HDMI Licensing Administrator, Inc. v. Availink Inc.

Background

The case concerns alleged breaches of an agreement governing Availink’s use of the HDMI specification and trademarks, as well as Availink’s counterclaims challenging the HDMI licensing program. Availink moved to compel HDMI Licensing Administrator, Inc. (HDMI LA) to produce documents responsive to Requests for Production (RFPs) Nos. 85, 104, and 105. Availink also requested two letters rogatory, which are requests for assistance from foreign judicial authorities in obtaining evidence.

The discovery disputes concerned three categories of documents: Founder-company meeting minutes and related materials; HDMI LA’s communications with Chinese government agencies investigating antitrust issues involving HDMI licensing; and documents concerning other companies terminated as HDMI adopters. The letters rogatory sought documents from entities in France and the Netherlands, including meeting materials and documents relating to the Chinese antitrust investigations.

Legal standard

Under Federal Rule of Civil Procedure 26(b)(1), discovery may cover nonprivileged information relevant to a claim or defense and proportional to the needs of the case. Relevance in discovery is broad, but relevant information is not automatically discoverable if the burden or expense outweighs its likely benefit. The party seeking discovery bears the burden of showing relevance, while the opposing party must specifically explain why the discovery should not be allowed.

RFP No. 105: Founder meeting minutes

Availink sought Founder meeting minutes and related materials dating back to 2002. The court denied the motion to compel production reaching back to 2002 because Availink had not shown that searching for, collecting, reviewing, and producing those materials was proportional to the needs of the case. The court noted that HDMI LA had produced complete Founder meeting minutes from 2015 onward, other meeting minutes dating to 2008, and agreements dating to 2002. HDMI LA also stated that it did not possess meeting minutes from 2002.

The court granted in part Availink’s motion concerning the subject matter of the Founder meeting documents. HDMI LA was ordered to re-review, using keywords, manual review, or another reasonable procedure, and produce nonprivileged documents not already produced that discuss either HDMI LA or its predecessor, HDMI Licensing, LLC. The court found that documents directed to licensing, or discussing HDMI LA or its predecessor, were relevant. It did not require production based only on broad references to the HDMI specification or the HDMI Forum, because Availink had not shown that such broad categories were proportional.

RFP No. 104: Chinese government investigations

The court granted Availink’s motion concerning documents about investigations by China’s National Development and Reform Commission and State Administration for Market Regulation. The requested materials included communications with and presentations to those agencies, as well as specified documents involving the Chinese Video Industry Association, including a settlement agreement, changes to the Adopter Agreement, and post-settlement correspondence.

HDMI LA relied on confidentiality assurances and argued that Chinese antitrust law used different standards. The court found that HDMI LA had not identified a Chinese law, regulation, court order, or government filing that barred production. The court also found that the requests were specific, the information appeared to have originated in the United States, alternative sources were not identified, and the protective order in the case could address confidentiality concerns.

RFP No. 85: Companies terminated as adopters

The court granted in part and denied in part Availink’s motion concerning twenty-three other companies terminated as HDMI adopters. HDMI LA was ordered to produce: (1) letters informing the listed adopters that they were in breach of their agreements; (2) subsequent termination notices; (3) internal HDMI LA termination approvals; and (4) external correspondence with the listed adopters after termination, including correspondence about possible or actual reinstatement.

The motion was denied in all other respects because Availink had not shown why the broader request, including internal discussions over an unlimited post-termination period, was proportional to the case’s needs.

Letters rogatory

The court denied Availink’s request for letters rogatory directed to judicial authorities in France and the Netherlands. The court assumed without deciding that the requested documents were relevant, but found that Availink had not shown that they were sufficiently important to resolve its antitrust counterclaims or that the likely benefits outweighed the burdens.

The court emphasized that letters rogatory commonly take six months to a year or more, while fact discovery was scheduled to close on April 25, 2025. It also found the request untimely because Availink had known about the relevant entities and issues for more than a year and waited until near the end of fact discovery to seek the requests. The court concluded that denial was appropriate because of both the lack of proportionality and the timing of the request.

Disposition

The court ordered that Availink’s motion to compel production under RFP Nos. 105, 104, and 85 was GRANTED IN PART and DENIED IN PART. The court DENIED Availink’s request for issuance of the letters rogatory. The supplied opinion identifies the signer only as a United States Magistrate Judge; the judge’s name is not legible in the provided text.