United States District Court, W.D. Washington, Seattle
C. COUGHENOUR UNITED STATES DISTRICT JUDGE.
matter comes before the Court on Petitioner Lufthansa Technik
AG's (“Lufthansa”) application for a
discovery order pursuant to 28 U.S.C. § 1782 (Dkt. No.
1). Having thoroughly considered the parties' briefing
and the relevant record, the Court finds oral argument
unnecessary and hereby GRANTS in part and DENIES in part the
motion for the reasons explained herein.
and Astronics Advances Electrical Systems Corporation
(“AES”) compete in the manufacture of
power-supply systems used in aircraft cabins. (Dkt. No. 35 at
1.) The companies are engaged in patent litigation in Germany
over allegations that AES infringed Lufthansa's European
patent for its “Electrical Power Supply Device”
by marketing and selling its own system in Europe. (Dkt. No.
1 at 2.) In 2011, Lufthansa applied to this court for Section
1782 discovery from AES. In re Lufthansa Technik AG,
C11-1386-JCC, Dkt. No. 1 (W.D. Wash. Jul. 22, 2011). The
Court permitted discovery relating to infringement
allegations, but denied discovery relating to damages.
Id. at (Dkt. No. 21 at 7-8). This denial was based
on two factors: (1) the Mannheim Court had not yet ruled on
Lufthansa's request for AES production of sales-related
data, and (2) the German action's damage phase-bifurcated
from the infringement phase-had not yet begun. Id.
February 2016, the German trial court (“the Mannheim
court”) found AES had infringed Lufthansa's patent
and rejected AES's infringement defenses. (Dkt. No. 1 at
3.) An appellate Court affirmed this decision and denied
certification of further appeal. (Id.) AES filed a
petition to the German Federal Supreme Court seeking leave to
appeal licensing issues; the petition is currently pending.
(Id.) The damages determination has not been stayed
pending resolution of AES' petition. (Id.)
an American corporation, is an AES customer that incorporates
AES 110 V, in-seat power systems into its in-flight
entertainment units. (Dkt. No. 1 at 5.) AES delivers its
power systems to Panasonic's facility in Bothell,
Washington, where Panasonic incorporates them into in-flight
entertainment units, many of which are installed on Airbus
aircraft in Europe. (Id.) AES also delivers power
systems directly to Panasonic in Germany. (Dkt. No. 1 at 23.)
present section 1782 petition seeks discovery from
Panasonic's facility in Bothell for use in the damages
stage of the German litigation and in contemplated
infringement actions in France, Spain, the United Kingdom,
and Japan. (Id. at 3-4.) The Court has granted
AES's status as an intervenor in this action. (Dkt. No.
34.) AES provided briefing in opposition to Lufthansa's
Section 1792 Statutory Requirements
party to a foreign proceeding may seek discovery in the
United States pursuant to 28 U.S.C. section 1782. This
statute provides that a federal district court “may
order” a person residing or “found” in the
district to give testimony or produce documents “for
use in a proceeding in a foreign or international tribunal .
. . upon the application of any interested person.” 28
U.S.C. § 1782(a).The “proceeding” for which
section 1782 discovery is sought “must be within
reasonable contemplation, but need not be ‘pending'
or ‘imminent.'” Intel Corp. v. Advanced
Micro Devices, Inc., 542 U.S. 241, 243 (2004).
the basic requirements of the statute are met. First,
Panasonic is based in this district, and the parties appear
to agree that a substantial number of the requested documents
are located in this district. Second, the petition relates to
Lufthansa's Mannheim action and contemplated proceedings
in other foreign tribunals. Panasonic argues that
Lufthansa's “contemplated proceedings” are
speculative. (Dkt. No. 35 at 4.) But the Court finds them
“within reasonable contemplation.” After
obtaining a favorable judgment in Germany, it is reasonable
that Lufthansa would explore actions based on the same or
similar patents in other countries. Finally, Lufthansa is an
“interested person” for the purposes of the
statute. See Id. at 256 (“No doubt litigants
are included among, and may be the most common example of,
the ‘interested person[s]' who may invoke §
district court is not required to grant a discovery
application under section 1782 simply because it has the
authority to do so. Intel Corp., 542 U.S. at 264.
Once the statutory requirements are met, district courts have
discretion to determine whether, and to what extent, to order
a request for assistance under section 1782. Four Pillars
Enterprises Co., Ltd. v. Avery Dennison Corp., 308 F.3d
1075, 1078 (9th Cir. 2002). If the district court permits
discovery under the statute, it “may prescribe the
practice and procedure, which may be in whole or part the
practice and procedure of the foreign country, ” for
taking testimony or producing documents. 28 U.S.C §
Intel, the Supreme Court provided four factors for
district courts to consider in ruling on § 1782
requests: (1) whether the person from whom discovery is
sought is a participant in the foreign proceeding; (2)
“the nature of the foreign tribunal, the character of
the proceedings underway abroad, and the receptivity of the
foreign government or the court or agency abroad to U.S.
federal-court judicial assistance”; (3) whether the
request “conceals an attempt to circumvent foreign
proof-gathering restrictions” or policies of a foreign
country; and (4) whether the requests are unduly burdensome
or intrusive. 542 U.S. at 264-65.
Participation in the ...