Case 5:19-cv-00036-RWS Document 618 Filed 01/27/21 Page 1 of 8 PageID #: 31948
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`MAXELL, LTD.,
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`Plaintiff,
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`v.
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`APPLE INC.,
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`Defendant.
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`CIVIL ACTION NO. 5:19-CV-00036-RWS
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`ORDER
`Before the Court is Plaintiff Maxell, Ltd.’s Motion to Amend the Protective Order and for
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`an Order of Discovery under 28 U.S.C. § 1782 (Docket No. 536). For the reasons set forth below,
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`Maxell’s motion is GRANTED-IN-PART and DENIED-IN-PART.
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`BACKGROUND
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`Maxell filed its initial complaint in this action on March 15, 2019, alleging that Apple’s
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`products infringed ten smartphone-related patents.1 Docket No. 11. In August 2019 and January
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`2020, Maxell initiated patent litigation against Apple in Germany involving seven patents (“the
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`German Proceedings”).2 Docket No. 536 at 1. The German Proceedings include allegations by
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`Maxell “that the same Apple products at issue [in this case] infringe Maxell’s German patents
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`1 U.S. Patent Nos. 6,748,317; 6,580,999; 8,339,493; 7,116,438; 6,408,193; 10,084,991; 6,928,306; 6,329,794;
`10,212,586; and 6,430,498.
`2 The German Proceedings pending between the parties in the District Court of Düsseldorf, Civil Chamber 4c, are: In
`the matter of Maxell Ltd., 4c O 14/20 (EP 1 286 174 B1); In the matter of Maxell Ltd., 4c O 11/20 (EP 2 061 230); In
`the matter of Maxell Ltd., 4c O 12/20 (EP 2 403 266 B1); In the matter of Maxell Ltd., 4c O 10/20 (EP 1 482 508 B1);
`In the matter of Maxell Ltd., 4c O 15/20 (EP 2 579 587 B1); In the matter of Maxell Ltd., 4c O 13/20 (EP 1 936 974
`B1); and In the matter of Maxell Ltd., 4c O 45/19 (EP 1 324 539 B1). Docket No. 536 at 1, n.1; Docket No. 536-3
`(Crützen Decl.) ¶ 1.
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`Case 5:19-cv-00036-RWS Document 618 Filed 01/27/21 Page 2 of 8 PageID #: 31949
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`covering the same technology.” Id. Maxell therefore seeks to introduce documents produced in
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`this action by Apple and Intel Corporation (“Intel”) into the German Proceedings. Id.
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`In furtherance of this goal, Maxell requested that Apple and Intel agree to amend the
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`controlling Protective Order in this action “to allow for Maxell to review and identify relevant
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`documents for use in the German Proceedings.” Id. at 2; Docket No. 536-2. Specifically, Maxell
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`sought documents describing several functionalities accused in both this action and the German
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`Proceedings, such as FaceTime, position calculation, AirDrop, WiFi and Bluetooth
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`communications of iPhones. Docket No. 536 at 1–2. Once the relevant documents were identified,
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`Maxell agreed to meet and confer to “identify and remove any documents that may be subject to
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`export restriction and file a requisite Addendum to the Protective Order.” Id. at 2. Intel did not
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`oppose Maxell’s request to seek leave for the limited purpose of identifying relevant documents;
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`however, Apple opposed Maxell’s request in full, including opposing the review and identification
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`of Intel-produced documents that “are now owned by Apple.” Docket No. 536-2.
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`Because the parties could not agree, Maxell now seeks an order from the Court allowing
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`discovery of certain Apple- and Intel-produced documents concerning the accused functionalities
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`under 28 U.S.C. § 1782 and an amendment to the Protective Order allowing Maxell to identify and
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`use any such relevant technical documents in the German Proceedings. Docket No. 536 at 1.
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`Apple has filed a response opposing the request (Docket No. 543), and Maxell has filed a reply
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`(Docket No. 556). The Court heard argument on the motion on January 21, 2021. Docket No.
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`617.
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`LEGAL STANDARD
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`“Section 1782 is the product of congressional efforts, over the span of nearly 150 years, to
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`provide federal-court assistance in gathering evidence for use in foreign tribunals.” Intel Corp. v.
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`Advanced Micro Devices, Inc., 542 U.S. 241, 247 (2004). Over time, Congress has “substantially
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`broadened the scope of assistance federal courts could provide for foreign proceedings.” Id.
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`Section 1782 provides:
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`The district court of the district in which a person resides or is found may order him
`to give his testimony or statement or to produce a document or other thing for use
`in a proceeding in a foreign or international tribunal . . . The order may be made . .
`. upon the application of any interested person and may direct that the testimony or
`statement be given, or the document or other thing be produced, before a person
`appointed by the court.
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`28 U.S.C. § 1782(a). The statutory requirements of Section 1782 are satisfied where: “(1) the
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`person from whom discovery is sought is found or resides within the district; (2) the discovery is
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`for use in a foreign tribunal; and (3) the application[, if not made by a foreign or international
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`tribunal,] is made by an interested person.” In re Application of Chevron Corp., No. H-10-134,
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`2010 WL 2038826, at *1 (S.D. Tex. May 20, 2010).
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`However, Section 1782 does not impose “a blanket foreign-discoverability rule.” Intel,
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`542 U.S. at 260. The issuance of orders under Section 1782 is left to the discretion of the court,
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`which may “refuse to issue an order or may impose conditions it deems desirable.” Id. at 260–
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`261. The Supreme Court has set forth several non-exclusive factors to aid district courts in
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`determining how to exercise their discretion in granting Section 1782 applications. Id. The four
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`discretionary factors are (1) whether “the person from whom discovery is sought is a participant
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`in the foreign proceeding”; (2) “the nature of the foreign tribunal, the character of the proceedings
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`underway abroad, and the receptivity of the foreign government or the court or agency abroad to
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`U.S. federal-court judicial assistance”; (3) whether the request is “an attempt to circumvent foreign
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`proof-gathering restrictions or other policies of a foreign country or the United States”; and (4)
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`whether the discovery request is otherwise “unduly intrusive or burdensome.” Id. at 264–65
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`(citations omitted).
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`Federal Rule of Civil Procedure 26 allows the court to enter a protective order to protect a
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`party’s confidential information. FED. R. CIV. P. 26(c)(1). “The court enjoys broad discretion in
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`entering and modifying any such order.” Raytheon Co. v. Indigo Sys. Corp., No. 4:07-CV-109,
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`2008 WL 4371679, at *2 (E.D. Tex. Sept. 18, 2008) (internal citations omitted). In deciding
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`whether to modify a stipulated protective order, courts generally consider four factors: “(1) the
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`nature of the protective order, (2) the foreseeability, at the time of issuance of the order, of the
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`modification requested, (3) the parties’ reliance on the order; and most significantly (4) whether
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`good cause exists for the modification.” Id. (internal citations and quotation marks omitted).
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`DISCUSSION
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`Maxell contends that the Court should grant its Section 1782 request because all statutory
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`requirements are satisfied and each of the four discretionary factors weighs in favor of granting its
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`motion. Docket No. 536 at 3–4. Apple responds that Maxell has not met two of the three threshold
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`requirements for relief under Section 1782 and, should the Court reach the discretionary portion
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`of its analysis, all four factors weigh against Maxell’s request. Docket No. 543 at 3.
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`Section 1782(a) provides that “the district court of the district in which a person resides or
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`is found may order him to give his testimony or statement or to produce a document or other thing
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`for use in a proceeding in a foreign or international tribunal.” 28 U.S.C. § 1782(a). Here, where
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`the discovery Maxell wishes to use in the German Proceedings has already been produced by
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`Apple and Intel, the procedural mechanism of Section 1782 is not necessary. Maxell’s request can
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`be accomplished through modification of the protective order. See In re Posco, 794 F.3d 1372,
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`1375 (Fed. Cir. 2015) (finding that § 1782 does not directly govern requests to modify a protective
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`order to make material available in a foreign proceeding). But because the use of previously
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`discovered documents in a foreign proceeding implicates “the very ‘comity and parity’ concerns
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`addressed by § 1782,” the Court must still consider the Intel factors in deciding whether to grant
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`amendment to the protective order. Id. at 1377 (quoting Intel, 542 U.S. at 261) (internal citation
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`omitted). Accordingly, the question before the Court is whether good cause exists, in light of the
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`Intel factors, to amend the protective order to allow Maxell to use Apple and Intel’s previously
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`disclosed discovery materials in the German Proceedings. See id.
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`Apple argues that because both it and Maxell are participants in the German Proceedings,
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`the first factor weighs against granting the motion because both parties are subject to the German
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`courts’ jurisdiction, and thus can utilize the German courts to obtain discovery. Docket No. 543
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`at 8. Maxell contends that where no discovery mechanism is available to produce the requested
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`materials, as is the case here, courts have granted requests under Section 1872 even where both
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`parties were also parties to the foreign proceeding. Docket No. 556 at 5. “The issue of whether
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`an entity is a participant, however, is not dispositive; Intel puts it in the context of whether the
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`foreign tribunal has the authority to order an entity to produce the disputed evidence.” In re Ex
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`Parte Application of Qualcomm Inc., 162 F.Supp.3d 1029, 1039 (N.D. Cal. 2016). Here, where
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`no avenues are available in the German courts through which Maxell may compel Apple to
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`produce the requested materials, this factor weighs in favor of amending the protective order to
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`allow Maxell to use materials already in its possession in the German Proceedings. See Docket
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`No. 536-3, Ex. C; see also Matter of Lufthansa Technick AG, No. C17-1453-JCC, 2019 WL
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`331839, at *2 (W.D. Wash. Jan. 25, 2019).
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`Apple contends that the second factor weighs against granting the motion because Maxell
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`has offered no indication that the German courts will be receptive to the requested evidence.
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`Docket No. 543 at 10. Maxell responds that “prior cases have recognized the receptiveness of
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`German courts to the use of discovery obtained through Section 1782”—a position that Apple has
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`previously taken in seeking its own Section 1782 discovery. Docket No. 556 at 6. “There is no
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`evidence or case law suggesting that the [German courts] would be unreceptive to the discovery
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`[Maxell] seeks.” In re: Ex Parte Application Varian Med. Sys. Int’l AG, No. 16-mc-80048-MEJ,
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`2016 WL 1161568 at *4 (N.D. Cal. March 24, 2016); see also Heraeus Kulzer, GmbH v. Biomet,
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`Inc., 633 F.3d 591, 597 (7th Cir. 2011) (finding nothing to suggest that the German court “would
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`be affronted” by American discovery or refuse to admit any probative evidence). Accordingly,
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`the second factor weighs in favor of amendment.
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`Apple claims that the third factor weighs strongly against granting Maxell’s motion
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`because the discovery request is an “eleventh-hour . . . circumvention attempt” around the German
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`courts’ discovery rules. Docket No. 543 at 12 (citing In re Digitechnic, No. C07-414-JCC, 2007
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`WL 1367697, at *5 (W.D. Wash. May 8, 2007)). Maxell argues that Apple confuses the German
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`courts’ lack of available discovery mechanisms with an explicit restriction on the requested
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`discovery. Docket No. 556 at 5. There is no threshold requirement that the evidence sought “be
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`discoverable under the law governing the foreign proceeding.” Intel, 542 U.S. at 247. And,
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`contrary to Apple’s claims,
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`there is a difference between a § 1782(a) request that seeks documents that cannot
`be obtained in a foreign proceeding because the foreign jurisdiction does not
`provide a mechanism for such discovery, and one that seeks documents that cannot
`be obtained because the foreign jurisdiction prohibits the discovery of those
`documents.”
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`In re Accent Delight Int’l Ltd., 791 Fed. Appx. 247, 251 (2d Cir. 2019) (emphasis in original).
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`Here, Maxell seeks an amendment to use materials it cannot require Apple to produce in the
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`German Proceedings, not materials that the German courts have explicitly prohibited. Docket No.
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`536 at 6; Docket No. 536-3, Ex. C. As such, the third factor weighs in favor of amendment.
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`The fourth Intel factor concerns whether the request is “unduly intrusive or burdensome.”
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`Intel, 542 U.S. at 264–65. Despite Apple’s arguments to the contrary, amendment of the protective
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`order to allow discovery of this limited set of documents would not be unduly burdensome or
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`intrusive. These materials have already been produced, so there is little left for Apple to do—
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`Apple’s complaints that it would have to spend “substantial” time determining whether the
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`materials “can even be transmitted abroad” falls flat. Docket No. 543 at 16. And Maxell has
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`indicated that it will agree to additional confidentiality protections such as excluding its
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`representatives from attending the German Proceedings and limiting the number of documents to
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`mitigate Apple’s concerns. Docket No. 536 at 8. The fourth and final factor accordingly weighs
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`in favor of amendment.
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`Apple’s remaining challenges to modification of the protective order are unavailing. Apple
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`argues that Maxell’s first German case was filed within a month of the protective order’s entry,
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`but Maxell did not seek to amend the protective order until now or raise its potential need for
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`discovery during negotiations over the protective order. Docket No. 543 at 14. Maxell responds
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`that, during negotiation of the protective order and in the period of time following, it could not
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`have known what non-infringement defenses Apple would allege in the yet-to-be-filed German
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`Proceedings. Docket No 556 at 7. To require Maxell to have negotiated the original protective
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`order with every possible parallel proceeding in mind is both impractical and burdensome. A
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`request to use relevant, already produced materials in a parallel proceeding is not “an unfair and
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`unwarranted attempt to rewrite” the protective order, as Apple contends. Docket No. 543 at 14.
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`Apple also argues that it relied on the agreed protective order in producing over a million
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`pages of documents; an amendment now, Apple contends, would betray that reliance and “cause
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`future litigants to question whether they could rely on the protections of a protective order in every
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`case where foreign litigation is also pending.” Docket No. 543 at 14. But, as Apple conceded
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`throughout its briefing, mechanisms such as Section 1872 are available to foreign litigants who
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`satisfy the requirements of Intel, whether they are contemplated by the protective order or not. See
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`id. And, as mentioned above, Maxell has volunteered additional confidentiality protections to
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`mitigate Apple’s concerns about the privacy of its materials. As the analysis of the Intel factors
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`above demonstrates, good cause exists to modify the protective order to allow Maxell’s narrowly
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`tailored use of Apple and Intel’s previously produced materials. However, “amending the
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`protective order to permit the use of information produced in this matter does not mean that such
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`material is discoverable in the [German Proceedings]”; rather, if the German courts permit Maxell
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`to use the requested materials, it may do so without violating this Court’s protective order. HTC
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`Corporation, et al. v. Telefonaktiebolaget LM Ericsson, et al., Civil Action No. 6:18-cv-243-JRG,
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`Docket No. 420 at 3.
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`CONCLUSION
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`For the reasons stated herein, Maxell’s motion is GRANTED-IN-PART and DENIED-
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`IN-PART. Specifically, Maxell’s motion to amend the protective order is GRANTED, and its
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`motion for an order of discovery under 28 U.S.C. § 1782 is DENIED. The parties shall meet and
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`confer on a proposed amendment to the Protective Order (Docket No. 45) and shall submit an
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`agreed Amended Protective Order by 3 p.m. CST on Friday, January 29, 2021. If disputes
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`remain regarding the language of the proposed amendment, the parties shall set forth their
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`respective positions in a status report filed by that deadline.
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`Page 8 of 8
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`.
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`____________________________________
`ROBERT W. SCHROEDER III
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 27th day of January, 2021.
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