Leech Tishman

The Ninth Circuit Court of Appeals allowed the use of 28 U.S.C. § 1782 to conduct discovery in the US in support of foreign patent opposition proceedings.

Background

FibroGen, a biotech company based in San Francisco, owns a number of foreign patents, including the European patent and Japanese patent at issue in the case. These patents concern the use of treatments for anemia.

Akebia is a biopharmaceutical company that develops similar products.

Akebia disputed the validity of FibroGen’s foreign patents and initiated opposition proceedings with both the European Patent Office and the Japanese Patent Office.

Neither of these foreign patent offices has established procedures by which Akebia could seek discovery of potentially relevant information in the United States.

Thus, Akebia filed, in the US District Court for the Northern District of California, an application to conduct discovery in aid of foreign proceedings. The District Court granted the application, subject to a protective order due to the confidential nature of the information requested.

FibroGen appealed.

Interested Persons

Under 28 U.S.C. § 1782, any “interested person” may file an application with a US District Court to request another person to produce testimony or documents for use “in a proceeding in a foreign or international tribunal.”

FibroGen argued that:

  • Akebia was not an ”interested person” within the meaning of the statute.
  • Neither the European Patent Office nor the Japanese Patent Office was a “tribunal” within the meaning of the statute.

The Circuit Court concluded, among other things, that:

  • Akebia was an “interested person”because as a competitor seeking to invalidate FibroGen’s foreign patents it had “a reasonable interest in obtaining judicial assistance.”
  • The foreign patent offices were “tribunals” because they “carr[ied] many of the hallmarks of traditional judicial proceedings,” including “serving as first-instance decision-makers tasked with resolving patent validity disputes.”

The case is Akebia Therapeutics, Inc. v. FibroGen, Inc.

Takeaway

This case is a useful precedent that supports domestic discovery in foreign patent cases.

About Us

Leech Tishman’s Intellectual Property Group is based in Pasadena, California with a team of highly-regarded legal professionals with prosecution and litigation expertise in the fields of patent, trademark, copyright, and trade secrets.

Please also visit us online for more information about our services.

Photo Attribution: “Gestational diabetes kit” by Jessica Merz from Novato, USA. Licensed under CC BY 2.0 via Commons.

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