Application of Asta Medica, SA

• Citation: 794 F. Supp. 442
• Decision Date: 22 May 1992
• Docket Number: Civ. No. 91-328-P-H.
• Parties: 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.
• Court: U.S. District Court — District of Maine

794 F. Supp. 442

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.

Civ. No. 91-328-P-H.

United States District Court, D. Maine.

May 22, 1992.

Michael A. Nelson, Deborah M. Mann, Jensen, Baird, Gardner & Henry, Portland, Me., Zachary Shimer, Chadbourne & Parke, John D. Murnane, Brumbaugh, Graves, Donohue & Raymond, New York City, for petitioner.

James G. Goggin, William C. Knowles, Verrill & Dana, Portland, Me., Joseph A. Tate, Stephen D. Brown, Dechert, Price & Rhoads, Philadelphia, Pa., Thomas F. Munno, Dechert, Price & Rhoads, New York City, for Pfizer, Inc. and David W. Moriarty, Jr.

MEMORANDUM DECISION

HORNBY, District Judge.

This case involves the interpretation of 28 U.S.C. § 1782(a). That statute provides that a United States district court may, upon the application of any interested person, order a person residing in the district to give testimony or a statement or to produce documents for use in a foreign proceeding. The question here is to what degree this discretionary authority should depend on the applicant's ability to compel such testimony or document production in the foreign jurisdiction and whether a United States District Judge must consider foreign law in making a decision. I find that the statute reflects a congressional judgment in favor of liberal disclosure and does not require an American judge to parse foreign law. I GRANT this application to obtain testimony and documents.

Factual and Procedural Background

Asta Medica, S.A.; Laboratories Sarget, S.A.; Dagra, BV; and Napp Laboratories, Ltd. (hereafter "Asta Medica") are European pharmaceutical companies that are involved in a long-running patent dispute with Pfizer, Inc. Litigation is underway in France, Belgium, England and the Netherlands. The dispute concerns the patent for a method of processing the antibiotic doxy-cycline. During the course of the French litigation, Asta Medica became aware of previously unknown information it believes affects the validity of Pfizer's patent claim. Specifically, Asta Medica alleges that Pfizer may have derived the process from an Italian Company, Ankerfarm, S.p.A., in the early 1970's while Pfizer and Ankerfarm were engaged in negotiations over a proposed joint venture. Pfizer representatives allegedly visited the Ankerfarm facility in Milan and met with Ankerfarm employees working on the doxycycline processing technology. Pfizer ultimately chose not to pursue the joint venture, but subsequently obtained its own patents on the process. Asta Medica believes that Pfizer's patents are invalid because the technology in question was already in the public domain by virtue of the earlier nonconfidential disclosures of Ankerfarm.

Asta Medica wishes to obtain documents and testimony from Pfizer employees who were involved in Pfizer's dealings with Ankerfarm. Asta Medica argues that these employees may have information that directly undercuts Pfizer's patent infringement claims, testimony that might be critical in the ongoing European litigation. Asta Medica filed an ex parte application in this District for United States judicial assistance under 28 U.S.C. § 1782, seeking testimony of David W. Moriarty, a former Pfizer employee now living in York, Maine. Asta Medica also sought a subpoena duces tecum. Magistrate Judge Cohen initially granted the ex parte application, but Pfizer and Moriarty (hereinafter "Pfizer"), once notified, moved to quash the subpoena. Pfizer maintained that a private party invoking a court's assistance under § 1782 had to show that the requested information was discoverable under the law of foreign jurisdiction. Judge Cohen then granted Pfizer's motion to quash the subpoena, stating that Asta Medica "failed to show that the requested discovery is permitted by any of the foreign tribunals involved here as a matter of right and without special leave of and/or supervision by the tribunal." Asta Medica has objected.

For reasons that appear in this opinion, I conclude that an applicant under § 1782(a) need not surmount the hurdles that the Magistrate Judge's decision imposes and that the Magistrate Judge's decision is accordingly incorrect on the law. Since the parties have had an abundant opportunity to submit all their legal arguments as well as affidavits concerning foreign law, I will resolve the matter rather than resubmit it to the Magistrate Judge.¹ Since this is a case of first impression in this Circuit, a thorough review of the language and history of the statute is in order.

Section 1782

Two important contextual observations. First, this is not a "discovery" case in the American sense of the term. This is not a search simply for information "reasonably calculated to lead to the discovery of admissible evidence." Fed.R.Civ.P. 26(b)(1). Instead, what the applicant seeks here are testimony and documents that can be used in a foreign tribunal under a statute specifically tailored to that end. 28 U.S.C. § 1782(a); cf. In re Letter of Request from the Crown Prosecution Serv. of the U.K., 870 F.2d 686, 693 (D.C.Cir.1989).

Second, and in any event, the statutory language in question was enacted in 1964, before today's severe disquiet over discovery abuse. In the early 1960's most observers viewed the search for information we sometimes call "discovery" as a positive attribute of American judicial processes rather than as a source of the abuse, delay and cost decried by today's critics. The content of § 1782 cannot be fully appreciated outside this historical context.

In amending § 1782 in 1964,² Congress substantially broadened the power of federal courts to assist foreign litigants. The Senate Report stated explicitly that "the proposed revision of section 1782 ... clarifies and liberalizes existing U.S. procedures for assisting foreign and international tribunals and litigants in obtaining oral and documentary evidence in the United States...." Senate Report, supra, at 3788 (emphasis supplied). A spirit of openhandedness permeates the amendment. For example, Congress expanded the class of litigation in which § 1782 could be used, specifying that district courts could now assist international courts as well as foreign courts. Congress also broadened the category of institutions that could seek assistance by using the term "tribunal" so that various administrative proceedings would be covered as well.³ Another liberalization was deletion of the requirement that foreign litigation actually be pending. Under the revision of the statute, "it is not necessary ... for the proceeding to be pending at the time the evidence is sought, but only that the evidence is eventually to be used in such a proceeding." See Smit, International Litigation, supra, at 1026.⁴ Of particular relevance in this case is the addition of language allowing private litigants to use the statute. Before 1964, letters rogatory were the only method available for obtaining testimony or documents under § 1782, a procedure requiring the foreign tribunal or official to initiate the process. The 1964 amendment added a new method: proceedings could thereafter begin "upon the application of any interested person." Thus, actual litigants can now seek a federal court's assistance on their own.⁵ But Congress has provided no standard to guide the courts' determination of when to grant such assistance. Instead, it has left this decision wholly discretionary. In light of what we now know in 1992 about litigation costs and American discovery abuses, the 1964 amendment to § 1782 may appear naive. It is, nonetheless, the statute that Congress drafted.

The broadened power of the district courts under amended § 1782 was expressly designed to make the federal judicial system more generous in its assistance to foreign litigation. Both the legislative history and academic commentary bear out this reading of the statute.⁶ The central inspiration for much of the work was a belief that if the United States were liberal with assistance in foreign litigation, foreign courts might later follow suit.⁷ Thus, as the Senate Report put it, the goal of § 1782 was to "facilitate the conduct of foreign litigation." Senate Report, supra, at 3783. Federal courts should, therefore, look askance at any interpretation that limits judicial discretion and makes it more difficult to obtain assistance requested in good faith under § 1782.

A rule requiring that the requested material first be shown to be discoverable in the foreign jurisdiction — the rule that Pfizer persuaded the Magistrate Judge to adopt here — would be a severely onerous burden on both applicants and judges. In this case, for example, the lawyers have seen fit to present me with legal opinions from a variety of lawyers concerning the law of four separate foreign jurisdictions — the United Kingdom, France, the Netherlands and Belgium — and ask me to determine their respective laws on the taking of testimony and documents in reaching my decision on what is only a collateral issue to the proceedings underway or contemplated in the courts of those various countries. There is absolutely no evidence in the statute, the legislative history or the academic commentary explaining the statute's enactment that suggests any congressional desire to impose on American courts the burden of investigating foreign law on matters such as admissibility of the evidence,⁸ its discoverability in the American or any other sense,⁹ or the authority of foreign tribunals to order such testimony or documents in aid of their own judicial proceedings. In the absence of any suggestion that Congress intended to impose such a burden, and given that Congress was seeking to liberalize the processes available to foreign litigants seeking evidence here, I conclude that resolution of these foreign law issues is not necessary to the exercise of § 1782 discretion....