-
USCA1 Opinion
December 4, 1992 ____________________
UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT
_____________________
No. 92-1663
IN RE: APPLICATION OF ASTA MEDICA, S.A., ET AL.,
FOR AN ORDER TO TAKE DISCOVERY OF DAVID W.
MORIARTY, JR., AND FOR A SUBPOENA DUCES TECUM,
FOR USE IN FOREIGN COUNTRIES IN CIVIL
PROCEEDINGS THERE PENDING,
___________
PFIZER, INC. AND DAVID W. MORIARTY, JR.,
Appellants.
____________________
No. 92-1726
IN RE: APPLICATION OF ASTA MEDICA, S.A., ET AL.,
FOR AN ORDER TO TAKE DISCOVERY OF
HERMANN FAUBL AND FOR A SUBPOENA DUCES TECUM,
FOR USE IN FOREIGN COUNTRIES IN CIVIL
PROCEEDINGS THERE PENDING,
___________
PFIZER, INC. AND HERMANN FAUBL,
Appellants.
____________________
No. 92-1727
IN RE: APPLICATION OF ASTA MEDICA, S.A., ET AL.,
FOR AN ORDER TO TAKE DISCOVERY OF
THOMAS MOTT BRENNAN AND FOR A SUBPOENA DUCES TECUM,
FOR USE IN FOREIGN COUNTRIES IN CIVIL
PROCEEDINGS THERE PENDING,
___________
PFIZER, INC. AND THOMAS MOTT BRENNAN,
Appellants.
____________________
No. 92-1728
IN RE: APPLICATION OF ASTA MEDICA, S.A., ET AL.,
FOR AN ORDER TO TAKE DISCOVERY OF PFIZER, INC.
AND IRVING MAURICE GOLDMAN AND FOR A
SUBPOENA DUCES TECUM, FOR USE IN FOREIGN COUNTRIES
IN CIVIL PROCEEDINGS THERE PENDING,
___________
PFIZER, INC. AND IRVING MAURICE GOLDMAN,
Appellants.
____________________
No. 92-1729
IN RE: APPLICATION OF ASTA MEDICA, S.A.,
ET AL., FOR AN ORDER TO TAKE DISCOVERY OF
BARRY MALCOLM BLOOM AND IRVING MAURICE GOLDMAN
AND FOR A SUBPOENA DUCES TECUM,
FOR USE IN FOREIGN COUNTRIES
IN CIVIL PROCEEDINGS THERE PENDING,
___________
BARRY MALCOLM BLOOM AND IRVING MAURICE GOLDMAN,
Appellants.
____________________
APPEALS FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MAINE
[Hon. D. Brock Hornby, U.S. District Judge]
___________________
____________________
Before
Torruella and Boudin, Circuit Judges,
______________
and Keeton,* District Judge.
______________
_____________________
Stephen D. Brown, with whom Bernard J. Bonn III, Timothy C.
_________________ ___________________ __________
Blank, Joseph A. Tate, Dechert Price & Rhoads, Rudolf E. Hutz,
_____ ______________ _______________________ ______________
and Connolly, Bove, Lodge & Hutz, were on brief for appellants.
____________________________
Zachary Shimer, with whom Stuart D. Baker, W. Colm McKeveny,
______________ _______________ ________________
____________________
* Of the District of Massachusetts, sitting by designation.
Chadbourne & Parke, Michael A. Nelson, Deborah M. Mann, Jensen
__________________ _________________ _______________ ______
Baird Gardner & Henry, John D. Murnane, Brumbaugh, Graves,
________________________ ________________ ___________________
Donohue & Raymond, Marvin C. Soffen and Ostrolenk, Faber, Gerb &
__________________ ________________ ________________________
Soffen, were on brief for appellees Asta Medica, S.A., Dagra BV,
______
Laboratoires Sarget, S.A., NAPP Laboratories Limited, and Hovione
Sociedade Quimica, S.A.
____________________
____________________
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TORRUELLA, Circuit Judge. Pursuant to 28 U.S.C.
______________
1782(a),1 district courts are authorized to assist foreign and
international tribunals, and the litigants before such tribunals,
in obtaining discovery in the United States for use in
proceedings abroad. In this appeal, we examine whether an
applicant under 28 U.S.C. 1782(a) has to make a threshold
showing, prior to obtaining such discovery, that the information
sought in the United States would generally be subject to
discovery in the foreign jurisdiction. The United States
District Court for the District of Maine held that such a
requirement was not necessary and entered an order granting a
request for discovery. In re Application of Asta Medica, S.A.,
_______________________________________
794 F. Supp. 442 (D.Me. 1992). We reverse.
I
Appellant Pfizer, Inc. ("Pfizer") is involved in patent
litigation proceedings in Europe against Asta Medica, S.A.,
____________________
1 28 U.S.C. 1782(a) provides in pertinent part:
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 foreign or
international tribunal. The order may be
made pursuant to a letter rogatory
issued, or request made, by a foreign or
international tribunal or upon the
application of any interested person and
may direct that the testimony or
statement be given, or the document or
other thing be produced, before a person
appointed by the court.
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Laboratories Sarget, S.A., Dagra, BV, and Napp Laboratories, Ltd.
(collectively "the foreign companies"), four European
pharmaceutical companies. Litigation is pending in France,
Belgium, England and the Netherlands over a patent owned by
Pfizer for several methods to manufacture the antibiotic
doxycycline.
The process of the patent at issue involves homogeneous
catalyzed production of doxycycline. The foreign companies
assert that Pfizer derived the invention of the process from an
Italian company, Ankerfarm, S.p.A. ("Ankerfarm"), in the early
1970's while Pfizer and Ankerfarm negotiated a proposed joint
venture involving the new process. In 1971 and 1972, Pfizer
employees met with Ankerfarm employees working on the doxycycline
processing technology in Milan and allegedly learned the
characteristics of the invention. Although the joint venture
between Ankerfarm and Pfizer never materialized, Pfizer obtained
its own patents on the process. The foreign companies want to
establish that the process was in the public domain before Pfizer
applied for the patent and therefore, Pfizer's patents are
invalid. They, therefore, seek to obtain documents and the
testimony of former Pfizer employees who were involved in
Pfizer's transactions with Ankerfarm. In July of 1991, they
filed an ex parte application under 28 U.S.C. 1782 in the
__ _____
United States District Court for the District of Maine requesting
a subpoena compelling David W. Moriarty, a retired employee of
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Pfizer Inc., to testify by deposition and produce documents.2
On July 24, 1991, Magistrate Judge Cohen granted the ex parte
__ _____
application and the subpoena was issued. On August 12, 1991,
however, Pfizer moved to quash the subpoena on the ground that a
private party invoking a district court's assistance under
Section 1782 had to show that the requested information was
discoverable in the foreign jurisdiction. In an affidavit,
Pfizer's general patent counsel asserted that the information
sought by the foreign companies in fact would not be available
and could not be used in the foreign proceedings.
The foreign companies opposed Pfizer's motion by filing
affidavits from foreign lawyers asserting that the evidence was
obtainable in each country if the witness was found there.
Pfizer responded with affidavits from foreign lawyers maintaining
that as a general matter there is no pretrial availability of
____________________
2 The foreign companies also filed applications under Section
1782 to obtain the testimony of other former and present Pfizer
employees. Specifically, the foreign companies seek to depose
two former Pfizer employees, Hermann Faubl, a resident of
Illinois, and Thomas Mott Brennan, a resident of California.
Pfizer credited these men with being the inventors of the
patented process. The companies also seek to depose two Pfizer
employees, Irving Maurice Goldman and Barry Malcolm Bloom, both
residents of Connecticut, who were supervisors in Pfizer's
laboratory at the time the process in question. In addition, the
foreign companies seek documents from Pfizer in New York.
On September 16, 1991, Pfizer moved before the Judicial Panel
on Multi-District Litigation to consolidate all of these
applications in the District of Maine. The foreign companies
consented to the consolidation. On December 16, 1991, the panel
ordered the transfer of the four other proceeding to the District
of Maine on the ground that the Maine application was the most
advanced.
-6-
information from non-party witnesses in France, Belgium, England
and the Netherlands. Only in an extraordinary case, where a
litigant has obtained judicial approval, may a litigant compel
the testimony or production of documents of a non-party witness.
On September 10, 1991, Magistrate Judge Cohen granted
Pfizer's motion to quash and rescinded the July 24, 1991 order
issuing the subpoena. The foreign companies sought review of the
Magistrate Judge's order before the district court.
On May 22, 1992, the district court issued an order
vacating the Magistrate Judge's decision and granting the
application for an order to take testimony and a subpoena duces
_____
tecum. In re Application of Asta Medica, S.A., 794 F. Supp. 442
_____ _______________________________________
(D.Me. 1992).3 Pfizer appealed and filed a motion for a stay
pending appeal. We granted Pfizer's motion for a stay and heard
the appeal on an expedited basis.
II
The proceedings in Europe involve different parties and
patents and various stages of prosecution. Since a description
of these proceedings is not critical to the resolution of this
appeal, we provide only a limited summary of the litigation
pending in each country.
A. Proceedings in France
A. Proceedings in France
_____________________
In 1980, Pfizer and its French subsidiary sued the
French applicant, Laboratories Sarget, S.A., ("Sarget") for
____________________
3 The district court also permitted Hovione Sociedade Quimicas,
S.A. ("Hovione") to join the litigation. Pfizer has not appealed
this ruling.
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patent infringement. In 1988, the trial court ruled that there
was no patent infringement. In April of 1990, the Paris Court of
Appeal overturned that ruling and appointed an expert to
determine the damages question. An appeal filed by Sarget is
currently pending before the Cour de Cassation, France's highest
court.
Pfizer asserts that the validity or infringement of the
patent is not at issue since the briefing stage of the appeal is
complete and the authority of the Cour de Cassation is limited
only to issues of law. The foreign companies argue that validity
of the patent is relevant to the damages issue.
Pfizer also sued Hovione for patent infringement in
Lyon, France. The trial court in Lyon found no infringement, and
Pfizer appealed. The companies argue that the evidence sought is
pertinent because Hovione is asserting on appeal that Pfizer's
patent is invalid.
Finally, Sarget and one of its subsidiaries sued Pfizer
in Bordeaux petitioning the court to nullify Pfizer's French
patent.4
B. Proceedings in England
B. Proceedings in England
______________________
Napp Laboratories, Ltd. ("Napp") has filed a petition
asking for the revocation of Pfizer's United Kingdom patents.
According to Pfizer, it has no commercial interest in
the English patent and the patent "is already subject to licenses
____________________
4 Neither of these other two proceedings was mentioned in
Pfizer's brief.
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of right that can be obtained by anyone in England." Appellant's
Brief at 12. Pfizer asserts that Napp has brought a sham nullity
proceeding in England to show in the Section 1782 application
that there is a British "proceeding." Napp argues that "[t]he
record in the United Kingdom proceeding is also open."
Appellees' Brief at 12.
C. Proceedings in Belgium
C. Proceedings in Belgium
______________________
Pfizer sued Asta Medica, S.A. ("Asta") claiming that
Asta infringed its Belgian process patent. The Belgian court
referred the matter to a panel of experts who found no
infringement of Pfizer's patent. Pfizer is contesting this
finding.
D. Proceedings in the Netherlands
D. Proceedings in the Netherlands
______________________________
A dispute over an application filed by Pfizer for a
Dutch patent is pending before the Patent Council in The Hague.
The application was originally filed by Ankerfarm in 1973 and
assigned to Pfizer by Glaxo Limited Group, a British
pharmaceutical firm, pursuant to an agreement dated March 12,
1984. Dagra, BV ("Dagra") is opposing the grant of the patent.
On September 10, 1988, Pfizer gave Dagra notice of its intent to
sue for infringement upon issuance of its patent.
Pfizer has also brought a separate patent infringement
action against Dagra in Amsterdam. This proceeding is pending
before the district court in Amsterdam.
Dutch law allows a party to file a request with the
court for a preliminary hearing of witnesses to establish a
-9-
factual basis to bring suit. Dagra filed such a request in order
to sue Pfizer under Dutch and European Economic Community
antitrust law for Pfizer's use of its patents. Dagra identified
a number of witnesses in Europe and the United States. The Dutch
trial court denied the request for a preliminary hearing. Dagra
appealed, but before the Dutch appellate tribunal ruled on the
dispute, Pfizer mooted Dagra's request by waiving its right to
enforce its patent in Holland against Dagra, any of its customers
and its supplier Hovione.
III
The District Court's Decision
The District Court's Decision
_____________________________
We ordinarily review the district court's decision to
grant the foreign companies application under 28 U.S.C. 1782
for abuse of discretion. See, e.g., In re Application Of Malev
___ ____ ___________________________
Hungarian Airlines, 964 F.2d 97 (2d Cir. 1992); In re Request for
__________________ _________________
Assistance from Ministry of Legal Affairs of Trinidad and Tobago,
________________________________________________________________
848 F.2d 1151, 1154 (11th Cir. 1988), cert. denied, 488 U.S. 1005
_____ ______
(1989). Nevertheless, limitations imposed by or implicit in the
statute must control any exercise of discretion and in this case
we believe that such a limitation was disregarded by the district
court.
The district court examined the legislative history of
Section 1782 and noted that in amending Section 1782 in 1964,
Congress expanded broadly "the power of federal courts to assist
foreign litigation." In re Application of Asta Medica, S.A., 794
______________________________________
F. Supp. at 445. By the amendment, Congress (1) allowed private
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litigants and foreign courts for the first time to use Section
1782; (2) expanded the authority of federal courts in order to
assist in obtaining documentary evidence; (3) used the term
"foreign tribunal" rather than "courts" to enlarge the assistance
beyond conventional courts; and (4) eliminated the requirement
that litigation be pending before assistance may be granted. See
___
generally In re Request for Assistance from Ministry of Legal
_________ _______________________________________________________
Affairs of Trinidad and Tobago, 848 F.2d at 1153-54.
______________________________
Given the expansion in discretion provided by the 1964
amendment to Section 1782, the district court concluded that a
rule requiring an applicant to make a threshold showing that the
information sought in the United States is discoverable in the
foreign jurisdiction would limit judicial discretion excessively
and would place an "onerous burden on both applicants and
judges." In re Application of Asta Medica, S.A., 794 F. Supp. at
______________________________________
445-46. The district court reasoned as follows:
There is absolutely no evidence in
[Section 1782], the legislative history
or the academic commentary explaining the
statute's enactment that suggests any
congressional desire to impose on
American courts the burden of
investigating foreign law on matters such
as admissibility of the evidence, its
discoverability in the American or any
other sense, or the authority of foreign
tribunals to order such testimony or
documents in aid of their own judicial
proceedings. In the absence of any
suggestion that Congress intended to
impose such a burden, and given that
Congress was seeking to liberalize the
__________
processes available to foreign litigants
seeking evidence here, I conclude that
resolution of these foreign law issues is
not necessary to the exercise of 1782
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discretion.
Id. at 446. The district court acknowledged holdings by several
___
courts, including the Third and Eleventh Circuits, imposing as a
requirement that the district courts determine whether the
information sought here was discoverable in the foreign
jurisdiction prior to granting assistance. Id. at 446 n.9
___
(citing In re Request for Assistance from Ministry of Legal
________________________________________________________
Affairs of Trinidad and Tobago, 848 F.2d at 1156; Lo Ka Chun v.
______________________________ ___________
Lo To, 858 F.2d 1564, 1566 (11th Cir. 1988); John Deere Ltd. v.
_____ _______________
Sperry Corp., 754 F.2d 132, 136 (3d Cir. 1985); In re Court of
____________ _______________
the Comm'r of Patents for Republic of South Africa, 88 F.R.D. 75,
__________________________________________________
77 (E.D.Pa. 1980)). The district court inferred that these
holdings were "based upon some fear of offending foreign
tribunals." Id. The court, however, found no merit in this
___
concern with offending foreign tribunals since "Congress showed
no such fear . . . in enacting a statute that does not depend on
reciprocity." Id. In the district court's view, the only
___
inquiry required under Section 1782 is determining whether "the
subject matter is generally pertinent and [ensuring] that
improper factors such as harassment and unnecessary expense and
delay are minimized." Id.
___
IV
Public Law No. 88-619, 78 Stat. 997 (1964), amended
various provisions of the United States Code dealing with foreign
and international litigation, including Section 1782. By
adjusting the United States judicial procedures to provide more
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"equitable and efficacious procedures for the benefit of
tribunals and litigants involved in litigation with international
aspects," Congress hoped to encourage foreign countries to
revise their judicial procedures similarly. S. Rep. No. 1580,
88th Cong., 2d Sess. (1964), reprinted in 1964 U.S.C.C.A.N. 3782.
_________ __
The central intent of the 1964 amendments was to
clarif[y] and liberalize[] existing U.S.
procedures for assisting foreign and
international tribunals and litigants in
obtaining oral and documentary evidence
in the United States and adjust[] those
______________
procedures to the requirements of foreign
_________________________________________
practice and procedure.
______________________
Id. at 3788 (emphasis added). The district court's
___
interpretation of Section 1782 as changing the scope of discovery
available to litigants abroad contradicts these purposes.
Under the district court's ruling, a United States
party involved in litigation in a foreign country with limited
pre-trial discovery will be placed at a substantial disadvantage
vis-a-vis the foreign party. All the foreign party need do is
file a request for assistance under Section 1782 and the
floodgates are open for unlimited discovery while the United
States party is confined to restricted discovery in the foreign
jurisdiction. Congress did not amend Section 1782 to place
United States litigants in a more detrimental position than their
opponents when litigating abroad. This result would be contrary
to the concept of fair play embodied in United States discovery
rules and the notion that "[m]utual knowledge of all the relevant
facts gathered by both parties is essential to proper
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litigation." Societe Nationale Industrielle Aerospatiale v. U.S.
___________________________________________ ____
Dist. Court for Southern Dist., 482 U.S. 522, 540 n.25 (1987)
_______________________________
(quoting Hickman v. Taylor, 329 U.S. 495, 507 (1947)).
_______ ______
The district court's holding has another serious
shortcoming; foreign litigants may use Section 1782 to circumvent
foreign law and procedures. The information sought under Section
1782 may not be available in the foreign jurisdiction due to
either procedural restrictions or the substantive law. In
amending Section 1782, Congress did not seek to place itself on a
collision course with foreign tribunals and legislatures, which
have carefully chosen the procedures and laws best suited for
their concepts of litigation. To illustrate, in a purely
domestic litigation in a foreign jurisdiction with restrictive
pre-trial discovery procedures, a litigant may request the
foreign tribunal to issue an order compelling the production of
information located in the foreign jurisdiction. If such request
is denied and the same information is located in the United
States, the litigant may side-step that result by racing here and
obtaining the information under Section 1782. Not only would
this interpretation of Section 1782 allow a litigant to use
United States law to gain an unfair advantage over its adversary
in a purely foreign litigation, but more importantly, foreign
countries may be offended by the use of United States procedure
to circumvent their own procedures and laws.
In order to avoid offending foreign tribunals, other
courts have established, as a prerequisite to granting a request
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for assistance under Section 1782, a threshold showing that the
information would be discoverable in the foreign jurisdiction if
located there. In re Request for Assistance from Ministry of
________________________________________________
Legal Affairs of Trinidad and Tobago, 848 F.2d at 1156 ("the
_______________________________________
district court must decide whether the evidence would be
discoverable in the foreign country before granting assistance");
Lo Ka Chun, 858 F.2d at 1566 (remanding for determination as to
__________
whether evidence sought in the United States is discoverable in
Hong Kong); John Deere Ltd., 754 F.2d at 136 ("Concern that
________________
foreign discovery provisions not be circumvented by procedures
authorized in American courts is particularly pronounced where a
request for assistance issues not from letters rogatory, but from
an individual litigant"); In re Court of the Comm'r of Patents
______________________________________
for Republic of South Africa, 88 F.R.D. at 77 ("Few actions could
____________________________
more significantly impede the development of international
cooperation among courts than if the courts of the United States
operated to give litigants in foreign cases processes of law to
which they were not entitled in the appropriate foreign
tribunals."). See also In re Application Of Malev Hungarian
________ _______________________________________
Airlines, 964 F.2d 97 (2d Cir. 1992) (district court abused its
________
discretion by holding that Section 1782 applicant must seek
information first in Hungarian court when such information was
readily discoverable pursuant to Hungarian procedure).
The district court, however, rejected these decisions
since it found no merit in these courts' concern with offending
foreign tribunals because "Congress showed no such fear . . . in
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enacting a statute that does not depend on reciprocity." In re
_____
Application of Asta Medica, S.A., 794 F. Supp. at 444 n.9. In
_________________________________
this sense, the district court confused Congress' unilateral
decision to broaden the procedures to obtain evidence in the
United States for use abroad -- without regard to whether other
nations would reciprocate -- with the concept of comity.5 The
district court apparently viewed Congress' purported intent in
amending Section 1782 as demonstrating an absolute indifference
to international comity. As noted above, this interpretation of
the amendment is flatly contradicted by the legislative history
and the purported goals of Section 1782.
United States discovery rules are far more liberal than
their foreign counterparts. See, e.g., Boreri v. Fiat S.P.A.,
___ ____ ______ ____________
763 F.2d 17, 19 (1st Cir. 1985) ("In [civil law] countries,
discovery [United States]-style is often considered an affront to
the nation's judicial sovereignty."). Section 1782 was amended
to provide efficient discovery procedures to foreign and
international litigants seeking information here and to stimulate
____________________
5 International comity refers to
the recognition which one nation allows
within its territory to the legislative,
executive or judicial acts of another
nation, having due regard both to
international duty and convenience, and
to the rights of its own citizens or of
other persons who are under the
protection of its laws.
Hilton v. Guyot, 159 U.S. 113, 163-64 (1895).
______ _____
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foreign countries to follow the lead of the United States and
liberalize their own procedure. In re Application of Malev
_____________________________
Hungarian Airlines, 964 F.2d at 100. Interpreting Section 1782
___________________
as a congressional mandate to allow discovery as long as "the
subject matter is generally pertinent," although such discovery
may not be available in the foreign jurisdiction -- in fact, it
might be prohibited -- would lead some nations to conclude that
United States courts view their laws and procedures with
contempt. In this manner, the broader goal of the statute --
stimulating cooperation in international and foreign litigation -
- would be defeated since foreign jurisdictions would be
reluctant to enact policies similar to Section 1782.
The district court refused to determine whether the
information sought would be available under foreign law since, in
its view, such an inquiry placed "a severely onerous burden on
both applicants and judges." Congress, however, intended that
the primary burden fall upon the applicant, who has to make a
showing that the information is discoverable under foreign law.
We are in no position to overrule Congress' policy choice. The
only burden that would fall upon the district court is to make a
discovery determination based upon the submission by the
parties.6 That is hardly an "onerous" burden.7 It is true
____________________
6 The district court need not explore whether the information
the applicants seek is admissible in the foreign jurisdiction or
other issues of foreign law. See John Deere Ltd., 754 F.2d at
___ _______________
136; In Re Request for Judicial Assistance from Seoul Dist.
____________________________________________________________
Criminal Court, 555 F.2d 720, 723 (9th Cir. 1977).
______________
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that Section 1782 "leaves the issuance of an appropriate order
[to compel the production of evidence] to the discretion of the
court which, in proper cases, may refuse to issue an order or may
impose conditions it deems desirable." Senate Report at 3788.
This discretion, however, is limited by the restriction that we
find -- contrary to the district court -- to be implicitly
required by section 1782, based upon its history, rationale, and
the policy considerations we have discussed.
V
We hold that a litigant requesting assistance under
Section 1782 has to show that the information sought in the
United States would be discoverable under foreign law.
Reversed and Remanded.
_____________________
____________________
7 The district court may find an exceptional case in which
determining whether the information is discoverable in the
foreign jurisdiction becomes an elusive task. In such a case,
the district court has various options, among them, to ask the
foreign court to help it decide whether the information is
available in the foreign jurisdiction, see In re Application of
___ _____________________
Malev Hungarian Airlines, 964 F.2d at 102, or to request the
_________________________
assistance of a foreign law expert to clarify whether the
information is available or not.
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Document Info
Docket Number： 92-1663
Filed Date： 12/4/1992
Precedential Status： Precedential
Modified Date： 9/21/2015