US Discovery Law Aids Response to Patent Court Evidence Demands

The launch of the Unified Patent Court has potential to reshape global patent litigation. The UPC requires a statement of claim to initiate a case that must include “the evidence relied on” to support infringement allegations—a requirement that places a heavy burden on a UPC claimant. A US discovery tool—28 U.S.C. § 1782—may assist in overcoming such burden.

Pre-Suit Discovery

The UPC’s “evidence relied on” requirement could be a gatekeeping hurdle for claimants because they may request orders only to preserve evidence, or for inspection of premises. These orders only have effect in member states and, so far, have been issued in limited circumstances, such as where the accused products were publicly displayed or there was a demonstrated risk of destroying evidence.

At least for defendants and third parties residing in the US, Section 1782—which authorizes a federal district court to allow US discovery for use in a foreign proceeding upon satisfying certain factors—may provide a much-needed tool for UPC claimants to collect evidence and prepare a statement of claim. With the advent of the UPC, Section 1782 promises to be utilized even more.

Standards for Section 1782

A Section 1782 applicant must meet three statutory requirements. First, the request must be made by a foreign tribunal or interested person. Second, the discovery must be for use in a foreign or international proceeding. Finally, the person from whom discovery is sought must reside in the district where the application is made.

Even if all three statutory requirements are met, however, a district court has the discretion to deny the request upon consideration of the following non-dispositive “Intel factors.”

These factors consider whether the person from whom discovery is sought is participating in the foreign proceeding; the nature of the foreign tribunal, including whether it would be receptive to US federal-court judicial assistance; whether the Section 1782 request is an attempt to skirt foreign discovery restrictions; and whether the request is unduly intrusive or burdensome.

Potential Claimants

Case law demonstrates the potential usefulness of Section 1782 for UPC proceedings. For example, litigants are considered “interested person[s]” under the statute, capturing future UPC claimants. And, “for use in a foreign or international tribunal” requirement is satisfied by an anticipation of a foreign filing upon receipt of discovered documents.

The UPC also “exercises governmental authority conferred by two or more nations,” likely rendering it an “international tribunal” under the statute. Lastly, a corporation “reside[s]” or can be “found” where it maintains its principal place of business, or is incorporated.

Potential Challenges

Because the UPC hasn’t yet received evidence under Section 1782, the second Intel factor may be a potential hurdle. While US courts have generally granted Section 1782 discovery when the foreign court hasn’t indicated if it would accept such evidence, at least some courts denied Section 1782 applications based on the foreign tribunal’s or government’s explicit preference against US discovery.

For example, the court in In re Team Co., Ltd., found the second Intel factor in favor without any evidence regarding Japanese courts’ receptivity to US discovery. But courts in Schmitz v. Bernstein Liebhard & Lifshitz LLP and In re Qualcomm Inc. denied Section 1782 applications based on the German and South Korean governments’ requests, respectively.

Filing a Section 1782 application may also provide notice to a would-be defendant in a UPC action, potentially allowing the target to preemptively challenge the validity of a patent or seek a ruling of non-infringement, whether in the EU, the US, or elsewhere.

With no Section 1782 application filed for a UPC proceeding to date, it’s unclear how the UPC would treat a claimant’s use of US discovery obtained through a Section 1782 application. But until the UPC reaches this issue, Section 1782 remains a potentially powerful tool for securing necessary pre-claim evidence.

This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law and Bloomberg Tax, or its owners.

Author Information

Matthew J. Rizzolo is partner in Ropes & Gray’s IP litigation practice in Washington, D.C.

Matthew R. Shapiro is counsel in Ropes & Gray’s IP litigation practice in New York.

Hyun-Joong (Daniel) Kim is counsel in Ropes & Gray’s IP litigation practice in New York.

Brendan McLaughlin contributed to this article.

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