Petitioner filed foreign claims in Germany and Luxembourg in January and April 2011, alleging that one of the respondents infringes European Patent No. 1-151-591. Judge Richard G. Andrews recently denied petitioner’s request to compel production of “source code and other core technical documents that underlie Respondents’ telecommunications service system” for use in those foreign patent infringement proceedings. Via Vadis Controlling GmbH v. Skype, Inc., et al., C.A. No. 12-mc-193-RGA, at 1, 5 (D. Del. Feb. 21, 2013).
Judge Andrews found that the Court possessed authority pursuant to 28 U.S.C. § 1782(a) to compel discovery, but nevertheless concluded that “it should not exercise its discretion to grant the petition.” Id. at 3. In denying the petition, Judge Andrews relied on the factors set forth in Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 (2004), which inform a district court’s discretion when determining whether to compel production of information for use in a foreign proceeding pursuant to § 1782. See id. at 2-4. First, Judge Andrews noted that “‘when the person from whom discovery is sought is a participant in the foreign proceeding . . . the need for § 1782(a) aid generally is not as apparent as it ordinarily is when evidence is sought from a nonparticipant in the matter arising abroad.’” Id. at 3 (quoting Intel, 542 U.S. at 244). Because at least one respondent was a defendant in the foreign proceedings, this Intel factor weighed against compelling discovery. Id. Weighing further against compelling discovery, Judge Andrews found that “[d]espite their jurisdiction over SkypeS, the foreign courts have not forced SkypeS to produce the requested materials,” and thus granting the petition “would be, in essence, a circumvention of the foreign courts’ rules and enforcement procedures.” Id. at 4. Moreover, Judge Andrews concluded that producing the source code would “intrude on the protective order from . . . prior litigation,” which “specifically prohibits [the respondents’] disclosure of the source code in the proceedings in Germany and Luxembourg.” Id. The only Intel factor Judge Andrews found to weigh in favor of compelling discovery was that “the German court would likely consider the § 1782 materials.” Id. at 2-3. Accordingly, Judge Andrews found that “the overall balance of all the factors” weighed in favor of denying the petition to compel discovery. Id. at 5.