In In re POSCO, Appeal No. 2015-112, the Federal Circuit granted a petition for mandamus and remanded the case for the district court to reconsider modification of a protective order permitting cross-production of an opponent’s confidential documents to counsel in parallel foreign litigation.

Nippon Steel sued POSCO for patent infringement and unfair competition in the District of New Jersey.  The district court entered a protective order limiting the use of discovered confidential materials “solely for purposes of the prosecution or defense of [the U.S. action].”  Nippon Steel sued POSCO in Japan, and POSCO filed a declaratory judgment action in Korea, both regarding alleged trade secret misappropriation.  Nippon Steel filed a motion to modify the protective order to allow its U.S. counsel to cross-produce to its foreign counsel in the Japanese and Korean cases certain confidential POSCO materials produced in the U.S. case.  The district court granted the motion without addressing the role of 28 U.S.C. § 1782 or the Supreme Court’s decision inIntel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 (2004), which considered the framework under § 1782 for assessing whether to authorize discovery for use in foreign proceedings.  POSCO filed a request for a writ of mandamus from the Federal Circuit.

The Federal Circuit considered the role of 28 U.S.C. § 1782 and the framework of Intel in the context of the request to modify the protective order.  It found that, while “§ 1782 does not directly govern requests to modify a protective order to make material available in a foreign proceeding—as opposed to direct requests for evidentiary material for use in a foreign proceeding,” it “still has a role to play when a party seeks to modify a protective order to use previously discovered documents in a foreign proceeding.”  In support, the Federal Circuit recognized that the considerations of parity and comity found relevant in Intel were equally applicable here, and further noted that several district courts had considered the Intel factors in similar cases.  Accordingly, the Federal Circuit granted POSCO’s petition and remanded to the district court for reconsideration in view of § 1782 and the Intel framework.