Andover Healthcare, Inc. v. 3M Company, No. 14-3434 (8th Cir. Mar. 31, 2016) [click for opinion]

In 2013, Plaintiff Andover Healthcare, Inc. ("Andover") filed a patent infringement suit in the District of Delaware against Defendant 3M Company ("3M"). Andover claimed that 3M had infringed Andover's patents on cohesive, latex-free bandages. Parallel to the U.S. suit was a lawsuit in Germany, where Andover alleged that 3M violated Andover's related European patent.

To combat the patent infringement claims, 3M submitted an expert report in the German proceeding. The report included the results of a test of 3M's products, and the expert concluded that 3M's products did not infringe Andover's European patent. In response, Andover sought to conduct its own testing of 3M's products. 3M—claiming that compliance with Andover's request would disclose valuable trade secrets—refused Andover's request to reveal the specific type of materials in its bandages and its formula for making the bandages.

3M did, however, disclose the disputed information (albeit, under a protective order) in the District of Delaware lawsuit. Andover requested permission to use this disclosed information in the German proceeding, but the District of Delaware denied Andover's request. Subsequently, Andover made the same request to the German court.

While its request to the German court was pending, Andover petitioned the U.S. District Court for the District of Minnesota for discovery under 28 U.S.C. § 1782. The district court denied Andover's petition for discovery, and the Eighth Circuit Court of Appeals affirmed.

The Eighth Circuit held that 3M's presence as a party in the parallel German infringement suit weighed against granting Andover's petition, especially as the German court had stated that it would grant Andover's discovery request if it was necessary to resolve the case. Under the Supreme Court's Intel decision, when a foreign court can itself order production, the need for § 1782 aid is less apparent. The Eighth Circuit was thus confident that the German court would itself order disclosure if such disclosure was critical to making an informed decision.

The Eighth Circuit also disfavored Andover's § 1782 petition due to the sensitive nature of the requested discovery. Disclosure of 3M's trade secrets would irreparably harm the company, and there were risks that interested third parties in Germany could have access to the full case file if disclosure was permitted. The Eighth Circuit also noted that German courts often deny requests to omit confidential information from their decisions, such that a protective order would be insufficient to address 3M's concerns.

Finally, the Eighth Circuit favored denial of the § 1782 petition due to Andover's alleged effort to avoid or preempt an unfavorable ruling from the German court. While Andover disputed the district court's characterization of its intent, the Eighth Circuit remained unconvinced, and affirmed the district court's decision to deny the § 1782 petition.