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(Image courtesy of Imagerymajestic and FreeDigitalPhotos.net)

     Trial in IPCom v. Apple (case Nos. 2 O 53/12 and 2 O 95/13) began on February 11 in Mannheim, Germany. IPCom filed the suit in 2012, claiming that Apple had infringed patent Nos. EP1841268 and DE19910239 (see February 10th’s post for an overview and Businessweek for a good and brief synopsis of the technical issues in the cases).

     An interesting tangent in the case is IPCom’s fairly recent (February 7, 2014) application (filed in the U.S. District Court for the Northern District of California (San Jose)) for “assistance before a foreign tribunal” in an effort to obtain discovery of Apple’s third-party licenses. IPCom claims that the third-party licenses are relevant to calculating damages in its German suits against Apple. IPCom filed its request under a rather broad statute relevant to discovery, 28 U.S.C. Section 1782.

     28 U.S.C. Section 1782 gives foreign litigants a very broad tool to get at an opposing party’s documents if that party is “found in” the U.S. judicial district where the application is filed. While the court ultimately has discretion as to whether to grant or deny such applications, the statute is liberally construed and such applications are routinely granted.

     In the Apple/IPCom cases, Apple allegedly didn’t produce the license documents to the German court. IPCom’s brief doesn’t appear to argue, though, that Apple failed to comply with any discovery obligations in its German case. But one still might be wondering why IPCom traveled across an ocean and a continent to press the issue instead of taking it up with the German court.  One reason might be that, in general, the German Court wouldn’t have a mechanism to force Apple to produce the documents to IPCom.  Another reason might be that Courts construe Section 1782 to generally exclude (with few caveats, e.g. privacy laws) foreign discovery rules. That means that a U.S. court could conceivably order production of documents that would not be discoverable in the foreign jurisdiction. That general rule even applies to documents that aren’t located within the United States, as long as they are found to be in the the non-moving party’s “custody or control” (see e.g., Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 (2004) and Charles Kotuby’s January 7, 2014 article re extraterritorial discovery under Section 1782, here).

     IPCom, in its brief, though, argues that that there is no German law or rule that would prohibit such discovery, which, it argues, favors granting IPCom’s application. IPCom also did an interesting thing in its brief to the Court. It pointed to Apples’ own use of Section 1782 to obtain license agreements in a similar case (against Nokia) and the Court’s explanation as to why it denied Nokia’s motion to quash Apple’s subpoena in that case.

     All in all, it appears that IPCom should be confident that its application will be granted, barring any glaring privacy concerns. Back in 2010, Gilles Cuniberti reported on (in “Data Protection and US Discovery“) a law review article by Kristen Knapp (Enforcement of U.S. Electronic Discovery Law Against Foreign Companiesthat considered Section 1782 in light of EU privacy laws. In her article, Knapp notes that, in the U.S., the scope of permissible discovery is quite broad as compared to that in the E.U. and that European Data Privacy laws might make that divide even wider, particularly with regard to e-discovery. Knapp goes on to argue that litigants could use the European Data Privacy laws to block discovery and that U.S. courts should not allow such practices.

    There doesn’t seem to be any consumer privacy concerns with regard to the documents that IPCom is seeking in its German case against Apple. While its likely that Apple (and the other parties to the relevant contracts) will have some confidentiality concerns, IPCom is likely to argue that those concerns can be addressed through the discovery provisions of the Federal Rules of Civil Procedure.