Akebia Teherapeutics, Inc. v. FirbroGen, Inc.
 In re POSCO, POSCO America Corp.
 Two Recent Court Cases Provide Guidance as to When U.S. Courts Can

In the first case, a Japanese company filed a patent infringement suit against a Korean company in the United States. The Japanese company also sued the Korean company in Japan for trade secret misappropriation. The Korean company filed a declaratory judgment action in Korean asserting that it had not stolen any trade secrets. In the U.S. litigation, the Korean company produced documents to the Japanese company under a protective order that required documents produced in the U.S. litigation to be used only for purposes of the U.S. litigation. The Japanese company sought to amend the protective order to allow it to use the discovery obtained in the United States in the Japanese and Korean litigations.

The district court granted the Japanese company's request to modify the protective order because it believed the request to be appropriate. The Korean company appealed. The Federal Circuit vacated the modification of the protective order. In re POSCO, POSCO America Corp.2015-112 (Fed. Cir. July 22, 2015). Although the Federal Circuit conceded that 28 U.S.C. § 1782, which allowed any interested person to file a request in the U.S. for discovery for use in a proceeding before a foreign tribunal, was not the only statute regarding giving foreign courts access to discovery in the United States, the Federal Circuit thought it was an error by the district court not to consider this statute in its ruling. Thus, the Federal Circuit remanded the case to the district court to reconsider its ruling light of 28 U.S.C. § 1782 and cases interpreting this statute.

In the second case, a competitor company filed oppositions with the European and Japanese patent offices to challenge the patents of a biotechnology company based in the United States. The competitor company then filed an application under 35 U.S.C. § 1782 to conduct discovery in the U.S. from the biotechnology company to aid the opposition proceedings. The district court granted the application, which the Ninth Circuit Court of Appeals affirmed. Akebia Teherapeutics, Inc. v. FirbroGen, Inc., 15-15274 (Ninth Cir. July 16, 2015). The Ninth Circuit held that the competitor is an interested person under § 1782 because the biotechnology company failed to disclose information to it in the foreign proceedings. Furthermore, the Ninth Circuit held that the European and Japanese patent offices qualify as "foreign tribunals" under §1782 such that an application for discovery in the U.S. may be based on proceedings before them. Finally, the Ninth Circuit held that U.S. patent laws do not place any restrictions on the type of discovery a party may receive under § 1782 for use in a foreign tribunal.