January 2016
CIPA Journal
By Anthony C. Tridico, Ph.D.; Timothy P. McAnulty; Justin E. Loffredo
Authored by Justin E. Loffredo, Timothy P. McAnulty, and Anthony C. Tridico, Ph.D.
There are typically no mechanisms for adversarial discovery in European Patent Office (EPO) Opposition proceedings.1Evidence is normally given or obtained on request of a party and/or where the EPO considers it necessary.2But a U.S. statute, 28 U.S.C. § 1782, provides a mechanism for parties in an EPO opposition to seek discovery in the U.S. without any parallel substantive proceeding in the U.S.
Section 1782 provides a U.S. statutory basis designed to assist foreign and international tribunals and their litigants with regard to new discovery requests.3It is the product of almost 150 years of U.S. Congressional efforts, as "Congress first provided for federal-court aid to foreign tribunals in 1855; requests for aid took the form of letters rogatory forwarded through diplomatic channels."4The current version of the statute recites, in part, that:
the district court of the district in which a person resides or is found may order him to give his testimony or statement or to produce a document or other thing for use in a proceeding in a foreign or international tribunal . . . [and] [t]he order may be made . . . upon the application of any interested person.5
In effect, the statute provides U.S. district courts the discretion to grant U.S. discovery requests for use in foreign proceedings. While "[s]ome U.S. courts have expressed sensitivity to be used as a tool to expand discovery rather than assist discovery,"6other courts, including the U.S. Supreme Court have taken a more liberal view and granted requests.
In 1964, the U.S. Senate Committee on the Judiciary reported that enactment of bill H.R. 9435, which included proposed revisions to § 1782, will provide "equitable and efficacious procedures for the benefit of tribunals and litigants involved in litigation with international aspects."7In line with this report, the U.S. Supreme Court identified two primary purposes of § 1782 when it decided Intel Corp. v. Advanced Micro Devices, Inc.: to provide effective assistance to participants in international litigation; and to encourage, by example, foreign countries to similarly assist U.S. courts.8
In addition to enumerating the two main purposes of § 1782, the Supreme Court addressed Intel's concerns and arguments for a narrow application of § 1782.9These concerns included:
"avoiding offense to foreign governments [that may purposely limit discovery], and maintaining parity between litigants."
In refusing to "insert[] a generally applicable foreign-discoverability rule into the text of § 1782(a), the Court explained that:
"[a] foreign nation may limit discovery within its domain for reasons peculiar to its own legal practices, culture, or traditions—reasons that do not necessarily signal objection to aid from U.S. federal courts."
The Court clarified that such a general limitation on § 1782's applicability would frustrate its:
"objective to assist foreign tribunals in obtaining relevant information that the tribunals may find useful but, for reasons having no bearing on international comity, they cannot obtain under their own laws."10
The Court also explained that Intel's concern about maintaining parity could be easily addressed by a district court requiring reciprocity in the exchange of information discovered using § 1782.
In Intel, the Supreme Court ultimately held that § 1782(a) authorizes, but does not require, U.S. federal courts to provide discovery assistance for interested persons to use in proceedings before foreign or international tribunals.11Thus, U.S. district courts have broad discretion in considering and deciding § 1782 requests. The Supreme Court's reasoning in Intel guided the Ninth Circuit's relatively recent decision in Akebia Therapeutics, Inc. v. FibroGen, Inc., granting discovery to a party for use in an ongoing EPO opposition.12
Founded in 2007, Akebia is a Cambridge, Massachusetts-based biopharmaceutical company focused on developing and commercializing therapeutics based on hypoxia inducible factor (HIF) biology for treating kidney disease. FibroGen is a biotechnology company based in San Francisco that also develops products based on HIF biology, as well as connective-tissue growth factor biology, for patients with medical conditions including anemia and fibrotic disease. At issue in the case are two of FibroGen's patentscovering chemical compounds for treating anemia.13Akebia challenged the validity of each patent by initiating Opposition proceedings in Europe and Japan.
Seeking information within the U.S. for use in the European and Japanese proceedings, Akebia filed an application under 28 U.S.C. § 1782, in the U.S. District Court for the Northern District of California. Akebia filed its § 1782 application with the court ex parte, and applied the three statutory factors: FibroGen resides or is found in the Northern District of California; the information sought is for use in the EPO and JPO proceedings; and Akebia is an interested person.14Akebia's application further explained why the court should exercise its discretion to grant its application, noting the lack of discovery available at the EPO and JPO, but also the absence of any statute or rule in Europe or Japan barring assistance under § 1782.15Akebia specifically wanted to serve FibroGen with document and deposition subpoenas relating to the pending and possible future adversarial proceedings.16Akebia included proposed subpoenas with its § 1782 application.17The district court granted Akebia's § 1782 application and FibroGen appealed.18FibroGen also filed a motion to stay the case pending the Ninth Circuit's decision on appeal, but the district court denied the motion and ordered FibroGen to begin producing documents.19
On appeal, FibroGen presented four arguments as to why the district court erred in granting Akebia's § 1782 application and discovery requests.20First, FibroGen asserted that Akebia was not an "interested person" as the statute requires, and that Akebia lacked standing because it could not show an individualized, legally protected interest. Second, FibroGen argued that neither the EPO nor the Japanese Patent Office (JPO) are "tribunals" within the meaning of § 1782, noting that proceedings before the EPO and JPO do not resemble civil trials or substantially similar proceedings. Third, FibroGen contended that the America Invents Act (AIA) limits the scope of discovery under § 1782 that is available to contested patent proceedings. And fourth, FibroGen argued that the district court abused its discretion by giving short shrift to factors outlined in Intel when deciding to grant Akebia's § 1782 application and order U.S. discovery. These factors include whether the foreign tribunal can access the sought-after information without a § 1782 application, the character of the foreign proceedings, the receptiveness of the foreign governments to discovery, the nature of foreign proof-gathering restrictions, and whether requesting production would be too intrusive.21Relying primarily on the Intel opinion, the Ninth Circuit addressed each of FibroGen's arguments.22
First, the Ninth Circuit applied a broad interpretation of "interested parties" within the meaning of § 1782. It explained that an "interested person" under § 1782 includes litigants before foreign and international tribunals But it went on to further explain that an "interested party" can also be foreign and international officials, and other people who have a reasonable interest in obtaining judicial assistance. An interested party need not actually be a party to a contested proceeding. As a party to the EPO and JPO Opposition proceedings, the Ninth Circuit found Akebia to be "interested person." The Court also found that Akebia had standing to apply for the § 1782 application based on Akebia's showing of an "injury in fact," resulting from FibroGen's failure to disclose potentially relevant information.23
Second, the Court addressed whether the EPO and JPO are "tribunal[s]" under the statute. It decided that they are, explaining that "tribunals" are not just conventional courts, but also administrative and quasi-judicial bodies that handle contested cases and disputes. Both the EPO and the JPO conduct what may be described as quasi-judicial proceedings. And, although they are government agencies, they involve "first-instance decision-makers tasked with resolving patent validity disputes" they also review evidence, and their decisions are appealable. All of which are attributes shared by conventional courts.
Third, the Court rejected FibroGen's contention that the U.S. Congress' decision to enact post-grant review provisions under the AIA signaled a desire to limit the scope of discovery in proceedings worldwide.24FibroGen argued that the AIA's post-grant review provisions greatly limit discovery in trials before the U.S. Patent Office. According to FibroGen, reading § 1782 to enable U.S. discovery for use in comparable foreign proceedings would conflict with the current state U.S. of patent law. But the Ninth Circuit outlined several differences between § 1782 and the AIA, and found no conflict between them.25Indeed, the Ninth Circuit refused to read any Congressional intent to limit the scope of § 1782 into the AIA, considering the AIA "an unrelated statutory provision" to § 1782.
Fourth, the Ninth Circuit decided that the district court properly considered the factors outlined in the U.S. Supreme Court's Intel opinion. For example, the district court took into account the nature of the EPO and JPO proceedings, the receptiveness of the European and Japanese governments to discovery, the nature of proof-gathering restrictions in Europe and Japan, and whether requesting production would be too intrusive. Only after considering these Intel factors did the district court decide to grant Akebia's § 1782 application,26and even took precautions by entering a restrictive protective order to prevent disclosure of confidential information.27Moreover, the Ninth Circuit clarified that district courts do not need to address every factor outlined in Intel when deciding whether to grant a § 1782 application.
Thus, the Ninth Circuit affirmed the district court's decision noting and upheld Akebia's § 1782 application. FibroGen petitioned the U.S. Supreme Court to stay the district court's order requiring FibroGen to produce the requested information pending a forthcoming petition for certiorari.28Justice Kennedy initially granted FibroGen's request for a stay, but the Supreme Court shortly vacated his order and lifted the stay.29As of the date of this article, FibroGen has not filed a petition for certiorari, although it has produced documents, and the parties scheduled a deposition for November 20, 2015.30
Section 1782 is applicable to various categories of cases. For example, the Supreme Court in Intel Corp. v. Advanced Micro Devices, Inc. applied § 1782 regarding the production of relevant documents in the U.S. for use in an antitrust suit before the Directorate-General for Competition of the Commission of the European Communities.31In In re Request For Judicial Assistance from Seoul Dist. Criminal Court, Seoul, Korea, the Ninth Circuit honored a request for judicial assistance from the Seoul District Criminal Court to produce documents relevant to a Korean citizen being investigated in Korea for violating Korean currency laws.32In In re Letters Rogatory, from the Local Court, a Michigan district court complied with a letter rogatory from a German court requesting § 1782 assistance to obtain blood to establish paternity of a child born to a German mother, although Michigan law did not require a blood sample to prove paternity when the father acknowledged it.33And in Akebia, the Ninth Circuit granted a § 1782 application for discovery related to ongoing EPO and JPO Opposition proceedings, as well as future foreign adversarial proceedings that Akebia was contemplating but had not yet commenced.34
While foreign tribunals retain discretion on whether to accept materials obtained in the U.S.,35the Akebia opinion provides an avenue for parties seeking discovery of U.S.-based evidence for use in EPO Oppositions.36Indeed, the U.S. Supreme Court in Intel explained that:
"nothing in the text of § 1782 limits a district court's production-order authority to materials that could be discovered in the foreign jurisdiction if the materials were located there."37
So, although the EPO typically prohibits discovery in Opposition proceedings, that alone does not necessarily preclude using the fruits of U.S. discovery in EPO Oppositions.
Some questions remain open, including whether § 1782 is an option for a non-U.S. company whose presence in the U.S. is only through its U.S.-based subsidiary. However, in light of Akebia there are potential benefits such as bolstering patentability arguments for the patentee or invalidity arguments for the challenger, proving a prior art reference was or was (or was not) publicly available before the critical filing dates, combating evidentiary challenges, and attacking an expert witnesses' credibility. The Ninth Circuit's opinion in Akebia, may provide a viable option to seek and obtain information for use in an EPO opposition that may otherwise be unavailable.
Endnotes
1See Convention on the Grant of European Patents, Oct. 5, 1973, 1065 U.N.T.S. 199 (hereafter 1973 European Patent Convention ("EPC")), art. 117, rule 117.
2Id.
3Ved. P. Nanda & David K. Pansius, Litigation of International Disputes in U.S. Courts, § 17:46 (2014) (explaining that when the information sought by foreign persons was already discovered in an ongoing U.S. litigation, § 1782 does not need to be satisfied).
4 Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 249 (2004) (citing Act of Mar. 2, 1855, ch. 140, § 2, 10 Stat. 630; Act of Mar. 3, 1863, ch. 95, § 1, 12 Stat. 769).
528 U.S.C. § 1782(a).
6 Litig. of Int'l Disputes in U.S. Courts, § 17:46.
7S. Rep. No. 88-1580 at 3783 (1964).
8542 U.S. 241, 247, 252 (2004).
9Id. at 261.
10Id. at 262.
11Id.
12793 F.3d 1108 (9th Cir. 2015).
13Id. at 1110.
14Application for Discovery in Aid of Foreign Proceedings Pursuant to 28 U.S.C. § 1782, In re Application of Akebia Therapeutics, Inc. For An Order Granting Leave To Issue Subpoena For The Taking Of Discovery Pursuant To 28 U.S.C. § 1782, 14-mc-80294, at 9-10 (Oct. 21, 2014 N.D. Cal.).
15Id. at 13-19 (also explaining that the discovery sought in the § 1782 application is narrowly tailored to reveal information relevant to the EPO and JPO proceedings).
16Akebia Therapeutics, Inc., 793 F.3d at 1110.
17Application for Discovery in Aid of Foreign Proceedings Pursuant to 28 U.S.C. § 1782, In re Application of Akebia Therapeutics, Inc. For An Order Granting Leave To Issue Subpoena For The Taking Of Discovery Pursuant To 28 U.S.C. § 1782, 14-mc-80294, at 1 (Oct. 21, 2014 N.D. Cal.)
18Akebia Therapeutics, Inc., 793 F.3d at 1110.
19Order Denying FibroGen's Motion to Stay, 14-mc-80294, In re Application of Akebia Therapeutics, Inc. For An Order Granting Leave To Issue Subpoena For The Taking Of Discovery Pursuant To 28 U.S.C. § 1782, at 2 (Mar. 9, 2015 N.D. Cal.).
20Akebia Therapeutics, Inc., 793 F.3d at 1110.
21Intel Corp., 542 U.S. at 244-45.
22Akebia Therapeutics, Inc., 793 F.3d at 1110.
23Id. at 1111 ("Both of [the EPO and the JPO] conduct quasi-judicial proceedings. Those proceedings take place within the agency but carry many of the hallmarks of traditional judicial proceedings . . . .").
24Id. (explaining that "FibroGen overstates the tension, if any, that exists between § 1782 and the AIA").
25Id. (comparing § 1782, which involves a broad range of foreign proceedings, with the AIA, which is limited to U.S. patent proceedings).
26 Id. The court did not expressly consider the first Intel factor, that "when the person from whom discovery is sought is a participant in the foreign proceeding . . . the need for § 1782(a) aid generally is not as apparent as it ordinarily is when evidence is sought from a nonparticipant in the matter arising abroad." Intel at 264. While this factor weighed against granting Akebia's § 1782 application, the court apparently decided that, on balance, the other factors supported Akebia. Akebia at 1112. Based on Akebia and the first Intel factor, an interested person seeking discovery under § 1782 may be able to obtain information from a broad range of people for use in an EPO Opposition.
27Id. at 1112.
28Order Granting Stay, FibroGen, Inc. v. Akebia Therapeutics, Inc., 2015 WL 5097135 (S. Ct. Aug. 31, 2015).
29Order Vacating Stay, FibroGen, Inc. v. Akebia Therapeutics, Inc., 2015 WL 5145778 (S. Ct. Sep. 2, 2015).
30Joint Status Report, In re Application of Akebia Therapeutics, Inc. For An Order Granting Leave To Issue Subpoena For The Taking Of Discovery Pursuant To 28 U.S.C. § 1782, 14-mc-80294, at 2 (Nov. 5, 2015 N.D. Cal.).
31542 U.S. 241, 246 (2004).
32555 F.2d 720 (9th Cir. 1977).
3329 F. Supp. 2d. 776 (E.D. Mich. 1998).
34 See Akebia at 1110; see also Intel at 254-55 (explaining that an applicant may invoke § 1782 although a proceeding before a foreign tribunal is neither pending nor imminent).
35 Infineon Techs. AG v. Green Power Techs. Ltd., 247 F.R.D. 1, 4 (D.D.C. 2005) (explaining that, in the context of § 1782, a German court had discretion to choose whether to accept materials offered by German counsel).
36But see In re Posco, 794 F.3d. 1372 (Fed. Cir. 2015) (holding that § 1782 does not provide the exclusive means for securing documents from another party for use in a foreign proceeding).
37 Intel Corp., 542 U.S. at 260.
Originally printed in CIPA Journal. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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