Slip Opinion
S.D. Cal.2012Background
- This is an ex parte §1782 application by LG Electronics Deutschland and LG Electronics Japan seeking discovery from Qualcomm for use in German and Japanese patent actions by Mitsubishi Electric against LG.
- LG seeks a subpoena for all documents granting or purporting to grant rights, protections, or licenses in Mitsubishi IP Rights that authorize Qualcomm to practice Mitsubishi IPR.
- The district court applies the Intel factors to decide whether to grant the §1782 request and notes potential concerns about confidentiality and burden.
- Qualcomm is located in the SDCA; the foreign actions against LG are pending; LG is an ‘interested party’ as a defendant in the German and Japanese actions.
- The court concludes the Intel factors do not clearly dictate a decision but grants the subpoena, subject to serving a copy of the order on Qualcomm and Mitsubishi; it preserves rights to challenge the subpoena later.
- The order is dated May 21, 2012, by Judge Mitchell D. Dembin.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether §1782 authority is satisfied. | LG argues requirements are met. | N/A. | Yes, statutory requirements satisfied. |
| How the Intel discretionary factors weigh on granting the subpoena. | Factors favor allowing discovery. | Factors weigh against granting. | Intel factors do not clearly dictate denial; grant issued. |
| Whether the subpoena raises confidentiality or burden concerns. | Subpoena narrowed to minimize intrusion. | Concerns about confidentiality and protective orders. | Court grants but notes confidentiality concerns and requires protective considerations. |
Key Cases Cited
- Lazaridis v. International Centre for Missing and Exploited Children, 760 F.Supp.2d 109 (D.D.C. 2011) (statutory factors for §1782 discovery; district court discretion)
- Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 (U.S. 2004) (relevant four-factor test for §1782 requests)
- In re Premises Located at 840 140th Avenue., N.E., Bellevue, Wash., 634 F.3d 557 (9th Cir. 2011) (court discretion in §1782 proceedings)