In Re: Delta Electronics Inc.

CourtDistrict Court, D. Delaware
DecidedJanuary 10, 2025
Docket1:24-cv-00107
StatusUnknown

This text of In Re: Delta Electronics Inc. (In Re: Delta Electronics Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
In Re: Delta Electronics Inc., (D. Del. 2025).

Opinion

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE IN RE: EX PARTE APPLICATION OF ) DELTA ELECTRONICS, INC. ) PURSUANT TO 28 U.S.C. § 1782 TO ) C.A. No. 24-107-JLH-SRF CONDUCT DISCOVERY FOR USEIN _) FOREIGN PROCEEDINGS )

MEMORANDUM ORDER At Wilmington this 10th day of January, 2025, the court having considered the papers submitted and the arguments presented during the January 9, 2025 teleconference regarding: (1) the application of petitioner Delta Electronics, Inc. (“Delta”) for an order pursuant to 28 U.S.C. § 1782 to conduct discovery for use in a foreign proceeding (the “Application”), (D.I. 1) and the associated filings (D.I. 3; D.I. 4; D.I. 43; D.I. 47; D.I. 48); (2) Delta’s motion to compel Vicor to reproduce any documents produced as Delta-Vicor-1782-0000704 to Delta- Vicor-1782-0006566 with the appropriate confidentiality designations, and (3) Delta’s motion to treat employees of Delta affiliates as “Qualified Persons” under the protective order, IT IS ORDERED that the requests for relief are addressed as follows: 1. Background. On January 2, 2024, Delta filed an action for patent infringement against Vicor Corporation (“Vicor”) in the People’s Republic of China (the “China Proceeding”). (D.I. 4 at | 6) In the China Proceeding, Delta alleges that certain Vicor products infringe Delta’s China Patent No. CN 106571354 B (the “CN Patent”), which recites the method and technological process through which certain power source converters are manufactured. (Jd. at {7 8-10) Delta filed a related proceeding for infringement of U.S. Patent No. 8,711,580 (“the patent”) against Vicor in this court on November 1, 2023 (the “U.S. Action”). (C.A. No.

23-1246-JLH, D.I. 1) Unlike the CN Patent, which relates to power source conversion, the *580 patent claims resonant conversion systems with over-current protection processes. (D.I. 3 at 2-3) 2. The Application, filed on January 26, 2024, seeks the production of thirty-nine categories of technical and financial documents. (D.I. 1, Ex. A at 9-14) Through the meet and confer process, Delta narrowed the scope of the Application to five categories of documents, subject to a stipulated protective order: (1) documents regarding the corporate relationship between Vicor Trading (Shanghai) Limited and Vicor; (2) documents regarding sales of Vicor’s accused products; (3) documents regarding the location and controlling party of the manufacture, assembly, and sale of the accused products; (4) documents showing the volume of production and sales information for each accused product; and (5) documents regarding the technical specifications and descriptions of each accused product. (D.I. 47, Ex. 1; D.I. 29) However, Delta continued to define the term “Accused Product” to broadly include “all VICOR’s power modules produced with its SM-ChiPs packaging,” including not only the NBM series which are the primary products at issue, but also”any other product series using the SM-ChiPs package or substantially similar packaging[.]” (D.I. 47 at 1 n.1; Ex. 1 n.2) The five categories in Delta’s narrowed requests for production are the subject of the parties’ present dispute regarding Delta’s Application. 3. Legal standard. Section 1782 of Title 28 provides that “[t]he 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[.]” 28 U.S.C. § 1782(a). The aim of the statute is to “facilitate the conduct of litigation in foreign tribunals, improve international cooperation in litigation, and put the United States into the leadership

position among world nations in this respect.” In re Bayer AG, 146 F.3d 188, 191-92 (3d Cir. 1998). 4, The court follows a two-step process to determine whether to grant judicial assistance under 28 U.S.C. § 1782. See Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 (2004). First, the court analyzes whether the statutory conditions of Section 1782 are satisfied. Jd. at 263-64. Next, the court determines in its discretion whether the requested discovery should be allowed under the four factors identified by the Supreme Court in Jntel: (1) whether the evidence sought is within the foreign tribunal’s jurisdictional reach, and thus accessible absent section 1782 aid; (2) the nature of the foreign tribunal, the character of the proceedings underway abroad, and the receptivity of the foreign government or the court or agency abroad to U.S. federal-court judicial assistance; (3) whether the request conceals an attempt to circumvent foreign proof gathering restrictions or other policies of a foreign country or the United States; [and] (4) whether the subpoena contains unduly intrusive or burdensome requests. O'Keeffe, 646 F. App’x 263, 266 (3d Cir. 2016) (citing Intel, 542 U.S. at 264-65). “Intel does not mandate that every factor support a court’s exercise of discretion or that all factors need even be considered. Rather, it provided the factors to illuminate considerations relevant to the decision of whether to authorize assistance for use in proceedings before a foreign tribunal.” Jn re Eli Lilly & Co., 37 F.4th 160, 168 (4th Cir. 2022). The party opposing discovery has the burden of demonstrating any facts warranting denial of the Application. /n re Chevron Corp., 633 F.3d 153, 162 (3d Cir. 2011). 5. Analysis. Delta’s narrowed Application seeks the production of five categories of documents from Vicor to use in the China Proceeding. Vicor maintains that the Application

should be denied because Delta has not satisfied the statutory “for use” requirement under Section 1782, and the discretionary Jnte/ factors weigh against granting the Application. The parties also dispute the confidentiality designations of two categories of documents produced by

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Vicor, and Delta argues that the definition of “Qualified Persons” under the protective order should be expanded to include employees of Delta affiliates. The court addresses each argument intum, 6. Delta’s Section 1782 Application is DENIED without prejudice. Vicor contends that Delta’s Application should be denied for two reasons. First, Vicor argues that Delta fails to satisfy the statutory requirement of showing that the requested discovery is “for use in a foreign proceeding before a foreign or international tribunal.” (D.I. 47 at 1) Next, Vicor alleges that the discretionary /nte/ factors weigh against granting the Application. (/d. at 2-3) As set forth below, the court concludes that Delta has satisfied the statutory requirements under Section 1782, including the “for use” requirement. Nonetheless, the /nte/ factors support Vicor’s position that Delta’s Application should be denied. A. “For Use” Statutory Requirement 7.

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