1998 Decisions

Opinions of the United

States Court of Appeals

for the Third Circuit

6-9-1998

In Re: Bayer AG

Precedential or Non-Precedential:

Docket 97-5047

Follow this and additional works at: http://digitalcommons.law.villanova.edu/thirdcircuit_1998

This decision is brought to you for free and open access by the Opinions of the United States Court of Appeals for the Third Circuit at Villanova

University School of Law Digital Repository. It has been accepted for inclusion in 1998 Decisions by an authorized administrator of Villanova

University School of Law Digital Repository. For more information, please contact Benjamin.Carlson@law.villanova.edu.

Recommended Citation

"In Re: Bayer AG" (1998). 1998 Decisions. Paper 138.

http://digitalcommons.law.villanova.edu/thirdcircuit_1998/138
Filed June 9, 1998 

UNITED STATES COURT OF APPEALS 

FOR THE THIRD CIRCUIT 

No. 97-5047 

In re: Application pursuant to 28 U.S.C. S 1782 for an 

Order permitting BAYER AG, Applicant-Appellant, to take 

discovery, pursuant to the Federal Rules of Civil 

Procedure, of BETACHEM, INC. for use in an action 

pending in the FIRST INSTANCE COURT NO. 25 

of BARCELONA, SPAIN 

Bayer AG, 

 Appellant 

On Appeal from the United States District Court 

for the District of New Jersey 

(D.C. No. 96-cv-05650) 

Argued September 26, 1997 

Before: SLOVITER, COWEN and LEWIS,* Circuit Judges 

(Filed June 9, 1998) 

Milton Sherman (Argued) 

Kaye, Scholer, Fierman, Hays & 

 Handler 

New York, New York 10022 

 Attorney for Appellant 

_________________________________________________________________ 

* Judge Lewis heard argument in this matter but was unable to clear the 

opinion due to illness. 
 Dwight E. Yellen (Argued) 

 Ballon, Stoll, Bader & Nadler 

 New York, New York 10018 

 Will Levins 

 Ballon, Stoll, Bader & Nadler 

 Hackensack, N.J. 07601 

 Attorneys for Appellee 

OPINION OF THE COURT 

SLOVITER, Circuit Judge. 

The promulgation of the Federal Rules of Civil Procedure, 

with their emphasis on securing "the just, speedy, and 

inexpensive determination of every action," Fed. R. Civ. P. 

Rule 1, initiated a revolution in the litigation process in the 

federal courts in this country. Although those rules were 

not applicable to foreign litigation, they were not without 

influence. It was not surprising that within three decades 

there would be a concerted effort to liberalize the

procedures in the United States for assisting foreign and 

international tribunals and litigants in obtaining oral and 

documentary evidence in the United States. Eventually this 

effort led to congressional action. Section 1782(a) of Title 28 

of the United States Code now authorizes district courts to 

render assistance to foreign courts and the litigants before 

them in obtaining discovery from United States residents 

for use in foreign proceedings. 

Pursuant to that section, Bayer AG, a drug manufacturer 

organized under the laws of the Federal Republic of

Germany, filed an application in the district court of New 

Jersey to obtain discovery from BetaChem, Inc., a New 

Jersey corporation, for use in a patent infringement action 

pending in the Court of First Instance in Spain. The district 

court denied the application and Bayer appeals. The

question before us is whether the district court relied on 

inapplicable or erroneous considerations when it denied 

Bayer's request. 

 2 
I. 

Facts and Procedural Background 

In a related action, Bayer filed suit in January 1992 in 

the United States District Court for the Southern District of 

New York against Barr Laboratories, Inc., alleging patent 

infringement. Bayer alleged that Barr had infringed Bayer's 

United States ciprofloxacin patent no. 4,670,444 by filing 

an application with the United States Food and Drug

Administration for permission to sell ciprofloxacin, a broad 

spectrum antibiotic drug. According to Bayer's allegations, 

Barr had purchased and planned to continue to purchase 

ciprofloxacin from BetaChem, which is the United States 

sales agent for Chemo Iberica, S.A. ("Chemo") and its 

affiliate Quimica Sintetica, S.A. ("Quimica"), both Spanish 

corporations. During the course of discovery in that action, 

Barr produced a confidential document that describes 

Chemo's process for making ciprofloxacin. Bayer also 

learned that BetaChem had submitted similar documents 

to the FDA on Barr's behalf. 

Apparently as a result of the information received, Bayer 

filed a patent infringement action in June 1993 against 

Chemo and Quimica in the Court of First Instance No. 25 

in Barcelona, Spain, claiming that Chemo and Quimica had 

infringed and were infringing its Spanish process patent no. 

505,138 by manufacturing and selling ciprofloxacin. Bayer 

believed the document it had received from Barr in 

discovery in the New York action was important for its case 

in Spain. Indeed, that document has been referred to as the 

"smoking gun document." App. at 100. Therefore, sometime 

in early 1996, Bayer sought to submit that document to the 

Spanish court. Before doing so, it sought permission from 

the magistrate judge who had entered a confidentiality 

order in the New York action. The magistrate judge gave 

approval, subject to the Spanish court's willingness to enter 

a confidentiality order. 

Bayer then approached the Spanish court and on 

October 14, 1996, it obtained an order from the Spanish 

court stating that it would receive "any document that may 

be presented," that it would determine the document's 

 3 
admissibility at a later date, and that it would keep the 

document confidential to the extent permissible under 

Spanish law. Thereafter, the New York magistrate judge 

was reported to have signified his satisfaction that this 

order "effectively implements my confidentiality 

requirement." App. at 102. 

On December 3, 1996, Bayer filed the pending action in 

the United States District Court for the District of New 

Jersey pursuant to 28 U.S.C. S 1782(a). Bayer alleged that 

it owned patents covering the composition and/or process 

for making ciprofloxacin in numerous countries, including 

its Spanish patent no. 505,138 covering a process for 

making ciprofloxacin; that Chemo and its affiliated

corporation Quimica infringe that Spanish patent; and that 

BetaChem purchased ciprofloxacin from Chemo and/or 

Quimica which BetaChem in turn sold to Barr. Bayer 

alleged that BetaChem has material information about 

Chemo's process to make ciprofloxacin, and that Spanish 

law provides no procedures for the orderly exchange of 

documents. Bayer sought permission to seek discovery of 

all of BetaChem's documents relating to the process of 

Chemo and Quimica for manufacturing ciprofloxacin, 

including the Drug Master File allegedly containing the 

document that BetaChem had filed with the FDA on Barr's 

behalf. Bayer also sought permission to depose certain 

BetaChem employees. 

BetaChem opposed Bayer's application on three grounds. 

First, it argued that discovery requests made pursuant to 

S 1782(a) may be granted only if the material sought would 

be discoverable in the foreign jurisdiction. In that regard, it 

submitted a written legal opinion from a Spanish attorney, 

who stated that under Article 603 of the Spanish Civil 

Procedure Law a Spanish court may, at the request of a 

party, order the disclosure of documents that are the 

exclusive property of a non-litigant if the judge who will 

decide the litigation determines that the documents sought 

would be material to the court's decision. App. at 61-62. 

BetaChem argued that, absent such a determination of 

materiality by the Spanish court, the testimony and

materials sought by Bayer would not be discoverable in 

Spain and, therefore, are not discoverable underS 1782(a). 

 4 
Second, BetaChem argued that because the Spanish 

action was already sub judice and Bayer had been aware of 

the documents since 1993, Bayer's application was 

untimely. Third, BetaChem argued that the documents in 

the Drug Master File are highly confidential and should not 

be discoverable. 

In its opinion delivered orally, the district court, relying 

on our opinion in John Deere Ltd. v. Sperry Corp., 754 F.2d 

132 (3d Cir. 1985), framed its inquiry as whether 

permitting the discovery would "offend[ ] the foreign 

jurisdiction." App. at 94. Although the court stated that it 

did not consider discoverability in the foreign jurisdiction to 

be a prerequisite to obtaining discovery under S 1782(a), its 

discussion nevertheless focused exclusively on the 

requirement under Spanish law of a determination that the 

documents sought from a non-litigant would be material. 

The district court reasoned that even though it would 

probably regard the discovery Bayer sought to be material, 

its own view was irrelevant because it was the Spanish 

judge who was to make the materiality determination. The 

court then ruled that because Bayer had not obtained such 

a materiality ruling, the discovery it sought from BetaChem 

would not be discoverable in Spain and therefore Bayer 

lacked proof that granting its application would not offend 

the Spanish court. App. at 112-14. Accordingly, the district 

court denied Bayer's application and dismissed the action. 

This appeal followed. 

On September 1, 1997, while this appeal was pending, 

the Court of First Instance ruled against Bayer in its 

infringement action. Bayer then filed an appeal in the 

Provincial Court of Barcelona. Both parties agree that, 

under Spanish law, the Provincial Court may, under certain 

circumstances, receive new evidence not submitted to the 

Court of First Instance. Accordingly, neither party contends 

that the issue before us has been mooted by the disposition 

in the Court of First Instance. 

II. 

Discussion 

The district court's denial of Bayer's discovery application 

constitutes a final order over which we have jurisdiction 

 5 
pursuant to 28 U.S.C. S 1291. See In re Gianoli Aldunate, 3 

F.3d 54, 57 (2d Cir. 1993). In general, we review a district 

court's decision to deny a S 1782 application for abuse of 

discretion. Where the district court misinterpreted or 

misapplied the law, however, or where the court relied on 

inappropriate factors in the exercise of its discretion, our 

review is plenary. See id. at 58; see generally Redland 

Soccer Club, Inc. v. Department of the Army, 55 F.3d 827, 

845 (3d Cir. 1995). 

A. 

Section 1782, entitled "Assistance to foreign and 

international tribunals and to litigants before such 

tribunals," provides, in relevant part: 

 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 . . . . 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 . . . 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. 

28 U.S.C. S 1782(a). 

In adopting the 1964 amendments now incorporated in

S 1782, Congress liberalized many of the procedures for 

obtaining discovery for use in foreign litigation. The Senate 

Report sets forth the following general statement regarding 

the purpose of the statute: 

 Until recently, the United States has not engaged 

 itself fully in efforts to improve practices of 

 international cooperation in litigation. The steadily 

 6 
 growing involvement of the United States in 

 international intercourse and the resulting increase in 

 litigation with international aspects have demonstrated 

 the necessity for statutory improvements and other 

 devices to facilitate the conduct of such litigation. 

 Enactment of the bill into law will constitute a major 

 step in bringing the United States to the forefront of 

 nations adjusting their procedures to those of sister 

 nations and thereby providing equitable and efficacious 

 procedures for the benefit of tribunals and litigants 

 involved in litigation with international aspects. 

 It is hoped that the initiative taken by the United 

 States in improving its procedures will invite foreign 

 countries similarly to adjust their procedures. 

S. Rep. No. 88-1580, at 2 (1964), reprinted in 1964

U.S.C.C.A.N. 3783. 

Thus, the amendment to S 1782 was designed to facilitate 

the conduct of litigation in foreign tribunals, improve 

international cooperation in litigation, and put the United 

States into the leadership position among world nations in 

this respect. It appears that the scope of discovery is not as 

far-reaching in foreign litigation as it is in domestic 

litigation. The Senate Report makes clear that under 

amended S 1782(a), "the issuance of an appropriate order" 

is left to the discretion of the district court. Id. at 3788. 

That court may refuse to issue an order or may impose 

conditions it deems desirable. The Report further states 

that "[i]n exercising its discretionary power, the court may 

take into account the nature and attitudes of the 

government of the country from which the request 

emanates and the character of the proceedings in that 

country." Id. 

In light of the absence of any language in the text of 

S 1782 that limits its application to cases in which the 

materials sought to be discovered would be discoverable in 

the foreign jurisdiction, see In re Esses, 101 F.3d 873, 875 

(2d Cir. 1996), we must examine the basis for the district 

court's exclusive focus on whether the materials sought by 

Bayer would be discoverable in Spain. 

 7 
The inquiry begins with the district court's interpretation 

of John Deere Ltd. v. Sperry Corp., 754 F.2d 132 (3d Cir. 

1985), this court's oft-cited opinion addressingS 1782. 

John Deere Limited and Deere & Company (jointly referred 

to as John Deere), which had been sued in Canada by

Sperry Corporation for patent infringement, filed a S 1782 

application in the Eastern District of Pennsylvania seeking 

to depose Horace McCarty and Emmett Glass, named as

the co-inventors of the patented machine at issue. McCarty 

and Glass were American employees of Sperry. The district 

court denied John Deere's application, both because

Canada would not honor letters rogatory emanating from a 

court of the United States and because the material sought 

was not clearly admissible at trial in Canada. Before this 

court had an opportunity to hear John Deere's appeal from 

this ruling, the Federal Court of Canada issued an opinion 

and order directing Sperry to produce McCarty, a Sperry 

officer, but not Glass, a non-officer. 

In its appeal from the district court's denial of its 

discovery application, John Deere challenged the relevancy 

under S 1782(a) of the availability of reciprocal foreign 

procedures and the admissibility of the evidence in the 

foreign jurisdiction, the issues the district court deemed 

determinative. We held that neither reciprocity nor

admissibility were controlling concerns under S 1782(a). We 

stated instead that the "liberal intent to provide judicial 

assistance whether or not reciprocity exists has been 

acknowledged as a primary statutory goal since section 

1782's inception." Id. at 135. 

Although we gleaned through the legislative history that 

the district courts were authorized "to scrutinize the 

underlying fairness of foreign proceedings to ensure they 

comply with notions of due process," we stated that it 

would seem to exceed the proper scope of S 1782 to require 

the district court to undertake a more extensive inquiry. Id. 

at 136 & n.3. Indeed, it "would contradict the express 

purpose of section 1782" if the American court were

required to predict the actions of another country's 

tribunal. Id. at 136. Significantly, we held that inasmuch as 

the Canadian court had held that McCarty's testimony 

would be material and required by the equities, the district 

 8 
court should have required that of Glass as well. Id. at 137- 

38. 

In reading John Deere, it is important to recognize that 

because the Canadian court had already held the 

information discoverable, the discoverability issue was not 

before us. Some courts have placed significance on our 

statements that "[a]s a cooperative measure, section 1782 

cannot be said to ignore those considerations of comity and 

sovereignty that pervade international law. A grant of 

discovery that trenched upon the clearly established 

procedures of a foreign tribunal would not be within section 

1782." Id. at 135. We also stated that we would not

"countenance the use of U.S. discovery procedures to evade 

the limitations placed on domestic pre-trial disclosure by 

foreign tribunals." Id. at 136. 

Those comments made explicit our concern over comity, 

but nothing in them signifies an intent to impose a

discoverability requirement. Such a requirement would be 

inconsistent with much of the language of the opinion, 

where we stated, inter alia, "Nor should the practice of 

Canadian courts in refusing to render judicial assistance, 

be the determinative factor in the construction given 

section 1782 by an American court." Id. at 135-36. In fact, 

in John Deere itself we were satisfied that granting the 

S 1782 application would not have caused any offense to 

the Canadian tribunal, even though discovery from Glass 

had not been authorized by the Canadian courts. 

The application of the John Deere opinion by the district 

court in this case is understandable because at least two 

courts of appeals have read the opinion as imposing a 

discoverability requirement. See In re Asta Medica, S.A., 

981 F.2d 1, 6 (1st Cir. 1992); In re Request for Assistance 

from Ministry of Legal Affairs of Trinidad and Tobago, 848 

F.2d 1151, 1156 (11th Cir. 1988); see also In re First Court 

of First Instance in Civil Matters, Caracas, Venezuela, 42 

F.3d 308, 310 (5th Cir. 1995) (dictum); In re Crown

Prosecution Service of the United Kingdom, 870 F.2d 686, 

692-93 & n.7 (D.C. Cir. 1989) (same). 

In contrast, the Second Circuit read John Deere as we do 

and recognized that the opinion decided only that S 1782 

 9 
does not require that foreign courts have reciprocal 

assistance procedures or that the materials sought would 

be admissible in the foreign jurisdiction. Gianoli Aldunate, 

3 F.3d at 60. That court said, insightfully, "John Deere is 

not a case about whether section 1782 requires 

discoverability, and the court never explicitly states that 

such a requirement exists." Id. It thus declined to interpret 

our general statements addressing the circumvention of 

foreign discovery laws as reading "an absolute 

discoverability requirement into section 1782." Id. See In re 

Euromepa S.A., 51 F.3d 1095, 1099-1100 (2d Cir. 1995). 

This case presents us with our first opportunity to revisit 

our opinion in John Deere, and we use the occasion to 

make explicit our view that imposing a requirement that 

the materials sought be discoverable in the foreign

jurisdiction would be inconsistent with both the letter and 

spirit of the statute. The prima facie showing mandated by 

the statute is only that the application be made (1) "by a 

foreign or international tribunal" or "any interested person," 

(2) that it be "for use in a proceeding in a foreign or 

international tribunal," and (3) that the person or entity 

from whom the discovery is sought be a resident of or be 

found in the district in which the application is filed. See 

Esses, 101 F.2d at 875. If Congress had intended to impose 

an additional element as restrictive as a requirement that 

the materials sought be discoverable in the foreign

jurisdiction, it would have done so explicitly. See Gianoli 

Aldunate, 3 F.3d at 59 (citing statute's permissive language 

authorizing district court to resort to practice of the foreign 

country). 

The legislative history is equally devoid of any indication 

that Congress intended to limit the scope of S 1782 to those 

situations in which the discovery sought would be 

discoverable under the laws of the foreign jurisdiction. In 

adopting the 1964 amendments, Congress's overarching 

goals were to provide efficient means of assistance to 

foreign courts and litigants and encourage other nations to 

return the favor by providing similar assistance to United 

States courts. See In re Malev Hungarian Airlines, 964 F.2d 

97, 100 (2d Cir. 1992); see also S. Rep. No. 88-1580, at 2 

(1964), reprinted in 1964 U.S.C.C.A.N. 3783. Neither of 

 10 
these congressional purposes requires courts to impose a 

discoverability requirement as a bright-line rule. See 

generally United States v. Ron Pair Enters. Inc., 489 U.S. 

235, 242 (1989) ("The plain meaning of legislation should 

be conclusive, except in the rare cases in which the literal 

application of a statute will produce a result demonstrably 

at odds with the intentions of its drafters.") (citation & 

quotations omitted). 

It is instructive to turn to the Senate Report, which states 

that "[i]f the court fails to prescribe the procedure, the 

appropriate provisions of the Federal Rules of Civil 

Procedure are to be followed, irrespective of whether the 

foreign or international proceeding or investigation is of a 

criminal, civil, administrative, or other nature." S. Rep. No. 

88-1580, at 9 (1964), reprinted in 1964 U.S.C.C.A.N. 3789. 

In light of the well-known liberality of our Federal Rules, it 

is unlikely that Congress would have painted with so broad 

a brush if it had intended courts applying S 1782 to be 

limited to following another nation's more limited approach 

to discovery. See In re Metallgesellschaft AG, 121 F.3d 77, 

80 (2d Cir. 1997) ("through S 1782 Congress has seen fit to 

authorize discovery which, in some cases, would not be 

available in foreign jurisdictions"). Moreover, if we were 

unwilling in John Deere to condition a S 1782 order on the 

availability of the particular discovery procedure in the 

foreign country, there is no reason why we should make 

discoverability itself a condition. 

The policies advanced by the Court of Appeals for the 

First Circuit as the basis for reading a discoverability 

requirement into S 1782, see Asta Medica, 981 F.2d at 5-7, 

are not persuasive. The court expressed concern that a 

foreign party could invoke S 1782 and obtain broad 

American-style discovery while the same would not be 

available for that party's American adversary. Id. at 5-6. In 

essence, that is simply another way of imposing a 

reciprocity requirement, a requirement we rejected in John 

Deere. Any patent unfairness can be dealt with by the 

district court crafting an appropriate discovery order. See 

Euromepa, 51 F.3d at 1101. In any event, that 

consideration is not present in this case where S 1782 is 

being invoked against an entity that is not a party to the 

Spanish patent litigation. 

 11 
The First Circuit also based its Asta Medica decision on 

its concern that granting a S 1782 application where the 

discovery sought would not be available in the foreign 

jurisdiction "would lead some nations to conclude that 

United States courts view their laws and procedures with 

contempt," thereby frustrating Congress's desire to

stimulate foreign tribunals to provide reciprocal assistance 

to litigants before our own courts. Id. at 6-7. We agree that 

"Congress did not seek to place itself on a collision course 

with foreign tribunals and legislatures" and that we ought 

to avoid a construction of the statute that would lead other 

nations to conclude that we do not respect their laws and 

procedures. Id. We said as much in John Deere. 754 F.2d 

at 135. It does not follow that the inability to obtain 

discovery means that the foreign court objects to the 

inquiry. In many of such situations it may signify merely 

the unavailability of an applicable procedure. 

It appears that the decision in Asta Medica was based on 

the unavailability of pretrial discovery from non-party 

witnesses in the countries in which the foreign patent 

litigation was pending. Asta Medica, 981 F.2d at 6-7. 

However, there is no reason to assume that because a 

country has not adopted a particular discovery procedure, 

it would take offense at its use. Professor Hans Smit, one 

of the principal forces behind the 1964 revisions toS 1782, 

has stated, "although a foreign court might not compel 

production of the evidence in the manner employed by an 

American court, it might very well, and ordinarily would, 

readily accept and rely on the evidence obtained with the 

help of the American court." Hans Smit, Recent 

Developments in International Litigation, 35 S. Tex. L. Rev. 

215, 236 (1994). In John Deere, we declined to preclude the 

testimony merely because "the Canadian court may 

question its own power to devise and grant an order for the 

discovery of a corporate employee resident outside its 

jurisdiction." John Deere, 754 F.2d at 138. 

The opinion of the House of Lords in South Carolina Ins. 

Co. v. Assurantie Maatschappij "De Zeven Provincien" N.V., 

[1987] 1 App. Cas. 24 (1986) (appeal taken from Court of 

Appeal), is informative. There, a party involved in a reinsurance lawsuit pending in the English Commercial Court 

 12 
filed a S 1782 application in the Western District of 

Washington seeking to obtain discovery from two Seattlebased companies not parties to the English litigation. 

Before the application could be heard, the Commercial 

Court enjoined the parties before it from pursuing the 

application on the ground that "the English court should 

retain the control of its own procedure and the proceedings 

that are before it." Id. at 34. On appeal, the House of Lords 

reversed. 

First, it found that the availability of discovery under 

S 1782 posed no "interference with the [English] court's 

control of its own process." Id. at 41. Despite the court's 

inability to compel the discovery, the information could be 

obtained by a party if the possessor voluntarily produced it. 

Thus, the mere fact that the English court could not compel 

the production at issue did not mean that it would be 

offensive to the court if a party obtained it. See id. at 42. 

Second, the House of Lords rejected the argument that by 

submitting to the jurisdiction of the English court, the 

parties were bound to accept its procedures. See id. It held 

that the parties to an English litigation were entitled to 

prepare their case by obtaining documents in a foreign 

country and this included the right to seek discovery under 

S 1782. See id. Moreover, because England's proscription of 

discovery from parties not before the court was intended to 

protect the non-parties rather than the litigating parties, it 

would make little sense to extend the protection of the 

English courts to American non-parties subject to discovery 

under the laws of the United States. See id. Finally, the 

House of Lords rejected the notion that resort to American 

discovery procedures would cause increased cost and delay. 

It reasoned that such effects were essentially self-imposed 

by the party's decision to oppose and fight a S 1782 

application. Id. at 42-43. 

The analysis used by the House of Lords, reflecting as it 

does the view of a foreign country with less liberal discovery 

procedures and applied in a real case, is an effective 

response to the First Circuit's assumption that a grant of 

discovery not available in the foreign jurisdiction would 

offend that jurisdiction's courts. 

 13 
Of course, we recognize that there are some instances in 

which permitting discovery of certain evidence may cause 

offense to the courts of the foreign jurisdiction. Some 

countries may regard information held by spouses or

children to be privileged; others may have different limits. 

The comity concerns we expressed against "use of U.S. 

discovery procedures to evade the limitations placed on 

domestic pre-trial disclosure by foreign tribunals," John 

Deere, 754 F.2d at 136, are applicable only when the 

substance of the discovery is objectionable. See generally 

Metallgesellschaft, 121 F.3d at 80 ("If district courts were 

free to refuse discovery based upon its unavailability in a 

foreign court . . . , S 1782 would be irrelevant to much 

international litigation, frustrating its underlying 

purposes."); Hans Smit, Recent Developments in 

International Litigation, 35 S. Tex. L. Rev. 215, 234-38 

(1994) (discussing Congress's intention to make discovery 

available where the same would not be discoverable under 

foreign law). It follows that the lack of a finding of 

discoverability is an inadequate basis on which to deny a 

S 1782 application. 

B. 

The reference in S 1782 to the Federal Rules suggests 

that under ordinary circumstances the standards for

discovery under those rules should also apply when 

discovery is sought under the statute. Consistent with the 

statute's modest prima facie elements and Congress's goal 

of providing equitable and efficacious discovery procedures, 

district courts should treat relevant discovery materials 

sought pursuant to S 1782 as discoverable unless the party 

opposing the application can demonstrate facts sufficient to 

justify the denial of the application. In determining whether 

the foreign tribunal would take offense, the district court 

would be free, in the exercise of its discretion, to consider 

any materials, typically statutes or case law from the 

foreign jurisdiction, that may be presented by the parties. 

Cf. Hans Smit, American Assistance to Litigation in Foreign 

and International Tribunals: Section 1782 of Title 28 of the 

U.S.C. Revisited, 25 Syracuse J. Int'l L. & Com. 1, 14 (1998) 

("when a foreign or international tribunal has ruled that 

 14 
production of the evidence pursuant to Section 1782 would 

not be appropriate, an American court should heed that 

ruling and deny the application"). 

In this case, however, the district court concluded, 

without any evidentiary showing, that granting the 

requested discovery would be offensive to the Spanish 

tribunal. When pressed at oral argument for an explanation 

why the Spanish court would be offended by the grant of 

Bayer's S 1782 application, counsel for BetaChem argued 

only that Bayer could have gone to the Spanish court to 

seek production of the BetaChem materials before coming 

to the United States and invoking S 1782. This fails to 

answer the question. Indeed, a "quasi-exhaustion 

requirement" of the kind advocated by BetaChem on appeal 

has been rejected by those courts that have addressed it. 

See, e.g., Malev Hungarian Airlines, 964 F.2d at 100. 

In fact, the evidence presented to the district court 

strongly suggested receptivity by the Spanish court to the 

evidence sought by Bayer rather than offense. In dealing 

with different documents but of a similar type, Judge Amigo 

of the Court of First Instance issued a ruling on October 

14, 1996, in Bayer's patent infringement action that the 

court would receive "any document that may be presented," 

although he reserved decision as to any document's 

admissibility. App. at 87-89. For its part, BetaChem 

produced no evidence from which the district court might 

have reasonably concluded that presentation of the 

material sought here would offend the Spanish court. 

Inasmuch as relevant evidence is presumptively 

discoverable under S 1782, the burden of demonstrating 

offense to the foreign jurisdiction, or any other facts 

warranting the denial of a particular application, should 

rest with the party opposing the application, here 

BetaChem. 

In John Deere, we considered the testimony sought there 

to be discoverable in the foreign jurisdiction after noting 

simply that "the testimony sought would generally be 

subject to discovery were all the parties in Canada." 754 

F.2d at 136 (emphasis added). Here, the parties' 

uncontested submissions make clear that the documents 

sought by Bayer would be subject to discovery in Spain 

 15 
were all the parties located there. By insisting that the 

Spanish court make the materiality determination, the 

district court, in our view, insisted on too much. See 

generally, Metallgesellschaft, 121 F.3d at 80 (denying an 

application "because the foreign court had notfirst passed 

on the discoverability of the material sought" would 

contravene S 1782's purpose). 

III. 

Our discussion is not intended to suggest that Bayer is 

necessarily entitled to have its application granted. That 

determination will have to await the district court's proper 

exercise of its discretion on remand when it will be free to 

consider the relevance of factors not before us, such as the 

timeliness of Bayer's application and appropriate measures, 

if needed, to protect the confidentiality of the materials. For 

the reasons discussed above, we will vacate the order of the 

district court and remand for further proceedings 

consistent with this opinion. 

A True Copy: 

Teste: 

 Clerk of the United States Court of Appeals 

 for the Third Circuit 

 16