United States District Court, N.D. California
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
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