Apple Seeks U.S. Discovery Against Motorola for German Patent Case


On Monday, Apple filed an Ex parte application for discovery against Motorola Mobility (‘Motorola’) to defend against the Google subsidiary’s patent claims in Germany. Motorola’s claims allege that Apple’s iPhone and iPad wireless devices infringe two of the company’s European patents.

One central Apple legal defense to Motorola’s European patent claims is that the telecommunications hardware maker would not offer it fair, reasonable, and non-discriminatory (‘FRAND’) licensing terms over the wireless patents in dispute, “in violation of German and European antitrust laws.”

FRAND contract disputes also remain an issue in the companies’ U.S. patent lawsuits. In Wisconsin, for example, Apple declared today that Motorola’s essential wireless patents are worth, at most, only one dollar per iPhone.

Motorola’s European patents at issue involve:

  • EP 1 010 336 (the ‘336 patent) — Method for Performing a Countdown Function During a Mobile-Originated Transfer for a Packet Radio System
  • EP 1 053 613 (the ‘613 patent) — Method and System for Generating a Complex Pseudonoise Sequence for Processing a Code Division Multiple Access Signal

The relief sought by Apple under 28 U.S. § 1782 is commonly used when parties litigating abroad can assist foreign courts with relevant information in dispute, the request is reasonable and narrowly tailored, no foreign prohibition exists against the request, and no foreign prohibition exists against the request.

Apple’s filing makes clear that the Cupertino, California, company and Motorola continue to engage in heated patent disputes worldwide.

In the U.S., federal courts in California, Wisconsin, Illinois, and Florida, as well as the U.S. International Trade Commission, have all had Apple – Motorola intellectual property and trade claims brought before them.

In fact, the companies’ litigation rankled Judge Richard Posner in Chicago in April this year, when he slammed Apple’s motion practice with Motorola: “I’ve had my fill of frivolous filings by Apple,” Posner wrote tersely.

You can view Apple’s Ex parte application in the U.S. for discovery to use in Germany, and its attorney’s supporting declaration, below:

Ex parte Application for an Order Pursuant to 28 U.S.C. § 1782 Granting Leave to Obtain Discovery for Use in Foreign Proceedings and Supporting Memorandum (In re: Ex Parte Application of Apple, Inc., et al.)

Declaration of E. Daniel Robinson in Support of Ex parte Application (In re: Ex Parte Application of Apple, Inc., et al.)

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