AMAZON.COM, INC., Petitioner, v. NOKIA OF AMERICA CORPORATION, Respondent.
Civil Action No. 24-493-GBW
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
January 16, 2025
Pending before the Court is Nokia of America Corporation‘s (“Nokia” or “Respondent“) Motion to Vacate and Quash. D.I. 16. Nokia is requesting an order vacating this Court‘s order granting Amazon‘s Ex Parte Application for an Order Pursuant to
I. BACKGROUND
A. The Domestic Proceedings.
On October 27 and October 31, 2023, Nokia Tech. Oy and Nokia Corp. filed two Delaware patent infringement actions. See Nokia Corp. v. Amazon.com, Inc., No. 23-cv-1232-GBW at D.I. 1; Nokia Tech. Oy v. Amazon.com, Inc., No. 23-cv-1236-GBW at D.I. 1 (collectively, “Delaware Actions“). Amazon filed motions to dismiss for failure to state a claim as to certain patents in both cases. See No. 23-cv-1232-GBW at D.I. 18; No. 23-cv-1236-GBW at D.I. 17. The Court has not ruled on Amazon‘s motions to dismiss, and discovery has not begun in the Delaware Actions. D.I. 17 at 5.
B. The Foreign Proceedings.
In October and November 2023, Nokia Tech. Oy filed patent infringement cases in the Munich and Mannheim Regional Courts in Germany and the Unified Patent Court (“UPC“). Id. Those cases assert patent infringement based on Amazon‘s practicing of the H.265/HEVC video coding standard (which is the successor standard to H.264/AVC). Id. In the German Proceedings, Amazon requested the court to order that Nokia Tech. Oy produce (i) the approximately 100 H.264/AVC and H.265/HEVC licenses that Nokia Tech. Oy had identified to Amazon in the course of negotiations, and (ii) all other licenses pertaining to Nokia‘s video coding portfolio. Id. Amazon‘s licensing requests in Germany would likely amount to about ~115 license agreements, including ~100 AVC/HEVC licenses and ~15 multiple-technology licenses which are further directed to technologies beyond AVC/HEVC. Id. at 5-6. Amazon did not request production of licensing communications in Germany. Id. at 6.
In the UPC proceeding, Amazon likewise requested the court to order Nokia Tech. Oy to produce (i) the ~100 AVC/HEVC licenses, and (ii) all other licenses pertaining inter alia to Nokia‘s video coding portfolio. Id. In the UPC proceeding, Nokia Tech. Oy was again willing to produce the ~100 AVC/HEVC licenses. To this end, on June 3, 2024, Nokiа Tech. Oy voluntarily requested a court order from the UPC for disclosure of those approximately ~100 AVC/HEVC licenses. Id. at 6-7. In response, the UPC issued an order on July 12, 2024. Id. at 7. The UPC order states that Amazon‘s requests for disclosure of the ~100 AVC/HEVC license agreements are unlikely to be successful at present. Id. Also, in that order, the UPC asked Amazon to state whether Amazon wanted to continue adhering to its current disclosure requests. Id. The UPC order further stated that, in the court‘s experience, the undifferentiated disclosure of more than 100 license agreements is generally not expedient and not always relevant for a decision on the merits. Id. Therefore, the UPC encouraged the parties to reach a consensus on the license agreements to be submitted in direct negotiations. Id.
C. Nokia‘s and Amazon‘s Section 1782 Ex Parte Application.
On November 9, 2023, Nokia Tech. Oy and Alcatel Lucent SAS initiated a patent lawsuit in the Eastern District of Virginia. D.I. 23 at 2. Nokia submitted to that court an Ex Parte Application for Section 1782 discovery from Amazon for use in litigation in Germany. See In re Nokia Techs. Oy, No. 23-cv-1395-GBW (D. Del.) at D.I. 1. Nokia‘s Section 1782 application was transferred to this Court on December 7, 2023, pursuant to a stipulation. D.I. 17 at 7. Then, on January 2, 2024, Nokia submitted a joint letter to this Court requesting the scheduling of a discovery teleconference regarding its Section 1782 application. Id. On January 24, 2024, the Court entered an order requiring Amazon to submit a letter response as to why Nokia‘s Section 1782 application should not be granted and requiring Nokia to provide a reply to Amazon‘s letter. Id. On January 30, 2024, pursuant to this Court‘s order, Amazon responded to Nokia‘s Section 1782 Application. Id. On February 2, 2024, Nokia filed a reply. Id. On April 18, 2024, the Court denied Nokia‘s Section 1782 Application. Id.
On April 18, 2024, the same day the Court denied Nokia‘s Section 1782 Ex Parte Application, Amazon filed its own Ex Parte Application that is the subject of this Motion. Id. at 8; see D.I. 1. Amazon‘s Ex Parte Application purports to seek discovery from Nokia Tech. Oy, Alcatel Lucent SAS, Nokia Corp., and Nokia of America Corporation (the “Nokia Respondents“). Amazon requested the Court issue a summons, which Amazon served on Nokia‘s registered agent, but no other Nokia Respondents. D.I. 17 at 8. On May 16, 2024, Nokia filed a motion to quash based on an improper summons and service of process, and, in that motion, Nokia stated: “After the Court resolves this motion to quash, Nokia respectfully requests the opportunity to be heard on the substance of Amazon‘s Ex Parte Application via an appropriate briefing schedule.” D.I. 9 at 3, 9. On May 28, 2024, Amazon filed a notice of non-opposition to Nokia‘s motion to quash, stating that Amazon “served Nokia of America Corporation ... with its Section 1782 application
On July 2, 2024, thе parties wrote a joint letter to this Court, requesting the scheduling of a discovery teleconference regarding Amazon‘s Section 1782 Application. D.I. 11. On July 3, 2024, the Court issued an order requiring the parties to: “meet and confer promptly and attempt to reach agreement on reasonable reciprocal discovery requests for use in the foreign proceedings in Germany and the Unified Patent Court.” D.I. 12. On July 8, 2024, the parties met and conferred. D.I. 17 at 8. During that meet and confer, Nokia asserted that Amazon was already receiving ~100 AVC/HEVC licenses in the German litigation, and that this should be sufficient given that the Munich Regional Court had denied the additional licenses Amazon requested. Id. Nokia offered to expand that production somewhat if part of a reciprocal exchange, as ordered by this Court, but Amazon refused. Id. at 8-9. On July 10, 2024, the parties wrote a joint letter to the Court, informing it that they had nоt reached a reciprocal discovery agreement. D.I. 13. On July 11, 2024, the Court granted Amazon‘s Ex Parte Application. D.I. 14. On July 12, 2024, Amazon served Nokia with a subpoena. D.I. 15.
II. JURISDICTION
The Court has jurisdiction under
A. 28 U.S.C. § 1782 .
The purpose of
If the statutory requirements are met, the district court has discretion to grant or deny a Section 1782 application. See In re King Mun., No. 22-mc-243-MN-JLH, 2023 U.S. Dist. LEXIS 192250, *10-11 (D. Del. Oct. 26, 2023). In exercising its discretion, a district court considers the four Intel factors set by the Supreme Court. In re King Mun., 2023 U.S. Dist. LEXIS 192250, at *11; Intel, 542 U.S. at 264-65. The Federal Rules of Civil Procedure are expressly incorporated into
B. Motion to Quash and Vacate.
Parties subpoenaed through a Section 1782 application have a due process right to file motions to quash. In re Mota, No. 19-00369-MN, 2020 U.S. Dist. LEXIS 3261, *2 (D. Del. Jan. 8, 2020) (“recipients can raise[] objections and [otherwise] exercise[] their due process rights by motions to quash“) (internal quotations omitted); see Lae Techs. Hong Kong Ltd. v. Demuren, No.
To decide a motion to vacate under Section 1782, a district court should first consider the statutory requirements. In re Sauren Fonds-Select Sicav, No. 16-cv-00133-SDW-LDW, 2016 U.S. Dist. LEXIS 148281, at *6-8 (D. N.J. Oct. 26, 2016). If the court reaffirms that the petitioner met the statutory factors, it then cоnsiders whether it appropriately exercised its discretion in view of the discretionary Intel factors. See id. A Section 1782 order should be vacated if a court determines that either the statutory factors were not met or that it did not appropriately exercise its discretion in view of the four discretionary Intel factors. See id. at *6-8; see also, e.g., Pinchuk v. Chemstar Prods. LLC, 13-mc-306-RGA, 2014 U.S. Dist. LEXIS 86781 (D. Del. June 26, 2014) (granting a motion to vacate a Section 1782 order and quash the Section 1782 subpoena); In re Ex Parte Eni S.P.A., 20-mc-334-MN, 2021 U.S. Dist. LEXIS 52304, at *12 (D. Del. Mar. 19, 2021).
IV. DISCUSSION
In support of its motion, Nokia contends that (1) the Intel factors weigh in favor of denying Amazon‘s Ex Parte Application (2) the Subpoena is improper under Federal Rule of Civil Procedure 45 (which is incorporated into the arguments for Intel Factor Four), and (3) it was an error to grant Amazon‘s requested Cross-Use Ruling, because an ex parte Section 1782 application is the proper vehicle for such a request. D.I. 17 at 11. With regards to the “cross-ruling” argument,
A. Nokia Establishes That, Under the Intel Factors, the Court Should Grant this Motion.
“Section 1782 of Title 28 authorizes a district court, upon the application of any interested person, to order a person residing or found in this district to give testimony or produce documents for use in a proceeding in a foreign or international tribunal.” In re King Mun., 2023 U.S. Dist. LEXIS 192250, at *10 (citing
“Presented with a § 1782 application, a court first decides whether certain statutory requirements are met, and if so, the cоurt may then consider other discretionary factors to determine whether to grant the application.” In re Biomet Orthopaedics Switzerland GmbH, 742 F. App‘x 690, 694 (3d Cir. 2018). Nokia does not dispute that Amazon‘s application satisfies all three statutory requirements. D.I. 23 at 6. Nokia likewise does not dispute the second Intel factor. Id. This analysis continues onto the remaining Intel factors.
1. The First Intel Factor Favors Granting Nokia‘s Motion Because the Evidence is Within the Foreign Courts’ Reach.
The first Intel factor considers “whether the evidence sought is within the foreign tribunal‘s jurisdictional reach, аnd thus accessible absent section 1782 aid.” In re King Mun., 2023 U.S. Dist. LEXIS 192250, at *11. Nokia contends that the licenses that Amazon seeks “are demonstrably within the foreign courts’ reach and accessible absent Section 1782.” D.I. 17 at 11. Nokia further adds that the Munich Regional Court has already ruled on which license agreements are to be produced in that proceeding. Id. Nokia similarly claims that the licenses are in the reach of the UPC but that the “UPC court has issued an order оutlining its view on the lack of relevance of the license agreements.” Id.
Amazon counters that the licenses are not within the reach of foreign courts because the Munich Regional Court merely granted a voluntary request to produce the licenses. D.I. 23 at 7. Amazon also claims that it has “no recourse to obtain the remaining licenses in Germany” because all it can demand “are documents that [it] is able to identify specificаlly—individually, not by category.” Id. at 7-8 (citation omitted). Amazon offers a similar account in the UPC where that court “has indicated that it is unlikely to order such a production.” Id. Nokia takes these arguments as a concession that “there are mechanisms for Amazon to request documents from Nokia through the rules of the foreign proceedings.” D.I. 26 at 7.
The Court agrees with Nokia. Both parties indicate that there are ways for these foreign courts to access the licenses in question. Moreover, “when the person from whom discovery is sought is a participant in the foreign proceeding ... the need for § 1782(a) aid generally is not as apparent as it ordinarily is when evidence is sought from a nonparticipant in the matter arising abroad.” Intel, 542 U.S. at 244. Amazon appears to make the argument that it will not get the licenses from these foreign courts, which is a different argument than the foreign courts cannot
2. The Third Intel Factor Favors Granting Nokia‘s Motion Because Amazon Did Not Request the Licensing Communications in the Foreign Proceedings.
The third Intel factor considers “whether the request conceals an attempt to circumvent foreign proof gathering restrictions or other policies of a foreign country or the United States.” In re King Mun., 2023 U.S. Dist. LEXIS 192250, at *11. Amazon states that it has already requested a court order in Germany and the UPC “for the documents sought through this Section 1782 application.” D.I. 17 at 12. Nokia claims that statement is false and “a perception that [Amazon] has ‘side-stepped less than favorable discovery rules by resorting immediately to § 1782[, which] can be a factor in a court‘s analysis.‘” Id. (quoting In re Nokia Techs. Oy, No. 23-01395-GBW, 2024 U.S. Dist. LEXIS 70832, at *10 (D. Del. Apr. 18, 2024)). Nokia highlights the foregoing case because, in that case, this Court held that Nokia‘s “failure to attempt discovery in Germany indicates an attempt to circumvent the Germany discovery rules.” In re Nokia Techs. Oy, 2024 U.S. Dist. LEXIS 70832 at *11.
Amazon does not dispute that it did not ask for all the same information in the German courts and the UPC. Rather, Amazon asserts that it does not matter. D.I. 23 at 8. Amazon claims that a party seeking discovery under Section 1782 need not request the exаct same set of documents in a foreign court before filing an application. Id. at 8-9. Amazon attempts to bolster its argument by quoting language from In re Nokia Techs. Oy: “It is not a prerequisite for a § 1782 applicant to exhaust all potential discovery procedures in the foreign proceedings in order to obtain a federal court‘s assistance under the statute.” 2024 U.S. Dist. LEXIS 70832 at *10; D.I. 23 at 9.
3. The Fourth Intel Factor Favors Amazon Because Nokia Does Not Provide Evidence of Production Being a Burden.
The fourth Intel factor looks at whether the discovery requested is “unduly intrusive or burdensome.” Intel, 542 U.S. at 265. The Third Circuit has held that “Section 1782 expressly incorporates the Federal Rules of Civil Procedure and the fourth factor aligns with Rules 26 and 45.” In re Global Energy Horizons Corp., 647 Fed. Appx. at 85-86. Pursuant to
Nokia lists numerous reаsons it claims satisfy this factor. Among them, Nokia would have to send notices to “the third-party licenses ... explaining that these licenses are being redundantly produced again;” “~115 third party licenses notifying them that 27,000+ pages of licensing negotiations need to be produced;” and “the third-party licensees who are licensed under the ~15
Nokia further contends that production would be disproportionate in this case because “the Munich Regional Court has already considered and decided which licenses are to be produced, and the UPC court has indicated it has doubts as to the relevance of more the ~100 AVC/HEVC licenses.” Id. Moreover, Nokia highlights that the “requested licensing materials include the trade secrets of Nokia Tech. Oy and Nokia Corp. and their third-party licenses.” Id.
Nokia reinforces its argument by claiming that Amazon‘s need for this information is minimal. First, Nokia asserts that Amazon has no need for the Video Codec Licenses because Nokia is voluntarily offering them in the foreign proceedings. D.I. 26 at 5. Second, Nokia claims that Amazon does not show how it needs the multi-technology licenses on top of the Video Coded Licenses. Id. at 6. Third, Nokia contends thаt the licensing communications are of limited relevance and prejudicial because of the significant volume—nearly 27,000 pages. Id. at 7.
Lastly, Nokia quotes the Federal Rules of Civil Procedure to contend that “the court for the district where compliance is required must quash or modify a subpoena that: (i) fails to allow a reasonable time to comply.” Id. at 15-16 (citing
Amazon disagrees for two reasons: 1) reproducing the same documents in other actions would not be burdensome, and 2) the remaining licenses Nokia has not produced in Germany are just 15 out of 115. D.I. 23 at 10-11. Amazon cites to cases where the movant did not prove that the discovery requests at issue were burdensome. Id.; see In re Ex Parte Apple Inc., No. MISC 12-80013 JW, 2012 WL 1570043, at *3 (N.D. Cal. May 2, 2012) (“Nokia has not met its burdеn of persuasion that [a counterparty‘s] limited request for licenses and correspondence is unduly intrusive or burdensome.“); see also IPCom GMBH & Co. KG v. Apple Inc., 61 F. Supp. 3d 919, 921 (N.D. Cal. 2014) (finding it appropriate to use a § 1782 application to “seek[] leave to obtain copies of [a counterparty]‘s license agreements for use in the German [patent litigation] proceeding“).
Amazon also claims that it has agreed to all of Nokia‘s proposed revisions to a proposed protective order, ameliorating Nokia‘s confidentiality concerns. D.I. 23 at 12. Finally, Amazon clarifies that the deadline for Nokia to respond to the subpoena was set by the Court, countering Nokia‘s assertion that the time to respond was “grossly insufficient.” Id. at 5 n.6.
Amazon‘s arguments are persuasive. While Nokia makes various statements about the relevance and burden of various documents, it does not cite to any caselaw to support its assertions. On the other hand, Amazon has provided a handful of cases that show such requests are par for
Having considered all of the relevant Intel factors, the Court finds that, on balance, the Intel factors weigh in support of granting Nokia‘s motion. Therefore, the Court exercises its discretion to grant Nokia‘s motion.
V. CONCLUSION
For the foregoing reasons, the Court GRANTS Nokia‘s Motion to Vacate and Quash, D.I. 16.
* * *
WHEREFORE, at Wilmington this 16th day of January 2025, IT IS HEREBY ORDERED that Nokia‘s Motion to Vacate and Quash (D.I. 16) is GRANTED.
GREGORY B. WILLIAMS
UNITED STATES DISTRICT JUDGE