Discovery
Pages | 53-55 |
53
international law update Volume 21, April–June 2015
© 2015 International Law Group, LLC. All rights reserved. ISSN 1089-5450, ISSN 1943-1287 (on-line) | www.internationallawupdate.com
without reference or citation to any regional circuit
law—that ‘[c]ase law interpreting the requirements
of section 1782 is not relevant to a determination
whether a protective order may be modied to
permit the release of [evidence], already discovered,
to another court.’ Id. at 723.” [Slip op. 8-9]
“In sum, I am not persuaded that § 1782
must be applied outside of the narrow context of
an action for the production of evidence for use
abroad. To the extent we are not bound by our
holding in Jenoptik, I nd its reasoning persuasive
in light of the plain language and clear legislative
history of § 1782.” [Slip op. 9-10]
According to Judge HUGHES, the majority’s
holding that § 1782 and the Intel factors apply to
the protective-order inquiry runs counter to ird
Circuit precedent.
“Requiring a court to resort to the Intel factors
when it has reason to believe the documents will be
used in a foreign proceeding also contradicts ird
Circuit precedent. e ird Circuit has laid out
a exible two-part test for determining whether a
protective order can be modied. First, ‘[t]he party
seeking to modify the order of condentiality must
come forward with a reason to modify the order.’
Pansy v. Borough of Stroudsburg, 23 F.3d 772, 790
(3d Cir. 1994). ‘[O]nce that is done, the court should
then balance the interests, including the reliance
by the original parties to the order, to determine
whether good cause still exists for the order.’ Id. In
addition to reliance, the relevant factors include
whether disclosure will violate any privacy interest,
the information is sought for a legitimate purpose,
and sharing the information will promote fairness
and eciency. Id. at 787-91. In Pansy, the ird
Circuit stressed the exibility of the test, noting
that the factors discussed are ‘unavoidably vague
and are of course not exhaustive,’ while explaining
that ‘such a balancing test is necessary to provide
the district courts the exibility needed to justly
and properly consider the factors in each case.’ Id.
at 789.” [Slip op. 10]
“While § 1782 was not designed for such cases, I
nevertheless agree with the majority that modifying
protective orders to permit the use of previously
discovered material in foreign proceedings—like
all domestic court orders potentially impinging
on a foreign court’s sovereignty— may raise some
of the same comity concerns identied by the
Supreme Court in Intel. But this is not unique
to the protective-order inquiry: any time a court
imposes restrictions on a foreign court, it should be
aware of such concerns. Indeed, the ird Circuit
has recognized that ‘[c]omity is essentially a version
of the golden rule: a ‘concept of doing to others
as you would have them do to you.’ Republic of
Philippines v. Westinghouse Elec. Corp., 43 F.3d
65, 75 (3d Cir. 1994) (quoting Lafontant v. Aristide,
844 F. Supp. 128, 132 (S.D.N.Y. 1994)). ‘us, it
may be permissible to prescribe and enforce rules of
law in a foreign country, but unreasonable to do so
in a particular manner because of the intrusiveness
of a particular type of [order].’ Id.” [Slip op. 10-11]
citation: In re: Posco, Posco America Corp., No.
2015-112 (Federal Cir. July 22, 2015).
DISCOVERY
Where patent dispute is pending at
European and Japanese patent offices,
Ninth Circuit permits the gathering
of evidence in the U.S. for those
proceedings pursuant to § 1782
FibroGen, Inc. (FibroGen), a biotechnology
company based in San Francisco, California,
owns several foreign patents regarding chemical
compounds useful for treating anemias. Akebia
erapeutics, Inc. (Akebia), a biopharmaceutical
company that develops products using similar
chemical compounds as FibroGen, initiated
proceedings against certain FibroGen patents before
both the European Patent Oce and the Japanese
Patent Oce, disputing the validity of those patents.
Neither Oce has established procedures through
which Akebia may seek discovery of potentially
relevant information located in the United States
for use in those foreign proceedings.
Upon application to the U.S. District Court
for the Northern District of California, Akebia
obtained an order under 28 U.S.C. § 1782
permitting it to serve FibroGen with document
requests and deposition subpoenas to gather
evidence for use in the foreign patent oppositions.
FibroGen appeals.
To continue reading
Request your trial