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November 16, 2000


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 these issues.

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 permitted.

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 Circuit Precedent.

Section 1782, entitled "Assistance to foreign and international tribunals and to litigants before such tribunals," provides as follows:

(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 privilege.
(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.

28 U.S.C. § 1782 (1958).

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 discretion:

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 ยง 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 ...

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