Since the Unified Patent Court began operations in
June 2023, it has become a major patent litigation forum.
Generally, the scope and available tools of discovery in European
jurisdictions, and now at the UPC, are relatively limited compared
to that in the U.S. To support their cases before the UPC, parties
have employed Title 28 of the U.S. Code, Section 1782, to seek
discovery from affiliated U.S. entities.
In six recent cases, courts within four circuits in the U.S. have
addressed Section 1782 discovery applications in connection with
UPC proceedings. This article examines the approaches those courts
have taken in evaluating the various factors, and identifies
potential trends and takeaways.
The analysis aims to provide guidance for parties contemplating
Section 1782 discovery to augment their litigation arsenal at the
UPC and for parties facing such discovery requests.
Generally, Section 17821 provides federal court
assistance by allowing discovery in the U.S., which litigants can
then use in foreign proceedings. An interested party, such as a
litigant in a foreign suit, can obtain discovery through Section
1782 from U.S. entities that are affiliated with their opponents in
the foreign suit. This discovery may be otherwise unavailable, or
not easily obtainable, in the foreign tribunal. It thus provides
significant strategic value to litigants.
A party initiates the process by filing a Section 1782 application
outlining the discovery sought in the district court where the
target resides or is found.
The district court evaluates the application using a
two‑step process.
The court first determines whether it has the statutory authority
to grant the application. If so, the court then proceeds to
consider the discretionary factors, which are often referred to as
the Intel factors.2
If the weight of the discretionary factors favors allowing the
requested discovery, the court grants the application. The
applicant can then serve a subpoena on the target individual or
entity commanding them to produce the requested information.
It is important to note that a Section 1782 application is usually
made ex parte, that is, without notice to the target. Some courts
require the party seeking discovery to provide notice to the
target, so it has the opportunity to respond before the court rules
on the application. Other courts, if they allow discovery, will
allow the target to challenge the subpoena or its scope after the
fact.
Our research identified six cases filed with six different
district courts in the U.S. where parties sought Section 1782
discovery for use in UPC proceedings.3
The cases are:
- In re: Hand Held Products Inc., decided by the U.S. District Court for the District of Massachusetts on Oct. 24;
- In re: Volkswagen AG, decided by the U.S. District Court for the District of Maine on Oct. 9;
- Daedalus Prime LLC v. MediaTek USA Inc., decided by the U.S. District Court for the Northern District of California on Sept. 16;
- In re: Volkswagen AG, decided by the U.S. District Court for the Eastern District of New York on April 10;
- Amazon.com Inc. v. Nokia of America Corp., decided by the U.S. District Court for the District of Delaware on Jan. 16; and
- In re: Netgear Inc., decided by the U.S. District Court for the Southern District of California on Jan. 31.
In four of these cases — Hand Held, Daedalus and the two Volkswagen cases — the applicants successfully obtained the desired discovery at least in part;4 and in two cases the applications were denied.5 In all six cases, the court's statutory authority to grant the application either was not disputed or found satisfied, with the court's discussion focusing on the discretionary factors.
Statutory Factors
Section 1782(a) sets forth three requirements: (1) the target
person or entity "resides or is found" in the district;
(2) the sought discovery is "for use in a proceeding in a
foreign or international tribunal,"; and (3) the application
is made by an "interested person."
As noted above, in the cases reviewed here, the courts found the
statutory requirements met. Indeed, in some cases, the parties did
not dispute the statutory factors, so the courts, in turn, did not
discuss them.6
Five of the six cases involved discovery sought from corporate
entities. Courts have expressed different views on the standard for
when a corporation is found.7 Typically, however, as in
the cases reviewed here, parties agree on where an entity is found
based on its registration and where it conducts its business.
The other two statutory requirements are also easily satisfied
where the applicant is a litigant in an ongoing UPC
action.8 In such cases, the applicant has little
difficulty establishing that the discovery sought will serve useful
purposes in the UPC proceeding and that its interest is at
stake.
The Intel Discretionary Factors
If the statutory requirements are met, the court then considers
the discretionary factors to determine whether to grant a Section
1782 application.
These factors include: (1) whether the evidence sought is within
the foreign tribunal's reach; (2) the nature of the foreign
tribunal, the character of the proceedings, and whether the foreign
tribunal would be receptive of the requested discovery; (3) whether
the application conceals an attempt to circumvent foreign
proof-gathering restrictions or other policies of a foreign country
or the U.S.; and (4) whether the discovery requests are unduly
intrusive or burdensome.9
Although these factors were initially identified by the Supreme
Court and are binding on all federal courts, district courts within
different circuits have developed diverging interpretations in
practice. It is therefore important that an applicant considers the
law as it has developed in the district court hearing the matter
and the circuit in which it sits.
Factor One: Whether the Evidence is Within the UPC's Reach
In the six cases we studied, five courts found this factor
weighs against allowing the requested discovery.10 The
core inquiry centers on whether the UPC permits the requested
discovery and whether it has authority to compel production. To
support their respective positions, parties have supplied the court
with expert declarations, usually from European lawyers who
litigate in the UPC, opining on pertinent UPC discovery
rules.
Generally, courts recognize that the UPC discovery rules, such as
UPC Rule of Procedure 190(1), are more restrictive compared to
discovery rules in the United States. That alone, however, does not
lead to the conclusion that the discovery sought is unavailable
under the UPC process.
In Netgear, for instance, the court found the
applicants "speculate[d] that they might be unsuccessful"
in seeking their desired discovery at the UPC but did not show that
the discovery sought would be unavailable.11
Factor Two: the UPC's Receptivity of the Requested U.S. Discovery
Courts have held diverging views on the UPC's willingness to
consider evidence obtained through Section 1782.
In Volkswagen, Hand
Held and Daedalus Prime, the U.S. District
Courts for the Eastern District of New York, the District of
Massachusetts and the Northern District of California,
respectively, found no reason to believe that the UPC would not be
receptive to such evidence.12 For this reason, these
courts viewed this factor in favor of allowing discovery.
In Amazon.com., a more recent case before the
U.S. District Court for the District of Delaware, the parties
appeared to agree that the UPC would be receptive to the U.S.
discovery.13 There, in challenging the court's grant
of the Section 1782 application, the respondent disputed only the
court's evaluation of the other three discretionary
factors.
In contrast, in Netgear, the first case addressing
Section 1782 application since the UPC's establishment, the
U.S. District Court for the Southern District of California found
this factor weighed against allowing Section 1782
discovery.14
To that court, the UPC was, at least at that time, a new entity,
and it was unclear how it would view Section 1782 discovery or U.S.
judicial assistance.15 Whether the court will change its
view remains to be seen.
In a more recent case, Volkswagen, the U.S. District Court for the
District of Maine found this factor to be neutral.16 The
court noted the two opposing views described above, but declined to
adopt either.
Factor Three: Attempt to Circumvent Foreign Proof-Gathering Restrictions
Courts have also taken different views as to what constitutes
circumvention.
In the two Volkswagen cases, the U.S. District
Courts for the District of Maine and the Eastern District of New
York noted that circumvention required a showing that the applicant
was seeking discovery in bad faith or to misuse Section
1782.17
Neither court found bad faith, so they weighed this factor in
favor of allowing the discovery. Under this bad faith requirement,
even if the desired discovery was available in the foreign
tribunal, going the Section 1782 route may not suffice to show
circumvention.
In Netgear and Amazon.com,
respectively before the U.S. District Courts for the Southern
District of California and the District of Delaware, this factor
was found to weigh against allowing discovery.18
In both instances, the courts appeared to fault the applicant for
not attempting to use available UPC procedures for the desired
discovery before resorting to Section 1782.
In Amazon.com, for instance, the court reiterated
its view that failure to first attempt discovery in the foreign
tribunal indicates an attempt to circumvent the foreign
tribunal's less-than-favorable discovery
rules.19
This failure-to-attempt approach stands in contrast to the bad
faith approach. The former tightly links the court's assessment
of the circumvention factor to that of factor one: whether the
requested discovery is within the UPC's reach. If the court
finds the requested discovery available using UPC procedures that
the applicant has not attempted, applicants may have a hard time
winning on the circumvention factor.
Factor Four: Whether the Requested Discovery Is Unduly Intrusive or Burdensome
This factor heavily depends on the particular discovery requests
at issue, such as their probative value, scope and potential
confidentiality concerns. Several lessons can still be
discerned.
First, where the target entity previously produced or is obligated
to produce the requested discovery — or part of it — in
another case, the court will likely find reproducing the same
information to not be unduly burdensome.20 This may
occur, for instance, where a patent owner files suits against
various defendants over the same or related patents, rendering the
same information relevant and discoverable in multiple
proceedings.
Second, in appropriate circumstances, a court may allow Section
1782 discovery to reach materials from nontarget entities located
outside of the U.S. For instance, the discovery requests may use
broad definitional language that encompasses materials from foreign
parent or affiliates of the target entity.
For such requests, the U.S. Courts of Appeal for the Second and
the Eleventh Circuits expressed the view that there is no
categorical extraterritorial ban, leaving the matter to the
court's discretion.21 Under this view, courts may
allow Section 1782 discovery to reach evidence located abroad if
they determine that target entity has possession, custody or
control of the subject evidence.
In Daedalus Prime, the U.S. District Court for the
Northern District of California, sitting in the Ninth Circuit,
shared a similar view.22 And in Hand Held,
the U.S. District Court for the District of Massachusetts, sitting
in the First Circuit, took a slightly different approach but a
similar view in essence.23
There, the Section 1782 applicant sought information potentially
reaching materials within the possession of the target entity's
European parent.24 The court analyzed "possession,
custody, or control" in addition to the Intel factors, rather
than as part of the fourth factor, concluding that the target
entity must produce materials if it has possession, custody or
control.25, 26
Third, confidentiality concerns associated with a nonparty's
information may help establish the intrusive nature of the
requested discovery.27 This applies particularly where
the target entity, while having the desired information, such as
licensing information involving parties to the UPC litigation, does
not otherwise share an interest in the dispute.
On the other hand, where the applicant exhibits willingness to
cooperate and alleviate potential confidentiality concerns, such as
through entering protective orders, courts tend to be more willing
to allow discovery.28
Conclusion
Section 1782 discovery can provide significant strategic value to litigants engaged in litigation at the UPC and elsewhere. As the UPC continues to serve as a major patent litigation forum, more parties may find themselves pursuing or challenging a Section 1782 application. Parties should remain informed of how courts evaluate various factors as more courts speak on the issue, particularly where courts' views differ.
Footnotes
1. 28 U.S.C § 1782(a) provides, "[t]he 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, including criminal investigations conducted before formal accusation."
2. The name derives from the Supreme Court decision, Intel Corp. v. Advanced Micro Devices Inc., 542 U.S. 241, 264-65 (2004), which identifies the discretionary factors.
3. Applicants may file §1782 applications seeking discovery for use in parallel proceedings in multiple forums. This analysis focuses on the UPC aspect.
4. In re: Hand Held Prods. Inc., No. 24-MC-91378-NMG, 2024 WL 5136071 (D. Mass. Oct. 24, 2024); In re: Volkswagen AG, No. 2:24-MC-00097-JAW, 2024 WL 4452588 (D. Me. Oct. 9, 2024) ("Volkswagen (D. Me.)"); Daedalus Prime LLC v. MediaTek USA Inc., No. 24-MC-80208-VKD, 2024 WL 4220000 (N.D. Cal. Sept. 16, 2024) & Daedalus Prime LLC v. MediaTek USA Inc., No. 24-MC-80208-VKD, Dkt. No. 18 (N.D. Cal. Sept. 25, 2024) (Order granting amended application); In re: Volkswagen AG, No. 24-MC-0832 (JS), 2024 WL 1556912 (E.D.N.Y. Apr. 10, 2024) ("Volkswagen (E.D.N.Y.)").
5. Amazon.com, Inc. v. Nokia of Am. Corp., No. CV 24-493-GBW, 2025 WL 220301 (D. Del. Jan. 16, 2025) (granting respondent's motion to quash applicant's subpoena);In re: Netgear Inc., No. 23MC794-BLM, 2024 WL 390059 (S.D. Cal. Jan. 31, 2024).
6. E.g., Volkswagen (D. Me.), 2024 WL 4452588, at *2; Amazon.com, 2025 WL 220301, at *4.
7. See In re: Eli Lilly & Co., 37 F.4th 160, 167 (4th Cir. 2022) (noting the Fourth Circuit's disagreement with the Second Circuit's interpretation of "resides or is found"). Compare In re: del Valle Ruiz , 939 F.3d 520, 528 (2d Cir. 2019) ("[Section. 1782's 'resides or is found' language extends to the limits of personal jurisdiction consistent with due process") with In re: Eli Lilly , 37 F.4th at 165 ("[A] corporation is found where it is physically present by its officers and agents carrying on the corporation's business.").
8. Although not part of this analysis, we note that §1782 does not require that the foreign proceeding at issue must be ongoing or imminent. See Intel, 542 U.S. at 259.
9. Intel, 542 U.S. at 264–65.
10. The court in Volkswagen (E.D.N.Y.) reached a different conclusion finding this factor weighing in favor of granting the application. Volkswagen (E.D.N.Y.), 2024 WL 1556912, at*2. The court noted that the corporate principal from whom discovery was sought was not a party to the UPC proceedings and may not be compelled to produce information. Id.
11. Netgear, 2024 WL 390059, at *4.
12. Volkswagen (E.D.N.Y.), 2024 WL 1556912, at *2; Hand Held, 2024 WL 5136071, at *6; Daedalus Prime, 2024 WL 4220000, at *6.
13. Amazon.com, 2025 WL 220301, at *4.
14. Netgear, 2024 WL 390059 at *5.
15. Id.
16. Volkswagen (D. Me.), 2024 WL 4452588, at *4-5 (expressing disagreement with the diverging views expressed by the courts in Netgear and Volkswagen (E.D.N.Y.)).
17. Volkswagen (D. Me.), 2024 WL 4452588, at *5; Volkswagen (E.D.N.Y.), 2024 WL 1556912, at *2.
18. Netgear, 2024 WL 390059, at *5; Amazon.com, 2025 WL 220301, at *6.
19. Amazon.com, 2025 WL 220301, at *5-6 (citing In re: Nokia Techs. Oy, No. CV 23-01395-GBW, 2024 WL 1675025 (D. Del. Apr. 18, 2024)).
20. See, e.g., Amazon.com, 2025 WL 220301, at *7; Volkswagen (D. Me.), 2024 WL 4452588, at *6; Volkswagen (E.D.N.Y.), 2024 WL 1556912, at *2.
21. See In re: del Valle Ruiz, 939 F.3d at 533; Sergeeva v. Tripleton Int'l Ltd., 834 F.3d 1194, 1200 (11th Cir. 2016) (holding that a party can be required to produce responsive documents outside of the United States as long as they have possession, custody, or control of such materials).
22. Daedalus Prime, 2024 WL 4220000, at *7.
23. Hand Held, 2024 WL 5136071, at *4.
24. Id. at *4-5.
25. Id. at *5.
26. Whether a U.S. entity has "possession, custody, or control" over a foreign affiliate's documents is a topic of frequent litigation. Most jurisdictions follow a "legal control" test for information that is within a party's control. Under this test, a party has no duty to search for or produce information unless it has "the legal right to obtain documents upon demand." In re: Citric Acid Litig., 191 F.3d 1090, 1107 (9th Cir. 1999); see also Seifi v. Mercedes-Benz U.S.A. LLC, No. 12-CV-05493TEH (JSC), 2014 WL 7187111, at *3 (N.D. Cal. Dec. 16, 2014) ("Plaintiffs must show that Defendant has the legal right to compel production of the documents from [its parent]."). Some jurisdictions, however, follow a looser standard in which a party must produce information that it has the "practical ability to obtain." Banca Pueyo, S.A. v. Lone Star Fund IX, L.P., 2020 WL 10046110, at *19 (N.D. Tex. Sept. 25, 2020), Banca Pueyo, S.A. v. Lone Star Fund IX (U.S.), L.P., No. 3:18-MC-100-M, 2020 WL 10046110 (N.D. Tex. Sept. 25, 2020); see also Sergeeva, 834 F.3d at 1201 (control "may be established where affiliated corporate entities — who claim to be providers of complimentary and international financial services — have actually shared responsive information and documents in the normal course of their business dealings"). The biggest practical difference is that a subsidiary has no duty to even ask for documents or information from a parent or sister corporation under the "legal control" standard but does under the "practical ability to obtain" standard.
27. See, e.g., Netgear, 2024 WL 390059, at *5 (finding the fourth factor weighed against the requested discovery in view of confidentiality concerns associated with non-party's trade secrets).
28. See, e.g., Amazon.com, 2025 WL 220301, at *7.
Originally published by Law360.
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