981 F.2d 1 (1st Cir. 1992), 92-1663, Asta Medica, S.A., Application of

Docket Nº:92-1663, 92-1726 to 92-1729.
Citation:981 F.2d 1
Party Name:25 U.S.P.Q.2d 1861 In re Application of ASTA MEDICA, S.A., et al., for an Order to Take Discovery of David W. Moriarty, Jr., and for a Subpoena Duces Tecum, for use in Foreign Countries in Civil Proceedings there Pending, Pfizer, Inc. and David W. Moriarty, Jr., Appellants. In re Application of ASTA MEDICA, S.A., et al., for an Order to Take Discov
Case Date:December 04, 1992
Court:United States Courts of Appeals, Court of Appeals for the First Circuit
 
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981 F.2d 1 (1st Cir. 1992)

25 U.S.P.Q.2d 1861

In re Application of ASTA MEDICA, S.A., et al., for an Order

to Take Discovery of David W. Moriarty, Jr., and for a

Subpoena Duces Tecum, for use in Foreign Countries in Civil

Proceedings there Pending,

Pfizer, Inc. and David W. Moriarty, Jr., Appellants.

In re Application of ASTA MEDICA, S.A., et al., for an Order

to Take Discovery of Hermann Faubl and for a

Subpoena Duces Tecum, for use in Foreign

Countries in Civil Proceedings

there Pending,

Pfizer, Inc. and Hermann Faubl, Appellants.

In re Application of ASTA MEDICA, S.A., et al., for an Order

to Take Discovery of Thomas Mott Brennan and for a

Subpoena Duces Tecum, for use in Foreign

Countries in Civil Proceedings

there Pending,

Pfizer, Inc. and Thomas Mott Brennan, Appellants.

In re Application of ASTA MEDICA, S.A., et al., for an Order

to Take Discovery of Pfizer, Inc. and Irving Maurice Goldman

and for a Subpoena Duces Tecum, for use in Foreign Countries

in Civil Proceedings there Pending,

Pfizer, Inc. and Irving Maurice Goldman, Appellants.

In re Application of ASTA MEDICA, S.A., et al., for an Order

to Take Discovery of Barry Malcolm Bloom and Irving Maurice

Goldman and for a Subpoena Duces Tecum, for use in Foreign

Countries in Civil Proceedings there Pending,

Barry Malcolm Bloom and Irving Maurice Goldman, Appellants.

Nos. 92-1663, 92-1726 to 92-1729.

United States Court of Appeals, First Circuit

December 4, 1992

Heard July 29, 1992.

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Stephen D. Brown, with whom Bernard J. Bonn, III, Timothy C. Blank, Joseph A. Tate, Dechert Price & Rhoads, Philadelphia, Pa., Rudolf E. Hutz, and Connolly, Bove, Lodge & Hutz, Wilmington, Del., were on brief, for appellants.

Zachary Shimer, with whom Stuart D. Baker, W. Colm McKeveny, Chadbourne & Parke, New York City, Michael A. Nelson, Deborah M. Mann, Jensen Baird Gardner & Henry, Portland, Me., John D. Murnane, Brumbaugh, Graves, Donohue & Raymond, Marvin C. Soffen and Ostrolenk, Faber, Gerb & Soffen, New York City, were on brief, for appellees Asta Medica, S.A., Dagra BV, Laboratoires Sarget, S.A., NAPP Laboratories Ltd., and Hovione Sociedade Quimica, S.A.

Before TORRUELLA and BOUDIN, Circuit Judges, and KEETON, [*] District Judge.

TORRUELLA, Circuit Judge.

Pursuant to 28 U.S.C. § 1782(a), 1 district courts are authorized to assist foreign and international tribunals, and the litigants before such tribunals, in obtaining discovery in the United States for use in proceedings abroad. In this appeal, we examine whether an applicant under 28 U.S.C. § 1782(a) has to make a threshold showing, prior to obtaining such discovery, that the information sought in the United States would generally be subject to discovery in the foreign jurisdiction. The United States District Court for the District of Maine held that such a requirement was not necessary and entered an order granting a request for discovery. In re Application of Asta Medica, S.A., 794 F.Supp. 442 (D.Me.1992). We reverse.

I

Appellant Pfizer, Inc. ("Pfizer") is involved in patent litigation proceedings in Europe against Asta Medica, S.A., Laboratories Sarget, S.A., Dagra, BV, and Napp Laboratories, Ltd. (collectively "the foreign companies"), four European pharmaceutical companies. Litigation is pending in France, Belgium, England and the Netherlands over a patent owned by Pfizer for several methods to manufacture the antibiotic doxycycline.

The process of the patent at issue involves homogeneous catalyzed production of doxycycline. The foreign companies assert that Pfizer derived the invention of the process from an Italian company, Ankerfarm, S.p.A. ("Ankerfarm"), in the early 1970's while Pfizer and Ankerfarm negotiated a proposed joint venture involving the new process. In 1971 and 1972, Pfizer employees met with Ankerfarm employees working on the doxycycline processing technology in Milan and allegedly learned the characteristics of the invention. Although the joint venture between Ankerfarm and Pfizer never materialized, Pfizer obtained its own patents on the process. The foreign companies want to establish that the process was in the public domain before Pfizer applied for the patent and therefore, Pfizer's patents are invalid. They, therefore, seek to obtain documents and the testimony of former Pfizer employees who were involved in Pfizer's transactions with Ankerfarm. In July of 1991, they filed an ex parte application under 28 U.S.C. § 1782 in the United States District Court for the District of Maine requesting a subpoena compelling David W. Moriarty, a retired employee of Pfizer Inc., to testify

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by deposition and produce documents. 2 On July 24, 1991, Magistrate Judge Cohen granted the ex parte application and the subpoena was issued. On August 12, 1991, however, Pfizer moved to quash the subpoena on the ground that a private party invoking a district court's assistance under Section 1782 had to show that the requested information was discoverable in the foreign jurisdiction. In an affidavit, Pfizer's general patent counsel asserted that the information sought by the foreign companies in fact would not be available and could not be used in the foreign proceedings.

The foreign companies opposed Pfizer's motion by filing affidavits from foreign lawyers asserting that the evidence was obtainable in each country if the witness was found there. Pfizer responded with affidavits from foreign lawyers maintaining that as a general matter there is no pretrial availability of information from non-party witnesses in France, Belgium, England and the Netherlands. Only in an extraordinary case, where a litigant has obtained judicial approval, may a litigant compel the testimony or production of documents of a non-party witness.

On September 10, 1991, Magistrate Judge Cohen granted Pfizer's motion to quash and rescinded the July 24, 1991 order issuing the subpoena. The foreign companies sought review of the Magistrate Judge's order before the district court.

On May 22, 1992, the district court issued an order vacating the Magistrate Judge's decision and granting the application for an order to take testimony and a subpoena duces tecum. In re Application of Asta Medica, S.A., 794 F.Supp. 442 (D.Me.1992). 3 Pfizer appealed and filed a motion for a stay pending appeal. We granted Pfizer's motion for a stay and heard the appeal on an expedited basis.

II

The proceedings in Europe involve different parties and patents and...

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