The case of the day is In re Application of Biogen MA (D. Del. 2026). It’s a Section 1782 decision in a cross-border patent dispute. I was counsel to the applicant. Biogen had brought patent infringement claims against Sandoz in the US and in the UK. It intended to bring a claim in Italy, but it wasn’t able to plead what it needed to plead to commence the case, because the evidence it had obtained in the other proceedings could, under the protective orders, not be used for purposes of any other proceeding.¹ So Biogen sought leave under Section 1782 to issue a subpoena. After the court granted leave, Sandoz moved to vacate the order and to quash the subpoena.

The statute requires that the evidence sought be “for use in” a foreign proceeding. A question arises when the foreign case isn’t pending yet. The court distinguished cases that were merely fishing for information to see whether a foreign case was possible, noting that Biogen had already asserted infringement elsewhere and was looking for details about the who, what, where, and when of the infringemen in Italy.

Sandoz also raised a question about whether the target of the subpoena was “found” in Delaware, as the statute requires. It argued that Biogen was actually seeking evidence from Sandoz Int’l GmbH or other entities. But as the judge recognized, the subpoena was directed to Sandoz, Inc., which clearly is found in Delaware. And documents that are created by one entity in a global enterprise can of course be in the possession, custody, or control of other entities in that global enterprise, or their agents. The court found this last point “convincing,” which I was happy to see, because all too often respondents that could obtain documents from their affiliates with a phone call or a touch of a button raise highly technical arguments about where the documents are located.

The court went on to do a standard Intel analysis and found that all the factors favored the application. It also considered Sandoz’s arguments that even though all the Intel factors favor discovery, the court should have denied the application on the grounds that it was inconsistent with the twin aims of Section 1782: assisting litigants in foreign cases, and encouraging foreign states to provide reciprocal assistance to litigants in US cases. Of note, the fact that the documents were located in Europe did not give rise to any real question.

1. It’s always possible to ask a US court to modify a protective order when this situation arises. But such a request can lead to accusations of sandbagging, and so sometimes I think it is best to bring a new Section 1782 application. ↩︎