Gathering Evidence in The United States for Use in Foreign Litigation

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United States law allows parties involved in foreign litigation to conduct narrowly focused discovery with the assistance of U.S. federal courts, to obtain evidence for use in the foreign litigation. While used only relatively infrequently, the procedure provides a useful tool for companies sued for patent infringement by U.S. Non-Practicing Entities in foreign countries, and for seeking otherwise unobtainable information relating to FRAND disputes involving asserted Standard-Essential Patents, among other potential uses.

Section 1782 of Title 28 of the United States Code permits district courts to authorize discovery for use in a foreign proceeding. In relevant part, Section 1782 states: “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 . . . . The order may be made . . . upon the application of any interested person.”  The U.S. Supreme Court has explained that Section 1782 is “the product of congressional efforts, over the span of nearly 150 years, to provide federal-court assistance in gathering evidence for use in foreign tribunals.”[1]  The statute has, over the years, been given increasingly broad applicability.  Today, Section 1782 allows a litigant in foreign proceedings to seek a “broad range of discovery” so as to “assist foreign tribunals in obtaining relevant information that the tribunals may find useful.”

In the intellectual property context, Section 1782 provides a useful tool for companies sued for patent infringement by U.S. Non-Practicing Entities (also sometimes called Patent Assertion Entities) in foreign countries, and for seeking otherwise unobtainable information relating to FRAND (Fair, Reasonable, And Non-Discriminatory) disputes involving asserted Standard-Essential Patents (SEP), among other potential uses.

 

Three statutory requirements must be satisfied before a U.S. district court may grant assistance under Section 1782: (1) the person from whom discovery is sought must reside or be found in the federal judicial district in which the application is filed; (2) the discovery must be for use in a proceeding before a foreign tribunal; and (3) the application must be made by a foreign or international tribunal or any interested person. 

 

The first requirement ensures that the district court can exercise personal jurisdiction over the entity from whom deposition testimony and/or documents are sought.  The second requirement ensures that parties invoke the power and resources of the United States judiciary only for reasons related to actual foreign proceedings.  The term “tribunal” includes conventional civil, commercial, criminal, and administrative courts.  The third requirement ensures that only those applicants with a true legal interest in the information invoke the procedure.  Any actual party to the foreign proceedings will usually satisfy the “interested person” requirement.

 

As the Supreme Court further explained in Intel, once an applicant establishes that the three statutory requirements for Section 1782 relief are satisfied, the district court has discretion to grant the Application based on certain equitable considerations, including:  (i) whether the discovery sought is within the jurisdiction of the foreign proceeding, (ii) 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, (iii) whether the Section 1782 request conceals an attempt to circumvent foreign proof gathering restrictions, and (iv) whether the request is otherwise unduly intrusive or burdensome.

 

The bounds of the district court’s discretion are informed by the twin aims of the statute, which are to provide efficient means of assistance in U.S. federal courts to participants in international litigation, and to encourage foreign countries by example to provide similar means of assistance to litigants in U.S. courts.  Thus, Section 1782 has been broadly interpreted to permit U.S. courts to grant “wide assistance” to foreign litigants.

 

Procedurally, Section 1782 applications are typically filed and decided ex parte, that is, without the respondent’s advance knowledge or participation.  The reason for such treatment is that the respondent will have the opportunity to move to quash or modify any subpoena under Rule 45 of the Federal Rules of Civil Procedure, on any available ground.  District courts thus defer dealing with opposition to the discovery unless and until such opposition is actually raised by the respondent.

 

Many judicial systems outside the U.S. do not provide for or permit the parties to conduct discovery of information from each other.  Even in those jurisdictions that do provide for some form of discovery, it is often limited in scope.  There is no rule requiring an interested person to have tried and failed to obtain the discovery through the foreign proceeding before seeking discovery under Section 1782.

 

Finally, a foreign litigant seeking judicial assistance under Section 1782 has a responsibility to make an appropriately focused discovery request to the district court; full-scale U.S.-style litigation discovery is not authorized and will be denied.  Nonetheless, to the extent the respondent raises any objections about the relevance, breadth, or burden of the requested discovery, those concerns are addressed most appropriately through proceedings after the subpoena is served.