Discovery

• Pages: 53-55

53

international law update Volume 21, April–June 2015

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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 modied 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 modied. First, ‘[t]he party

seeking to modify the order of condentiality 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 eciency. 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 identied 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 Oce and the Japanese

Patent Oce, disputing the validity of those patents.

Neither Oce 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.