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. e du/thir dc ir c uit_1998/138Filed 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 Proc edure, 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 pr ocess in the federal courts in this country. Although those rule s 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 forei gn and international tribunals and litigants in obtaining oral and documentary evidence in the United States. Eventual ly this effort led to congressional action. Section 1782(a) of Title 28

of the United States Code now authorizes district c ourts to render assistance to foreign courts and the litigan ts before them in obtaining discovery from United States resi dents for use in foreign proceedings.

Pursuant to that section, Bayer AG, a drug manufact urer 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 N ew Jersey corporation, for use in a patent infringemen t action pending in the Court of First Instance in Spain. Th e district court denied the application and Bayer appeals. The question before us is whether the district court re lied on inapplicable or erroneous considerations when it de nied Bayer's request.

2I.

Facts and Procedural Background

In a related action, Bayer filed suit in January 19 92 in

the United States District Court for the Southern D istrict 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 alle gations, Barr had purchased and planned to continue to purch ase ciprofloxacin from BetaChem, which is the United St ates sales agent for Chemo Iberica, S.A. ("Chemo") and i ts affiliate Quimica Sintetica, S.A. ("Quimica"), both Spanish corporations. During the course of discovery in tha t action, Barr produced a confidential document that describe s Chemo's process for making ciprofloxacin. Bayer als o learned that BetaChem had submitted similar documen ts

to the FDA on Barr's behalf.

Apparently as a result of the information received, Bayer filed a patent infringement action in June 1993 aga inst Chemo and Quimica in the Court of First Instance No . 25 in Barcelona, Spain, claiming that Chemo and Quimic a had infringed and were infringing its Spanish process p atent 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 t o as the "smoking gun document." App. at 100. Therefore, som etime in early 1996, Bayer sought to submit that document to the Spanish court. Before doing so, it sought permissio n from the magistrate judge who had entered a confidential ity order in the New York action. The magistrate judge gave approval, subject to the Spanish court's willingnes s to enter a confidentiality order.

Bayer then approached the Spanish court and on October 14, 1996, it obtained an order from the Spa nish court stating that it would receive "any document t hat may be presented," that it would determine the document 's

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

document confidential to the extent permissible und er Spanish law. Thereafter, the New York magistrate ju dge was reported to have signified his satisfaction tha t 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 o f New Jersey pursuant to 28 U.S.C. S 1782(a). Bayer alleg ed that it owned patents covering the composition and/or pr ocess for making ciprofloxacin in numerous countries, inc luding its Spanish patent no. 505,138 covering a process f or making ciprofloxacin; that Chemo and its affiliated corporation Quimica infringe that Spanish patent; a nd that BetaChem purchased ciprofloxacin from Chemo and/or Quimica which BetaChem in turn sold to Barr. Bayer alleged that BetaChem has material information abou t Chemo's process to make ciprofloxacin, and that Spa nish law provides no procedures for the orderly exchange of documents. Bayer sought permission to seek discover y 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 Ba rr's behalf. Bayer also sought permission to depose cert ain BetaChem employees.

BetaChem opposed Bayer's application on three groun ds. First, it argued that discovery requests made pursu ant to S 1782(a) may be granted only if the material sough t would be discoverable in the foreign jurisdiction. In tha t regard, it submitted a written legal opinion from a Spanish at torney, who stated that under Article 603 of the Spanish Ci vil Procedure Law a Spanish court may, at the request o f a party, order the disclosure of documents that are t he exclusive property of a non-litigant if the judge w ho 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 o f materiality by the Spanish court, the testimony and materials sought by Bayer would not be discoverable in Spain and, therefore, are not discoverable underS 1 782(a).

4Second, BetaChem argued that because the Spanish

action was already sub judice and Bayer had been aw are 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 sh ould 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 forei gn jurisdiction." App. at 94. Although the court state d that it did not consider discoverability in the foreign jur isdiction to be a prerequisite to obtaining discovery under S 17 82(a), its discussion nevertheless focused exclusively on the requirement under Spanish law of a determination th at the documents sought from a non-litigant would be mater ial. The district court reasoned that even though it wou ld probably regard the discovery Bayer sought to be ma terial, its own view was irrelevant because it was the Span ish judge who was to make the materiality determination . The court then ruled that because Bayer had not obtaine d such a materiality ruling, the discovery it sought from BetaChem would not be discoverable in Spain and therefore Ba yer lacked proof that granting its application would no t 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 t hat, under Spanish law, the Provincial Court may, under certain circumstances, receive new evidence not submitted t o the Court of First Instance. Accordingly, neither party contends that the issue before us has been mooted by the dis position

in the Court of First Instance.

II.

Discussion

The district court's denial of Bayer's discovery ap plication constitutes a final order over which we have jurisd iction

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

F.3d 54, 57 (2d Cir. 1993). In general, we review a district court's decision to deny a S 1782 application for a buse of discretion. Where the district court misinterpreted or misapplied the law, however, or where the court rel ied on inappropriate factors in the exercise of its discre tion, our review is plenary. See id. at 58; see generally Red land Soccer Club, Inc. v. Department of the Army, 55 F.3 d 827, 845 (3d Cir. 1995).

A.

Section 1782, entitled "Assistance to foreign and international tribunals and to litigants before suc h tribunals," provides, in relevant part:

The district court of the district in which a person resides or is found may order him to give hi s testimony or statement or to produce a document or oth er thing for use in a proceeding in a foreign or inte rnational tribunal . . . . The order may be made pursu ant to a letter rogatory issued, or request made, by a foreign or international tribunal or upon the applicati on of any interested person . . . The order may prescr ibe the practice and procedure, which may be in whol e or part the practice and procedure of the foreign co untry or the international tribunal, for taking the t estimony or statement or producing the document or other thing. To the extent that the order does not prescr ibe otherwise, the testimony or statement shall be taken, and the document or other thing produced, in

accordance with the Federal Rules of Civil P rocedure.

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 r egarding the purpose of the statute:

Until recently, the United States has not e ngaged itself fully in efforts to improve practices of international cooperation in litigation. The steadily

6growing involvement of the United States in

international intercourse and the resulting increase in litigation with international aspects have d emonstrated the necessity for statutory improvements and other

devices to facilitate the conduct of such li tigation.

Enactment of the bill into law will constitu te a major step in bringing the United States to the fo refront 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 as pects.

It is hoped that the initiative taken by th e United States in improving its procedures will invi te foreign countries similarly to adjust their procedur es.

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 facil itate the conduct of litigation in foreign tribunals, imp rove international cooperation in litigation, and put th e United States into the leadership position among world nat ions in this respect. It appears that the scope of discover y is not as far-reaching in foreign litigation as it is in dome stic litigation. The Senate Report makes clear that unde r 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 impo se conditions it deems desirable. The Report further s tates 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 th at country." Id.

In light of the absence of any language in the text of S 1782 that limits its application to cases in whic h the materials sought to be discovered would be discover able in the foreign jurisdiction, see In re Esses, 101 F.3d 873, 875 (2d Cir. 1996), we must examine the basis for the d istrict

court's exclusive focus on whether the materials so ught by Bayer would be discoverable in Spain.

7The inquiry begins with the district court's interp retation

of John Deere Ltd. v. Sperry Corp., 754 F.2d 132 (3 d Cir. 1985), this court's oft-cited opinion addressingS 1 782. John Deere Limited and Deere & Company (jointly ref erred 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 di strict court denied John Deere's application, both because Canada would not honor letters rogatory emanating f rom a court of the United States and because the material sought was not clearly admissible at trial in Canada. Befo re this court had an opportunity to hear John Deere's appea l from this ruling, the Federal Court of Canada issued an opinion and order directing Sperry to produce McCarty, a Sp erry officer, but not Glass, a non-officer.

In its appeal from the district court's denial of i ts discovery application, John Deere challenged the re levancy under S 1782(a) of the availability of reciprocal f oreign 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 178 2(a). We stated instead that the "liberal intent to provide judicial assistance whether or not reciprocity exists has be en acknowledged as a primary statutory goal since sect ion 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 ensur e 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 in quiry. Id. at 136 & n.3. Indeed, it "would contradict the expr ess 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 i nasmuch as the Canadian court had held that McCarty's testimon y would be material and required by the equities, the district

8court should have required that of Glass as well. I d. 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, sectio n 1782 cannot be said to ignore those considerations of co mity and sovereignty that pervade international law. A grant of discovery that trenched upon the clearly establishe d procedures of a foreign tribunal would not be withi n section

1782." Id. at 135. We also stated that we would not "countenance the use of U.S. discovery procedures t o evade the limitations placed on domestic pre-trial disclo sure by foreign tribunals." Id. at 136.

Those comments made explicit our concern over comit y, but nothing in them signifies an intent to impose a discoverability requirement. Such a requirement wou ld be inconsistent with much of the language of the opini on, where we stated, inter alia, "Nor should the practi ce of Canadian courts in refusing to render judicial assi stance, be the determinative factor in the construction giv en section 1782 by an American court." Id. at 135-36. In fact, in John Deere itself we were satisfied that grantin g the S 1782 application would not have caused any offens e to the Canadian tribunal, even though discovery from G lass had not been authorized by the Canadian courts.

The application of the John Deere opinion by the di strict

court in this case is understandable because at lea st 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 As sistance from Ministry of Legal Affairs of Trinidad and Toba go, 848 F.2d 1151, 1156 (11th Cir. 1988); see also In re Fi rst Court of First Instance in Civil Matters, Caracas, Venezu ela, 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

9does not require that foreign courts have reciproca l

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 sta tes 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. 199 5).

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 le tter and spirit of the statute. The prima facie showing mand ated by the statute is only that the application be made (1 ) "by a foreign or international tribunal" or "any interest ed person," (2) that it be "for use in a proceeding in a foreig n 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 f iled. See Esses, 101 F.2d at 875. If Congress had intended to impose an additional element as restrictive as a requireme nt 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 in dication 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 jurisdic tion. In adopting the 1964 amendments, Congress's overarchin g goals were to provide efficient means of assistance to foreign courts and litigants and encourage other na tions 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. 88-158 0, at 2 (1964), reprinted in 1964 U.S.C.C.A.N. 3783. Neithe r of

10these congressional purposes requires courts to imp ose a

discoverability requirement as a bright-line rule. See generally United States v. Ron Pair Enters. Inc., 4 89 U.S. 235, 242 (1989) ("The plain meaning of legislation should be conclusive, except in the rare cases in which th e literal application of a statute will produce a result demo nstrably at odds with the intentions of its drafters.") (cit ation & quotations omitted).

It is instructive to turn to the Senate Report, whi ch states that "[i]f the court fails to prescribe the procedu re, the appropriate provisions of the Federal Rules of Civi l Procedure are to be followed, irrespective of wheth er the foreign or international proceeding or investigatio n 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 Federa l Rules, it is unlikely that Congress would have painted with s o broad a brush if it had intended courts applying S 1782 t o 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 see n 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 m ake discoverability itself a condition.

The policies advanced by the Court of Appeals for t he First Circuit as the basis for reading a discoverab ility requirement into S 1782, see Asta Medica, 981 F.2d at 5-7, are not persuasive. The court expressed concern tha t a foreign party could invoke S 1782 and obtain broad American-style discovery while the same would not b e 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 t he district court crafting an appropriate discovery or der. See Euromepa, 51 F.3d at 1101. In any event, that consideration is not present in this case where S 1 782 is being invoked against an entity that is not a party to the Spanish patent litigation.

11The First Circuit also based its Asta Medica decisi on on

its concern that granting a S 1782 application wher e the discovery sought would not be available in the fore ign jurisdiction "would lead some nations to conclude t hat United States courts view their laws and procedures with contempt," thereby frustrating Congress's desire to stimulate foreign tribunals to provide reciprocal a ssistance to litigants before our own courts. Id. at 6-7. We agree that "Congress did not seek to place itself on a collisi on course with foreign tribunals and legislatures" and that w e ought

to avoid a construction of the statute that would l ead other nations to conclude that we do not respect their la ws and procedures. Id. We said as much in John Deere. 754 F.2d at 135. It does not follow that the inability to ob tain discovery means that the foreign court objects to t he 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 bas ed on the unavailability of pretrial discovery from non-p arty witnesses in the countries in which the foreign pat ent 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 proc edure,

it would take offense at its use. Professor Hans Sm it, one of the principal forces behind the 1964 revisions t oS 1782, has stated, "although a foreign court might not com pel production of the evidence in the manner employed b y an American court, it might very well, and ordinarily would, readily accept and rely on the evidence obtained wi th 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 prec lude 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 Cou rt of Appeal), is informative. There, a party involved in a reinsurance lawsuit pending in the English Commercial Court

12filed a S 1782 application in the Western District of

Washington seeking to obtain discovery from two Sea ttlebased companies not parties to the English litigati on. Before the application could be heard, the Commerci al Court enjoined the parties before it from pursuing the application on the ground that "the English court s hould retain the control of its own procedure and the pro ceedings that are before it." Id. at 34. On appeal, the Hous e of Lords

reversed.

First, it found that the availability of discovery under S 1782 posed no "interference with the [English] co urt'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 pr oduced it. Thus, the mere fact that the English court could no t 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 th at 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 enti tled to prepare their case by obtaining documents in a fore ign country and this included the right to seek discove ry under S 1782. See id. Moreover, because England's proscri ption of discovery from parties not before the court was int ended 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 d iscovery

under the laws of the United States. See id. Finall y, the House of Lords rejected the notion that resort to A merican 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 178 2 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 libera l discovery procedures and applied in a real case, is an effect ive response to the First Circuit's assumption that a g rant of discovery not available in the foreign jurisdiction would offend that jurisdiction's courts.

13Of course, we recognize that there are some instanc es 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 differen t limits. The comity concerns we expressed against "use of U. S. discovery procedures to evade the limitations place d on domestic pre-trial disclosure by foreign tribunals, " John Deere, 754 F.2d at 136, are applicable only when th e substance of the discovery is objectionable. See ge nerally Metallgesellschaft, 121 F.3d at 80 ("If district co urts were free to refuse discovery based upon its unavailabil ity in a foreign court . . . , S 1782 would be irrelevant to much international litigation, frustrating its underlyin g purposes."); Hans Smit, Recent Developments in International Litigation, 35 S. Tex. L. Rev. 215, 2 34-38 (1994) (discussing Congress's intention to make dis covery 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 sugges ts that under ordinary circumstances the standards for discovery under those rules should also apply when discovery is sought under the statute. Consistent w ith the statute's modest prima facie elements and Congress' s goal of providing equitable and efficacious discovery pr ocedures, district courts should treat relevant discovery mat erials sought pursuant to S 1782 as discoverable unless th e party opposing the application can demonstrate facts suff icient to justify the denial of the application. In determini ng whether the foreign tribunal would take offense, the distri ct court would be free, in the exercise of its discretion, t o 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 rule d that

14production of the evidence pursuant to Section 1782 would

not be appropriate, an American court should heed t hat 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 Spani sh tribunal. When pressed at oral argument for an expl anation why the Spanish court would be offended by the gran t of Bayer's S 1782 application, counsel for BetaChem ar gued only that Bayer could have gone to the Spanish cour t to seek production of the BetaChem materials before co ming to the United States and invoking S 1782. This fail s to answer the question. Indeed, a "quasi-exhaustion requirement" of the kind advocated by BetaChem on a ppeal has been rejected by those courts that have address ed it. See, e.g., Malev Hungarian Airlines, 964 F.2d at 10 0.

In fact, the evidence presented to the district cou rt strongly suggested receptivity by the Spanish court to the evidence sought by Bayer rather than offense. In de aling with different documents but of a similar type, Jud ge Amigo of the Court of First Instance issued a ruling on O ctober 14, 1996, in Bayer's patent infringement action tha t the court would receive "any document that may be prese nted," although he reserved decision as to any document's admissibility. App. at 87-89. For its part, BetaChe m 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 demonstrat ing offense to the foreign jurisdiction, or any other f acts 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 t here to be discoverable in the foreign jurisdiction afte r noting simply that "the testimony sought would generally b e 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 documen ts sought by Bayer would be subject to discovery in Sp ain

15were all the parties located there. By insisting th at the

Spanish court make the materiality determination, t he district court, in our view, insisted on too much. See generally, Metallgesellschaft, 121 F.3d at 80 (deny ing an application "because the foreign court had notfirst passed on the discoverability of the material sought" woul d contravene S 1782's purpose).

III.

Our discussion is not intended to suggest that Baye r is necessarily entitled to have its application grante d. That

determination will have to await the district court 's proper

exercise of its discretion on remand when it will b e free to consider the relevance of factors not before us, su ch as the timeliness of Bayer's application and appropriate m easures, if needed, to protect the confidentiality of the ma terials. For the reasons discussed above, we will vacate the ord er 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