Issue to Watch: Section 1782 and the Unified Patent Court

“European Union flag” by YanniKouts

is licensed under CC BY 2.0.

Section 1782 is big business, with large numbers of petitions filed in federal courts every year. 28 U.S.C. § 1782 is a federal statute authorizing federal courts order discovery for use in a foreign or international tribunal (but not an international arbitral tribunal). The Supreme Court elaborated various aspects of Section 1782 in its 2004 decision Intel Corp. v. Advanced Micro Devices, Inc. The law includes applications of statutory factors and, if satisfied, a balancing of discretionary considerations commonly referred to as the Intel factors.

This blog post is not meant to review the law of Section 1782 or the “typical” 1782 case. Instead, the goal is to flag one potential question embedded in Section 1782 cases that has generated a split in authority.

Specifically, in Intel, the Supreme Court identified four factors to aid a district court in deciding whether to authorize discovery: (1) whether discovery is sought from a participant in the foreign proceeding, in which case the foreign tribunal might order discovery itself; (2) the receptivity of the foreign tribunal to U.S. judicial assistance; (3) whether the discovery request seeks to circumvent foreign laws or policies; and (4) whether the request is unduly intrusive or burdensome.

In a series of recent cases, federal courts have been asked to order discovery for use in the Unified Patent Court (UPC), which is a transnational court for 18 members of the European Union. After opening on June 1, 2023, the UPC can hear cases on infringement and revocation of European patents.

In at least four instances, petitioners have asked U.S. courts to order discovery for use in the UPC. In all four cases, federal courts have acknowledged that the UPC qualified as a foreign tribunal eligible for Section 1782. Where they have split is on the question whether the UPC would be receptive to Section 1782 evidence—that is, Intel factor 2. The problem is that the UPC is so new that there is not clear information one way or another. This lack of evidence led to a judge in the Southern District of California to lean against ordering discovery, while judges in the District of Maine, the Eastern District of New York, and the Northern District of California concluded that Intel factor 2 favored discovery because there was no reason to believe the UPC would be unreceptive.

I find the latter view more persuasive—there is no reason to believe the UPC would be unreceptive to evidence provided under Section 1782—but presumably the parties seeking evidence will try to use it in the UPC, so more reliable information should be forthcoming. That said, this uncertainty could be avoided if federal courts followed Professor Andrea Wang’s suggestion that they should notify the foreign tribunals of pending Section 1782 petitions. Perhaps the UPC could find a mechanism to share their receptivity, thus sparing federal courts of the need to guess what the foreign tribunal will do.