The Fifth Circuit has reversed an order compelling production of an unredacted patent-purchase agreement for use in European litigation, clarifying how district judges must review applications for cross-border discovery.
Motorola Solutions sought the document under 28 U.S.C. §1782 for proceedings in the Unified Patent Court and German courts. A magistrate judge ordered production even though the Unified Patent Court had declined similar disclosure. The district court reviewed that ruling only for clear error.
The appellate court held that a standalone §1782 discovery order is dispositive because it effectively resolves the entire federal proceeding. The district judge therefore had to conduct de novo review. The panel also found problems in the allocation of the evidentiary burden and in the treatment of the discretionary factors governing foreign-discovery assistance. It reversed and returned the application for reconsideration rather than deciding whether Motorola ultimately receives the agreement.
Official Fifth Circuit opinion
