United States District Court, W.D. Washington, Seattle
In re Ex Parte Application of BROADCOM CORPORATION, a Delaware corporation, and AVAGO TECHNOLOGIES INTERNATIONAL SALES PTE. LIMITED, a business entity formed under the laws of Singapore, Applicants, for an Pursuant to 28 U.S.C. § 1782 Granting Leave to Obtain Discovery for Use in Foreign Proceedings.
ORDER GRANTING APPLICANTS' EX PARTE APPLICATION
FOR 28 U.S.C. § 1782 ORDER
HONORABLE RICHARD A. JONES, UNITED STATES DISTRICT JUDGE
matter comes before the Court on Applicants' Ex Parte
Application for an Order Pursuant to 28 U.S.C. § 1782
Granting Leave to Obtain Discovery for Use in Foreign
Proceedings (Dkt. # 1). After review of the parties'
submissions, relevant portions of the record, and applicable
case law, the Court GRANTS the Application.
Broadcom Corporation (“Broadcom”) and Avago
Technologies International Sales Pte. Limited
(“Avago”) (collectively “Applicants”)
are currently engaged in patent litigation in Germany with
Nintendo of Europe GmbH and its supplier, Nvidia
(collectively “Defendants”) over allegations that
the Nintendo Switch infringes several of Applicants'
European patents. Dkt. # 1 at 5.
2018, Applicants sued Defendants in the Mannheim Regional
Court in Germany alleging that the Nintendo Switch (through
its use of the NVIDIA Tegra X1 chip) infringed four of
Applicants' patents: (1) European Patent 1, 385, 339
(“EP ‘339”), (2) European Patent 1, 177,
531 (“EP ‘531”), European Patent 1, 365,
385 (“EP ‘385”), and (4) European Patent 1,
260, 910 (“EP ‘910”). Dkt. # 1 at 5. In
response, Defendants brought four “nullity”
actions in the German Federal Patent Court. Id. at
6-7. For the last year, the parties have litigated the
various actions in the German Courts. Trial hearings have
been held in three of the four infringement actions, with
final judgment entered against Applicants in one action. Dkt.
# 24 at 11-13. The EP ‘531 infringement action was
stayed on March 29, 2019, pending a final decision in the EP
‘531 nullity action. Dkt. # 1 at 8. Hearings have not
occurred in the nullity actions. Dkt. # 24 at 13.
now ask the court for leave to obtain discovery from three
U.S. based Nintendo entities, Nintendo of America, Nintendo
Technology Development, and Nintendo Software Technology
(collectively, “Respondents”), all based in
Redmond, Washington. Dkt. # 1. Specifically, Applicants seek
documents and testimony regarding: (1) the structure,
operation, and underlying software of the Nintendo Switch,
(2) the features of the NVIDIA Tegra X1 chip, including any
features disabled therein, and (3) the features of the RIVA
TNT chip, a semiconductor chip that Nvidia previously
manufactured which Defendants contend is prior art. Dkt. # 1
at 3-4. Respondents oppose the Application. Dkt. # 14.
28 U.S.C. § 1782, a district court may order a person
residing or found within its district to produce documents or
testimony for use in a foreign legal proceeding, unless the
disclosure would violate a legal privilege. 28 U.S.C. §
1782(a); Intel Corp. v. Advanced Micro Devices,
Inc., 542 U.S. 241, 246-47 (2004). The statute may be
invoked where: (1) the request is made “by a foreign or
international tribunal, ” or “any interested
person, ” (2) the discovery is “for use in a
proceeding in a foreign or international tribunal, ”
and (3) the person from whom discovery is sought resides in
the district of the district court ruling on the application
for assistance. 28 U.S.C. § 1782(a); Khrapunov v.
Prosyankin, 931 F.3d 922, 925 (9th Cir. 2019) (internal
do not challenge that Applicants are “interested
person[s]” within the meaning of § 1782 or that
Respondents reside in the Western District of Washington.
Accordingly, the Court will focus on the remaining statutory
requirement - whether the requested discovery is “for
use” in a foreign proceeding. The parties do not
dispute that there are foreign proceedings pending in Germany
and that Applicants seek to use the information obtained
through discovery in the United States in those proceedings.
Dkt. # 14 at 13; Dkt. # 23 at 3. Instead, Respondents contend
the “for use” requirement is not met because
Applicants have failed to show how the requests are
“relevant, proportional, and narrowly tailored to the
needs of the remaining live German proceedings.” Dkt. #
14 at 14.
party seeking discovery pursuant to § 1782 must show
that the discovery sought is relevant to the claims and
defenses in the foreign tribunal . . . .” Rainsy v.
Facebook, Inc., 311 F.Supp.3d 1101, 1110 (N.D. Cal.
2018) (citing In re Veiga, 746 F.Supp.2d 8, 18
(D.D.C. 2010) (internal citation and quotation omitted);
Digital Shape Techs., Inc. v. Glassdoor, Inc., 2016
WL 5930275, at *3 (N.D. Cal. Oct. 12, 2016) (“The party
issuing the subpoena has the burden of demonstrating the
relevance of the information sought.”). Courts should
be “permissive” in interpreting the relevance
standard. Id. Applicants argue that the subpoenas
seek information about the RIVA TNT product (which Nintendo
Europe argues is prior art) and the Nintendo Switch and its
use of the NVIDIA Tegra X1 chip - both issues directly
relevant to the German proceedings. Dkt. # 23 at 4; Dkt. # 24
at ¶ 21. Although Respondents describe the Application
as an “ill-disguised fishing expedition” (Dkt. #
14 at 13) the Court finds no basis to conclude the requested
discovery is for anything other than the ongoing infringement
and nullity proceedings currently before the German courts.
also argue that the Application fails to show a
“practical ability to introduce the materials”
requested into the German record. Dkt. # 14 at 16. While
requests under § 1782 have been denied where the foreign
tribunal expressly states that it does not want or will not
accept the information sought, there is no evidence of that
here. Advanced Micro Devices, Inc. v. Intel Corp.,
No. C01-7033, 2004 WL 2282320 *2 (N.D. Cal., Oct. 4, 2004)
(denying request for discovery where the European Commission
submitted two amicus briefs stating that it did not need and
would not consider any of the documents sought). Here, three
of the four infringement proceedings are still pending before
the Regional Court of Mannheim and Applicants indicate that
they intend to appeal the lower court's final decision in
the fourth infringement action. Dkt. # 24 at ¶ 21. In
addition, the four nullity proceedings are also still
pending, with only one hearing scheduled for December 8,
2020. Id. at ¶ 22. Accordingly, the Court finds
that the basic requirements of § 1782 are met in this
Discretionary “Intel” Factors
where the statutory requirements are met, however, a district
court still retains discretion to deny a request. In re
Premises Located at 840 140th Ave. NE, Bellevue, Wash.,
634 F.3d 557, 563 (9th Cir. 2011) (internal citations
omitted). The Supreme Court has provided four factors for
district courts to consider in ruling on § 1782
petitions: (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 ...