The First Circuit recently joined the slight majority of its sister Circuits by holding that neither party bears the burden of proof with respect to the discretionary factors analyzed on an application for discovery in aid of a foreign proceeding under 28 USC § 1782.
In re Schlich, No. 17-1377 (1st Cir. June 20, 2018), involved a section 1782 application for discovery in aid of an opposition proceeding before the European Patent Office. After the District of Massachusetts determined the statutory requirements of section 1782 were met, it turned to the four discretionary factors that the Supreme Court established in Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 (2004). After supplemental briefing and a motion for reconsideration, the district court denied the petitioner’s application primarily because, under the second Intel factor, it did not appear that the European Patent Office would be receptive to the discovery sought.
On appeal, the petitioner argued that the district court erroneously inverted the burden of proof by requiring him to demonstrate that the European Patent Office would be receptive to the requested discovery. Instead, he argued that the district court should have required the party opposing the discovery to bear the burden on the Intel factors. At the outset, the First Circuit recognized that the Second and Third Circuits hold that the party opposing the discovery bears the burden of proof on the Intel factors, while the Seventh, Ninth, and Eleventh Circuits have not specifically placed a burden on either side. Examining Intel, the First Circuit reasoned that the Supreme Court had delineated factors – not elements of a claim – and that these factors were mere considerations to guide a district court’s decision. Because “the Supreme Court gave great flexibility and discretion” to the district courts, the First Circuit held that these factors did not create a burden for either party to meet, and in doing so, affirmed the district court’s order denying the section 1782 application.