CPC Patent Technologies, an Australian patent holding company, sought discovery from Apple Inc. under 28 U.S.C. § 1782 to use in a prospective patent infringement lawsuit in Germany. After a magistrate judge initially denied the request, the district court granted it on remand, allowing CPC to serve a subpoena for documents describing Apple's biometric security technology. Apple objected to the subpoena, particularly regarding the potential production of proprietary source code, and filed an appeal immediately after the district court denied its motion to alter the order. The district court stayed proceedings pending appeal, but the Ninth Circuit found that the underlying dispute over the scope of discovery had not been resolved.
The panel, writing for the court, held that the district court's order was not final under 28 U.S.C. § 1291 because the scope of discovery and the type of information Apple must produce remained undetermined. The court explained that a final decision must end the litigation on the merits and leave nothing for the court to do but execute the judgment. Here, the district court had not definitively resolved what Apple was required to produce, leaving significant litigation regarding the scope of the subpoena pending. The court noted that the lack of a conclusive determination materially affected its ability to evaluate the 'Intel factors,' which require assessing whether the discovery is unduly intrusive or burdensome and the sufficiency of foreign confidentiality protections. Without knowing the specific materials at stake, the panel could not properly apply these factors. The court distinguished its prior decision in this case, CPC I, noting that it addressed the standard of review for magistrate judges rather than the finality of a granted discovery order where scope was already settled. Citing the Fifth Circuit's decision in Banca Pueyo SA v. Lone Star Fund IX, the panel concluded that allowing an appeal while the scope of discovery is still being litigated would encourage inefficient piecemeal appeals.
The appeal is dismissed, and the case returns to the district court for further proceedings to determine the specific scope of Apple's discovery obligations. Until the district court conclusively resolves what documents must be produced, including the disputed issue of source code, the Ninth Circuit will not have jurisdiction to review the merits of the § 1782 order. The court noted that district courts may use protective orders or stays to safeguard confidentiality interests while these scope disputes are resolved.
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