Obtaining Discovery From Foreign Entities in Patent Litigation

U.S. district courts have taken different approaches when balancing the need for discovery from outside the U.S. against foreign privacy and blocking laws. For example, European companies may generally interpret the EU General Data Protection Regulation (GDPR) to call for redactions of personal information produced in U.S. litigation. Some European countries have also enacted national privacy laws that present an additional hurdle for U.S. litigators seeking to discover information from European companies.

U.S. courts apply a five-factor international comity analysis suggested by the Supreme Court in its seminal Societe Nationale Industrielle Aerospatiale v. U.S. District Court decision (1987) to determine if the foreign laws can prevent or impede discovery. Examples of these types of foreign laws are blocking, secrecy, or privacy laws that may limit U.S. discovery requests. The courts have applied these factors differently and also developed additional factors that are often considered under the comity analysis.

Since the Supreme Court’s Aerospatiale decision, most U.S. courts have allowed foreign discovery to proceed under the Federal Rules of Civil Procedure. However, some U.S. courts have ordered discovery through the Hague Evidence Convention. Because many European countries interpret the Hague Convention as binding, its procedures can work in tandem with and provide protection to those subject to the national privacy laws, and thus practitioners need to be familiar with its operation.

As U.S. courts continue to adapt to the evolving framework of international privacy laws, patent litigators need to understand the Hague Evidence Convention, letters rogatory, and other options (including particularly under the Federal Rules of Civil Procedure) for discovering relevant information from parties or non-parties to the suit outside the U.S.

Listen as our authoritative panel of patent attorneys examines the national privacy laws that make discovery a challenge outside the U.S. and how the courts treat the issue. The panel will discuss the international comity analysis and the Hague Evidence Convention, as well as offer best practices for successfully conducting discovery.