The case of the day is In re Ex Parte Application of Motorola Mobility, LLC (N.D. Cal. 2012), our first [section] 1782 case in quite some time. Motorola had sued Apple in Germany, alleging that the iPhone and iPad infringed Motorola patents relating to 2G and 3G wireless communication standards. Apple asserted, as a defense, that Motorola had offered to license its patents on terms that would violate German and European fair competition laws. Motorola sought leave from the district court to serve a broad subpoena on Apple. It sought all documents granting Apple rights “in any wireless intellectual property rights,” all communications relating to the documents granting IP rights to Apple, and the transcripts and exhibits from the depositions given by Richard “Chip” Lutton and Bruce “B.J.” Watrou in various matters.

The court granted the application without much fuss. Two points deserve attention.

First, Motorola’s application asserted that German courts were receptive to the judicial assistance of the US courts. But the application merely noted that other US cases had held the German courts receptive and did not provide “specific evidence regarding the receptivity of the German courts to discovery from Apple.” The judge therefore held that he didn’t have enough information to decide “whether the German courts will accept the discovered evidence from Apple.” This is interesting in two ways. First, the judge seems to be suggesting that the receptivity inquiry asks whether the foreign court will actually admit the evidence in the foreign proceeding. I trust that the judge meant that the inquiry asks whether the foreign court would exclude evidence sight unseen merely because it was obtained via discovery in the US, regardless of its relevance. The test isn’t whether the foreign court would actually admit each and every item obtained in discovery, as Judge Posner made clear in Heraeus Kulzer. Second, the judge’s decision suggests that applicants may want to procure an affidavit from foreign counsel on receptivity rather than simply point to a bunch of US cases holding a particular foreign judiciary to be receptive, although it’s not clear to me that the judge’s concern on this point was really justified.

Second, the judge decided that the subpoena was “narrowly tailored”. It doesn’t look particularly narrow on its face. Perhaps what the judge had in mind was another point Judge Posner made in Heraeus Kulzer: the scope of what is permissible discovery under [section] 1782 is perhaps broader than the scope of what is permissible under the FRCP, and once the subpoena issues, maybe Apple will have the opportunity to make undue burdensomeness and similar objections on a motion to quash.