the following categories of
1) Broadcom's and Avago's previous agreements
involving the three asserted patents and certain standard
2) Standard-essentiality information related to the asserted
3) Broadcom's and Avago's procurement of the asserted
patents and their standing to assert them;
4) Broadcom's and Avago's conception, reduction to
practice, and use of technology embodying the asserted
5) Technical documentation and analysis regarding the
allegedly infringing BMW products; and
6) Broadcom CEO Hock Tan's preparation information for
his meetings with BMW's Senior Vice President Dr.
No. 1 at 6-7. BMW contends that the information it seeks is
relevant to the infringement proceedings and/or the nullity
proceedings. Its application is supported by the declarations
of Tilman Muller-Stoy, a German attorney, and Lionel Lavenue,
counsel of record for BMW in this action. Dkt. Nos. 2, 3.
to 28 U.S.C. § 1782, a district court may order the
production of 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
is sought from a person residing in the district of the court
to which the application is made; (2) the discovery is for
use in a proceeding ...