Uniloc USA, Inc. v. Apple Inc.

Background

Apple served Pendrell Technologies, LLC, a nonparty, with a document subpoena on January 27, 2020. Although the subpoena identified Pendrell as being located in Kirkland, Washington, it specified San Francisco, California, as the place of production. Apple later asked the court to compel Pendrell to search an archive containing more than 550,000 files and to prepare a privilege log for claims of privilege involving non-email documents.

Pendrell objected that the court lacked authority to enforce the subpoena because Pendrell was located outside the court’s jurisdiction. In the alternative, Pendrell argued that Apple’s request was unduly burdensome and disproportionate, that Apple had waited until the end of discovery to make the request, and that Apple had not properly attempted to resolve the dispute before seeking court intervention. Pendrell also sought a protective order.

Jurisdiction

The court applied Federal Rule of Civil Procedure 45, which generally requires subpoena-related motions to be filed in the district where compliance is required. The court held that it had authority to consider the dispute because the subpoena identified San Francisco as the place of compliance, even if that location did not comply with Rule 45’s geographic limits. The court distinguished the question of authority to hear the dispute from whether the subpoena itself could properly be enforced.

Reasons for Denying Apple’s Request

The court denied Apple’s request on three grounds:

1. The subpoena did not comply with Rule 45’s geographic limits. The court declined to enforce a subpoena requiring production at a location beyond the rule’s limits. The court rejected Apple’s argument that Pendrell’s failure to object to San Francisco should be treated as consent or waiver.

2. Apple had not shown that the search was justified. Apple described the archive as a possible source of information about valuations of a large patent portfolio that included the asserted patent. Pendrell described the files as internal, litigation-focused documents created for potential litigation. The court found that Apple had not adequately explained why the archive was likely to contain relevant, nonprivileged documents or why the substantial effort needed to review it was justified.

3. Apple had not timely attempted to resolve the dispute. Based on the record, the court found that Apple had not conferred with Pendrell early or adequately enough to permit a good-faith resolution without court assistance. The court also noted Apple’s obligation to take reasonable steps to avoid imposing undue burden and expense on a nonparty subject to a subpoena.

Disposition

The court denied Apple’s request for an order compelling Pendrell to produce documents and prepare a privilege log. The order did not state that the request was denied with or without prejudice.