The case of the day is In re Schlich (1st Cir. 2018). The decision is only the second time the First Circuit—the federal appellate court here in Boston—has reviewed a decision under § 1782, and the first since Intel, so the case is significant. I covered the District Court’s decision in December 2016.

The Broad Institute, located in Cambridge, Mass., held several European patents relating to CRISPR, the gene-editing technology that has been in the news recently. George W. Schlich, a European patent agent for Intellia Therapeutics, Inc., brought oppositions to the Broad Institute’s patents in the European Patent Office, challenging the patents’ validity. He brought a 1782 application seeking discovery from the Broad Institute and several of its researchers. The district court denied the application, and Schlicht appealed.

The reason the application was controversial was that, according to the Broad Institute, Schlich was seeking to litigate an issue about inventorship in the EPO, but, according to affidavits Broad submitted, the EPO has no jurisdiction to decide questions of inventorship. As the First Circuit framed the issue, the question was receptivity. Schlicht argued that the lower court had erred by putting the burden of providing receptivity on the applicant, rather than requiring the party seeking to avoid discovery to prove that the foreign tribunal would not be receptive to the evidence. The only courts of appeals to have considered the issue squarely, the Second and Third Circuits, had held, as Schlicht suggested, that the other party had the burden to show non-receptivity, though there were lower-court decisions to the contrary.

The First Circuit held that because the Intel factors were merely a list of factors that could inform the exercise of a court’s discretion, neither party had a burden of proof in the classic sense:

Rather, [the Supreme Court] intended for both parties to make their arguments as to all of the factors, and for the district court to then determine whom those factors favor. In this sense, we do not see the factors as creating a “burden” for either party to meet, but rather as considerations to guide the district court’s decision. Both parties are free to argue their positions and submit evidence in support thereof, and the district court is then to consider all of that in weighing these factors.

While I am not sure the First Circuit’s approach is better than the approach of the Second and Third Circuits, I do not think that in the end its approach will make much difference in practice, because frequently the applicant will be able to show, on the basis of prior cases or on the basis of general considerations (e.g., in the civil law, the court generally does not care about the means by which a party obtained the evidence), that the relevant foreign tribunal is receptive to evidence obtained via the statute. It would be unfortunate, though, if the new decision caused problems where evidence is being sought in a tribunal in which litigants haven’t used § 1782 before. This is similar to the problem of reciprocity in judgment recognition. It is easier to prove reciprocity in, say, England, than in Zambia. And as a matter of policy, I would suggest that the US should not require a strong showing of receptivity for the same reasons US law generally does not require proof of reciprocity: the bias of our law is to provide assistance. If the assistance is unwanted, the foreign tribunal is free to ignore the evidence. That is particularly so in cases such as this, where the evidence is sought from a party to the foreign proceeding.

It’s also worth noting that the issue of receptivity in the case was tied up in concerns about the relevance of the evidence. To prove receptivity, Schlicht pointed to a prior case in which the EPO accepted evidence obtained via § 1782, but in response, Broad submitted an affidavit suggesting that the evidence concerned an issue that the EPO had no power to address and was thus irrelevant. That affidavit may have been unrebutted. It’s hard to argue with the proposition that a foreign tribunal isn’t receptive to irrelevant evidence, but if the proponent of the evidence offers good reasons to suggest that the evidence may be relevant, I think courts should be slow to deprive the foreign tribunal of the opportunity to decide questions of relevance for itself.