United States District Court, N.D. Illinois, Eastern Division
In re: Application of LPKF Laser and Electronics AG for an Order to Conduct Discovery for Use in a Foreign Legal Proceeding Pursuant to 28 U.S.C. § 1782
MEMORANDUM OPINION AND ORDER
JOHN W. DARRAH, District Judge.
Plaintiff LPKF Laser and Electronics AG ("LPKF") filed an Application for Discovery in Aid of Foreign Litigation, pursuant to 28 U.S.C. § 1782. This Court granted the Application and, subsequently, issued an order granting LPKF's Motion to Compel Discovery Responses from Motorola Mobility LLC ("Motorola"). LPKF then filed a Motion to Compel Motorola to Comply with the order. The parties consented to referral to the Magistrate Judge, the Honorable Young B. Kim. Magistrate Judge Kim denied LPKF's Motion to Compel Motorola to Comply. Before the Court is LPKF's Objection to Magistrate Judge Kim's ruling.
On March 7, 2014, LPKF filed an Application for Discovery in Aid of Foreign Litigation, pursuant to 28 U.S.C. § 1782, seeking authorization to subpoena discovery from Motorola for use in litigation pending in Germany (the "German Action"). (Dkt. No. 1 at 1.) In the German action, LPKF accused Motorola of infringing European Patent No. 1274288. ( Id. ) In its application, LPKF sought "documents and deposition testimony regarding whether or not Motorola has procured components for the Products-at-Issue from a licensee of LPKF." ( Id. at 2.) Specifically, LPKF made requests for production of "[a]ll documents and communications relating to Motorola's actual or potential purchase of Equipment-at-Issue from" three companies: Foxconn, Molex, and BYD. ( Id., Ex. B at 6.) On March 30, 2014, the Application was granted. (Dkt. No. 9.)
On April 1, 2014, Motorola served its objections and responses to the requests for documents, stating "it has no documents and communications responsive to this request" and that "Motorola will not produce a witness to provide testimony." (Dkt. No. 13 at 3.) On April 3, 2014, LPKF moved to compel production of documents and deposition testimony. (Dkt. No. 13.) On April 24, 2014, that Motion was granted, and Motorola was ordered specifically to:
(1) produce any documents relating to Motorola's purchase of the Products-at-Issue or antenna housings (sometimes called modules) having a conductive path for the Products-at-Issue from the indicated companies; and (2) produce a corporate representative to testify from whom Motorola purchases the Products-at-Issue or the antenna housings (sometimes called modules).
(Dkt. No. 24 at 1 (the "April 24 Order").) In response to this Order, Motorola created a spreadsheet that identified the manufacturers of the antennas in the Products-at-Issue. (Dkt. No. 67 at 5.) On May 30, 2014, Motorola made a corporate representative, Anthony Del Sesto, available for deposition, who confirmed the accuracy of the information contained within the spreadsheet. ( Id. )
On June 18, 2014, LPKF filed a second Motion to Compel, arguing that Motorola should have produced the documents it relied on to create the spreadsheet. (Dkt. No. 33 at 5.) On June 24, 2014, the matter was referred to Magistrate Judge Kim, who ordered the issue be fully briefed. (Dkt. Nos. 35, 38.) After briefing and multiple hearings, Magistrate Judge Kim denied LPKF's second Motion to Compel, holding:
Look, essentially what Judge Darrah asked Motorola to do is to provide information to LPKF, sources of suppliers to certain modules and antennas. It turns out that there are no responsive documents, meaning a sheet of paper or a group of - I'm sorry, or pages showing Motorola purchased antenna or housing from these particular manufacturers. It turns out Motorola had to go through various sources in order to get the information in order to create a table.
Motorola didn't have to create this table. Motorola could have certainly simply prepared Mr. Del Sesto, provided him as a 30(b)(6) witness, and provided the position of Motorola as a corporate entity. But Motorola took the extra step, and I think I made the comment the last time we were in court that no good deed goes unpunished. I mean they made the extra effort in providing something in a hard-copy format to provide to LPKF as to the manufacturers. I can't even say manufacturers, just suppliers, asked - and suppliers who provided the parts that went into the phones or the products at issue, right?
And so while it's not a - it's been a messy application process, I think Judge Darrah also recognized that during the last proceeding before him when a motion to compel was filed, and it continues to be a messy process because nothing is sort of tied down as to exactly what is to be produced, but what is important is that Motorola provide the information as to the manufacturers of the component parts that went into Motorola phones, and Motorola has done that.
And I take Mr. Swedlow's word for it when he says that his team of paralegals and lawyers went through the bits and pieces of information in the database, correlated that information with various individuals, even contacted third-party entities....
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Based on that information, there's nothing for me to compel Motorola ...