Akebia Therapeutics, Inc. v. FibroGen, Inc.

With ample citation to Supreme Court precedent, the U.S. Court of Appeals for the Ninth Circuit affirmed the use of 28 U.S.C. § 1782 to conduct domestic discovery in aid of foreign opposition proceedings at the European and Japanese patent offices. Akebia Therapeutics, Inc. v. FibroGen, Inc., Case No. 15-15274 (9th Cir., July 16, 2015) (Graber, J.).

Respondent FibroGen owns several foreign patents directed to chemical compounds useful for treating anemias. Petitioner Akebia initiated opposition proceedings against certain FibroGen patents before the European Patent Office and the Japanese Patent Office. Upon application to the U.S. District Court for the Northern District of California, Akebia obtained an order under § 1782 permitting it to serve FibroGen with document and deposition subpoenas as a means to gather evidence for use in the foreign oppositions. FibroGen appealed.

Section 1782 permits any “interested person” to file an application in a United Stated district court asking that the court order another person to produce testimony or documents for use “in a proceeding in a foreign or international tribunal.” Relying at every step on a 2004 U.S. Supreme Court decision construing § 1782 (Intel v. Advanced Micro Devices), the Ninth Circuit upheld the district court’s discovery order. It held that Akebia was indeed an “interested person” because, as a competitor seeking to invalidate FibroGen’s patents, Akebia had “a reasonable interest in obtaining judicial assistance” within the meaning of the statute. According to the 9th Circuit, § 1782 applies to administrative proceedings, such as those before foreign patent offices, because they “carr[ied] many of the hallmarks of traditional judicial proceedings” such as “serving as first-instance decision-makers tasked with resolving patent validity disputes.”

The Court rejected FibroGen’s argument that Congressional institution of post-grant review processes in the America Invents Act (AIA) repealed, by implication, any application of § 1782 to foreign patent office proceedings. Again citing to Supreme Court authority, the 9th Circuit panel found no “irreconcilable” conflict between the two laws that would justify a repeal by implication. The Court also turned aside FibroGen’s complaint that the district court gave “short shrift” to the non-exclusive factors set out by the Supreme Court in its Intel opinion. The lower court was not required to explicitly address every Intel factor, the 9th Circuit explained, nor even issue a written order. In any event, the hearing transcript confirmed that the district court thoughtfully considered the Intel factors, including by entering a protective order to guard against improper disclosure.