IPCom GMBH & Co. KG v. Apple Inc., 61 F. Supp. 3d 919

IPCom sued Apple in Germany alleging patents ('268 and '239) essential to 3GPP/UMTS and sought >€1.5 billion; IPCom amended and pursued both infringement and damages at the German district court.
The German district court found no infringement and dismissed; IPCom timely appealed to the Federal Court of Justice (appellate proceedings remain pending and German appellate courts may receive new facts).
IPCom obtained ex parte leave under 28 U.S.C. § 1782 in the Northern District of California to subpoena Apple for its wireless-standards license agreements as relevant to damages in the German matter.
Apple moved to quash the § 1782 subpoena, arguing the request was untimely, not currently needed, and could be used for improper purposes; Apple also sought a protective order limiting counsel access.
The magistrate judge denied Apple’s motion to quash, ordered production by a set date, and required the parties to submit a proposed protective order limiting access to outside counsel without financial or licensing roles.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Timeliness of § 1782 discovery	Discovery is for use in ongoing German appeal; proceeding is "within reasonable contemplation."	Discovery is untimely because the district trial concluded and discovery is sought "after trial."	Denied quash: appeal is pending; § 1782 allows discovery for proceedings that are not strictly pending or imminent.
Current need for documents	License agreements are directly relevant to damages and IPCom intends to submit them to the appellate court.	Appeal likely will not reach damages; production is unnecessary now and could be deferred.	Denied quash: possibility of appellate consideration of damages suffices; Apple offered no reason to delay or burden evidence production.
Risk of improper use	IPCom represents it will use documents only for the foreign proceeding.	IPCom may use licenses for negotiation or other improper purposes.	Denied quash: court credits IPCom’s representation and Apple offered no evidence of improper purpose.
Protective order scope	IPCom agreed to protective limitations on counsel access.	Requested protection limiting outside counsel involved in licensing or with financial interest.	Granted in substance: parties must submit proposed protective order limiting access to outside counsel with financial or licensing roles.

Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 (2004) (sets discretionary factors for § 1782 assistance)
Heraeus Kulzer GmbH v. Biomet, Inc., 633 F.3d 591 (7th Cir. 2011) (burden shifts to opposing party to show discovery would disserve § 1782 objectives after applicant shows need)
Green v. Baca, 226 F.R.D. 624 (C.D. Cal. 2005) (procedural guidance on notice and participation in discovery taken under § 1782)