The case of the day is In re Application of Nokia Corp. (N.D. Cal. 2013). Nokia, the Finnish smartphone company, sought leave to serve a subpoena on Google to obtain documents for use in patent litigation against HTC, a Taiwanese smartphone company, in Germany. The magistrate judge held that the statutory prerequisites under § 1782 were satisfied and that the first three Intel factors favored issuance of the subpoena. But the fourth factor, undue burden, raised an interesting issue. Nokia had drafted its proposed subpoena quite broadly, and it did not provide the court with a copy of the German pleadings to allow the court to compare the scope of the claims in the German case with the scope of the discovery sought. When Google raised undue burden, Nokia argued that any issues could be resolved by agreement between the parties or on a motion to quash. But the court reasoned that “Nokia’s position overlooks its burden to come to the court with narrowly-tailored requests in the first instance. It is no substitute to kick the can down the road ….” Thus the judge refused the application without prejudice.
True, Google could have raised its arguments on a motion to quash, and in practice that’s the more common approach; most applications under § 1782 are decided ex parte. But there’s an opportunity for an alert company that is the target of a § 1782 application to get a jump on the process by raising its arguments before the subpoena is even issued.
Disclosure: I represent HTC, Nokia’s antagonist, in related § 1782 proceedings.