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In re Ex parte Application of Bayerische Motoren Werke AG

United States District Court, N.D. California, San Jose Division

November 13, 2019

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

         Applicants 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 Ltd.[1] Dkt. Nos. 1, 8. BMW says it requires this discovery for use in connection with patent litigation proceedings in Germany.

         The 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.

         I. BACKGROUND

         According 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.

         Broadcom 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.

         BMW seeks permission to serve identical document and deposition subpoenas on each of the four entities named in the application, regarding the following categories of information:

1) Broadcom's and Avago's[2] previous agreements involving the three asserted patents and certain standard essential patents;
2) Standard-essentiality information related to the asserted patents
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 patents;
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. Christoph Grote.

         Dkt. 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.

         II. LEGAL STANDARD

         Pursuant 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 ...


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