In Re: In the Matter of the Application of Lufthansa Technik AG, for an Order Pursuant to 28 U.S.C. 1782
8:22-mc-00034
| C.D. Cal. | Aug 2, 2024Background
- Lufthansa sought discovery under 28 U.S.C. § 1782 from Thales (a California-based non‑party) to support ongoing German patent litigation against Astronics (AES) concerning 110V in‑seat aircraft power systems.
- Lufthansa previously litigated a related § 1782 subpoena in 2019; Thales produced extensive spreadsheets and testimony then, and the Ninth Circuit affirmed limits on compelled production.
- Lufthansa’s December 2022 § 1782 application was denied without prejudice for being overbroad; Lufthansa revised definitions and renewed the request in April and October 2023.
- The October 2023 subpoena sought broad categories of sales, purchase, manufacturing, incorporation, and communications documents and a Rule 30(b)(6) deposition, defining “Thales Components” to include two cable categories (In‑Seat Cables and ISPS‑to‑IFE Cables) and also referenced many part numbers.
- Thales submitted sworn declarations showing substantial burden to locate older data (pre‑August 2015) and to identify parts beyond ~200 specific cable part numbers; parties disputed relevance under German proceedings and the effect of a July 2023 German appellate ruling.
- The Magistrate Judge concluded § 1782’s statutory factors were met but that the subpoena, as drafted, was unduly burdensome and required narrowing and partial cost‑shifting; recommended granting in part and denying in part with specific modifications.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether § 1782 statutory prerequisites are satisfied | Lufthansa: Thales is "found" in district and Lufthansa is an interested party seeking documents for German litigation | Thales did not dispute residence/focus but questioned whether the material was actually "for use" in German proceedings | Court: Statutory requirements satisfied; "for use" factor met (no conclusive proof of inadmissibility) |
| Whether Intel discretionary considerations bar the discovery | Lufthansa: Requests are targeted to Thales components incorporated into AES assemblies and therefore relevant | Thales/AES: Requests are overbroad, repetitious of 2019 production, and may seek irrelevant material under German law | Court: Intel factors weigh in favor of some discovery but permit trimming for burden and relevance; discovery allowed in part |
| Scope and definitions of subpoena (Thales Components; In‑Seat vs ISPS‑to‑IFE; "raw wires") | Lufthansa: Wants information on Thales parts incorporated into infringing assemblies (including certain cables); used revised definitions and annexes | Thales: Definitions still vague/overbroad; identifying "raw wires" and ISPS‑to‑IFE parts would be unduly burdensome and yield little new material | Court: Narrowed definition—limit to the specific In‑Seat Cables identified by Thales; struck references to raw wires and ISPS‑to‑IFE Cables; Thales Components limited accordingly |
| Time period of production | Lufthansa: sought data back to 2003 to capture damages period | Thales: Data pre‑Aug 1, 2015 is not readily accessible due to legacy M2K system migration and largely duplicative because AES supplied earlier cables | Court: Limited requests to records dated after August 1, 2015 (Thales need not search older M2K records) |
| Rule 30(b)(6) deposition notice | Lufthansa: Deposition needed to define universe before production | Thales: Deposition would be burdensome and unnecessary given prior discovery and Thales’ supplemental identification of parts | Court: Struck the 30(b)(6) deposition notice as unduly burdensome; limited to document production |
| Cost‑shifting for non‑party compliance | Lufthansa: Did not propose cost‑sharing; emphasizes importance of damages data | Thales: Compliance would impose significant expense (IT queries, engineer review) | Court: Mandatory protection for non‑party; ordered Lufthansa to bear 50% of Thales’s reasonable costs; referred amount determination to Magistrate Judge |
Key Cases Cited
- Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 (2004) (sets § 1782 statutory requirements and discretionary Intel factors)
- In re Premises Located at 840 140th Ave. NE, Bellevue, 634 F.3d 557 (9th Cir. 2011) (discusses Intel factors in Ninth Circuit)
- In re Schlich, 893 F.3d 40 (1st Cir. 2018) (holds plainly irrelevant § 1782 requests fail the "for use" requirement)
- Mees v. Buiter, 793 F.3d 291 (2d Cir. 2015) ("for use" requirement analysis)
- Euromepa S.A. v. R. Esmerian, Inc., 51 F.3d 1095 (2d Cir. 1995) (cautions against mini‑trials over foreign discoverability and limits inquiry into foreign law)
- Legal Voice v. Stormans Inc., 738 F.3d 1178 (9th Cir. 2013) (Rule 45 requires cost‑shifting when compliance imposes significant expense on a non‑party)
- In re Alpine Partners (BVI) L.P., 635 F. Supp. 3d 900 (N.D. Cal. 2022) (authorizes allocating subpoena compliance expenses under § 1782; looks to Rule 45 precedents)