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In re ex parte Application of Broadcom Corp.

United States District Court, W.D. Washington, Seattle

October 8, 2019

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

          THE HONORABLE RICHARD A. JONES, UNITED STATES DISTRICT JUDGE

         This 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.

         I. BACKGROUND

         Applicants 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.

         In 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.

         Applicants 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.

         II. DISCUSSION

         A. Statutory Requirements

         Under 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 citations omitted).

         Respondents 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.

         “A 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.

         Respondents 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 case.

         B. Discretionary “Intel” Factors

         Even 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 ...


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