Palantir Technologies, Inc. v. Abramowitz

          ORDER GRANTING 28 U.S.C. § 1782 APPLICATION RE: DKT. NO. 1

          JACQUELINE SCOTT COLEY, United States Magistrate Judge

         Palantir Technologies Inc. (“Palantir”) alleges that Marc L. Abramowitz took advantage of his position as an investor and confidant to learn Palantir's trade secrets and file patent applications based on those trade secrets in the United States and Germany. Palantir has filed suit in Germany challenging Mr. Abramowitz cybersecurity patent applications and also plans to either amend the pending suit to include healthcare patents or file a separate challenge regarding the healthcare patent applications (collectively the “German Proceedings”). Palantir's ex parte application for a discovery order pursuant to 28 U.S.C. § 1782 is now pending before the Court. (Dkt. No. 1.) Having considered the parties' submissions, including their supplemental submissions, and having had the benefit of oral argument on December 7, 2018 and October 10, 2019, the Court GRANTS the application as set forth below.

         BACKGROUND

         A. The Parties and Related Proceedings

         Mr. Abramowitz was one of Palantir's early investors and advisors. Throughout the course of their relationship, Palantir provided Mr. Abramowitz information regarding its trade secrets subject to multiple confidentiality agreements. However, the parties' relationship soured and eventually turned litigious when Palantir accused Mr. Abramowitz of misappropriating trade secrets. The parties have sued each other in California, Delaware, and federal courts for numerous claims regarding domestic intellectual property rights, contract rights, and corporate rights. This 1782 application arises out of proceedings brought by Palantir in Germany regarding cybersecurity and healthcare patent applications filed by Mr. Abramowitz.

         B. The Application

         Palantir requests that the court order Mr. Abramowitz to produce documents and testimony for use in the German Proceedings and order that Mr. Abramowitz preserve evidence. In its initial application, Palantir sought the following categories of documents in Mr. Abramowitz's possession:

(1) supporting Abramowitz's claim that he is an inventor of the technology described in the Challenged Patents;

(2) concerning the conception of each challenged patent;

(3) concerning the content, research, development, investment, or reduction to practice for each Challenged Patent;

(4) concerning the ideas, concepts, systems, methods, or technologies described in the Challenged Patents;

(5) reflecting any communication between Abramowitz, on the one hand, and Palantir, or any director, officer, or employee of Palantir, on the other, concerning the technology described in the Challenged Patents;

(6) concerning any effort by Abramowitz to monetize the technology described in the Challenged Patents;

(7) concerning Abramowitz's knowledge of the technology described in the Challenged Patents;

(8) concerning communications between Abramowitz, on the one hand, and any third party, on the other, concerning the Challenged Patents or the technology underlying the Challenged Patents; and

(9) concerning any license granted by Palantir to Abramowitz or by Abramowitz to Palantir with respect to the technology covered by the Challenged Patents.

(Dkt. No. 2 at 12-13.)^[1] Palantir asserts that these requests constitute “evidence concerning Abramowitz's knowledge and understanding of the technology underlying the Challenged Patents, his communications about that technology, and documents on which he intends to rely to support his entitlement to the Challenged Patents.” (Id. at 16:3-6.) Although Palantir initially sought documents from January 1, 2007 to the present, Palantir has revised this request to seek documents related to the Cyber Patents from January 1, 2013 to February 28, 2018 and for the Healthcare Patents from January 1, 2010 through March 30, 2018. (Dkt. No. 63 at 20.) Palantir also seeks Mr. Abramowitz's deposition testimony.

         C. Procedural History

         Palantir filed this Section 1782 Application with the proposed subpoenas August 13, 2018. (Dkt. Nos. 1-4.) The Court set a briefing schedule and at the completion of briefing Mr. Abramowitz submitted a motion for leave to file a sur-reply which Palantir opposed.^[2] (Dkt. Nos. 14, 32, 34.) The Court set a hearing for November 9, 2018, which was reset for December 6, 2018 at the parties' request. (Dkt. Nos. 35, 37.)

         In the interim, Mr. Abramowitz filed a motion in the California proceeding requesting an anti-suit injunction regarding the German Proceedings. See Palantir Techs., Inc. v. Abramowitz et al., No. 16-cv-299476 (Cal. Super. Ct. Nov 5, 2018) (Notice of Motion & Motion for an Anti-Suit Injunction).

         On December 6, 2018, the Court heard argument on the underlying Section 1782 application and stayed the application pending a decision from the California state court on Mr. Abramowitz's request to stay the German Proceedings, and pending service of the complaint in the German action on Mr. Abramowitz . (Dkt. No. 39.)

         On May 21, 2019, the California court denied Mr. Abramowitz's request to enjoin the German Proceedings. (Dkt. No. 43-1.) Shortly thereafter, Mr. Abramowitz was served with the complaint in the German Proceedings in accordance with the Hague Convention. (Dkt. No. 43.) Palantir thereafter requested a status conference to discuss disposition of the Section 1782 application. (Dkt. No. 43.) At the status conference, the Court granted the parties leave to submit supplemental briefs, which have since been filed. (Dkt. Nos. 57, 61, 63.)

         LEGAL ...