415 F.Supp.3d 907
N.D. Cal.2019Background
- Palantir alleges former investor/advisor Marc Abramowitz misappropriated Palantir trade secrets and filed related patent applications in the U.S. and Germany; Palantir sued in Germany to challenge entitlement to those patents.
- Palantir applied ex parte under 28 U.S.C. § 1782 in the Northern District of California to compel Abramowitz (a resident of the district) to produce documents, give deposition testimony, and preserve evidence for use in the German Proceedings.
- Palantir sought broad categories of materials about conception, development, communications, monetization, and licensing tied to the challenged cyber and healthcare patents; Palantir narrowed the temporal scope during the litigation.
- The court stayed the §1782 application pending a California anti-suit injunction challenge; the California court denied the injunction and Abramowitz was served in Germany, after which the §1782 briefing resumed.
- Applying Intel and its discretionary factors, the magistrate judge granted the §1782 application (with narrowed temporal limits and a protective order limiting use to the German Proceedings) and denied sealing motions without prejudice for failure to meet Local Rule 79-5.
- The court directed the parties to meet-and-confer on reciprocal discovery; it left any further disputes about scope or admissibility largely to the German tribunal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether §1782 statutory requirements are met | Palantir is an "interested person," materials are for use in German patent litigation, Abramowitz is found in this district | Abramowitz contested applicability for healthcare patents (not yet sued) | Statutory requirements met: §1782 applies to cybersecurity claims; healthcare litigation is "within reasonable contemplation" |
| Intel Factor 1 — Is target a foreign proceeding participant such that §1782 aid is unnecessary? | German court cannot compel a foreign resident to give testimony or produce documents; U.S. assistance therefore necessary | Abramowitz argued being a party weighs against §1782 relief | Factor favors Palantir: applicant showed German court cannot obtain the requested discovery from Abramowitz abroad |
| Intel Factor 2 — Nature of foreign tribunal and receptivity to U.S. judicial assistance | German Regional Court (Munich I) exclusive forum under EPC for entitlement; no evidence German court would reject evidence obtained via §1782 | Abramowitz argued related U.S. litigation should preclude §1782 relief | Factor favors Palantir: German court is proper forum for patent entitlement; no evidence of unreceptivity |
| Intel Factor 3 — Attempt to circumvent foreign proof-gathering rules | Discovery is for German patent claims, not to evade German law; protective order limits use to German Proceedings | Abramowitz alleged Palantir filed German action in bad faith to obtain discovery for U.S. suits | Factor favors Palantir: no sign of improper circumvention; protective order mitigates concerns |
| Intel Factor 4 — Unduly intrusive or burdensome requests | Palantir narrowed date ranges and categories; proposed protective order | Abramowitz claimed overbreadth, irrelevance, and burden | Factor favors granting with limits: court set temporal ranges (cyber: 1/1/2013–2/28/2018; healthcare: 1/1/2010–3/30/2018) and enforced protective order |
| Sealing of briefing exhibits | Palantir did not oppose protective treatment of discovery; Palantir sought confidentiality for produced materials | Abramowitz sought to seal whole exhibits/pages citing confidentiality | Sealing motions denied without prejudice for failure to satisfy Local Rule 79-5's narrow-tailoring and secrecy requirements |
Key Cases Cited
- Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 (2004) (establishes §1782 standards and Intel discretionary factors)
- Schmitz v. Bernstein Liebhard & Lifshitz, LLP, 376 F.3d 79 (2d Cir. 2004) (discusses §1782 and deference to foreign tribunals)
- Heraeus Kulzer, GmbH v. Biomet, Inc., 633 F.3d 591 (7th Cir. 2011) (burden shifts to opposing party after applicant shows need for discovery)
- In re Letters Rogatory from Tokyo Dist., Tokyo, Japan, 539 F.2d 1216 (9th Cir. 1976) (procedure for handling Section 1782 requests and objections)
- In re Request For Judicial Assistance from Seoul Dist. Crim. Ct., 555 F.2d 720 (9th Cir. 1977) (Section 1782 used for judicial or quasi-judicial controversies abroad)
- Andover Healthcare, Inc. v. 3M Co., 817 F.3d 621 (8th Cir. 2016) (example where foreign court’s ability to compel discovery weighed against §1782 relief)