Andhra Pradesh High Court - Amravati
Broadcom Inc vs Texasldpc Inc on 13 December, 2023
Author: K.Sreenivasa Reddy
Bench: K.Sreenivasa Reddy
THE HON'BLE SRI JUSTICE K.SREENIVASA REDDY
O.P.No.1 OF 2023
ORDER :
The present petition is filed under Section 78 read with Order XXVI Rules 19 to 22 and Section 151 of the Code of Civil Procedure, 1908 (CPC) seeking the following prayer:
"a) to appoint a Commissioner to address respondent No.2 for collection of evidence, documents as well as for obtaining and recording testimony from respondent No.2 in terms of Letter of Request of the United States District Court for the District of Delaware;
(b) to direct the Commissioner to execute the Commission in terms of the Letter of Request by requiring the written deposition and collection of evidence, documents mentioned in Exhibits A, B and 3 of the Notice of Subpoena accompanying the Letter of Request from respondent No.2 as expeditiously as possible;
c) to direct the Commissioner to direct to execute the abovementioned actions in paragraph (b) in the presence of the advocates of the petitioners in India and the attorneys of the petitioners before the United States District Court for the District of Delaware; 2
(d) to allow the advocates of the petitioners in India the opportunity to examine or cross-examine respondent No.2;
(e) to allow the attorneys of the petitioners before the United States District Court for the District of Delaware to attend, observe and participate in the examination of respondent No.2;
(f) to direct the Commissioner to collect all the documentary evidence and the devices mentioned in Exhibit A of the Notice of Subpoena accompanying the Letter of Request/Letters Rogatory, and also for obtaining and recording the testimony and deposition of respondent No.2;
(g) to return the Commission of the United States District Court for the District of Delaware with an advanced copy to the counsel for the petitioners as expeditiously as possible;
(h) to provide photocopies of the evidence (documentary and oral testimony) collected, to the advocates of the petitioners in India;
2) It is the case of the petitioners in the O.P. that the petitioners are defendants in civil proceedings with Case No.C.A.No.18-1966-SB before the Delaware Court filed by respondent No.1, for copyright and patent infringement of its Copyright Registrations and US patents, allegedly claiming priority 3 from US provisional application bearing No.60/915,320 assigned by Dr.Gunnam. The petitioners found invalidating prior art that defeats patent claims of respondent No.1 and identified that prior art in January, 2022. Respondent No.1 provided no response for many months and resisted providing complete contentions as to the earliest alleged date of invention of respondent No.1. On 01.12.2022, Dr.Gunnam produced new source code files that purportedly show a 2005 invention date by Dr.Gunnam. On 19.12.2022, Dr.Gunnam testified under oath that he had lost these source code files but was able to recover them from 2 nd respondent herein in November, 2022, after recalling that he had purportedly sent them to 2nd respondent in conjunction with a research paper some years back. In the light of the new information presented during the fact discovery in the aforesaid case before the Delaware Court on 19.12.2022, the petitioners immediately pursued discovery in India and filed an application before the Delaware Court to issue a subpoena in the name of 2 nd respondent, to request 2nd respondent to testify and produce all documents, things and devices for inspection as relevant in the said civil proceeding. The Delaware Court granted the request on 11.01.2023 under the Hague Convention and accordingly sent a Letter of Request/Letters Rogatory to the Central Authority of 4 India (Ministry of Law and Justice, Department of Legal Affairs) requesting international judicial assistance through the Hague Convention, to which India is a signatory. The authority received the Letter of Request/Letters Rogatory and forwarded the same to the District Court, Vizianagaram and thereafter it was duly served on 2nd respondent. Inspite of being aware of issuance of, and served with copy of, the Letter of Request/Letters Rogatory, 2nd respondent abstained from confirming his presence for deposition or furnishing the requisite documents and materials as set out under Head III and IV of Exhibit of the Notice of Subpoena accompanying the Letter of Request/Letters Rogatory, and failed to comply with the Letter of Request/Letters Rogatory.
The said Letter of Request/Letters Rogatory sent by the Delaware Court stipulates inter alia that the evidence and deposition sought are for the purpose of discovery and evidentiary use at trial or any hearing for the said matter. The Subpoena accompanying the Letter of Request/Letters Rogatory requests 2nd respondent to testify and produce documents, information and devices for inspection. The petitioners furnished in the petition the documents and devices that are required to be produced by 2nd respondent, as per Head III and IV of Exhibit A of the notice of Subpoena.
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It is imperative for the civil proceedings before the Delaware Court that the above testimony and evidence of 2nd respondent be taken and produced in a timely manner so as to ensure fair and proper adjudication of the matter.
3) It is further submitted in the petition that the declaration made by India under Articles 21 and 23 of the Hague Convention stipulates that in case of a pre-trial discovery of documents that are likely to be in the possession/custody/power of a person, the Republic of India cannot refuse execution of a Letter of Request requiring production of pre-trial discovery of documents which are specified in the concerned Letter of Request. The petitioners also placed reliance on Article 27 of the Hague Convention and Section 78 CPC read with Order XXVI Rules 19 to 22 CPC.
It is further stated that respondent No.1 has not objected to the requests made in the Letter of Request/Letters Rogatory, which is clearly indicated by the fact that respondent No.1 was marked in the Notice of Subpoena but has not made any objections whatsoever with respect to any of the requests made therein.
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4) Heard Sri O.Manohar Reddy, learned senior counsel appearing for the counsel for the petitioners and the learned counsel for respondent No.1 and the learned counsel for respondent No.2.
5) It is contended by the learned senior counsel appearing for the petitioners that as per the Hague Convention, India, being a signatory to the Hague Convention, has to extend its co- operation in civil litigations which permits the Courts in India to comply with any direction by the foreign countries and its confirmation under Articles 12 and 13, and Article 3 (g) (i) of the Hague Convention specifies procedure to be followed. The learned senior counsel drew attention of this Court to Order XXVI Rules 19 to 22 CPC and submitted that Commission may be issued for examination of a witness in India under sub-Rule (1) of Order XXVI Rule 19 CPC on a request made by a foreign Court situated in a foreign country that it wishes to obtain evidence of a witness in any proceeding before it, which is of a civil nature, and the witness is residing within the limits of the High Court's appellate jurisdiction, and that under sub-Rule (2) of Order XXVI Rule 19 CPC, evidence may be given of the above matters specified in sub-Rule (1) by a letter of request issued by the foreign Court and produced before the High Court by a party to the proceeding, 7 and under Rule 20 of Order XXVI CPC, such Commission may be issued under Rule 19 by the High Court upon application by a party to the proceeding before the foreign Court. He also submitted that under Order XXVI Rule 21 CPC, such Commission under Rule 19 may be issued to any Court within the local limits of whose jurisdiction the witness resides and since the witness resides within the jurisdiction of the High Court, the present O.P. came to be filed.
6) Perused the record. In addition to Hague Convention, Section 78 read with Order XXVI Rules 19 to 22 CPC prescribes the procedure to the Courts in India to appoint any Court to record evidence. Under Section 78 CPC, subject to such conditions and limitations, as may be prescribed, the provisions as to the execution and return of commissions for the examination of witnesses shall apply to the commissions issued by or at the instance of - (a) Courts situate in any part of India to which the provisions of this Code do not extend; or (b) Courts established or continued by the authority of the Central Government outside India; or (c) Court of any State or Country outside India. Therefore, as per Section 78 CPC, the Court can appoint an Advocate Commissioner to record evidence based on the Letter of Request received from any Court of any State or Country outside 8 India. At the same time, Order XXVI Rule 19 CPC enables this Court to issue a commission to examine any witness, if the High Court satisfies that a foreign Court situated in a foreign country wishes to obtain evidence of a witness in any proceedings before it, that the proceeding is of civil nature and that the witness is residing within the limits of the High Court's appellate jurisdiction and subject to Rule 20. Sub-clause 2 (c) speaks about letter of request issued by the foreign Court and produced before the High Court by a party to the proceedings. As per the above provision, the relevant consideration for issuance of such Commission is receipt or production of a Letter of Request by a foreign Court and produced before the High Court by the authority to the proceedings.
Order XXVI Rule 20 CPC prescribes to whom Commission may be issued. According to the said provision, a Commission under Rule 19 may be issued to any Court within the local limits of whose jurisdiction the witness resides, or where the witness resides within the local limits of the ordinary original civil jurisdiction of the High Court, to any person whom the Court thinks fit to execute the Commission. Therefore, power is conferred on the Court to appoint any Court or any person to whom the Court thinks fit to execute the commission. 9
7) After hearing the counsel on both sides, this Court is satisfied that the United States District Court for the District of Delaware is a foreign court situated in a foreign country; that it wishes to obtain evidence of 2nd respondent in a proceeding of a civil nature pending before it and the witness is residing within the limit of this Court's appellate jurisdiction; and that evidence may be directed to be recorded by a Court as per the Letter of Request issued by the said Court. Therefore, this Court deems it appropriate to appoint the Principal District Judge, Vizianagaram district as Commissioner for the purposes mentioned in the Letter of Request.
8) In the result, the petition is allowed, appointing the Principal District Judge, Vizianagaram district as Commissioner for the purposes mentioned in the Letter of Request. The Commissioner is directed to execute the commission warrant by following Order XXVI Rules 19 to 22 and forward the entire report to the High Court along with deposition of 2nd respondent herein and the documents received and marked, so as to enable to transmit to the foreign Court along with the Letter of Request. The petitioners shall bear the necessary expenses for execution of the warrant.
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As a sequel, pending miscellaneous petitions, if any, in the O.P. shall stand closed. There shall be no order as to costs of the O.P. __________________________________ JUSTICE K. SREENIVASA REDDY 13.12.2023 DRK 11 THE HON'BLE SRI JUSTICE K.SREENIVASA REDDY O.P.No.1 OF 2023 13.12.2023 DRK 12 *HON'BLE SRI JUSTICE K.SREENIVASA REDDY + Original Petition No.1 of 2023 % 13th day of December, 2023 O.P.No.1 of 2023:
# BROADCOM INC., LSI CORPORATION & AVAGO TECHNOLOGIES U.S. INC.
... Petitioners AND $ TEXASLDPC INC. & ANOTHER ... Respondents ! Counsel for the Petitioners : Mr.O.Manohar Reddy, senior counsel for Mr.Thathireddy Ashok Srivastava ^ Counsel for the respondent No.1: Mr.D.Narendra Nayak Counsel for the respondent No.2: Mr. CH. Jayantha Rao < Gist:
> Head Note:
? Cases referred: