Statute Permits Domestic Discovery For Foreign Opposition Proceedings

Akebia Therapeutics, Inc. v. FibroGen, Inc.

With ample citation to Supreme Court precedent, the U.S. Court of Appeals for the Ninth Circuit affirmed the use of 28 U.S.C. § 1782 to conduct domestic discovery in aid of foreign opposition proceedings at the European and Japanese patent offices. Akebia Therapeutics, Inc. v. FibroGen, Inc., Case No. 15-15274 (9th Cir., July 16, 2015) (Graber, J.).

Respondent FibroGen owns several foreign patents directed to chemical compounds useful for treating anemias. Petitioner Akebia initiated opposition proceedings against certain FibroGen patents before the European Patent Office and the Japanese Patent Office. Upon application to the U.S. District Court for the Northern District of California, Akebia obtained an order under § 1782 permitting it to serve FibroGen with document and deposition subpoenas as a means to gather evidence for use in the foreign oppositions. FibroGen appealed.