Case of the Day: Akebia Therapeutics v. Fibrogen

The case of the day is Akebia Therapeutics, Inc. v. Fibrogen, Inc. (9th Cir. 2015). Fibrogen, a San Francisco biotech company, owns European and Japanese patents on the use of certain chemical compounds to treat anemia. Akeiba, a competitor, brought opposition proceedings in the European Patent Office and the Japanese Patent Office, asserting that the patents are invalid. Akeiba brought an application under § 1782 seeking leave to serve subpoenas for documents and testimony on Fibrogen. The judge granted the application ex parte, and Fibrogen appealed.

The Ninth Circuit affirmed. There were several issues on appeal, but I am only going to cover two. First, is the EPO or the JPO a “tribunal” for purposes of § 1782? Second, what effect, if any, does the America Invents Act have on the § 1782 analysis?

The court held, correctly in my view, that both patent offices were tribunals for purposes of the statute. The discussion was cursory, but that seems okay to me given that the question seems easy. If the Directorate-General for Competition was a tribunal in Intel, on what grounds could we say that the EPO (or the JPO) are not? They are, after all, hearing and deciding cases on the validity of patents, which seems patently adjudicatory.

The America Invents Act included provisions that, according to Fibergen, limited the right to discovery in proceedings in the USPTO. Fibrogen asked the court to conclude that Congress had intended similar restrictions to apply worldwide. I don’t think this is a ridiculous idea, since one could ask whether Congress really intended for litigants in foreign cases to have greater rights to discovery than they would if the dispute were pending in the United States. But I agree with the court in its conclusion that there is no conflict between § 1782, which on its face applies to all cases pending in foreign tribunals, and the AIA, which imposes particular limits on proceedings in the USPTO. If Congress wants to limit the scope of § 1782, it can amend the statute

About Ted Folkman

Ted Folkman is a shareholder with Murphy & King, a Boston law firm, where he has a complex business litigation practice. He is the author of International Judicial Assistance (MCLE 2d ed. 2016), a nuts-and-bolts guide to international judicial assistance issues, and of the chapter on service of process in the ABA's forthcoming treatise on International Aspects of US Litigation, and he is the publisher of Letters Blogatory, the Web's first blog devoted to international judicial assistance, which the ABA recognized as one of the best 100 legal blogs in 2012, 2014, and 2015.

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