Section 1782: A Handy Tool for US Discovery in Foreign IP Proceedings
In today’s global business environment, it’s not uncommon for US companies to find themselves involved in a cross-border litigation – often with suppliers or customers, or in the case of intellectual property law, as a participant in a foreign lawsuit to enforce or defend intellectual property rights in overseas locations.
If your company becomes a litigant in an overseas lawsuit or other legal proceeding, Section 1782 is a powerful and sometimes very useful US law that allows a party in a foreign lawsuit to quickly obtain evidence in the United States for use in their foreign case.
Section 1782 of Title 28 of the United States Code (“Section 1782”) authorizes US federal courts to order businesses (or individuals or any entity that meets the legal person definition) to provide documents and testimony that can be used as evidence in in foreign proceedings.
The most typical way of obtaining evidence in cross-border lawsuits is via the Hague Evidence Convention, a treaty signed by about 60 countries to agree on rules of procedure for obtaining evidence between participating countries. However, obtaining evidence under the Hague Evidence Convention procedures can be complicated, time-consuming and expensive, and can often vary between countries and be subject to local interpretation. There are also multiple countries (notably Brazil, Canada, Ireland, Japan, and Taiwan) that have not signed on to participate in the Hague Evidence Convention.
Section 1782 provides a convenient way for a foreign litigant who is seeking US evidence to leap-frog the Hague Evidence Convention procedures; or to obtain US evidence for use in in countries that are not parties to the Hague Evidence Convention or that have limited pretrial discovery (such as China, France, Japan, and Taiwan).
Overseas litigants have been using Section 1782 with increasing frequency. In the last five years, foreign litigants have filed more than one hundred Section 1782 applications, increasing from just a few per year to dozens per year.
Using Section 1782 with Various Foreign Proceedings
Section 1782 can be used in conjunction with overseas lawsuits, or with other quasi-judicial proceedings, such as intellectual property infringement lawsuits claims and administrative proceedings challenging intellectual property rights. However, participants in foreign arbitrations cannot use Section 1782 to obtain evidence. Importantly, the overseas lawsuit or proceeding doesn’t even have to have been filed – it could be contemplated or imminent. This can be particularly useful in countries where intellectual property proceedings tend to move quickly, such as administrative proceedings to cancel a trademark or invalidate a patent.
The Section 1782 Application Procedure
Section 1782 applications are usually brought “ex parte” or directly to a U.S. federal court without giving notice to the entity from whom the discovery is sought. The US judge decides whether to grant, deny, or limit the requested discovery based on a series of factors outlined below. Timing to obtain a decision from the judge is highly court-dependent, but usually takes two to five months.
Once granted, the foreign applicant moves ahead with requesting documents or depositions according to the usual US rules. The opposing party can of course move to resist or limit those requests under those same rules.
Obtaining evidence under Section 1782 ordinarily takes at least a few months, but can take longer. Reducing the number of document requests and going without depositions can speed up the process.
Courts Consider Seven Factors in Evaluating Section 1782 Applications
To prevail on a Section 1782 application, a non-US litigant must address a total of seven factors. The first three come from the statute itself:
The target must be within the court’s jurisdiction, i.e. a headquarters or similar presence;
Discovery is sought for a foreign or international proceeding; and
The applicant is a person with an interest in the foreign proceeding.
If these statutory factors are satisfied, the Judge will then assess the four discretionary factors mandated by the Supreme Court’s decision in Intel Corp. v. Advanced Micro Devices, Inc.:
Whether the target is a participant in the foreign proceeding;
The nature of the foreign proceeding, and whether it is receptive to US judicial assistance;
Whether the application circumvents foreign rules prohibiting US-style discovery; and
Whether providing the discovery would be unduly burdensome.
A Recent Example of a Section 1782 Applications in an Intellectual Property Case
I recently represented Sailed Technology, the Chinese affiliate of a US-based technology company, in a Section 1782 proceeding targeting Amazon. Sailed sued Amazon in China for alleged patent infringement by its Echo and Fire products, and needed to identify the Chinese manufacturers of Amazon’s devices. Sailed’s Section 1782 application sought to have Amazon disclose the manufacturers’ names and production codes associated with the products. Judge Chun of the US District Court for the Western District of Washington found that the statutory requirements were met, and that the four discretionary factors, as a whole, weighed in Sailed’s favor:
Amazon was a participant in the Chinese proceedings;
There was nothing suggesting that the Chinese court would reject the evidence sought;
There was no attempt to bypass Chinese proof-gathering law; and
The requests were, except for a few particulars, narrowly tailored and proportional to the needs of the Chinese proceeding and were not unduly burdensome.
The court granted the 1782 application with minor changes. See In re Sailed Tech. (Beijing) Co., Ltd., No. 2:22-CV-01396-JHC, 2023 WL 3568151, at *1 (W.D. Wash. May 18, 2023).
Upshot - Use Section 1782 to Obtain Crucial Evidence in Foreign IP Cases
Section 1782 is a powerful discovery tool for getting US discovery and evidence to use in foreign international property proceedings. Section 1782 is especially well suited for obtaining crucial evidence that would be time-consuming, or difficult or impossible to obtain, under normal foreign procedures. For questions, email me here.