Unreported / Non-Citable
Background
Motorola Mobility, LLC, Motorola Mobility International Sales, LLC, Motorola Mobility Germany GmbH, and Lenovo Deutschland GmbH—collectively identified as Lenovo—were defending patent-infringement actions brought by Advanced Standard Communication, LLC in the Unified Patent Court’s Munich Local Division and Munich District Court I. ASC allegedly obtained the European patents at issue from ZTE Corporation.
Lenovo applied under 28 U.S.C. § 1782 for authority to subpoena ASC in Texas. The proposed subpoena contained five requests seeking agreements between ASC and ZTE concerning the patents and related patents, information about patent valuation, and documents concerning any litigation funding obtained by ASC. Lenovo argued that the material was needed for its defenses in the foreign proceedings.
The Court’s Holding
The court granted the application and authorized Lenovo to issue the proposed subpoena to ASC. It found all three statutory requirements satisfied: ASC resided or was found in the Northern District of Texas, the discovery was intended for use in proceedings before foreign or international tribunals, and Lenovo was an interested person because it was a litigant in those proceedings. The court specifically concluded that the Unified Patent Court, which exercises adjudicatory authority conferred by participating European Union member states, qualifies as an international tribunal under § 1782.
The court also found that the discretionary Intel factors supported relief. The first factor favored discovery for the German proceedings because comparable discovery was likely unavailable there, but was neutral for the Unified Patent Court because the record did not establish whether that tribunal could provide the requested material. The remaining factors favored Lenovo because ASC offered no authoritative proof that either foreign tribunal would reject the evidence, the request did not appear designed to circumvent foreign proof-gathering rules, and the five-request subpoena was not facially unduly intrusive or burdensome.
Key Takeaways
- The Unified Patent Court is an “international tribunal” eligible for federal-court discovery assistance under 28 U.S.C. § 1782.
- A target’s participation in the foreign litigation does not categorically bar § 1782 relief, particularly when the requested discovery may be unavailable through the foreign tribunal.
- Uncertainty about a foreign tribunal’s receptivity does not defeat an application in the Fifth Circuit absent authoritative proof that the tribunal would reject the evidence.
Why It Matters
The ruling provides a path for parties litigating before the relatively new Unified Patent Court to seek U.S. discovery under § 1782. It also illustrates that courts may authorize such discovery even when the subpoena target is already a party to the foreign proceeding.
The decision does not establish that discovery is unavailable through the Unified Patent Court itself. Instead, the court treated that question as unresolved and relied on the absence of evidence that the UPC would reject material obtained through U.S. judicial assistance.