The case of the day is Illumina Cambridge Ltd. v. Complete Genomics, Inc. (N.D. Cal. 2020). I was counsel to the applicant, Illumina Cambridge. The underlying case was a patent infringement dispute being litigated in the US as well as in several European countries. The court had granted Illumina Cambridge’s ex parte application for issuance of subpoenas under 28 U.S.C. § 1782, and the respondents, Complete Genomics, BGI Americas, and MGI Americas, all affiliates of the BGI Group, a Chinese biotech company, moved to quash the subpoenas.
Most of the decision was a routine application of familiar § 1782 principles. There were, though, two points of interest that I’d like to call to your attention. First, although both circuits that have decided the question have held that a § 1782 subpoena can reach documents located anywhere in the world that are in the possession, custody, or control of the subpoena target, the Ninth Circuit has not decided the question. Hans Smit, the principal draftsman of § 1782, had opined that the statute was not meant to reach documents located abroad. But the judge correctly rejected Smit’s view, as both appellate courts to have considered the issue did. Once a subpoena issues, it is just like a regular subpoena, and since a regular subpoena reaches documents wherever they are physically located, so does a subpoena issued under § 1782. The judge went further, pointing out the basic silliness of talking about the location of documents today, since most documents are stored electronically and can be retrieved from anywhere in the world with the push of a button.
Second, Illumina Cambridge gave the respondents notice of its ex parte application immediately after it was filed. The court did not rule on the application for several weeks, and during that period, one of the respondents, CGI, which had until then been the indirect parent of MGI Tech, a Chinese company, entered into a corporate transaction, after which MGI was the indirect parent of CGI! The respondents had not filed a corporate disclosure statement in the § 1782 case, and they only amended their statements in the main US infringement cases once Illumina Cambridge asserted that CGI had control of MGI Tech’s documents due to the parent/subsidiary relationship. CGI argued that it did not have possession, custody, or control of MGI Tech’s documents, since a subsidiary generally does not have control of the documents of its parent. But the judge noted that CGI was “under an obligation to preserve those documents” that it had in its possession, custody, or control at the time it had notice of the subpoena, “and cannot escape their duty to produce them by shipping them overseas or wiping them from their drives.” This is a particularly welcome aspect of the decision, because it shows that the obligation to preserve documents that exists in domestic litigation exists in the 1782 context, too.
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