United States Court of Appeals 

for the Federal Circuit ______________________

IN RE: POSCO, POSCO AMERICA CORPORATION,

Petitioners

______________________

2015-112

______________________

On Petition for Writ of Mandamus to the United 

States District Court for the District of New Jersey in No. 

2:12-cv-02429-SRC-CLW, Judge Stanley R. Chesler.

______________________

ON PETITION

______________________

J. MICHAEL JAKES, Finnegan, Henderson, Farabow, 

Garrett & Dunner, LLP, Washington, DC, for petitioners. 

Also represented by CHARLES THOMAS COLLINS-CHASE;

CHARLES HYUK SUH, Reston, VA. 

MARK REITER, Gibson, Dunn & Crutcher LLP, Dallas, 

TX, for respondent Nippon Steel & Sumitomo Metal 

Corporation. Also represented by MATTHEW D. MCGILL,

Washington, DC. 

ADA ELSIE BOSQUE, Office of International Judicial 

Assistance, Civil Division, United States Department of 

Justice, Washington, DC, for amicus curiae United States. 

Also represented by BEN C. MIZER, JEANNE E. DAVIDSON.

______________________

Before NEWMAN, DYK, and HUGHES, Circuit Judges.
2 IN RE POSCO

Opinion for the court filed by Circuit Judge DYK.

Concurring opinion filed by Circuit Judge HUGHES.

DYK, Circuit Judge. 

O R D E R

Petitioners POSCO and its U.S. subsidiary POSCO 

America Corporation (collectively, “POSCO”) seek a writ 

of mandamus from an order of the United States District 

Court for the District of New Jersey modifying the court’s 

protective order to allow foreign courts access to petitioners’ proprietary information. We grant the petition. 

I

On April 24, 2012, Nippon Steel & Sumitomo Metal 

Corporation (“Nippon Steel”) filed suit in the District of 

New Jersey, charging POSCO with patent infringement 

and unfair competition. On April 5, 2013, the district 

court entered a protective order prohibiting the cross-use 

of confidential materials which “shall be used by the 

receiving Party solely for purposes of the prosecution or 

defense of this action.” Ex. E, at 2. Following the entry of 

the protective order, POSCO produced several million 

pages of documents containing confidential information.

Nippon Steel also brought suit in Japan against 

POSCO (based in Korea) for alleged trade secret misappropriation. In response, POSCO filed its own declaratory 

judgment action in Korea, asserting that it had not stolen 

Nippon’s trade secrets.

Given that discovery in this country’s federal court 

system is more generous than in Japan and Korea, Nippon Steel, attempting to obtain and use documents that 

perhaps it would not otherwise be able to obtain and use 

in those foreign courts, moved the district court to modify

its discovery protective order for the purposes of providing

foreign counsel in the Japanese and Korean actions 
 IN RE POSCO 3

approximately 200 pages of proprietary documentation 

relating to POSCO’s manufacturing process.

The Special Discovery Master assigned to the case issued a Letter Opinion, concluding that Nippon Steel’s 

request to produce those documents to counsel for those 

foreign proceedings should be granted. The Special 

Master looked to the Federal Rules of Civil Procedure and 

the balancing framework for modifying discovery orders 

set forth by the Third Circuit in Pansy v. Borough of 

Stroudsburg, 23 F.3d 772 (3d Cir. 1994), a case involving 

the modification of a protective order to disclose a settlement agreement to U.S. newspapers, and not the provision of documents to foreign courts. See id. at 775. Pansy

articulated the standard as follows: “The party seeking to 

modify the order of confidentiality must come forward 

with a reason to modify the order. Once that is done, the 

court should then balance the interests, including the 

reliance by the original parties to the order, to determine 

whether good cause still exists for the order.” Id. at 790.

In conducting his assessment, the Special Master 

acknowledged that the sole purpose of the request was to 

facilitate evidence gathering in the foreign proceedings. 

He concluded that the evidence identified “seems to be

relevant” to those proceedings and that restrictions 

should be put in place to keep the information confidential. Ex. L, at 22. Among the restrictions that the Special 

Master sought to impose “as a condition to having these 

documents submitted in a foreign jurisdiction” were that 

“[b]efore the documents may be submitted to a foreign 

court, the court must identify the information and agree 

that it would be maintained as confidential and restricted 

from third party access.” Id. 

Petitioners filed objections to the Special Master’s ruling. On October 30, 2014, the district court entered an 

Order and Opinion affirming the Special Master’s ruling. 

Petitioners then filed their request for a writ seeking 
4 IN RE POSCO

review under 28 U.S.C. § 1651(a). Our review is appropriate because the order in question turns on claims of 

confidentiality that raise an important issue of first 

impression. See In re United States, 669 F.3d 1333, 1336 

(Fed. Cir. 2012). 

Neither the Special Master’s ruling nor the district 

court’s order addressed the role that 28 U.S.C. § 1782 or 

the Supreme Court’s decision in Intel Corp. v. Advanced 

Micro Devices, Inc., 542 U.S. 241 (2004), should play in 

this determination. We asked the parties for supplemental briefing on: “Whether, in light of the Supreme 

Court’s decision in [Intel], 28 U.S.C. § 1782 provides the 

exclusive means for securing documents from another 

party for use in a foreign proceeding?” In re POSCO, No. 

2015-112, ECF No. 17, at 1–2 (Fed. Cir. Dec. 22, 2014). 

Thereafter, we requested the government’s views on this 

issue. The parties and the government have filed responsive briefs.

II

For mandamus to be available, (1) “the party seeking 

issuance of the writ must have no other adequate means 

to attain the relief he desires”; (2) “the petitioner must 

satisfy the burden of showing that his right to issuance of 

the writ is clear and indisputable”; and (3) “the issuing 

court, in the exercise of its discretion, must be satisfied 

that the writ is appropriate under the circumstances.” 

Cheney v. U.S. Dist. Court for the D.C., 542 U.S. 367, 380–

81 (2004) (citations, quotations, and alterations omitted). 

“[M]andamus may properly be used as a means of immediate appellate review of orders compelling the production 

of documents claimed to be protected by privilege or other 

interests in confidentiality.” In re MTSG, Inc., 675 F.3d 

1337, 1342 (Fed. Cir. 2012) (quoting Bogosian v. Gulf Oil 

Corp., 738 F.2d 587, 591 (3d Cir. 1984)); see also id. at 

1341 (“[M]andamus may be appropriate where a discovery 

order ‘raises a novel and important question of power to 
 IN RE POSCO 5

compel discovery, or . . . reflects substantial uncertainty 

and confusion in the district courts.’” (quoting 16 Charles 

Alan Wright, Arthur R. Miller & Edward H. Cooper, 

Federal Practice and Procedure § 3935.3 (2d ed. 1996)). 

We think this petition satisfies that standard because it 

presents an important and unresolved issue. 

III

Section 1782, in relevant part, provides:

The district court of the district in which a person 

resides or is found may order him to . . . produce a 

document or other thing for use in a proceeding in 

a foreign or international tribunal . . . upon the 

application of any interested person . . . [and unless otherwise specified] the document or other 

thing [will be] produced[] in accordance with the 

Federal Rules of Civil Procedure. 

28 U.S.C. § 1782(a). 

POSCO’s supplemental brief argues that § 1782, 

along with certain mutual legal assistance treaties, 

provides the exclusive means to obtain discovery for use 

in foreign proceedings. Nippon Steel argues that in the 

absence of a plain statement of pre-emptive intent, § 1782 

does not limit the scope of discovery under the Federal

Rules or the standard for modifying protective orders and 

is not relevant. The government expresses concern that a 

holding that § 1782 is the exclusive means for obtaining 

discovery for use in a foreign proceeding would conflict 

with various statutes, treaties and district court decisions, 

and the government asserts that § 1782 is not relevant to 

the district court’s authority to permit the use of discovered materials in foreign proceedings.

IV

The question before us is the role of § 1782(a) in the 

context of the request to modify this protective order. We 
6 IN RE POSCO

consider this issue against the background of the Supreme Court’s decision in Intel and district court decisions 

addressing § 1782.

In Intel, the Supreme Court considered the framework

under § 1782 for assessing whether to authorize discovery

for use in foreign proceedings. It recognized that “comity 

and parity concerns may be important as touchstones for 

a district court’s exercise of discretion in particular cases,” 

542 U.S. at 261, and set forth specific factors as “guides 

for the exercise of district-court discretion,” id. at 263 

n.15, in deciding whether to provide evidence for use in 

foreign proceedings. See id. at 264 (“[A] district court is 

not required to grant a § 1782(a) discovery application 

simply because it has the authority to do so.”); id. at 262 

(referring to “[c]oncerns about maintaining parity among 

adversaries in litigation”). As the Seventh Circuit has 

noted, “[t]he section 1782 screen—the judicial inquiry 

that the statute requires—is designed for preventing 

abuses of the right to conduct discovery in a federal 

district court for use in a foreign court.” Heraeus Kulzer, 

GmbH v. Biomet, Inc., 633 F.3d 591, 597 (7th Cir. 2011). 

We agree that § 1782 may not directly govern requests to modify a protective order to make material 

available in a foreign proceeding—as opposed to direct 

requests for evidentiary material for use in foreign proceedings pursuant to § 1782. And even as to the latter 

situation § 1782 is not exclusive since, as the government 

points out, there are various treaties and alternative 

mechanisms for securing materials for use in foreign 

proceedings. But here these other mechanisms appear to 

be unavailable, and we think that § 1782 still has a role to 

play when a party seeks to modify a protective order to 

use previously discovered documents in a foreign proceed-
 IN RE POSCO 7

ing. Other circuit courts have not specifically addressed 

this issue after Intel.1

The government argues that “district courts have consistently held that section 1782 does not control the 

disclosure or use of evidence in domestic litigation.” U.S. 

Amicus Br. at 11. But while the cases state that § 1782 is 

not controlling, two of the district court opinions cited by 

the government apply the Intel factors. 

In Infineon Technologies AG v. Green Power Technologies Ltd., 247 F.R.D. 1 (D.D.C. 2005), the district court 

granted the defendant’s motion to modify a protective 

order to permit certain discovery in the district court case 

to be used in a related patent litigation between the 

parties in Germany. Id. at 2. In doing so, however, the 

1 Nippon Steel calls our attention to cases before Intel, 

including one from this court, that have not looked to 

§ 1782 in determining whether protective orders should 

be modified. See, e.g., In re Jenoptik AG, 109 F.3d 721 

(Fed. Cir. 1997); Beckman Indus., Inc. v. Int’l Ins. Co., 966 

F.2d 470, 475 (9th Cir. 1992). In Jenoptik, we considered 

whether deposition testimony discovered in U.S. district 

court subject to a protective order could be submitted to a 

foreign court in Germany. See 109 F.3d at 722. In declining to consider whether the deposition testimony would 

have been independently discoverable in Germany, we 

stated that “[c]ase law interpreting the requirements of 

section 1782 is not relevant to a determination whether a 

protective order may be modified to permit the release of 

deposition testimony, already discovered, to another 

court.” Id. at 723. But Jenoptik (and Beckman) issued 

before Intel, which clarified the broad scope of § 1782 and 

the considerations underlying the statute. And Beckman

made no mention of § 1782. See 966 F.2d at 475–76. 

Therefore, those cases are not controlling here.

 
8 IN RE POSCO

district court cited and applied § 1782, “which governs 

discovery for foreign tribunals,” and found that the Intel

factors supported the modification of the protective order 

to allow foreign cross-use. Id. at 4–5.

In INVISTA North America S.à.r.l. v. M & H USA 

Corp., No. 11-1007-SLR-CJB, 2013 WL 1867345 (D. Del. 

Mar. 28, 2013), although the district court found that the 

Intel factors were not applicable “to the question of 

whether such documents can be reviewed by an opposing 

side’s foreign attorneys, but not be used in a foreign legal 

proceeding,” id. at *3 n.4 (emphasis in original), the court 

applied the Intel factors in assessing whether to modify a 

protective order to allow the plaintiff to use documents in 

a foreign proceeding, see id. at *3–5. POSCO also cites 

the docket from another case from the District of Delaware, in which the court’s oral order denied a request to 

use documents subject to a protective order in a German 

proceeding, noting that § 1782 “provide[s] other, appropriate mechanisms for Plaintiff to seek the relief it is 

requesting.” POSCO’s Supp. Br. Ex. 1 (dkt. # 64).2

Thus, unlike the district court here, which did not address § 1782 or the Intel factors, at least three district 

courts have acknowledged that § 1782 and the Intel

factors were relevant when a party seeks to modify a 

protective order to use discovered materials in a pending 

foreign proceeding.

2 The third case relied on by the government—Oracle 

Corp. v. SAP AG, No. C-07-01658 PJH (EDL), 2010 WL 

545842 (N.D. Cal. Feb. 12, 2010)—also recognized the 

possible relevance of the Intel factors. See id. at *3 (The 

Intel factors “may arguably be worthy of consideration” in 

determining whether to modify a protective order to use 

discovered material in a co-pending foreign proceeding.). 

 
 IN RE POSCO 9

Those factors include: (1) whether “the person from 

whom discovery is sought is a participant in the foreign 

proceeding”; (2) “the nature of the foreign tribunal, the 

character of the proceedings underway abroad, and the 

receptivity of the foreign government or the court or 

agency abroad to U.S. federal-court judicial assistance”; 

(3) “whether the § 1782(a) request conceals an attempt to 

circumvent foreign proof-gathering restrictions or other 

policies of a foreign country or the United States”; and (4) 

whether the request is otherwise “unduly intrusive or 

burdensome . . . .” Intel, 542 U.S. at 264–65 (citations

omitted). These factors, deemed by Congress to be relevant under § 1782, are not accounted for by the Pansy

standard, applied here by the district court. 

Thus, while § 1782 may not govern instances in which 

a party seeks to modify a protective order to allow use of 

discovered materials in a foreign proceeding, we think 

that the considerations articulated under § 1782 and Intel

are relevant to that issue and must be considered together 

with other considerations pertinent under Federal Rule of 

Civil Procedure 26 as articulated in Pansy. Contrary to 

the concurrence, this is not a situation in which the 

documents were produced voluntarily, in which case the 

Intel considerations may be irrelevant. In this case, the 

district court ordered that the confidentiality order be 

modified and the materials were originally produced to 

the district court subject to compulsory process.

V

Here, the district court did not address the § 1782 factors, but instead applied the Third Circuit’s standard in 

Pansy. The restrictions purportedly imposed by the 

Special Master on the foreign courts relate to the very 

“comity and parity concerns,” Intel, 542 U.S. at 261,

addressed by § 1782. Yet the notion of the use of discovery in foreign proceedings was not addressed at all in 

Pansy, and the standard announced there takes no ac-
10 IN RE POSCO

count of these concerns. See Pansy, 23 F.3d at 783–90. 

We therefore grant mandamus for purposes of directing 

the district court to conduct the proper assessment giving 

due consideration to the Intel factors. 

Accordingly, 

POSCO’s petition is granted, the order granting the 

motion to modify the protective order to allow for use of 

discovery in foreign proceedings is vacated, and the 

district court is directed to conduct further proceedings 

consistent with this Order. 

FOR THE COURT

July 22, 2015 /s/ Daniel E. O’Toole

 Date Daniel E. O’Toole

 Clerk of Court
United States Court of Appeals 

for the Federal Circuit ______________________

IN RE: POSCO, POSCO AMERICA CORPORATION,

Petitioners

______________________

2015-112

______________________

On Petition for Writ of Mandamus to the United 

States District Court for the District of New Jersey in No. 

2:12-cv-02429-SRC-CLW, Judge Stanley R. Chesler.

______________________

HUGHES, Circuit Judge, concurring.

While the majority concedes that a §1782 action is not 

the exclusive means by which a party can obtain documents for use in foreign proceedings, it nevertheless 

concludes that “the considerations articulated under 

§ 1782” and case law applying it must be considered when 

determining whether to modify a protective order to 

permit the use of confidential documents in foreign proceedings. But § 1782 does not and was never intended to 

apply to situations where the party is already in possession of the documents it seeks to use in the foreign proceeding. And forcing such a requirement on the district 

court runs afoul of the Third Circuit’s well-settled test for 

modifying protective orders.

Nevertheless, to the extent the district court imposed 

restrictions on the foreign court’s use of documents submitted by parties to this litigation, it violates well-settled

comity principles. Mandamus is appropriate for that 
2 IN RE POSCO

reason. But I would not go as far as the majority to hold 

that the district court must consider the Intel factors.

I

I am not persuaded that courts must consider § 1782 

outside of the context of an action for the production of 

documents brought under § 1782. The Supreme Court 

may have broadened the scope of a § 1782 inquiry in Intel 

Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 

(2004), but it did not speak to how a party already in 

possession of documents properly obtained through the 

usual course of discovery may use those documents. The 

plain language of § 1782 and its clear legislative history 

demonstrate that the statute only applies to new discovery—that is, actions where a party is requesting the 

district court to order the production of a document or 

otherwise compel testimony. 

The plain language of § 1782(a) speaks only to requests for an order to produce documents or testimony, 

not to voluntary dissemination of legally obtained documents. Section 1782(a) describes “order[ing] [a person] to 

give his testimony or statement or to produce a document.” § 1782(a); see also id. (“The order may prescribe 

the practice and procedure . . . for taking the testimony or 

statement or producing the document or other thing.”); id. 

(“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.”); id. (“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.”). Moreover, while § 1782(a) 

focuses on compelling testimony or document production, 

§ 1782(b) focuses on the voluntary production of documents, expressly providing that § 1782(a) “does not preclude a person . . . from voluntarily . . . producing a 
IN RE POSCO 3

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.” § 1782(b).

The legislative history confirms that § 1782 was enacted—and further refined—to create a cause of action for 

enforcing letters rogatory or other international requests 

for documents or testimony found in the United States.

See Intel Corp., 542 U.S. at 247–49 (recounting legislative 

history of § 1782). But it was not intended to reach the 

voluntary production of documents. For example, the 

Senate Report accompanying Congress’s 1964 revitalization of § 1782 makes clear that Congress was only concerned with the district court’s power to compel discovery 

in response to foreign requests: “Subsection (a) of proposed revised section 1782 makes clear that U.S. judicial 

assistance may be sought not only to compel testimony 

and statements but also to require the production of

documents and other tangible evidence.” S. Rep. No. 88-

1580 (1964), reprinted in 1964 U.S.C.C.A.N. 3782, 3788

(emphasis added); Act of Oct. 3, Pub. L. No. 88-619, § 9, 

78 Stat. 997; see also 1964 U.S.C.C.A.N at 3789 (“A request for judicial assistance under the proposed revision 

may either be contained in a letter rogatory or other 

request or be made in a direct application by an interested person . . . .”). 

The legislative history also confirms that § 1782(b) 

was intended to carve out situations where a party already in possession of documents may voluntarily provide 

them to a foreign tribunal:

Subsection (b) of proposed revised section 1782 

reaffirms the pre-existing freedom of persons 

within the United States voluntarily to give testimony or statements or produce tangible evidence 

in connection with foreign or international proceedings or investigations. This explicit reaffir-
4 IN RE POSCO

mation is considered desirable to stress in the relations with foreign countries the large degree of 

freedom existing in this area in the United States. 

It also serves to make clear that subsection (a) 

leaves that freedom unaffected.

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

U.S.C.C.A.N. 3782, 3790.

Unsurprisingly, the Supreme Court’s decision in Intel 

reflects the plain language of the statute and its clear 

legislative history. There, the Supreme Court described 

§ 1782 in terms of an affirmative action ordering the 

production of documents or other evidence. Intel Corp., 

542 U.S. at 260 (focusing on the district court’s “production-order authority”); id. at 264 (“[W]hen the person from 

whom discovery is sought . . . .”); id. at 246 (“This case 

concerns the authority of federal district courts to assist 

in the production of evidence for use in a foreign or international tribunal.”); id. at 247 (“Section 1782 is the product of congressional efforts . . . to provide federal-court 

assistance in gathering evidence for use in foreign tribunals”); id. at 261 (“[N]othing in the text of § 1782 limits a 

district court’s production-order authority . . . .”).

On a more fundamental level, forcing a § 1782 analysis into protective-order disputes is unnecessary. In In re 

Jenoptik AG, 109 F.3d 721 (Fed. Cir. 1997), we recognized 

that the protective-order inquiry is fundamentally different from the § 1782 inquiry. There, while interpreting 

Ninth Circuit law, we emphasized that the protectiveorder inquiry is focused on the confidential nature of the 

documents subject to the protective order, not on their use 

in a foreign proceeding. Id. at 723. In this case, just as in 

Jenoptik, “[POSCO] d[oes] not argue that, if these materials were not confidential [Nippon] could not present the 

[evidence] to another court.” Id. Nor could POSCO make 

such an argument because § 1782(b) and the legislative 
IN RE POSCO 5

history make it abundantly clear that a party may voluntarily disclose evidence to a foreign tribunal. Thus, we 

categorically held in Jenoptik—without reference or 

citation to any regional circuit law—that “[c]ase law 

interpreting the requirements of section 1782 is not 

relevant to a determination whether a protective order 

may be modified to permit the release of [evidence], 

already discovered, to another court.” Id. at 723. 

While we may not be strictly bound by Jenoptik in 

this case because we are interpreting Third Circuit law, 

our reasoning in Jenoptik must carry some force. Indeed, 

other courts not strictly bound by our precedent have 

applied Jenoptik to conclude that § 1782 does not override 

the protective-order inquiry. See, e.g., INVISTA N. Am. 

S.a.r.l. v. M & G USA Corp., Civ. No. 1:11-cv-1007-SLR, 

2013 WL 1867345, at *1, *3 (D. Del. Mar. 28, 2013) (noting “some courts have refused to apply the Section 1782(a) 

factors” in protective order modifications) (citing Jenoptik, 

109 F.3d at 723); Infineon Techs. AG v. Green Power 

Techs. Ltd., 247 F.R.D. 1, 4 (D.D.C. 2005) (citing Jenoptik

for the proposition that § 1782 does not control modifications to protective orders, but finding that § 1782 considerations are nonetheless helpful to such an inquiry); see 

also Oracle Corp. v. SAP AG, Civ. No. 4:07-cv-01658-PJH, 

2010 WL 545842, at *2 (N.D. Cal. Feb. 12, 2010) (“[Section 1782] applies to court orders for new discovery to be 

conducted exclusively for use in a foreign proceeding 

separate from any litigation pending before the United 

States court; it does not govern the discretion of a court to 

modify a protective order to allow access to information 

already obtained in the regular course of discovery in a 

case pending before it.”) (citing Jenoptik, 109 F.3d at 723). 

Likewise, courts and commentators have interpreted 

modifications to protective orders for the purposes of 

using documents abroad consistent with our holding in 

Jenoptik. For instance, in In re Kolon Industries Inc., 479 
6 IN RE POSCO

F. App’x 483, 486 (4th Cir. 2012), the court affirmed a 

modification of a protective order to permit release of 

already-produced privileged documents for use in foreign 

litigation without any discussion of § 1782. And recent 

commentators have noted that § 1782 only applies to new 

discovery: “Where the requested discovery is sought by 

foreign persons from discovery already made as part of 

ongoing U.S. litigation, § 1782 need not be satisfied.” 3 

Ved. P. Nanda & David K. Pansius, Litigation of International Disputes in U.S. Courts § 17:46 (2014).1 

In sum, I am not persuaded that § 1782 must be applied outside of the narrow context of an action for the 

production of evidence for use abroad. To the extent we 

are not bound by our holding in Jenoptik, I find its reasoning persuasive in light of the plain language and clear 

legislative history of § 1782.

II

Requiring a court to resort to the Intel factors when it 

has reason to believe the documents will be used in a 

foreign proceeding also contradicts Third Circuit prece1 For the reasons discussed above and contrary to the 

majority’s suggestion, Maj. Op. at 6 n.1, Intel does not 

overrule or otherwise undermine our reasoning in Jenoptik. Cf. Troy v. Samson Mfg. Corp., 758 F.3d 1322, 1326 

(Fed. Cir. 2014) (circuit precedent can be effectively 

overruled by Supreme Court decisions that “‘undercut the 

theory or reasoning underlying the prior circuit precedent 

in such a way that the cases are clearly irreconcilable.’” 

(quoting Miller v. Gammie, 335 F.3d 889, 900 (9th Cir. 

2003) (en banc))). At best, Intel broadened the scope of a 

§ 1782 cause of action, but it does not reach a situation 

such as this where the party is already in possession of 

the documents it seeks to use in a foreign proceeding. See 

supra pp. 2–4.

 
IN RE POSCO 7

dent. The Third Circuit has laid out a flexible two-part 

test for determining whether a protective order can be 

modified. First, “[t]he party seeking to modify the order 

of confidentiality must come forward with a reason to 

modify the order.” Pansy v. Borough of Stroudsburg, 23 

F.3d 772, 790 (3d Cir. 1994). “[O]nce that is done, the 

court should then balance the interests, including the 

reliance by the original parties to the order, to determine 

whether good cause still exists for the order.” Id. In 

addition to reliance, the relevant factors include whether 

disclosure will violate any privacy interest, the information is sought for a legitimate purpose, and sharing the 

information will promote fairness and efficiency. Id. at 

787–91. In Pansy, the Third Circuit stressed the flexibility of the test, noting that the factors discussed are “unavoidably vague and are of course not exhaustive,” while 

explaining that “such a balancing test is necessary to 

provide the district courts the flexibility needed to justly 

and properly consider the factors in each case.” Id. at 

789.

The majority’s holding that § 1782 must apply to the 

protective-order inquiry, and that the court must apply 

the Intel factors, runs counter to that Third Circuit precedent. Compare Maj. Op. at 8 (“These [Intel] factors, 

deemed by Congress to be relevant under § 1782, are not 

accounted for by the Pansy standard.”), with Pansy, 23 

F.3d at 789 (stressing the need for a flexible balancing 

test while emphasizing that “[t]he factors discussed above 

are unavoidably vague and are of course not exhaustive.”) 

and Glenmede Trust Co. v. Thompson, 56 F.3d 476, 483 

(3d Cir. 1995) (noting Pansy factors “are neither mandatory nor exhaustive”). 

III

While § 1782 was not designed for such cases, I nevertheless agree with the majority that modifying protective 
8 IN RE POSCO

orders to permit the use of previously discovered material 

in foreign proceedings—like all domestic court orders 

potentially impinging on a foreign court’s sovereignty—

may raise some of the same comity concerns identified by 

the Supreme Court in Intel. But this is not unique to the 

protective-order inquiry: any time a court imposes restrictions on a foreign court, it should be aware of such 

concerns. Indeed, the Third Circuit has recognized that 

“[c]omity is essentially a version of the golden rule: a 

‘concept of doing to others as you would have them do to 

you.’” Republic of Philippines v. Westinghouse Elec. Corp., 

43 F.3d 65, 75 (3d Cir. 1994) (quoting Lafontant v. Aristide, 844 F. Supp. 128, 132 (S.D.N.Y. 1994)). “Thus, it 

may be permissible to prescribe and enforce rules of law 

in a foreign country, but unreasonable to do so in a particular manner because of the intrusiveness of a particular type of [order].” Id. 

In this case, as one of seven conditions “to having 

these documents submitted in a foreign jurisdiction,” the 

district court included a requirement that the foreign 

court “must identify the [confidential] information and 

agree that it would be maintained as confidential and 

restricted from third party access” before the court may 

receive those documents. Ex. L, at 22. The district court 

found that “with the condition that the [seven] actions . . . 

will be taken,” “good cause” exists to modify the protective 

order to permit the use of certain documents abroad. Id.

at 23; see also Ex. P, at 4. While a court may exercise its 

discretion to restrict the parties’ use of documents subject 

to a protective order in accordance with Federal Rule of 

Civil Procedure 26, the court may not go so far as to place 

direct limits on a foreign court’s power to exercise its own 

discretion. See Republic of Philippines, 43 F.3d at 79 

(“Although countries sometimes exercise jurisdiction to 

prescribe and enforce laws that reach extraterritorial 

conduct, it is nevertheless widely accepted that each 

sovereign nation has the sole jurisdiction to prescribe and 
IN RE POSCO 9

administer its own laws, in its own country, pertaining to 

its own citizens, in its own discretion.”); cf. Jenoptik, 109 

F.3d at 723–24 (noting that the “district court did all that 

it could by requesting that the [foreign] court continue to 

treat the documents as confidential” (emphasis added)).

Thus, to the extent the district court imposed such a 

restriction on a foreign court’s ability to use documents as 

that court pleases without due consideration to international comity concerns, it erred.

On remand, I would order the district court to determine whether “good cause” exists to modify the protective 

order independent of a restriction on the foreign court’s 

discretion. I also would instruct the court to be mindful 

that the deliberately flexible Pansy test permits, but does 

not require, district courts to account for relevant comity 

concerns, if appropriate. See, e.g., INVISTA N. Am. 

S.a.r.l., 2013 WL 1867345, at *3 (recognizing that “some 

courts have refused to apply the Section 1782(a) factors” 

in evaluating requests for protective order modification, 

but finding “even were the Court to assess the four Intel 

factors . . . , those factors would not counsel against 

permitting the use of the . . . documents at issue.”). But I 

would not hold—as the majority does here—that the 

district court must apply § 1782 and its case law.