Case of the Day: In re Application of Nokia

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.

About Ted Folkman

Ted Folkman is a shareholder with Murphy & King, a Boston law firm, where he has a complex business litigation practice. He is the author of International Judicial Assistance (MCLE 2d ed. 2016), a nuts-and-bolts guide to international judicial assistance issues, and of the chapter on service of process in the ABA's forthcoming treatise on International Aspects of US Litigation, and he is the publisher of Letters Blogatory, the Web's first blog devoted to international judicial assistance, which the ABA recognized as one of the best 100 legal blogs in 2012, 2014, and 2015.

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