In Re Posco ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
IN RE: POSCO, POSCO AMERICA CORPORATION,
Petitioners
______________________
2015-112
______________________
On Petition for Writ of Mandamus to the United
States District Court for the District of New Jersey in No.
2:12-cv-02429-SRC-CLW, Judge Stanley R. Chesler.
______________________
ON PETITION
______________________
J. MICHAEL JAKES, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Washington, DC, for petitioners.
Also represented by CHARLES THOMAS COLLINS-CHASE;
CHARLES HYUK SUH, Reston, VA.
MARK REITER, Gibson, Dunn & Crutcher LLP, Dallas,
TX, for respondent Nippon Steel & Sumitomo Metal
Corporation. Also represented by MATTHEW D. MCGILL,
Washington, DC.
ADA ELSIE BOSQUE, Office of International Judicial
Assistance, Civil Division, United States Department of
Justice, Washington, DC, for amicus curiae United States.
Also represented by BEN C. MIZER, JEANNE E. DAVIDSON.
______________________
Before NEWMAN, DYK, and HUGHES, Circuit Judges.
2 IN RE POSCO
Opinion for the court filed by Circuit Judge DYK.
Concurring opinion filed by Circuit Judge HUGHES.
DYK, Circuit Judge.
ORDER
Petitioners POSCO and its U.S. subsidiary POSCO
America Corporation (collectively, “POSCO”) seek a writ
of mandamus from an order of the United States District
Court for the District of New Jersey modifying the court’s
protective order to allow foreign courts access to petition-
ers’ proprietary information. We grant the petition.
I
On April 24, 2012, Nippon Steel & Sumitomo Metal
Corporation (“Nippon Steel”) filed suit in the District of
New Jersey, charging POSCO with patent infringement
and unfair competition. On April 5, 2013, the district
court entered a protective order prohibiting the cross-use
of confidential materials which “shall be used by the
receiving Party solely for purposes of the prosecution or
defense of this action.” Ex. E, at 2. Following the entry of
the protective order, POSCO produced several million
pages of documents containing confidential information.
Nippon Steel also brought suit in Japan against
POSCO (based in Korea) for alleged trade secret misap-
propriation. In response, POSCO filed its own declaratory
judgment action in Korea, asserting that it had not stolen
Nippon’s trade secrets.
Given that discovery in this country’s federal court
system is more generous than in Japan and Korea, Nip-
pon Steel, attempting to obtain and use documents that
perhaps it would not otherwise be able to obtain and use
in those foreign courts, moved the district court to modify
its discovery protective order for the purposes of providing
foreign counsel in the Japanese and Korean actions
IN RE POSCO 3
approximately 200 pages of proprietary documentation
relating to POSCO’s manufacturing process.
The Special Discovery Master assigned to the case is-
sued a Letter Opinion, concluding that Nippon Steel’s
request to produce those documents to counsel for those
foreign proceedings should be granted. The Special
Master looked to the Federal Rules of Civil Procedure and
the balancing framework for modifying discovery orders
set forth by the Third Circuit in Pansy v. Borough of
Stroudsburg, 23 F.3d 772 (3d Cir. 1994), a case involving
the modification of a protective order to disclose a settle-
ment agreement to U.S. newspapers, and not the provi-
sion of documents to foreign courts. See id. at 775. Pansy
articulated the standard as follows: “The party seeking to
modify the order of confidentiality must come forward
with a reason to modify the order. Once that is done, the
court should then balance the interests, including the
reliance by the original parties to the order, to determine
whether good cause still exists for the order.” Id. at 790.
In conducting his assessment, the Special Master
acknowledged that the sole purpose of the request was to
facilitate evidence gathering in the foreign proceedings.
He concluded that the evidence identified “seems to be
relevant” to those proceedings and that restrictions
should be put in place to keep the information confiden-
tial. Ex. L, at 22. Among the restrictions that the Special
Master sought to impose “as a condition to having these
documents submitted in a foreign jurisdiction” were that
“[b]efore the documents may be submitted to a foreign
court, the court must identify the information and agree
that it would be maintained as confidential and restricted
from third party access.” Id.Petitioners filed objections to the Special Master’s rul-
ing. On October 30, 2014, the district court entered an
Order and Opinion affirming the Special Master’s ruling.
Petitioners then filed their request for a writ seeking
4 IN RE POSCO
review under 28 U.S.C. § 1651(a). Our review is appro-
priate because the order in question turns on claims of
confidentiality that raise an important issue of first
impression. See In re United States, 669 F.3d 1333, 1336
(Fed. Cir. 2012).
Neither the Special Master’s ruling nor the district
court’s order addressed the role that 28 U.S.C. § 1782 or
the Supreme Court’s decision in Intel Corp. v. Advanced
Micro Devices, Inc., 542 U.S. 241 (2004), should play in
this determination. We asked the parties for supple-
mental briefing on: “Whether, in light of the Supreme
Court’s decision in [Intel], 28 U.S.C. § 1782 provides the
exclusive means for securing documents from another
party for use in a foreign proceeding?” In re POSCO, No.
2015-112, ECF No. 17, at 1–2 (Fed. Cir. Dec. 22, 2014).
Thereafter, we requested the government’s views on this
issue. The parties and the government have filed respon-
sive briefs.
II
For mandamus to be available, (1) “the party seeking
issuance of the writ must have no other adequate means
to attain the relief he desires”; (2) “the petitioner must
satisfy the burden of showing that his right to issuance of
the writ is clear and indisputable”; and (3) “the issuing
court, in the exercise of its discretion, must be satisfied
that the writ is appropriate under the circumstances.”
Cheney v. U.S. Dist. Court for the D.C., 542 U.S. 367, 380–
81 (2004) (citations, quotations, and alterations omitted).
“[M]andamus may properly be used as a means of imme-
diate appellate review of orders compelling the production
of documents claimed to be protected by privilege or other
interests in confidentiality.” In re MTSG, Inc., 675 F.3d
1337, 1342 (Fed. Cir. 2012) (quoting Bogosian v. Gulf Oil
Corp., 738 F.2d 587, 591 (3d Cir. 1984)); see also id. at
1341 (“[M]andamus may be appropriate where a discovery
order ‘raises a novel and important question of power to
IN RE POSCO 5
compel discovery, or . . . reflects substantial uncertainty
and confusion in the district courts.’” (quoting 16 Charles
Alan Wright, Arthur R. Miller & Edward H. Cooper,
Federal Practice and Procedure § 3935.3 (2d ed. 1996)).
We think this petition satisfies that standard because it
presents an important and unresolved issue.
III
Section 1782, in relevant part, provides:
The district court of the district in which a person
resides or is found may order him to . . . produce a
document or other thing for use in a proceeding in
a foreign or international tribunal . . . upon the
application of any interested person . . . [and un-
less otherwise specified] the document or other
thing [will be] produced[] in accordance with the
Federal Rules of Civil Procedure.
28 U.S.C. § 1782(a).
POSCO’s supplemental brief argues that § 1782,
along with certain mutual legal assistance treaties,
provides the exclusive means to obtain discovery for use
in foreign proceedings. Nippon Steel argues that in the
absence of a plain statement of pre-emptive intent, § 1782
does not limit the scope of discovery under the Federal
Rules or the standard for modifying protective orders and
is not relevant. The government expresses concern that a
holding that § 1782 is the exclusive means for obtaining
discovery for use in a foreign proceeding would conflict
with various statutes, treaties and district court decisions,
and the government asserts that § 1782 is not relevant to
the district court’s authority to permit the use of discov-
ered materials in foreign proceedings.
IV
The question before us is the role of § 1782(a) in the
context of the request to modify this protective order. We
6 IN RE POSCO
consider this issue against the background of the Su-
preme Court’s decision in Intel and district court decisions
addressing § 1782.
In Intel, the Supreme Court considered the framework
under § 1782 for assessing whether to authorize discovery
for use in foreign proceedings. It recognized that “comity
and parity concerns may be important as touchstones for
a district court’s exercise of discretion in particular cases,”
542 U.S. at 261, and set forth specific factors as “guides
for the exercise of district-court discretion,” id. at 263
n.15, in deciding whether to provide evidence for use in
foreign proceedings. See id. at 264 (“[A] district court is
not required to grant a § 1782(a) discovery application
simply because it has the authority to do so.”); id. at 262
(referring to “[c]oncerns about maintaining parity among
adversaries in litigation”). As the Seventh Circuit has
noted, “[t]he section 1782 screen—the judicial inquiry
that the statute requires—is designed for preventing
abuses of the right to conduct discovery in a federal
district court for use in a foreign court.” Heraeus Kulzer,
GmbH v. Biomet, Inc., 633 F.3d 591, 597 (7th Cir. 2011).
We agree that § 1782 may not directly govern re-
quests to modify a protective order to make material
available in a foreign proceeding—as opposed to direct
requests for evidentiary material for use in foreign pro-
ceedings pursuant to § 1782. And even as to the latter
situation § 1782 is not exclusive since, as the government
points out, there are various treaties and alternative
mechanisms for securing materials for use in foreign
proceedings. But here these other mechanisms appear to
be unavailable, and we think that § 1782 still has a role to
play when a party seeks to modify a protective order to
use previously discovered documents in a foreign proceed-
IN RE POSCO 7
ing. Other circuit courts have not specifically addressed
this issue after Intel. 1
The government argues that “district courts have con-
sistently held that section 1782 does not control the
disclosure or use of evidence in domestic litigation.” U.S.
Amicus Br. at 11. But while the cases state that § 1782 is
not controlling, two of the district court opinions cited by
the government apply the Intel factors.
In Infineon Technologies AG v. Green Power Technolo-
gies Ltd., 247 F.R.D. 1 (D.D.C. 2005), the district court
granted the defendant’s motion to modify a protective
order to permit certain discovery in the district court case
to be used in a related patent litigation between the
parties in Germany. Id. at 2. In doing so, however, the
1 Nippon Steel calls our attention to cases before Intel,
including one from this court, that have not looked to
§ 1782 in determining whether protective orders should
be modified. See, e.g., In re Jenoptik AG, 109 F.3d 721(Fed. Cir. 1997); Beckman Indus., Inc. v. Int’l Ins. Co., 966
F.2d 470, 475 (9th Cir. 1992). In Jenoptik, we considered
whether deposition testimony discovered in U.S. district
court subject to a protective order could be submitted to a
foreign court in Germany. See 109 F.3d at 722. In declin-
ing to consider whether the deposition testimony would
have been independently discoverable in Germany, we
stated that “[c]ase law interpreting the requirements of
section 1782 is not relevant to a determination whether a
protective order may be modified to permit the release of
deposition testimony, already discovered, to another
court.” Id. at 723. But Jenoptik (and Beckman) issued
before Intel, which clarified the broad scope of § 1782 and
the considerations underlying the statute. And Beckman
made no mention of § 1782. See 966 F.2d at 475–76.
Therefore, those cases are not controlling here.
8 IN RE POSCO
district court cited and applied § 1782, “which governs
discovery for foreign tribunals,” and found that the Intel
factors supported the modification of the protective order
to allow foreign cross-use. Id. at 4–5.
In INVISTA North America S.à.r.l. v. M & H USA
Corp., No. 11-1007-SLR-CJB, 2013 WL 1867345 (D. Del.
Mar. 28, 2013), although the district court found that the
Intel factors were not applicable “to the question of
whether such documents can be reviewed by an opposing
side’s foreign attorneys, but not be used in a foreign legal
proceeding,” id. at *3 n.4 (emphasis in original), the court
applied the Intel factors in assessing whether to modify a
protective order to allow the plaintiff to use documents in
a foreign proceeding, see id. at *3–5. POSCO also cites
the docket from another case from the District of Dela-
ware, in which the court’s oral order denied a request to
use documents subject to a protective order in a German
proceeding, noting that § 1782 “provide[s] other, appro-
priate mechanisms for Plaintiff to seek the relief it is
requesting.” POSCO’s Supp. Br. Ex. 1 (dkt. # 64). 2
Thus, unlike the district court here, which did not ad-
dress § 1782 or the Intel factors, at least three district
courts have acknowledged that § 1782 and the Intel
factors were relevant when a party seeks to modify a
protective order to use discovered materials in a pending
foreign proceeding.
2 The third case relied on by the government—Oracle
Corp. v. SAP AG, No. C-07-01658 PJH (EDL), 2010 WL
545842 (N.D. Cal. Feb. 12, 2010)—also recognized the
possible relevance of the Intel factors. See id. at *3 (The
Intel factors “may arguably be worthy of consideration” in
determining whether to modify a protective order to use
discovered material in a co-pending foreign proceeding.).
IN RE POSCO 9
Those factors include: (1) whether “the person from
whom discovery is sought is a participant in the foreign
proceeding”; (2) “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”;
(3) “whether the § 1782(a) request conceals an attempt to
circumvent foreign proof-gathering restrictions or other
policies of a foreign country or the United States”; and (4)
whether the request is otherwise “unduly intrusive or
burdensome . . . .” Intel, 542 U.S. at 264–65 (citations
omitted). These factors, deemed by Congress to be rele-
vant under § 1782, are not accounted for by the Pansy
standard, applied here by the district court.
Thus, while § 1782 may not govern instances in which
a party seeks to modify a protective order to allow use of
discovered materials in a foreign proceeding, we think
that the considerations articulated under § 1782 and Intel
are relevant to that issue and must be considered together
with other considerations pertinent under Federal Rule of
Civil Procedure 26 as articulated in Pansy. Contrary to
the concurrence, this is not a situation in which the
documents were produced voluntarily, in which case the
Intel considerations may be irrelevant. In this case, the
district court ordered that the confidentiality order be
modified and the materials were originally produced to
the district court subject to compulsory process.
V
Here, the district court did not address the § 1782 fac-
tors, but instead applied the Third Circuit’s standard in
Pansy. The restrictions purportedly imposed by the
Special Master on the foreign courts relate to the very
“comity and parity concerns,” Intel, 542 U.S. at 261,
addressed by § 1782. Yet the notion of the use of discov-
ery in foreign proceedings was not addressed at all in
Pansy, and the standard announced there takes no ac-
10 IN RE POSCO
count of these concerns. See Pansy, 23 F.3d at 783–90.
We therefore grant mandamus for purposes of directing
the district court to conduct the proper assessment giving
due consideration to the Intel factors.
Accordingly,
POSCO’s petition is granted, the order granting the
motion to modify the protective order to allow for use of
discovery in foreign proceedings is vacated, and the
district court is directed to conduct further proceedings
consistent with this Order.
FOR THE COURT
July 22, 2015 /s/ Daniel E. O’Toole
Date Daniel E. O’Toole
Clerk of Court
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: POSCO, POSCO AMERICA CORPORATION,
Petitioners
______________________
2015-112
______________________
On Petition for Writ of Mandamus to the United
States District Court for the District of New Jersey in No.
2:12-cv-02429-SRC-CLW, Judge Stanley R. Chesler.
______________________
HUGHES, Circuit Judge, concurring.
While the majority concedes that a §1782 action is not
the exclusive means by which a party can obtain docu-
ments for use in foreign proceedings, it nevertheless
concludes that “the considerations articulated under
§ 1782” and case law applying it must be considered when
determining whether to modify a protective order to
permit the use of confidential documents in foreign pro-
ceedings. But § 1782 does not and was never intended to
apply to situations where the party is already in posses-
sion of the documents it seeks to use in the foreign pro-
ceeding. And forcing such a requirement on the district
court runs afoul of the Third Circuit’s well-settled test for
modifying protective orders.
Nevertheless, to the extent the district court imposed
restrictions on the foreign court’s use of documents sub-
mitted by parties to this litigation, it violates well-settled
comity principles. Mandamus is appropriate for that
2 IN RE POSCO
reason. But I would not go as far as the majority to hold
that the district court must consider the Intel factors.
I
I am not persuaded that courts must consider § 1782
outside of the context of an action for the production of
documents brought under § 1782. The Supreme Court
may have broadened the scope of a § 1782 inquiry in Intel
Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241(2004), but it did not speak to how a party already in
possession of documents properly obtained through the
usual course of discovery may use those documents. The
plain language of § 1782 and its clear legislative history
demonstrate that the statute only applies to new discov-
ery—that is, actions where a party is requesting the
district court to order the production of a document or
otherwise compel testimony.
The plain language of § 1782(a) speaks only to re-
quests for an order to produce documents or testimony,
not to voluntary dissemination of legally obtained docu-
ments. Section 1782(a) describes “order[ing] [a person] to
give his testimony or statement or to produce a docu-
ment.” § 1782(a); see also id. (“The order may prescribe
the practice and procedure . . . for taking the testimony or
statement or producing the document or other thing.”); id.
(“To the extent that the order does not prescribe other-
wise, the testimony or statement shall be taken, and the
document or other thing produced, in accordance with the
Federal Rules of Civil Procedure.”); id. (“A person may not
be compelled to give his testimony or statement or to
produce a document or other thing in violation of any
legally applicable privilege.”). Moreover, while § 1782(a)
focuses on compelling testimony or document production,
§ 1782(b) focuses on the voluntary production of docu-
ments, expressly providing that § 1782(a) “does not pre-
clude a person . . . from voluntarily . . . producing a
IN RE POSCO 3
document or other thing, for use in a proceeding in a
foreign or international tribunal before any person and in
any manner acceptable to him.” § 1782(b).
The legislative history confirms that § 1782 was en-
acted—and further refined—to create a cause of action for
enforcing letters rogatory or other international requests
for documents or testimony found in the United States.
See Intel Corp., 542 U.S. at 247–49 (recounting legislative
history of § 1782). But it was not intended to reach the
voluntary production of documents. For example, the
Senate Report accompanying Congress’s 1964 revitaliza-
tion of § 1782 makes clear that Congress was only con-
cerned with the district court’s power to compel discovery
in response to foreign requests: “Subsection (a) of pro-
posed revised section 1782 makes clear that U.S. judicial
assistance may be sought not only to compel testimony
and statements but also to require the production of
documents and other tangible evidence.” S. Rep. No. 88-
1580 (1964), reprinted in 1964 U.S.C.C.A.N. 3782, 3788
(emphasis added); Act of Oct. 3, Pub. L. No. 88-619, § 9,
78 Stat. 997; see also 1964 U.S.C.C.A.N at 3789 (“A re-
quest for judicial assistance under the proposed revision
may either be contained in a letter rogatory or other
request or be made in a direct application by an interest-
ed person . . . .”).
The legislative history also confirms that § 1782(b)
was intended to carve out situations where a party al-
ready in possession of documents may voluntarily provide
them to a foreign tribunal:
Subsection (b) of proposed revised section 1782
reaffirms the pre-existing freedom of persons
within the United States voluntarily to give tes-
timony or statements or produce tangible evidence
in connection with foreign or international pro-
ceedings or investigations. This explicit reaffir-
4 IN RE POSCO
mation is considered desirable to stress in the re-
lations with foreign countries the large degree of
freedom existing in this area in the United States.
It also serves to make clear that subsection (a)
leaves that freedom unaffected.
S. Rep. No. 88-1580 (1964), reprinted in 1964
U.S.C.C.A.N. 3782, 3790.
Unsurprisingly, the Supreme Court’s decision in Intel
reflects the plain language of the statute and its clear
legislative history. There, the Supreme Court described
§ 1782 in terms of an affirmative action ordering the
production of documents or other evidence. Intel Corp.,
542 U.S. at 260 (focusing on the district court’s “produc-
tion-order authority”); id. at 264 (“[W]hen the person from
whom discovery is sought . . . .”); id. at 246 (“This case
concerns the authority of federal district courts to assist
in the production of evidence for use in a foreign or inter-
national tribunal.”); id. at 247 (“Section 1782 is the prod-
uct of congressional efforts . . . to provide federal-court
assistance in gathering evidence for use in foreign tribu-
nals”); id. at 261 (“[N]othing in the text of § 1782 limits a
district court’s production-order authority . . . .”).
On a more fundamental level, forcing a § 1782 analy-
sis into protective-order disputes is unnecessary. In In re
Jenoptik AG, 109 F.3d 721 (Fed. Cir. 1997), we recognized
that the protective-order inquiry is fundamentally differ-
ent from the § 1782 inquiry. There, while interpreting
Ninth Circuit law, we emphasized that the protective-
order inquiry is focused on the confidential nature of the
documents subject to the protective order, not on their use
in a foreign proceeding. Id. at 723. In this case, just as in
Jenoptik, “[POSCO] d[oes] not argue that, if these materi-
als were not confidential [Nippon] could not present the
[evidence] to another court.” Id. Nor could POSCO make
such an argument because § 1782(b) and the legislative
IN RE POSCO 5
history make it abundantly clear that a party may volun-
tarily disclose evidence to a foreign tribunal. Thus, we
categorically held in Jenoptik—without reference or
citation to any regional circuit law—that “[c]ase law
interpreting the requirements of section 1782 is not
relevant to a determination whether a protective order
may be modified to permit the release of [evidence],
already discovered, to another court.” Id. at 723.
While we may not be strictly bound by Jenoptik in
this case because we are interpreting Third Circuit law,
our reasoning in Jenoptik must carry some force. Indeed,
other courts not strictly bound by our precedent have
applied Jenoptik to conclude that § 1782 does not override
the protective-order inquiry. See, e.g., INVISTA N. Am.
S.a.r.l. v. M & G USA Corp., Civ. No. 1:11-cv-1007-SLR,
2013 WL 1867345, at *1, *3 (D. Del. Mar. 28, 2013) (not-
ing “some courts have refused to apply the Section 1782(a)
factors” in protective order modifications) (citing Jenoptik,
109 F.3d at 723); Infineon Techs. AG v. Green Power
Techs. Ltd., 247 F.R.D. 1, 4 (D.D.C. 2005) (citing Jenoptik
for the proposition that § 1782 does not control modifica-
tions to protective orders, but finding that § 1782 consid-
erations are nonetheless helpful to such an inquiry); see
also Oracle Corp. v. SAP AG, Civ. No. 4:07-cv-01658-PJH,
2010 WL 545842, at *2 (N.D. Cal. Feb. 12, 2010) (“[Sec-
tion 1782] applies to court orders for new discovery to be
conducted exclusively for use in a foreign proceeding
separate from any litigation pending before the United
States court; it does not govern the discretion of a court to
modify a protective order to allow access to information
already obtained in the regular course of discovery in a
case pending before it.”) (citing Jenoptik, 109 F.3d at 723).
Likewise, courts and commentators have interpreted
modifications to protective orders for the purposes of
using documents abroad consistent with our holding in
Jenoptik. For instance, in In re Kolon Industries Inc., 479
6 IN RE POSCO
F. App’x 483, 486 (4th Cir. 2012), the court affirmed a
modification of a protective order to permit release of
already-produced privileged documents for use in foreign
litigation without any discussion of § 1782. And recent
commentators have noted that § 1782 only applies to new
discovery: “Where the requested discovery is sought by
foreign persons from discovery already made as part of
ongoing U.S. litigation, § 1782 need not be satisfied.” 3
Ved. P. Nanda & David K. Pansius, Litigation of Interna-
tional Disputes in U.S. Courts § 17:46 (2014). 1
In sum, I am not persuaded that § 1782 must be ap-
plied outside of the narrow context of an action for the
production of evidence for use abroad. To the extent we
are not bound by our holding in Jenoptik, I find its rea-
soning persuasive in light of the plain language and clear
legislative history of § 1782.
II
Requiring a court to resort to the Intel factors when it
has reason to believe the documents will be used in a
foreign proceeding also contradicts Third Circuit prece-
1For the reasons discussed above and contrary to the
majority’s suggestion, Maj. Op. at 6 n.1, Intel does not
overrule or otherwise undermine our reasoning in Jenop-
tik. Cf. Troy v. Samson Mfg. Corp., 758 F.3d 1322, 1326
(Fed. Cir. 2014) (circuit precedent can be effectively
overruled by Supreme Court decisions that “‘undercut the
theory or reasoning underlying the prior circuit precedent
in such a way that the cases are clearly irreconcilable.’”
(quoting Miller v. Gammie, 335 F.3d 889, 900 (9th Cir.
2003) (en banc))). At best, Intel broadened the scope of a
§ 1782 cause of action, but it does not reach a situation
such as this where the party is already in possession of
the documents it seeks to use in a foreign proceeding. See
supra pp. 2–4.
IN RE POSCO 7
dent. The Third Circuit has laid out a flexible two-part
test for determining whether a protective order can be
modified. First, “[t]he party seeking to modify the order
of confidentiality must come forward with a reason to
modify the order.” Pansy v. Borough of Stroudsburg, 23
F.3d 772, 790 (3d Cir. 1994). “[O]nce that is done, the
court should then balance the interests, including the
reliance by the original parties to the order, to determine
whether good cause still exists for the order.” Id. In
addition to reliance, the relevant factors include whether
disclosure will violate any privacy interest, the infor-
mation is sought for a legitimate purpose, and sharing the
information will promote fairness and efficiency. Id. at
787–91. In Pansy, the Third Circuit stressed the flexibil-
ity of the test, noting that the factors discussed are “una-
voidably vague and are of course not exhaustive,” while
explaining that “such a balancing test is necessary to
provide the district courts the flexibility needed to justly
and properly consider the factors in each case.” Id. at
789.
The majority’s holding that § 1782 must apply to the
protective-order inquiry, and that the court must apply
the Intel factors, runs counter to that Third Circuit prece-
dent. Compare Maj. Op. at 8 (“These [Intel] factors,
deemed by Congress to be relevant under § 1782, are not
accounted for by the Pansy standard.”), with Pansy, 23
F.3d at 789 (stressing the need for a flexible balancing
test while emphasizing that “[t]he factors discussed above
are unavoidably vague and are of course not exhaustive.”)
and Glenmede Trust Co. v. Thompson, 56 F.3d 476, 483
(3d Cir. 1995) (noting Pansy factors “are neither manda-
tory nor exhaustive”).
III
While § 1782 was not designed for such cases, I never-
theless agree with the majority that modifying protective
8 IN RE POSCO
orders to permit the use of previously discovered material
in foreign proceedings—like all domestic court orders
potentially impinging on a foreign court’s sovereignty—
may raise some of the same comity concerns identified by
the Supreme Court in Intel. But this is not unique to the
protective-order inquiry: any time a court imposes re-
strictions on a foreign court, it should be aware of such
concerns. Indeed, the Third Circuit has recognized that
“[c]omity is essentially a version of the golden rule: a
‘concept of doing to others as you would have them do to
you.’” Republic of Philippines v. Westinghouse Elec. Corp.,
43 F.3d 65, 75 (3d Cir. 1994) (quoting Lafontant v. Aris-
tide, 844 F. Supp. 128, 132 (S.D.N.Y. 1994)). “Thus, it
may be permissible to prescribe and enforce rules of law
in a foreign country, but unreasonable to do so in a par-
ticular manner because of the intrusiveness of a particu-
lar type of [order].” Id.In this case, as one of seven conditions “to having
these documents submitted in a foreign jurisdiction,” the
district court included a requirement that the foreign
court “must identify the [confidential] information and
agree that it would be maintained as confidential and
restricted from third party access” before the court may
receive those documents. Ex. L, at 22. The district court
found that “with the condition that the [seven] actions . . .
will be taken,” “good cause” exists to modify the protective
order to permit the use of certain documents abroad. Id.
at 23; see also Ex. P, at 4. While a court may exercise its
discretion to restrict the parties’ use of documents subject
to a protective order in accordance with Federal Rule of
Civil Procedure 26, the court may not go so far as to place
direct limits on a foreign court’s power to exercise its own
discretion. See Republic of Philippines, 43 F.3d at 79
(“Although countries sometimes exercise jurisdiction to
prescribe and enforce laws that reach extraterritorial
conduct, it is nevertheless widely accepted that each
sovereign nation has the sole jurisdiction to prescribe and
IN RE POSCO 9
administer its own laws, in its own country, pertaining to
its own citizens, in its own discretion.”); cf. Jenoptik, 109
F.3d at 723–24 (noting that the “district court did all that
it could by requesting that the [foreign] court continue to
treat the documents as confidential” (emphasis added)).
Thus, to the extent the district court imposed such a
restriction on a foreign court’s ability to use documents as
that court pleases without due consideration to interna-
tional comity concerns, it erred.
On remand, I would order the district court to deter-
mine whether “good cause” exists to modify the protective
order independent of a restriction on the foreign court’s
discretion. I also would instruct the court to be mindful
that the deliberately flexible Pansy test permits, but does
not require, district courts to account for relevant comity
concerns, if appropriate. See, e.g., INVISTA N. Am.
S.a.r.l., 2013 WL 1867345, at *3 (recognizing that “some
courts have refused to apply the Section 1782(a) factors”
in evaluating requests for protective order modification,
but finding “even were the Court to assess the four Intel
factors . . . , those factors would not counsel against
permitting the use of the . . . documents at issue.”). But I
would not hold—as the majority does here—that the
district court must apply § 1782 and its case law.