As the number and complexity of cross-border and multi-jurisdictional disputes increase, companies can use 28 U.S.C. § 1782 to obtain evidence from U.S.-based entities for use in those foreign proceedings. Specifically, § 1782 allows entities “interested in” a foreign proceeding to obtain discovery from a U.S. entity using the United States District Courts. It permits the District Court in the district in which an entity resides to direct that entity to produce documents or give testimony. Originally enacted by Congress to provide assistance to foreign tribunals, § 1782 is also a powerful tool for obtaining documents and testimony relevant to the foreign proceeding that is otherwise outside the jurisdiction of the foreign tribunal. See Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 (2004); Lo Ka Chun v. Lo To, 858 F.2d 1564 (11th Cir.1988). Section 1782 may be of particular interest in intellectual property disputes, since these often have the cross-border aspects that bring this statute into play.
To take advantage of § 1782, the party seeking discovery need only show that: (1) the request has been made either “by a foreign or international tribunal,” or by “any interested person”; (2) that the request seeks evidence, whether an individual’s “testimony or statement” or the production of “a document or other thing”; (3) that the evidence is “for use in a proceeding in a foreign or international tribunal”; and (4) the person from whom discovery is sought resides or is found in the district of the United States District Court ruling on the application for assistance.
Though powerful, § 1782 is not limitless. The law is not settled on whether § 1782 can reach documents within a U.S. target’s “possession, custody, or control” if those documents or things are physically located overseas. On the one hand, U.S. courts have noted in dicta that § 1782 only reaches documents located inside the United States. See, e.g., Four Pillars Enters. Co. v. Avery Dennison Corp., 308 F.3d 1075, 1079 (9th Cir. 2002) (suggesting there is “some support” for the view that § 1782 does not authorize discovery of material located in foreign countries, resolving on other grounds); Norex Petroleum Ltd. v. Chubb Ins. Co. of Canada, 384 F. Supp. 2d 45, 55 (D.D.C. 2005) (finding that the available “caselaw suggests that §1782 is not properly used to seek documents held outside the United States” but finding documents in question “are not discoverable for another reason”).
On the other hand, other courts have reached a contrary conclusion: the plain language of the statute poses no such restriction and “requires only that the party from whom discovery is sought be ‘found’ here; not that the documents be found here.” See In re Gemeinshcaftspraxis Dr. Med. Schottdorf, No. Civ. M19-88 (BSJ), 2006 WL 3844464 (S.D.N.Y. Dec. 28, 2006) (emphasis in original). In that case, the court ordered production of the documents sought under § 1782, including those in the control of the U.S.-based entity but located abroad. See also In re Application of Republic of Kazakhstan, 15 Misc. 0081 (SHS) (S.D.N.Y. June 22, 2015) (upholding order permitting discovery sought from New York office where documents were located in the firm’s London branch).
Party Status Is Not Required
An entity seeking discovery under § 1782 does not need be a party to the foreign action and instead need only have “significant procedural rights” and “participation rights” in the foreign proceeding. For example, in Intel, Advanced Micro Devices (AMD) filed an antitrust complaint against Intel with the European Commission’s Directorate-General for Competition (DG). Though AMD was not a party to the DG’s investigation, it filed a petition in the United States District Court in Northern California seeking potentially relevant documents from Intel, a resident of the Northern District of California. The United States Supreme Court held that while AMD was not technically a party to the investigation, AMD nevertheless had standing because it had participation rights in the DG’s proceedings: it could submit information in support of its allegations and could seek judicial review of the DG’s disposition of its complaint.
Proceedings Need Not Be Ongoing
Even absent a pending adjudicative proceeding, a party may be able to obtain discovery under § 1782 as long as one is within “reasonable contemplation.” Application of Consorcio Ecuatoriano de Telecomunicaciones S.A. v. JAS Forwarding (USA), Inc., 747 F.3d 1262 (11th Cir. 2014); Intel. Courts require showing that a future proceeding is more than speculative and demand “reliable indications” such as an internal audit; investigation; or internal correspondence suggesting that judicial action was imminent. See also Lazaridis v. Int’l Centre for Missing and Exploited Children, Inc., 760 F. Supp. 2d 109 (D.D.C. 2011) (a proceeding was within “reasonable contemplation” where the petitioner submitted two summonses for appearance before a Greek magistrate judge in connection with a “pre-accusatory proceeding.”). Accordingly, an entity need not wait until suit is filed or an investigation initiated before proceeding under §1782.
Discoverability in the Foreign Tribunal Not Required
Section 1782 does not require that the documents sought be discoverable in the foreign jurisdiction. Instead, if a district court deems production is appropriate, the scope of discovery is within the court’s discretion, subject to the limitations found in Federal Rule of Civil Procedure 26. See Weber v. Finker, 554 F.3d 1379, 1385 (11th Cir. 2009). Rule 26 permits the discovery of “any nonprivileged matter that is relevant to any party’s claim or defense,” and permits the discovery of information not itself admissible at trial, but “reasonably calculated to lead to the discovery of admissible evidence.”
The scope of discovery can also extend to documents within the target U.S. entity’s “custody or control.” That can include documents held by agents and third-party contractors. Fed. R. Civ. Proc. 34; Columbia Pictures, Inc. v. Bunnell, 245 F.R.D. 443 (C.D. Cal. 2007).
Discovery May Be Available for Arbitral Proceedings
Where arbitration has been required by or involves a governmental entity, courts have held that the foreign arbitral body is a “foreign tribunal” for purposes of §1782. For example, in In re Application of Mesa Power Group, LLC, a district court found discovery available for a foreign arbitration proceeding under the North American Free Trade Agreement (NAFTA). 878 F. Supp. 2d 1296 (S.D. Fla. 2012). Mesa sought, and successfully obtained, the court’s assistance in obtaining evidence from a third-party, NextEra, for use in a pending arbitration under NAFTA, which involved Mesa Power and the government of Canada. See also In re Republic of Ecuador, No. C-10-80225 MISC CRB (EMC), 2010 WL 4973492 (N.D. Cal. Dec. 1, 2010) (allowing discovery under § 1782 for use in foreign arbitration taking place pursuant to a bilateral investment treaty).
In contrast, some courts have concluded that private arbitral proceedings are not conducted by “foreign tribunals” and thus discovery under §1782 is not available. See, e.g., El Paso Corp. v. La Comision Ejecutiva Hidroelectrica Del Rio Lempa, 341 Fed. Appx. 31 (5th Cir. 2009) (private Swiss arbitral tribunal not a “tribunal” under §1782); Nat’l Broad. Co. v. Bear Stearns & Co., 165 F.3d 184 (2d Cir. 1999) (private commercial arbitration proceedings under the auspices of International Chamber of Commerce not a “tribunal”); In re Dubey , 949 F. Supp. 2d 990, (C.D. Cal. 2013); In re Arbitration Between Norfolk S. Corp., Norfolk S. Ry. Co., and Gen. Sec. Ins. Co. and Ace Bermuda Ltd., 626 F. Supp. 2d 882 (N.D. Ill. 2009); In re Oxus Gold PLC, No. MISC. 06-82, 2006 WL 2927615 (D.N.J. Oct. 11, 2006). However, a number of district court decisions in other circuits have held that private arbitral tribunals are indeed “tribunals” for purposes of the statute, under the logic that an arbitral body is a “first-instance decision maker” whose decision leads to a dispositive ruling. See, e.g., In re Application of Babcock Borsig AG, 583 F. Supp. 2d 233, 238 (D. Mass. 2008) (denying the request on other grounds, but finding that an arbitration in the International Chamber of Commerce was a “tribunal”); Comision Ejecutiva Hidroelectrica del Rio Lempa v. Nejapa Power Co., 2008 WL 4809035 (D. Del. Oct. 14, 2008), vacated as moot, 341 Fed. Appx. 821 (3d Cir. 2009); In re Hallmark Capital Corp., 534 F. Supp. 2d 951 (D. Minn. 2007); In re Roz Trading Ltd., 469 F. Supp. 2d 1221 (N.D. Ga. 2006).
Though the potential scope of discovery under § 1782 is extensive, a court has discretion whether to order discovery in a specific matter and, if so ordered, what the breadth of the order shall be. Once an applicant establishes that the statutory requirements recited above have been met, the court must also weigh the factors enunciated by the Supreme Court in Intel: (1) whether “the person from whom discovery is sought is a participant in the foreign proceeding,” because “the need for §1782(a) aid generally is not as apparent as it ordinarily is when evidence is sought from a nonparticipant”; (2) “the nature of the foreign tribunal, the character of the proceedings underway abroad, and the receptivity of the foreign government or the court or agency abroad to U.S. federal-court judicial assistance”; (3) “whether the §1782(a) request conceals an attempt to circumvent foreign proof-gathering restrictions or other policies of a foreign country or the United States”; and (4) whether the request is otherwise “unduly intrusive or burdensome.” The Supreme Court in Intel added that “unduly intrusive or burdensome requests may be rejected or trimmed.”
Thus, even if a party meets the basic statutory requirements, the District Court can deny discovery if it determines that the foreign tribunal “is not receptive to [U.S.] judicial assistance.” In the Intel-AMD dispute, on remand from the Supreme Court, the District Court denied AMD’s discovery requests in their entirety after the foreign tribunal submitted amicus curiae briefs stating that it did not “need or want” the Court’s assistance and indicated that it would not even review the documents if they were produced to it. Advanced Micro Devices v. Intel Corp., No. C 01-7033, 2004 WL 2282320 (N.D., Cal. Oct. 4, 2004).
A district court might also, in its discretion, refuse to grant discovery if the same discovery could otherwise be obtained in the foreign proceeding. To force an opponent to proceed in two separate court systems would be considered an abuse, with the inference being that “the party seeking U.S. discovery was trying to harass his opponent.” See Heraeus Kulzer GmbH v. Biomet, Inc., 633 F. 3d 591, 594 (7th Cir. 2011).
The § 1782 discretionary factors may extend to discovery questions involving foreign entities even when the statute itself is not invoked. In a recent decision by the Court of Appeals for the Federal Circuit, the court held that these factors should be applied when considering whether to amend a protective order in a patent suit in the U.S. to permit use of the discovery materials in a foreign proceeding. In re Posco, No. 2015-112 (Fed. Cir. July 21, 2015). Nippon Steel had sued Korean company POSCO for patent infringement in the District Court in New Jersey. In parallel, Nippon sued POSCO in Japan for trade secret infringement, and POSCO filed a request for declaratory judgment of non-infringement in Korea. In the U.S. lawsuit, the court had entered a protective order limiting use of confidential materials disclosed in that suit to “solely for purposes of the prosecution or defense of this action.” Nippon later sought to amend the protective order so it could use some of those documents in the foreign proceedings. POSCO petitioned for a writ of mandamus to stop the disclosure directed by the District Court. The Federal Circuit instructed the District Court to consider on remand § 1782 and Intel’s discretionary factors. Although the Federal Circuit acknowledged that § 1782 and Intel may not directly govern requests to modify a protective order to make materials available in a foreign proceeding, it noted that at least three district courts have acknowledged that § 1782 and the Intel factors were relevant. As a result, where discovery questions implicate disclosure of documents in foreign proceedings, parties should consider and frame their arguments with these factors in mind.
Intellectual Property Ramifications
As companies are faced with disputes abroad, including intellectual property disputes where relevant evidence is located in the United States, they should be prepared to use § 1782, or have it used against them, to obtain documents and testimony. Section 1782 can be effective in intellectual property disputes, where a party’s product allegedly infringing a foreign patent is manufactured, at least in part, in the United States; or if a dispute involves families of patents spanning across jurisdictions. See Cryolife, Inc. v. Tenaxis Medical, Inc., No. C08-05124 HRL, 2009 WL 88348 (N.D. Cal. Jan. 13, 2009) (granting request for documents and testimony concerning starting materials for respondent’s sealant product, which was the subject of a patent infringement action in Germany); In re Iwasaki Electric Co., No. M19-82, 2005 WL 1251787 (S.D.N.Y. May 26, 2005) (petitioner involved in patent litigation in Germany, U.S. and Japan sought documents and deposition transcripts from related U.S. litigation for use in related disputes abroad); In re Procter & Gamble Co., 334 F. Supp. 2d 1112 (E.D. Wis. 2004) (defendant in underlying litigation sought discovery relevant to its defenses that it was immune from suit for patent infringement based on settlement of prior litigation or that the patent at issue was invalid).