The opinion of the court was delivered by: Block, District Judge.
Shipley Company, L.L.C. ("Shipley") has moved for vacatur of an
order of the Court, dated April 18, 2000, granting the ex parte
application of Ishihara Chemical Company, Ltd. ("Ishihara") for
discovery pursuant to 28 U.S.C. § 1782 ("§ 1782"), and to quash
or delimit a subpoena issued by Ishihara as a result
thereof.*fn1 The motion requires the Court to resolve a number
of issues under that statute, which provides, inter alia, that
"upon the application of any interested person," the "district
court of the district in which a person resides or is found may
order him to give his testimony or statement or to produce a
document or other thing for use in a proceeding in a foreign or
international tribunal." Principally, the Court is asked to
determine (1) whether § 1782 authorizes
discovery from a party to a foreign proceeding and, if so, (2)
whether such discovery may encompass requests for admissions and
interrogatories. These questions presuppose that a proceeding
before the Japanese Patent Office ("JPO") is a proceeding "in a
foreign or international tribunal," an issue also in dispute.
There is no circuit court authority explicitly addressing any of
In opposing discovery, Shipley has enlisted the aid of a
preeminent authority on the statute, Hans Smit ("Professor
Smit"), the Stanley H. Fuld Professor of Law and Director of the
Center for International Arbitration and Litigation at Columbia
University. As the Reporter to the United States Commission and
Advisory Committee on International Rules of Judicial Procedure,
Professor Smit states that he prepared the final versions of
various proposed amendments to the statute submitted to Congress
during the 1960s, and the explanatory notes accompanying these
proposals, which proposals "were adopted by Congress without
change." Shipley's Memorandum of Law in Support of its Motion to
Vacate the Court's Order Compelling Discovery, Quash the
Subpoena, and Deny Discovery ("Shipley Mem. of L.") Ex. C
(Declaration of Hans Smit, dated May 18, 2000 ("Smit Decl.")) ¶
8. According to Professor Smit, the JPO may not be a "foreign
tribunal;" in any event, § 1782 does not authorize discovery from
a party and, if so, admissions and interrogatories are not
The Court concludes that (1) the JPO is a foreign tribunal
within the intendment of § 1782; (2) discovery under the statute
is available from a party to a foreign proceeding, but (3) such
discovery does not embrace requests for admissions and
interrogatories. The Court refers this matter to a Magistrate
Judge to afford the parties a full opportunity to address matters
of Japanese law that might assist the Magistrate Judge in
determining the scope of deposition and document discovery that
may be sought from Shipley by Ishihara.
The following facts are gleaned from the parties' submissions
and are not disputed: Ishihara, a Japanese corporation, sells,
inter alia, products used for tin and tin-alloy electroplating.
Shipley, a Delaware corporation, with a place of business in
Freeport, New York, is a direct competitor of Ishihara. In or
about January 1999, Shipley acquired LeaRonal, Inc.,
("LeaRonal"), including nine foreign subsidiaries, and assumed
ownership of Japanese Patent Number 2140707 (the "'707 Patent")
held by LeaRonal.*fn2 On July 14, 1999, Ishihara instituted a
proceeding against Shipley, presently pending before the JPO, to
invalidate the '707 Patent in an effort to avoid royalty
payments. Ishihara claims that Shipley offered for sale in Japan
electroplating products that are the subject of the '707 Patent
(sold in the United States under the name SOLDERON) prior to the
filing of Shipley's patent application on September 20, 1985.
Ishihara alleges that such offers of sale invalidate the '707
Patent under Japanese law.
In its ex parte discovery application and subpoena, Ishihara
noticed one deposition, and sought sixty-nine requests to admit,
twelve interrogatories and four document requests, three of which
were tied to the interrogatories.*fn3 Ishihara's discovery
requests concerned not only the '707 Patent, but also Japanese
Patent Number 2807637 (the "'637 Patent"). Subsequently, Ishihara
abandoned discovery regarding the '637 Patent because no action
had been instituted before the JPO concerning that
patent. Consequently, what remains are Ishihara's discovery
requests concerning the '707 Patent.
I. Overview of the 1964 Amendments to § 1782 and Relevant Second
Section 1782, entitled "Assistance to foreign and international
tribunals and to litigants before such tribunals," provides as
(a) The district court of the district in which a
person resides or is found may order him to give his
testimony or statement or to produce a document or
other thing for use in a proceeding in a foreign or
international tribunal, including criminal
investigations conducted before formal accusation.
The order may be made pursuant to a letter rogatory
issued, or request made, by a foreign or
international tribunal or upon the application of any
interested person and may direct that the testimony
or statement be given, or the document or other thing
be produced, before a person appointed by the court.
By virtue of his appointment, the person appointed
has power to administer any necessary oath and take
the testimony or statement. The order may prescribe
the practice and procedure, which may be in whole or
part the practice and procedure of the foreign
country or the international tribunal, for taking the
testimony or statement or producing the document or
other thing. To the extent that the order does not
prescribe otherwise, the testimony or statement shall
be taken, and the document or other thing produced,
in accordance with the Federal Rules of Civil
Procedure. A person may not be compelled to give his
testimony or statement or to produce a document or
other thing in violation of any legally applicable
(b) This chapter does not preclude a person within
the United States from voluntarily giving his
testimony or statement, or producing a document or
other thing, for use in a proceeding in a foreign or
international tribunal before any person and in any
manner acceptable to him.
28 U.S.C. § 1782 (1994 & Supp. 1997). In all relevant parts, the
current language of the statute mirrors its revision and
amendment in 1964.*fn4
Before its amendment in 1964, § 1782 provided:
The deposition of any witness within the United
States to be used in any judicial proceeding pending
in any court in a foreign country with which the
United States is at peace may be taken before a
person authorized to administer oaths designated by
the district court of any district where the witness
resides or may be found.
The practice and procedure in taking such
depositions shall conform generally to the practice
and procedure for taking depositions to be used in
courts of the United States.
In Foden v. Aldunate (In re Aldunate), 3 F.3d 54 (2d Cir.
1993), the Second Circuit traced the general legislative history
of § 1782, noting that "Federal law has provided for some form of
judicial assistance to foreign courts since 1855." Id. at 57.
As explained therein, early statutes were quite narrow in scope,
but the evolutionary process "has generally been one of
increasingly broad applicability." Id. As Aldunate further
informs, the 1964 amendments were drafted by the United States
Commission on International Rules of Judicial Procedure, and (1)
expanded the class of litigation within the statute's orbit
from "courts" to "tribunals," including "international
tribunals;" (2) permitted "any interested person" to partake of
the discovery process, thereby allowing not only foreign
tribunals and officials to initiate the process but also private
litigants, and (3) deleted a prior requirement that the foreign
proceeding actually be pending. Id. In respect to the discovery
process, the reconstituted statute provided for a person "to give
his testimony or statement or to produce a document or other
thing," thereby expanding its reach beyond depositions.
These amendments were in keeping with the primary intent of
Congress — to "clarif[y] and liberalize  existing U.S.
procedures for assisting foreign and international tribunals and
litigants in obtaining oral and documentary evidence in the
United States." Id. (quoting S.Rep. No. 88-1580 (1964),
reprinted in 1964 U.S.C.C.A.N. 3782, 3788) ("Senate
Report").*fn5 Congress' underlying rationale for the amendments
were the "`twin aims of providing efficient means of assistance
to participants in international litigation in our federal courts
and encouraging foreign countries by example to provide similar
means of assistance to our courts.'" Id. at 58 (quoting Malev
Hungarian Airlines v. United Techs. Int'l Inc. (In re Malev
Hungarian Airlines), 964 F.2d 97, 100 (2d Cir.), cert. denied,
506 U.S. 861, 113 S.Ct. 179, 121 L.Ed.2d 125 (1992)).
Given the broad reach of the 1964 amendments, the discrete
holding of the court in Aldunate was that the material
requested in the district court need not be discoverable under
foreign law.*fn6 Stating that it was "not free to read
extra-statutory barriers to discovery into section 1782," Id.
at 59, the court noted that the statute "makes no reference
whatsoever to a requirement of discoverability under the laws of
the foreign jurisdiction." Id. Moreover, it determined that "a
literal reading of the unambiguous language of section 1782
comports with the purpose and legislative history of the statute"
because "[i]t was deliberately drawn" in order "`to grant wide
assistance to others, but demand nothing in return.'" Id.
(quoting Malev, 964 F.2d at 101).*fn7
Although the court in Aldunate determined that
discoverability under the laws of the foreign jurisdiction was
not a threshold requirement, it counseled that the 1964
amendments invested the district courts "with wide discretion in
granting relief under section 1782," id., and therefore
"district judges may well find that in appropriate cases a
determination of discoverability under the laws of the foreign
jurisdiction is a useful tool in their exercise of discretion
under section 1782." Id. at 60. The court drew from the Senate
Report in explaining the breadth of the district court's
Id. at 59 (quoting Senate Report at 3788).
Analyzing the district court's discovery order in the context
of the discretion vested in district courts under § 1782, the
Second Circuit in Aldunate determined that the district court
did not abuse its discretion because, even though the court did
not make a finding as to the parties' ability to obtain pre-trial
discovery under Chilean law, it was nonetheless "properly guided"
by the "twin aims" of the statute — "especially that of
encouraging international cooperation" — by inquiring into
"whether its grant of discovery under section 1782 would
circumvent Chilean restrictions on discovery and whether its
grant of discovery would be an affront to the Chilean court or
Chilean sovereignty." Id. at 61-62.
In contrast to Aldunate, the court in Metallgesellschaft AG
v. Hodapp (In re Metallgesellschaft AG), 121 F.3d 77 (2d Cir.
1997), held that the district court abused its discretion by
denying discovery on the ground that the sought-after evidence
would not be discoverable under German law. Reinforcing its view
"that district courts must exercise their discretion under § 1782
in light of the twin aims of the statute," the court concluded
that "[i]n stating its views, the district court did not advert
to these objectives, explicitly or implicitly, and in fact the
reasons the court did give were at odds with these goals."
Metallgesellschaft, 121 F.3d at 79. As explained by the court,
"the district court considered discoverability under foreign law
as more than merely, as [Aldunate] indicated, a `useful tool':
it was the beginning and end of the ...