IN RE APPLICATION OF PIONEER CORPORATION FOR AN ORDER PERMITTING ISSUANCE OF SUBPOENAS TO TAKE DISCOVERY IN A FOREIGN PROCEEDING Case No. CV 18-4524 JAK (SSx) United States District Court, C.D. California Filed January 09, 2019 Segal, Suzanne H., United States Magistrate Judge MEMORANDUM DECISION AND ORDER GRANTING IN PART AND DENYING IN PART PIONEER CORPORATION'S MOTION TO COMPEL PRODUCTION OF DOCUMENTS I. INTRODUCTION *1 On March 23, 2018, Plaintiff Pioneer Corporation (“Pioneer”) filed an Ex Parte Application Pursuant to 28 U.S.C. § 1782 for an Order to Conduct Discovery for Use in Foreign Proceedings. (Dkt. No. 1). Pioneer sought production of documents from Respondent Technicolor, Inc. (“Technicolor”), a Hollywood-based subsidiary of a sister corporation (Technicolor USA) to a French company (Thomson Licensing SAS, or “Thomson”) that Pioneer had sued in the District Court of Munich.[1] In the German action, Pioneer claimed that it had overpaid license fees to Thomson's subsidiary, Thomson Multimedia Sales Germany & Austria GmbH, between October 2012 and December 2014 for the use of certain MP3 patents because the majority of the licensed patents had expired in October 2012. (Id. at 3-4). The Court denied Pioneer's Ex Parte Application for discovery in its entirety on May 9, 2018. (Dkt. No. 38). However, on August 27, 2018, the Court granted in part Pioneer's Motion for Reconsideration. (Dkt. No. 55). The Court ordered Technicolor to respond to Request for Production No. 4, which sought documents “sufficient to show when Technicolor or Thomson Licensing first became aware that any of the patents licensed in the License Agreement that covered decoding technology either would expire or expired.”[2] (Id. at 17). Although the original request covered the entire seventeen years of the License Agreement's existence, for purposes of the supplemental response, the Court modified the relevant period to October 1, 2011, one year before the patents allegedly expired (according to Pioneer), through March 15, 2018, the date when the District Court of Munich dismissed Pioneer's claims as unfounded.[3] The Court denied the Motion for Reconsideration in all other respects. On September 12, 2018, the District Judge denied Pioneer's Rule 72 motions for review of the undersigned Magistrate Judge's (1) denial of the original Ex Parte Application, and (2) partial grant of the Motion for Reconsideration. (Dkt. No. 57). On September 26, 2018, Technicolor served a supplemental written response to RFP No. 4, as modified by the Court's Order. Following several pages of boilerplate preliminary objections, the response read in full: Technicolor objects to Request No. 4 to the extent that Pioneer is now construing Request No. 4 to impose obligations on Technicolor that exceed the limited discovery ordered by the Court. (See B. Rankin Sept. 21, 2018 Letter to T. Sullivan.) Technicolor will not permit Pioneer to conduct discovery in excess of the clear guidance and boundaries ordered by the Court. (See Dkt. No. 55.) Pursuant to the Court's August 27, 2018 Order, Technicolor has conducted a reasonable search for “non-privileged, responsive documents in its possession, custody or control” from “between October 1, 2011 ... through March 15, 2018” “sufficient to show when Technicolor or Thomson Licensing first became aware that any of the patents licensed in the License Agreement that covered decoding technology either would expire or expired.” (Id. at 17-18.) Notwithstanding its reasonable search, Technicolor has not located any responsive documents. *2 (Jt. Stip., Exh. B at 4). Pending before the Court is Pioneer's Motion to Compel a further response to RFP No. 4 (“Motion” or “MTC,” Dkt. No. 63). The Parties filed a Joint Stipulation in connection with the Motion pursuant to Local Rule 37-2 (“Jt. Stip.”), including the declaration of Bart Rankin in support of the Motion, (“Rankin Decl.”), and, in opposition to the Motion, the declaration of Tim Sullivan (“Sullivan Decl.”).[4] On December 24, 2018, Pioneer filed a Reply. (“Reply,” Dkt. No. 65). On January 8, 2019, the Court held a telephonic hearing. For the reasons stated below and on the record at the hearing, the Motion is GRANTED IN PART AND DENIED IN PART. The Parties' respective requests for sanctions are DENIED. II. THE PARTIES' CONTENTIONS RFP No. 4 specifically seeks “documents sufficient to show when Technicolor or Thomson Licensing first became aware that any of the patents licensed in the License Agreement that covered decoding technology either would expire or had expired.” (Jt. Stip., Exh. B at 4). A good faith reading of that request as propounded might suggest that Pioneer was seeking information about when Technicolor learned about the expiration dates of a specific, mutually understood, set of patents (those “that covered decoding technology”) in the Licensing Agreement.[5] However, the Parties dispute the meaning of the request. A. Pioneer's Contentions Pioneer contends that the Parties' fundamental dispute in the German litigation did not turn on when licensed decoding technology patents expired, but on which licensed patents concerned decoding technology. According to Pioneer, In the underlying dispute, TLS [Thomson Licensing SAS] contends that patents covering decoder technology and licensed to Pioneer did not expire until 2017. Pioneer, on the other hand, contends that the patents that expired in 2017 did not cover decoding technology, and thus, the licensed decoder patents expired in October 2012. (Id. at 1). Pioneer further clarifies that throughout the German litigation, Thomson “argued primarily that at least three patents, EP 0 832 521 B3, US Patent No. RE 44,897 E, and JP 3 103 383 (collectively, the ‘Family 12 Patents’), encompassed decoding technology and did not expire until 2017.”[6] (Id. at 3). According to Pioneer, in responding to RFP No. 4, Technicolor adopted Thomson's purportedly erroneous identification of the relevant patents and improperly restricted its search to documents relating to the “Family 12 Patents.”[7] (Id. at 11). *3 Pioneer maintains that, properly read, RFP No. 4 focuses on “Technicolor's or [Thomson's] first awareness of what patents cover decoder technology, and therefore are licensed patents, and when those patents expire.” (Reply at 3) (emphasis added). Accordingly, Pioneer contends that instead of searching only for documents showing when Technicolor or Thomson first became aware of the expiration date of the Family 12 Patents, Technicolor “necessarily” should have identified and produced “communications reflecting Technicolor's acknowledgment that the patents that expired in 2017 did not cover decoding technology, which by extension would also reflect awareness that the licensed patents that did cover such technology expired on an earlier date.” (Jt. Stip. at 1). Pioneer notes that expiration dates “can be gleaned from the face of the licensed patents,” (id. at 7), and as such, “Pioneer does not need documents to determine what that date would be.” (Id. at 9; see also Reply at 3 (“[A]s Technicolor is fully aware, Pioneer has never needed discovery to determine a date that can be readily obtained from publicly available information.”)). According to Pioneer, Technicolor intentionally constructed its search so that it “would only yield results for documents that have little to no use in the underlying dispute,” (Jt. Stip. at 2), even though Technicolor knew that “the dispute below is over, among other things, whether [Thomson] became aware that the licensed patents covering decoder technology [expired] sooner than expected because it was acknowledged that the Family 12 Patents, for example, did not cover such technology.” (Id. at 9) (emphasis added). Pioneer further maintains that Technicolor's search was procedurally flawed. According to Pioneer, “Technicolor apparently limited its search to two custodians, both of whom are former employees,” and “there is no indication that Technicolor's counsel interviewed any other potentially relevant employees” or “sent any inquiries to [Technicolor's] closely related affiliates or subsidiaries, such as [Thomson], to determine what responsive documents those entities may have in their possession.”[8] (Id. at 11). Additionally, Pioneer complains that Technicolor's review of electronic documents used “limited search terms, i.e., the Family 12 Patent numbers and the word ‘expiration’ or some variation thereof,” (id.), and that Technicolor did not consult with Pioneer at all when developing the search term list. (Id. at 12). Pioneer notes that “Technicolor failed to even include the word ‘decoder’ in its search, which is clearly covered by Request No. 4 and [is] in dispute in the German proceeding.” (Reply at 4). Pioneer asks the Court to order Technicolor to conduct a “proper search” for “all documents responsive to Request No. 4, including but not limited to any communications internally or with third parties reflecting Technicolor's or [Thomson's] realization or acknowledgment that licensed patents expiring after October 2012 did not cover decoder technology.” (Jt. Stip. at 12) (emphasis omitted). Pioneer further asks that Technicolor be ordered to search for “all information within its possession, custody, or control,” including documents held by related entities, and that Technicolor “be required to work with Pioneer” to develop keyword searches for electronically stored documents. (Id. at 12). Finally, Pioneer asks that Technicolor be ordered to pay Pioneer's attorneys' fees and costs incurred in bringing this Motion. (Id. at 13; Reply at 4). B. Technicolor's Contentions Technicolor maintains that even though its search uncovered “no responsive, non-privileged documents,” the company “fully complied with the focused discovery ordered by the Court” by conducting a thorough search designed to identify documents responsive to RFP No. 4 as modified by the Court. (Id. at 14). Technicolor explains that to conduct the search, its outside counsel first interviewed in-house counsel to learn where information relating to the expiration of Technicolor's MP3 patents might be found. (Sullivan Decl. ¶ 4). Counsel learned that the business unit relating to Thomson's MP3 licensing was discontinued two years ago and the two primary individuals directly involved in the MP3 licensing program had left the company. (Id. ¶ 5). However, counsel was able to obtain and review the electronic files of these two custodians. (Id.). “Many thousands” of the 67,000 records retrieved fell outside the date range limiter set by the Court. (Id. ¶ 6). However, counsel did identify some privileged documents that reflected that Technicolor “had a ‘first awareness’ that the relevant patents would expire (and the specific expiration dates) before the date range ordered by the Court.” (Jt. Stip. at 17; see also Sullivan Decl. ¶ 7). *4 Counsel then conducted a search of the records using the relevant patent numbers and “all variations of the word ‘expire.’ ” (Id. ¶ 8). This search yielded approximately 400 documents, which counsel then reviewed. (Id.). Counsel determined that none of the documents was “responsive to the focused information sought by Request No. 4, which specifies documents showing when Technicolor or Thomson Licensing ‘first’ became aware that the relevant patents would expire,” and that many of the documents were privileged. (Id. ¶ 9). Technicolor thereupon served its written response to Pioneer, “affirmatively stating that no responsive, non-privileged documents were located.” (Id. ¶ 10). Technicolor argues that Pioneer itself “drafted Request No. 4 to specifically target Technicolor's first awareness of patent expiration” and should not be allowed to rewrite the request now that it “appears to be dissatisfied with the narrow scope of its own discovery request.” (Jt. Stip. at 18). Technicolor further states that “it should come as no surprise that Technicolor's first awareness that patents in [the] Thomson Licensing portfolio that were granted in the late 1990s or early 2000s came before the October 2011 period ordered by the Court given that, as Pioneer acknowledges above, the expiration date of each of the patents ‘can be gleaned from the face of the patent.’ ” (Id.). Technicolor further notes that even though the request as Pioneer drafted it asked only for “documents sufficient to show,” Pioneer is now seeking “all documents” and “any communications,” internal or external, reflecting that Technicolor was aware that its patents expiring in 2017 “did not cover decoder technology,” which was not even a subject encompassed by Request No. 4 as propounded or modified. (Id. at 19). To the extent that Pioneer ever requested the information it now seeks, it would have been in response to one of the other discovery requests, all of which the Court has rejected. (Id. at 20). In sum, Technicolor contends that that the time for Pioneer to explain the relevance of the information it is now seeking, or to draft appropriate discovery requests for that information, “has long passed,” and the only issue for the Court is whether Technicolor conducted a reasonable search. (Id.). Noting that the instant Motion is Pioneer's fourth attempt to engage in a “burdensome fishing expedition,” Technicolor asks the Court to issue a protective order barring Pioneer from “continuing to press [it] for unauthorized discovery,” and to award Technicolor its fees in responding to the instant Motion. (Id. at 14). III. STANDARDS[9] Federal Rule of Civil Procedure 26(b)(1), as amended on December 1, 2015, provides: Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Information within this scope of discovery need not be admissible in evidence to be discoverable. *5 Fed. R. Civ. P. 26(b)(1) (emphasis added). A party seeking discovery from a third party may obtain a subpoena for the evidence pursuant to Rule 45. The standards in Rule 26(b) regarding the permissible scope of discovery “appl[y] to the discovery that may be sought pursuant to Rule 45.” AF Holdings LLC v. Does 1-1,058, 286 F.R.D. 39, 46 (D. D.C. 2012) (citing Watts v. S.E.C., 482 F.3d 501, 507 (D.C. Cir. 2007)). Because discovery must be both relevant and proportional, the right to discovery, even plainly relevant discovery, is not limitless. Discovery may be denied where: “(i) the discovery sought is unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive; (ii) the party seeking discovery has had ample opportunity to obtain the information by discovery in the action; or (iii) the proposed discovery is outside the scope permitted by Rule 26(b)(1).” Fed. R. Civ. P. 26(b)(2)(C); Tedrow v. Boeing Employees Credit Union, 315 F.R.D. 358, 359 (W.D. Wash. 2016) (quoting same); see also Watts, 482 F.3d at 509 (limitations set forth in Rule 26(b)(2)(C) apply to discovery served on non-parties by subpoena). “The party resisting discovery bears the burden of showing why it should not be granted” by making “a particularized showing of why discovery should be denied, and conclusory or generalized statements fail to satisfy this burden as a matter of law.” Mainstreet Collection, Inc. v. Kirkland's, Inc., 270 F.R.D. 238, 241 (E.D. N.C. 2010). “In addition to the discovery standards under Rule 26 that are incorporated by Rule 45, Rule 45 itself provides that ‘on timely motion, the court for the district where compliance is required must quash or modify a subpoena that ... subjects a person to undue burden.’ ” In re Subpoena of DJO, LLC, 295 F.R.D. 494, 497 (S.D. Cal. 2014) (quoting Fed. R. Civ. P. 45(d)(3)(A)(iv)). In determining whether a subpoena poses an undue burden, courts “ ‘weigh the burden to the subpoenaed party against the value of the information to the serving party.’ ” Moon v. SCP Pool Corp., 232 F.R.D. 633, 637 (C.D. Cal. 2005) (quoting Travelers Indem. Co. v. Metropolitan Life Insur. Co., 228 F.R.D. 111, 113 (D. Conn. 2005)). “[C]oncern for the unwanted burden thrust upon non-parties is a factor entitled to special weight in evaluating the balance of competing needs” in a Rule 45 inquiry. Cusumano v. Microsoft Corp., 162 F.3d 708, 717 (1st Cir. 1998)); see also Misc. Docket Matter No. 1 v. Misc. Docket Matter No. 2, 197 F.3d 922, 927 (8th Cir. 1999) (quoting same); Dart Industries Co., Inc. v. Westwood Chemical Co., 649 F.2d 646 (9th Cir. 1980) (“While discovery is a valuable right and should not be unnecessarily restricted, the ‘necessary’ restriction may be broader when a non-party is the target of discovery.”). Whether a subpoena imposes an undue burden on a particular witness is a “case specific inquiry.” Thayer v. Chiczewski, 257 F.R.D. 466, 469 (N.D. Ill. 2009) (internal quotation marks and citations omitted). In addition to the need of the requesting party for the information and the burden on the non-party in complying with the subpoena, other factors a court should consider include the relevance of the requested information and the breadth or specificity of the discovery request. See Moon, 232 F.R.D. at 637. Courts are particularly reluctant to require a non-party to provide discovery that can be produced by a party. See Precourt v. Fairbank Reconstruction Corp., 280 F.R.D. 462, 467 (D. S.D. 2011) (“If the party seeking information can easily obtain the same information without burdening the non-party, the court will quash the subpoena.”). *6 A responding party has “an obligation to construe ... discovery requests in a reasonable manner.” Cache La Poudre Feeds, LLC v. Land O'Lakes, Inc., 244 F.R.D. 614, 618-19 (D. Colo. 2007); see also King-Hardy v. Bloomfield Board of Education, 2002 WL 32506294, *5 (D. Conn. Dec. 8, 2002) (responding party must give discovery requests a reasonable construction, rather than strain to find ambiguity); Adolph Coors Co. v. American Insurance Co., 164 F.R.D. 507, 518 (D. Colo. 1993) (in responding to discovery requests, a responding party is “obligated ... to put the collective heads of its lawyers and agents together ... to give those requests a reasonable construction”). Accordingly, “[r]espondents should exercise reason and common sense to attribute ordinary definitions to terms and phrases utilized in [the discovery requests].” Pulsecard, Inc. v. Discover Card Servs., Inc., 168 F.R.D. 295, 310 (D. Kan. 1996); see also McCoo v. Denny's Inc., 192 F.R.D. 675, 694 (D. Kan. 2000) (“A party responding to discovery requests should exercise reason and common sense to attribute ordinary definitions to terms and phrases utilized ....”) (internal quotation marks omitted). Therefore, a discovery request is not objectionable to the extent that it may be reasonably construed to seek relevant information that the responding party is capable of providing. If a reasonable search fails to locate any documents responsive to a particular request, the response to the request should so state. A court cannot order a party to produce documents that do not exist. A requesting party's mere suspicion that additional documents exist is an insufficient basis to grant a motion to compel. See, e.g., Bethea v. Comcast, 218 F.R.D. 328, 329 (D. D.C. 2003) (requesting party's suspicion that responding party failed to produce responsive documents does not justify compelled inspection). Rather, the moving party must have a colorable basis for its belief that relevant, responsive documents exist and are being improperly withheld. See Ayala v. Tapia, 1991 WL 241873, at *2 (D. D.C. Nov. 1, 1991) (denying motion to compel where moving party could not identify documents that were withheld). IV. DISCUSSION A. Technicolor Must Provide A Revised Written Response And Conduct A Limited Search For Responsive Documents, But Not To The Extent Pioneer Seeks Discovery requests, as well as responses, are not always perfectly phrased in their first iteration. A responding party must apply a reasonable interpretation to a discovery request. When a question arises as to the scope or substance of the specific information a propounding party is seeking, courts anticipate that counsel will confer and work out a reasonable, mutually satisfactory solution that will provide the propounding party the information necessary to litigate its claims or defenses, without undue burden to the responding party. To that end, “[t]he discovery process in theory should be cooperative and largely unsupervised by the district court.” Sali v. Corona Reg'l Med. Ctr., 884 F.3d 1218, 1219 (9th Cir. 2018). As one court explained, by “meeting and conferring with opposing counsel through teleconferences and/or written communications, the party propounding the discovery requests typically clarifies, narrows, and refines his requests, among other things.” Becker v. Wells Fargo Bank, NA, Inc., 2013 WL 3367306, at *3 n.1 (E.D. Cal. July 5, 2013). The propounding party may not always receive all the information it ideally would like. However, tortured, hyper-technical, and evasive responses that attempt to obscure rather than disclose information to which the propounding party is entitled plainly violate the first Federal Rule of Civil Procedure, which provides that the Rules “should be construed, administered and employed by the court and the parties to secure the just, speedy and inexpensive determination of every action and proceeding.” Fed. R. Civ. P. 1. The Court agrees with Technicolor that RFP No. 4, as propounded by Pioneer, seeks information about Technicolor's initial awareness of the expiration dates of the decoding technology patents in the Licensing Agreement. Reasonably construed, RFP No. 4 asks for affirmative information -- when Technicolor learned that its decoding technology patents would or did expire, not when Technicolor learned that certain patents did not cover decoding technology. Accepting at face value Pioneer's new contention that the German litigation turned on which patents involved decoding technology, not their expiration date, Pioneer had to be aware that Thomson contended that the relevant patents were the Family 12 Patents. It therefore cannot have been a surprise that Technicolor would share the same understanding and construct its search accordingly. If Pioneer had wanted documents showing an awareness of which patents in the Licensing Agreement involved decoding technology, it could -- and should -- have asked for them. Pioneer may not rewrite its request at this late date to obtain documents that it did not clearly ask for. *7 At the same time, Technicolor's insistence that it need not produce any documents at all if its “first awareness” of the expiration dates of the relevant patents fell outside the limited period set by the Court is equally tortured. The Court reduced the relevant period from approximately seventeen years to just under seven years to lessen Technicolor's burden, not to provide an escape hatch for Technicolor to avoid any production at all. A fairer reading of the Court's Order, in the context of the original request, requires Technicolor to produce documents sufficient to show Technicolor's earliest awareness of the expiration dates of the decoding technology patents either by documents created within the period set by the Court that refer to an earlier first understanding, or by documents showing Technicolor's earliest awareness within the period set by the Court, whether or not that awareness constituted Technicolor's earliest knowledge of the expiration dates of the patents since the License Agreement was executed. Furthermore, a reasonable search may not give undue weight to the phrase “earliest awareness” as a limitation on production because a document responsive to the request may not disclose on its face whether it constitutes the producing party's “earliest awareness.” A production “sufficient to show” would therefore encompass documents that arguably could reflect such an awareness, even if the document did not explicitly so state. Also, it is unclear to the Court whether Technicolor believes that any patents in the License Agreement besides the Family 12 Patents involved decoding technology. RFP No. 4 asks for information about the expiration dates of “any” patent in the License Agreement involving decoding technology. Even if Technicolor maintains that Pioneer rightfully paid royalties between 2012 and 2014 because the Family 12 Patents did not expire until after 2014, to the extent that any other decoding patents were encompassed by the License Agreement, Technicolor's response must address them as well. If Technicolor maintains that only the Family 12 Patents involved decoding technology, it should indicate that understanding in its revised response. Accordingly, the Court ORDERS Technicolor to serve an amended response to RFP No. 4, without boilerplate objections, and produce documents responsive to the request, if any, pursuant to the following procedures and deadlines: • The Parties shall meet and confer within ten days of the date of this Order to determine a mutually agreeable set of “keyword” search terms. The terms should be designed to conduct a search that is proportional to the needs of this case and should be tailored to the specific scope of RFP No. 4 as modified by the Court. The Parties shall submit a Stipulated Proposed Order re Search Terms within two days of the meet and confer. If the Parties are unable to agree upon a set of terms, each party shall file, by the same deadline, its own Proposed Order re Search Terms, listing only the terms requested. In connection with the Proposed Order, each party may submit a two-page document in support of its Proposed Order. • Following the Court's issuance of an Order specifying the search terms to be applied, Technicolor shall apply the terms not only to the documents of the two custodians subject to Technicolor's original search, but also to those of custodians Calder, Thies and Kanaoka, whom Pioneer identified at the hearing as additional custodians with potentially relevant information. • Technicolor shall serve its amended written responses and produce any responsive, non-privileged documents, if any, within forty-five days of the date the Court issues its Order re Search Terms. B. Neither Party Is Entitled To Attorneys' Fees Both Pioneer and Technicolor seek an award of attorneys' fees in connection with this Motion. Rule 37 provides in relevant part: If the [discovery motion] is granted -- or if the disclosure or requested discovery is provided after the motion was filed -- the court must, after giving an opportunity to be heard, require the party ... whose conduct necessitated the motion, the party or attorney advising the conduct, or both to pay the movant's reasonable expenses incurred in making the motion, including attorney's fees. Fed. R. Civ. P. 37(a)(5)(A). Conversely, if the discovery motion is denied, the court must require the movant, the attorney filing the motion, or both to pay the party who opposed the motion its reasonable expenses, including attorneys' fees, incurred in opposing the motion. Id. 37(a)(5)(B). Finally, if the motion is granted in part and denied in part, the court “may, after giving an opportunity to be heard, apportion the reasonable expenses for the motion.” Id. 37(a)(5)(B). However, if the non-prevailing party can demonstrate “substantial justification” for its motion, nondisclosure, or opposition, Rule 37 provides that the court must deny sanctions. Fed. R. Civ. P. 37(a)(5)(A)(ii). *8 The Court declines to award either party attorneys' fees as both are responsible for the instant dispute. Pioneer insisted on an overly expansive reading of RFP No. 4, while Technicolor attempted to escape production entirely by imposing overly constricted interpretations of the request as modified by the Court's prior Order. In such circumstances, attorneys' fees are not warranted for either side. V. CONCLUSION For the reasons stated above and on the record at the hearing, Pioneer's Motion to Compel is GRANTED IN PART and DENIED IN PART. The Parties shall submit a Stipulated Proposed Order re Search Terms, or in the alternative, the Parties shall submit the Proposed Orders described above, and Technicolor shall serve an amended written response to RFP No. 4 and produce responsive documents, if any, in compliance with the procedures and deadlines set forth above. The Parties' respective requests for sanctions are DENIED. Footnotes [1] Sister companies Technicolor USA and Thomson Licensing SAS are both subsidiaries of Technicolor SA, a publicly-held French corporation. [2] Throughout these proceedings, including the instant Motion, the Parties have referred interchangeably to “decoding” technology and “decoder” technology. [3] Pioneer appealed the dismissal of its claims by the District Court of Munich to the Higher Regional Court of Munich. The Parties have informed the Court that the hearing on Pioneer's appeal is scheduled for January 10, 2019. [4] Rankin's declaration is attached to the Joint Stipulation as Pioneer Exhibit C. Sullivan's declaration is attached to the Joint Stipulation as Technicolor Exhibit A. Because Technicolor's only exhibit is Sullivan's declaration, citations in this Order to Exhibit letters will refer to Pioneer's exhibits. [5] Pioneer represented at the hearing that the Licensing Agreement did not identify the covered patents individually, but instead referred to them more broadly as “decoding technology” patents. [6] The Court will adopt Pioneer's terminology and will use the phrase “Family 12 Patents” to refer collectively to the three licensed patents that Thomson contends cover decoding technology, all of which purportedly expired in 2017. Pioneer does not specifically identify the licensed patents that it believes covered decoding technology. However, Pioneer contends that “the patents that expired in 2017,” including the Family 12 Patents, “did not cover decoding technology.” (Jt. Stip. at 1) (emphasis omitted). [7] Despite Pioneer's contention that Thomson erred in its identification of the relevant patents, if, as Pioneer represents, the German litigation turned on the identification of which patents involved decoding technology, Thomson's determination that the Family 12 Patents were covered by the License Agreement would appear to have prevailed because the District Court of Munich dismissed Pioneer's claims as unfounded. [8] As noted earlier, Thomson is a sister corporation of Technicolor's parent, Technicolor USA. Neither party has identified any subsidiary of Technicolor, and it is unclear whether any exist. [9] The authority for the Order requiring Technicolor to produce documents responsive to RFP No. 4 arose under 28 U.S.C. § 1782. However, § 1782 expressly provides that unless the discovery order otherwise prescribes, “the testimony or statement shall be taken, and the document or other thing produced, in accordance with the Federal Rules of Civil Procedure.” 28 U.S.C. § 1782(a); see also In re Application of Edelman, 295 F.3d 171, 181 (2d Cir. 2002) (remanding to consider whether Rule 45 barred a deposition, after determining that 28 U.S.C. § 1782 applied); In re Khrapunov, 2017 WL 5625931, at *6 (N.D. Cal. Nov. 22, 2017) (even after authorizing discovery under § 1782, a court “maintains the discretion to modify the subpoena under Rule 45” where the responding party argues compliance would pose an undue burden).