In Re Application Pursuant to 28 U.S.C. § 1782 for an Order Permitting Bayer AG , 146 F.3d 188 ( 1998 )


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  •                                                                                                                            Opinions of the United
    1998 Decisions                                                                                                             States Court of Appeals
    for the Third Circuit
    6-9-1998
    In Re: Bayer AG
    Precedential or Non-Precedential:
    Docket 97-5047
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    Recommended Citation
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    http://digitalcommons.law.villanova.edu/thirdcircuit_1998/138
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    Filed June 9, 1998
    UNITED STATES COURT OF APPEALS
    FOR THE THIRD CIRCUIT
    No. 97-5047
    In re: Application pursuant to 28 U.S.C. S 1782 for an
    Order permitting BAYER AG, Applicant-Appellant, to take
    discovery, pursuant to the Federal Rules of Civil
    Procedure, of BETACHEM, INC. for use in an action
    pending in the FIRST INSTANCE COURT NO. 25
    of BARCELONA, SPAIN
    Bayer AG,
    Appellant
    On Appeal from the United States District Court
    for the District of New Jersey
    (D.C. No. 96-cv-05650)
    Argued September 26, 1997
    Before: SLOVITER, COWEN and LEWIS,* Circuit Judges
    (Filed June 9, 1998)
    Milton Sherman (Argued)
    Kaye, Scholer, Fierman, Hays &
    Handler
    New York, New York 10022
    Attorney for Appellant
    _________________________________________________________________
    * Judge Lewis heard argument in this matter but was unable to clear the
    opinion due to illness.
    Dwight E. Yellen (Argued)
    Ballon, Stoll, Bader & Nadler
    New York, New York 10018
    Will Levins
    Ballon, Stoll, Bader & Nadler
    Hackensack, N.J. 07601
    Attorneys for Appellee
    OPINION OF THE COURT
    SLOVITER, Circuit Judge.
    The promulgation of the Federal Rules of Civil Procedure,
    with their emphasis on securing "the just, speedy, and
    inexpensive determination of every action," Fed. R. Civ. P.
    Rule 1, initiated a revolution in the litigation process in the
    federal courts in this country. Although those rules were
    not applicable to foreign litigation, they were not without
    influence. It was not surprising that within three decades
    there would be a concerted effort to liberalize the
    procedures in the United States for assisting foreign and
    international tribunals and litigants in obtaining oral and
    documentary evidence in the United States. Eventually this
    effort led to congressional action. Section 1782(a) of Title 28
    of the United States Code now authorizes district courts to
    render assistance to foreign courts and the litigants before
    them in obtaining discovery from United States residents
    for use in foreign proceedings.
    Pursuant to that section, Bayer AG, a drug manufacturer
    organized under the laws of the Federal Republic of
    Germany, filed an application in the district court of New
    Jersey to obtain discovery from BetaChem, Inc., a New
    Jersey corporation, for use in a patent infringement action
    pending in the Court of First Instance in Spain. The district
    court denied the application and Bayer appeals. The
    question before us is whether the district court relied on
    inapplicable or erroneous considerations when it denied
    Bayer's request.
    2
    I.
    Facts and Procedural Background
    In a related action, Bayer filed suit in January 1992 in
    the United States District Court for the Southern District of
    New York against Barr Laboratories, Inc., alleging patent
    infringement. Bayer alleged that Barr had infringed Bayer's
    United States ciprofloxacin patent no. 4,670,444 by filing
    an application with the United States Food and Drug
    Administration for permission to sell ciprofloxacin, a broad
    spectrum antibiotic drug. According to Bayer's allegations,
    Barr had purchased and planned to continue to purchase
    ciprofloxacin from BetaChem, which is the United States
    sales agent for Chemo Iberica, S.A. ("Chemo") and its
    affiliate Quimica Sintetica, S.A. ("Quimica"), both Spanish
    corporations. During the course of discovery in that action,
    Barr produced a confidential document that describes
    Chemo's process for making ciprofloxacin. Bayer also
    learned that BetaChem had submitted similar documents
    to the FDA on Barr's behalf.
    Apparently as a result of the information received, Bayer
    filed a patent infringement action in June 1993 against
    Chemo and Quimica in the Court of First Instance No. 25
    in Barcelona, Spain, claiming that Chemo and Quimica had
    infringed and were infringing its Spanish process patent no.
    505,138 by manufacturing and selling ciprofloxacin. Bayer
    believed the document it had received from Barr in
    discovery in the New York action was important for its case
    in Spain. Indeed, that document has been referred to as the
    "smoking gun document." App. at 100. Therefore, sometime
    in early 1996, Bayer sought to submit that document to the
    Spanish court. Before doing so, it sought permission from
    the magistrate judge who had entered a confidentiality
    order in the New York action. The magistrate judge gave
    approval, subject to the Spanish court's willingness to enter
    a confidentiality order.
    Bayer then approached the Spanish court and on
    October 14, 1996, it obtained an order from the Spanish
    court stating that it would receive "any document that may
    be presented," that it would determine the document's
    3
    admissibility at a later date, and that it would keep the
    document confidential to the extent permissible under
    Spanish law. Thereafter, the New York magistrate judge
    was reported to have signified his satisfaction that this
    order "effectively implements my confidentiality
    requirement." App. at 102.
    On December 3, 1996, Bayer filed the pending action in
    the United States District Court for the District of New
    Jersey pursuant to 28 U.S.C. S 1782(a). Bayer alleged that
    it owned patents covering the composition and/or process
    for making ciprofloxacin in numerous countries, including
    its Spanish patent no. 505,138 covering a process for
    making ciprofloxacin; that Chemo and its affiliated
    corporation Quimica infringe that Spanish patent; and that
    BetaChem purchased ciprofloxacin from Chemo and/or
    Quimica which BetaChem in turn sold to Barr. Bayer
    alleged that BetaChem has material information about
    Chemo's process to make ciprofloxacin, and that Spanish
    law provides no procedures for the orderly exchange of
    documents. Bayer sought permission to seek discovery of
    all of BetaChem's documents relating to the process of
    Chemo and Quimica for manufacturing ciprofloxacin,
    including the Drug Master File allegedly containing the
    document that BetaChem had filed with the FDA on Barr's
    behalf. Bayer also sought permission to depose certain
    BetaChem employees.
    BetaChem opposed Bayer's application on three grounds.
    First, it argued that discovery requests made pursuant to
    S 1782(a) may be granted only if the material sought would
    be discoverable in the foreign jurisdiction. In that regard, it
    submitted a written legal opinion from a Spanish attorney,
    who stated that under Article 603 of the Spanish Civil
    Procedure Law a Spanish court may, at the request of a
    party, order the disclosure of documents that are the
    exclusive property of a non-litigant if the judge who will
    decide the litigation determines that the documents sought
    would be material to the court's decision. App. at 61-62.
    BetaChem argued that, absent such a determination of
    materiality by the Spanish court, the testimony and
    materials sought by Bayer would not be discoverable in
    Spain and, therefore, are not discoverable underS 1782(a).
    4
    Second, BetaChem argued that because the Spanish
    action was already sub judice and Bayer had been aware of
    the documents since 1993, Bayer's application was
    untimely. Third, BetaChem argued that the documents in
    the Drug Master File are highly confidential and should not
    be discoverable.
    In its opinion delivered orally, the district court, relying
    on our opinion in John Deere Ltd. v. Sperry Corp., 
    754 F.2d 132
     (3d Cir. 1985), framed its inquiry as whether
    permitting the discovery would "offend[ ] the foreign
    jurisdiction." App. at 94. Although the court stated that it
    did not consider discoverability in the foreign jurisdiction to
    be a prerequisite to obtaining discovery under S 1782(a), its
    discussion nevertheless focused exclusively on the
    requirement under Spanish law of a determination that the
    documents sought from a non-litigant would be material.
    The district court reasoned that even though it would
    probably regard the discovery Bayer sought to be material,
    its own view was irrelevant because it was the Spanish
    judge who was to make the materiality determination. The
    court then ruled that because Bayer had not obtained such
    a materiality ruling, the discovery it sought from BetaChem
    would not be discoverable in Spain and therefore Bayer
    lacked proof that granting its application would not offend
    the Spanish court. App. at 112-14. Accordingly, the district
    court denied Bayer's application and dismissed the action.
    This appeal followed.
    On September 1, 1997, while this appeal was pending,
    the Court of First Instance ruled against Bayer in its
    infringement action. Bayer then filed an appeal in the
    Provincial Court of Barcelona. Both parties agree that,
    under Spanish law, the Provincial Court may, under certain
    circumstances, receive new evidence not submitted to the
    Court of First Instance. Accordingly, neither party contends
    that the issue before us has been mooted by the disposition
    in the Court of First Instance.
    II.
    Discussion
    The district court's denial of Bayer's discovery application
    constitutes a final order over which we have jurisdiction
    5
    pursuant to 28 U.S.C. S 1291. See In re Gianoli Aldunate, 
    3 F.3d 54
    , 57 (2d Cir. 1993). In general, we review a district
    court's decision to deny a S 1782 application for abuse of
    discretion. Where the district court misinterpreted or
    misapplied the law, however, or where the court relied on
    inappropriate factors in the exercise of its discretion, our
    review is plenary. See 
    id. at 58
    ; see generally Redland
    Soccer Club, Inc. v. Department of the Army, 
    55 F.3d 827
    ,
    845 (3d Cir. 1995).
    A.
    Section 1782, entitled "Assistance to foreign and
    international tribunals and to litigants before such
    tribunals," provides, in relevant 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 proceeding 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 . . . The order may prescribe the
    practice and procedure, which may be in whole or part
    the practice and procedure of the foreign country or
    the international tribunal, for taking the testimony or
    statement or producing the document or other thing.
    To the extent that the order does not prescribe
    otherwise, the testimony or statement shall be taken,
    and the document or other thing produced, in
    accordance with the Federal Rules of Civil Procedure.
    28 U.S.C. S 1782(a).
    In adopting the 1964 amendments now incorporated in
    S 1782, Congress liberalized many of the procedures for
    obtaining discovery for use in foreign litigation. The Senate
    Report sets forth the following general statement regarding
    the purpose of the statute:
    Until recently, the United States has not engaged
    itself fully in efforts to improve practices of
    international cooperation in litigation. The steadily
    6
    growing involvement of the United States in
    international intercourse and the resulting increase in
    litigation with international aspects have demonstrated
    the necessity for statutory improvements and other
    devices to facilitate the conduct of such litigation.
    Enactment of the bill into law will constitute a major
    step in bringing the United States to the forefront of
    nations adjusting their procedures to those of sister
    nations and thereby providing equitable and efficacious
    procedures for the benefit of tribunals and litigants
    involved in litigation with international aspects.
    It is hoped that the initiative taken by the United
    States in improving its procedures will invite foreign
    countries similarly to adjust their procedures.
    S. Rep. No. 88-1580, at 2 (1964), reprinted in 1964
    U.S.C.C.A.N. 3783.
    Thus, the amendment to S 1782 was designed to facilitate
    the conduct of litigation in foreign tribunals, improve
    international cooperation in litigation, and put the United
    States into the leadership position among world nations in
    this respect. It appears that the scope of discovery is not as
    far-reaching in foreign litigation as it is in domestic
    litigation. The Senate Report makes clear that under
    amended S 1782(a), "the issuance of an appropriate order"
    is left to the discretion of the district court. Id. at 3788.
    That court may refuse to issue an order or may impose
    conditions it deems desirable. The Report further states
    that "[i]n exercising its discretionary power, the court may
    take into account the nature and attitudes of the
    government of the country from which the request
    emanates and the character of the proceedings in that
    country." Id.
    In light of the absence of any language in the text of
    S 1782 that limits its application to cases in which the
    materials sought to be discovered would be discoverable in
    the foreign jurisdiction, see In re Esses, 
    101 F.3d 873
    , 875
    (2d Cir. 1996), we must examine the basis for the district
    court's exclusive focus on whether the materials sought by
    Bayer would be discoverable in Spain.
    7
    The inquiry begins with the district court's interpretation
    of John Deere Ltd. v. Sperry Corp., 
    754 F.2d 132
     (3d Cir.
    1985), this court's oft-cited opinion addressingS 1782.
    John Deere Limited and Deere & Company (jointly referred
    to as John Deere), which had been sued in Canada by
    Sperry Corporation for patent infringement, filed a S 1782
    application in the Eastern District of Pennsylvania seeking
    to depose Horace McCarty and Emmett Glass, named as
    the co-inventors of the patented machine at issue. McCarty
    and Glass were American employees of Sperry. The district
    court denied John Deere's application, both because
    Canada would not honor letters rogatory emanating from a
    court of the United States and because the material sought
    was not clearly admissible at trial in Canada. Before this
    court had an opportunity to hear John Deere's appeal from
    this ruling, the Federal Court of Canada issued an opinion
    and order directing Sperry to produce McCarty, a Sperry
    officer, but not Glass, a non-officer.
    In its appeal from the district court's denial of its
    discovery application, John Deere challenged the relevancy
    under S 1782(a) of the availability of reciprocal foreign
    procedures and the admissibility of the evidence in the
    foreign jurisdiction, the issues the district court deemed
    determinative. We held that neither reciprocity nor
    admissibility were controlling concerns under S 1782(a). We
    stated instead that the "liberal intent to provide judicial
    assistance whether or not reciprocity exists has been
    acknowledged as a primary statutory goal since section
    1782's inception." 
    Id. at 135
    .
    Although we gleaned through the legislative history that
    the district courts were authorized "to scrutinize the
    underlying fairness of foreign proceedings to ensure they
    comply with notions of due process," we stated that it
    would seem to exceed the proper scope of S 1782 to require
    the district court to undertake a more extensive inquiry. 
    Id.
    at 136 & n.3. Indeed, it "would contradict the express
    purpose of section 1782" if the American court were
    required to predict the actions of another country's
    tribunal. 
    Id. at 136
    . Significantly, we held that inasmuch as
    the Canadian court had held that McCarty's testimony
    would be material and required by the equities, the district
    8
    court should have required that of Glass as well. 
    Id.
     at 137-
    38.
    In reading John Deere, it is important to recognize that
    because the Canadian court had already held the
    information discoverable, the discoverability issue was not
    before us. Some courts have placed significance on our
    statements that "[a]s a cooperative measure, section 1782
    cannot be said to ignore those considerations of comity and
    sovereignty that pervade international law. A grant of
    discovery that trenched upon the clearly established
    procedures of a foreign tribunal would not be within section
    1782." 
    Id. at 135
    . We also stated that we would not
    "countenance the use of U.S. discovery procedures to evade
    the limitations placed on domestic pre-trial disclosure by
    foreign tribunals." 
    Id. at 136
    .
    Those comments made explicit our concern over comity,
    but nothing in them signifies an intent to impose a
    discoverability requirement. Such a requirement would be
    inconsistent with much of the language of the opinion,
    where we stated, inter alia, "Nor should the practice of
    Canadian courts in refusing to render judicial assistance,
    be the determinative factor in the construction given
    section 1782 by an American court." 
    Id. at 135-36
    . In fact,
    in John Deere itself we were satisfied that granting the
    S 1782 application would not have caused any offense to
    the Canadian tribunal, even though discovery from Glass
    had not been authorized by the Canadian courts.
    The application of the John Deere opinion by the district
    court in this case is understandable because at least two
    courts of appeals have read the opinion as imposing a
    discoverability requirement. See In re Asta Medica, S.A.,
    
    981 F.2d 1
    , 6 (1st Cir. 1992); In re Request for Assistance
    from Ministry of Legal Affairs of Trinidad and Tobago, 
    848 F.2d 1151
    , 1156 (11th Cir. 1988); see also In re First Court
    of First Instance in Civil Matters, Caracas, Venezuela, 
    42 F.3d 308
    , 310 (5th Cir. 1995) (dictum); In re Crown
    Prosecution Service of the United Kingdom, 
    870 F.2d 686
    ,
    692-93 & n.7 (D.C. Cir. 1989) (same).
    In contrast, the Second Circuit read John Deere as we do
    and recognized that the opinion decided only that S 1782
    9
    does not require that foreign courts have reciprocal
    assistance procedures or that the materials sought would
    be admissible in the foreign jurisdiction. Gianoli Aldunate,
    
    3 F.3d at 60
    . That court said, insightfully, "John Deere is
    not a case about whether section 1782 requires
    discoverability, and the court never explicitly states that
    such a requirement exists." 
    Id.
     It thus declined to interpret
    our general statements addressing the circumvention of
    foreign discovery laws as reading "an absolute
    discoverability requirement into section 1782." 
    Id.
     See In re
    Euromepa S.A., 
    51 F.3d 1095
    , 1099-1100 (2d Cir. 1995).
    This case presents us with our first opportunity to revisit
    our opinion in John Deere, and we use the occasion to
    make explicit our view that imposing a requirement that
    the materials sought be discoverable in the foreign
    jurisdiction would be inconsistent with both the letter and
    spirit of the statute. The prima facie showing mandated by
    the statute is only that the application be made (1) "by a
    foreign or international tribunal" or "any interested person,"
    (2) that it be "for use in a proceeding in a foreign or
    international tribunal," and (3) that the person or entity
    from whom the discovery is sought be a resident of or be
    found in the district in which the application is filed. See
    Esses, 101 F.2d at 875. If Congress had intended to impose
    an additional element as restrictive as a requirement that
    the materials sought be discoverable in the foreign
    jurisdiction, it would have done so explicitly. See Gianoli
    Aldunate, 
    3 F.3d at
    59 (citing statute's permissive language
    authorizing district court to resort to practice of the foreign
    country).
    The legislative history is equally devoid of any indication
    that Congress intended to limit the scope of S 1782 to those
    situations in which the discovery sought would be
    discoverable under the laws of the foreign jurisdiction. In
    adopting the 1964 amendments, Congress's overarching
    goals were to provide efficient means of assistance to
    foreign courts and litigants and encourage other nations to
    return the favor by providing similar assistance to United
    States courts. See In re Malev Hungarian Airlines, 
    964 F.2d 97
    , 100 (2d Cir. 1992); see also S. Rep. No. 88-1580, at 2
    (1964), reprinted in 1964 U.S.C.C.A.N. 3783. Neither of
    10
    these congressional purposes requires courts to impose a
    discoverability requirement as a bright-line rule. See
    generally United States v. Ron Pair Enters. Inc., 
    489 U.S. 235
    , 242 (1989) ("The plain meaning of legislation should
    be conclusive, except in the rare cases in which the literal
    application of a statute will produce a result demonstrably
    at odds with the intentions of its drafters.") (citation &
    quotations omitted).
    It is instructive to turn to the Senate Report, which states
    that "[i]f the court fails to prescribe the procedure, the
    appropriate provisions of the Federal Rules of Civil
    Procedure are to be followed, irrespective of whether the
    foreign or international proceeding or investigation is of a
    criminal, civil, administrative, or other nature." S. Rep. No.
    88-1580, at 9 (1964), reprinted in 1964 U.S.C.C.A.N. 3789.
    In light of the well-known liberality of our Federal Rules, it
    is unlikely that Congress would have painted with so broad
    a brush if it had intended courts applying S 1782 to be
    limited to following another nation's more limited approach
    to discovery. See In re Metallgesellschaft AG, 
    121 F.3d 77
    ,
    80 (2d Cir. 1997) ("through S 1782 Congress has seen fit to
    authorize discovery which, in some cases, would not be
    available in foreign jurisdictions"). Moreover, if we were
    unwilling in John Deere to condition a S 1782 order on the
    availability of the particular discovery procedure in the
    foreign country, there is no reason why we should make
    discoverability itself a condition.
    The policies advanced by the Court of Appeals for the
    First Circuit as the basis for reading a discoverability
    requirement into S 1782, see Asta Medica, 
    981 F.2d at 5-7
    ,
    are not persuasive. The court expressed concern that a
    foreign party could invoke S 1782 and obtain broad
    American-style discovery while the same would not be
    available for that party's American adversary. 
    Id. at 5-6
    . In
    essence, that is simply another way of imposing a
    reciprocity requirement, a requirement we rejected in John
    Deere. Any patent unfairness can be dealt with by the
    district court crafting an appropriate discovery order. See
    Euromepa, 
    51 F.3d at 1101
    . In any event, that
    consideration is not present in this case where S 1782 is
    being invoked against an entity that is not a party to the
    Spanish patent litigation.
    11
    The First Circuit also based its Asta Medica decision on
    its concern that granting a S 1782 application where the
    discovery sought would not be available in the foreign
    jurisdiction "would lead some nations to conclude that
    United States courts view their laws and procedures with
    contempt," thereby frustrating Congress's desire to
    stimulate foreign tribunals to provide reciprocal assistance
    to litigants before our own courts. Id. at 6-7. We agree that
    "Congress did not seek to place itself on a collision course
    with foreign tribunals and legislatures" and that we ought
    to avoid a construction of the statute that would lead other
    nations to conclude that we do not respect their laws and
    procedures. Id. We said as much in John Deere. 
    754 F.2d at 135
    . It does not follow that the inability to obtain
    discovery means that the foreign court objects to the
    inquiry. In many of such situations it may signify merely
    the unavailability of an applicable procedure.
    It appears that the decision in Asta Medica was based on
    the unavailability of pretrial discovery from non-party
    witnesses in the countries in which the foreign patent
    litigation was pending. Asta Medica, 
    981 F.2d at 6-7
    .
    However, there is no reason to assume that because a
    country has not adopted a particular discovery procedure,
    it would take offense at its use. Professor Hans Smit, one
    of the principal forces behind the 1964 revisions toS 1782,
    has stated, "although a foreign court might not compel
    production of the evidence in the manner employed by an
    American court, it might very well, and ordinarily would,
    readily accept and rely on the evidence obtained with the
    help of the American court." Hans Smit, Recent
    Developments in International Litigation, 
    35 S. Tex. L. Rev. 215
    , 236 (1994). In John Deere, we declined to preclude the
    testimony merely because "the Canadian court may
    question its own power to devise and grant an order for the
    discovery of a corporate employee resident outside its
    jurisdiction." John Deere, 
    754 F.2d at 138
    .
    The opinion of the House of Lords in South Carolina Ins.
    Co. v. Assurantie Maatschappij "De Zeven Provincien" N.V.,
    [1987] 1 App. Cas. 24 (1986) (appeal taken from Court of
    Appeal), is informative. There, a party involved in a re-
    insurance lawsuit pending in the English Commercial Court
    12
    filed a S 1782 application in the Western District of
    Washington seeking to obtain discovery from two Seattle-
    based companies not parties to the English litigation.
    Before the application could be heard, the Commercial
    Court enjoined the parties before it from pursuing the
    application on the ground that "the English court should
    retain the control of its own procedure and the proceedings
    that are before it." Id. at 34. On appeal, the House of Lords
    reversed.
    First, it found that the availability of discovery under
    S 1782 posed no "interference with the [English] court's
    control of its own process." Id. at 41. Despite the court's
    inability to compel the discovery, the information could be
    obtained by a party if the possessor voluntarily produced it.
    Thus, the mere fact that the English court could not compel
    the production at issue did not mean that it would be
    offensive to the court if a party obtained it. See id. at 42.
    Second, the House of Lords rejected the argument that by
    submitting to the jurisdiction of the English court, the
    parties were bound to accept its procedures. See id. It held
    that the parties to an English litigation were entitled to
    prepare their case by obtaining documents in a foreign
    country and this included the right to seek discovery under
    S 1782. See id. Moreover, because England's proscription of
    discovery from parties not before the court was intended to
    protect the non-parties rather than the litigating parties, it
    would make little sense to extend the protection of the
    English courts to American non-parties subject to discovery
    under the laws of the United States. See id. Finally, the
    House of Lords rejected the notion that resort to American
    discovery procedures would cause increased cost and delay.
    It reasoned that such effects were essentially self-imposed
    by the party's decision to oppose and fight a S 1782
    application. Id. at 42-43.
    The analysis used by the House of Lords, reflecting as it
    does the view of a foreign country with less liberal discovery
    procedures and applied in a real case, is an effective
    response to the First Circuit's assumption that a grant of
    discovery not available in the foreign jurisdiction would
    offend that jurisdiction's courts.
    13
    Of course, we recognize that there are some instances in
    which permitting discovery of certain evidence may cause
    offense to the courts of the foreign jurisdiction. Some
    countries may regard information held by spouses or
    children to be privileged; others may have different limits.
    The comity concerns we expressed against "use of U.S.
    discovery procedures to evade the limitations placed on
    domestic pre-trial disclosure by foreign tribunals," John
    Deere, 
    754 F.2d at 136
    , are applicable only when the
    substance of the discovery is objectionable. See generally
    Metallgesellschaft, 
    121 F.3d at 80
     ("If district courts were
    free to refuse discovery based upon its unavailability in a
    foreign court . . . , S 1782 would be irrelevant to much
    international litigation, frustrating its underlying
    purposes."); Hans Smit, Recent Developments in
    International Litigation, 
    35 S. Tex. L. Rev. 215
    , 234-38
    (1994) (discussing Congress's intention to make discovery
    available where the same would not be discoverable under
    foreign law). It follows that the lack of a finding of
    discoverability is an inadequate basis on which to deny a
    S 1782 application.
    B.
    The reference in S 1782 to the Federal Rules suggests
    that under ordinary circumstances the standards for
    discovery under those rules should also apply when
    discovery is sought under the statute. Consistent with the
    statute's modest prima facie elements and Congress's goal
    of providing equitable and efficacious discovery procedures,
    district courts should treat relevant discovery materials
    sought pursuant to S 1782 as discoverable unless the party
    opposing the application can demonstrate facts sufficient to
    justify the denial of the application. In determining whether
    the foreign tribunal would take offense, the district court
    would be free, in the exercise of its discretion, to consider
    any materials, typically statutes or case law from the
    foreign jurisdiction, that may be presented by the parties.
    Cf. Hans Smit, American Assistance to Litigation in Foreign
    and International Tribunals: Section 1782 of Title 28 of the
    U.S.C. Revisited, 
    25 Syracuse J. Int'l L. & Com. 1
    , 14 (1998)
    ("when a foreign or international tribunal has ruled that
    14
    production of the evidence pursuant to Section 1782 would
    not be appropriate, an American court should heed that
    ruling and deny the application").
    In this case, however, the district court concluded,
    without any evidentiary showing, that granting the
    requested discovery would be offensive to the Spanish
    tribunal. When pressed at oral argument for an explanation
    why the Spanish court would be offended by the grant of
    Bayer's S 1782 application, counsel for BetaChem argued
    only that Bayer could have gone to the Spanish court to
    seek production of the BetaChem materials before coming
    to the United States and invoking S 1782. This fails to
    answer the question. Indeed, a "quasi-exhaustion
    requirement" of the kind advocated by BetaChem on appeal
    has been rejected by those courts that have addressed it.
    See, e.g., Malev Hungarian Airlines, 
    964 F.2d at 100
    .
    In fact, the evidence presented to the district court
    strongly suggested receptivity by the Spanish court to the
    evidence sought by Bayer rather than offense. In dealing
    with different documents but of a similar type, Judge Amigo
    of the Court of First Instance issued a ruling on October
    14, 1996, in Bayer's patent infringement action that the
    court would receive "any document that may be presented,"
    although he reserved decision as to any document's
    admissibility. App. at 87-89. For its part, BetaChem
    produced no evidence from which the district court might
    have reasonably concluded that presentation of the
    material sought here would offend the Spanish court.
    Inasmuch as relevant evidence is presumptively
    discoverable under S 1782, the burden of demonstrating
    offense to the foreign jurisdiction, or any other facts
    warranting the denial of a particular application, should
    rest with the party opposing the application, here
    BetaChem.
    In John Deere, we considered the testimony sought there
    to be discoverable in the foreign jurisdiction after noting
    simply that "the testimony sought would generally be
    subject to discovery were all the parties in Canada." 
    754 F.2d at 136
     (emphasis added). Here, the parties'
    uncontested submissions make clear that the documents
    sought by Bayer would be subject to discovery in Spain
    15
    were all the parties located there. By insisting that the
    Spanish court make the materiality determination, the
    district court, in our view, insisted on too much. See
    generally, Metallgesellschaft, 
    121 F.3d at 80
     (denying an
    application "because the foreign court had notfirst passed
    on the discoverability of the material sought" would
    contravene S 1782's purpose).
    III.
    Our discussion is not intended to suggest that Bayer is
    necessarily entitled to have its application granted. That
    determination will have to await the district court's proper
    exercise of its discretion on remand when it will be free to
    consider the relevance of factors not before us, such as the
    timeliness of Bayer's application and appropriate measures,
    if needed, to protect the confidentiality of the materials. For
    the reasons discussed above, we will vacate the order of the
    district court and remand for further proceedings
    consistent with this opinion.
    A True Copy:
    Teste:
    Clerk of the United States Court of Appeals
    for the Third Circuit
    16