Akebia Therapeutics, Inc. v. Fibrogen, Inc.
793 F.3d 1108
| 9th Cir. | 2015Background
- FibroGen owns European Patent EP 1 463 823 and Japanese Patent No. 4804131 related to anemia treatment.
- Akebia seeks discovery under 28 U.S.C. § 1782 to aid foreign patent-office proceedings.
- District court granted Akebia’s application, applying § 1782 to foreign tribunals and restricting disclosure with a protective order.
- FibroGen appeals, arguing Akebia lacks standing, the offices are not tribunals, AIA limits apply, and district court discretion was abused.
- Court holds foreign patent offices are tribunals, Akebia is an 'interested person' with standing, and § 1782 remains applicable alongside AIA.
- Discretionary factors were properly weighed; blanket reversal not warranted, and order is affirmed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Who may invoke § 1782? | Akebia has a 'reasonable interest' as an interested person. | FibroGen contends Akebia lacks standing to sue in federal court. | Akebia has standing as an interested person. |
| Are European/Japanese Patent Offices 'tribunals' under § 1782? | Proceedings are quasi-judicial and within § 1782's scope. | They are not traditional courts and should be excluded. | Both offices are tribunals for § 1782 purposes. |
| Does the AIA limit § 1782 discovery in foreign proceedings? | AIA does not repeal or render § 1782 inapplicable to foreign proceedings. | AIA may constrain discovery in related US proceedings; potential conflicts arise. | No irreconcilable conflict; § 1782 remains applicable to foreign proceedings. |
| Did the district court abuse its discretion in denying narrow tailoring and addressing Intel factors? | District court properly weighed factors and imposed protective order. | Court gave short shrift to Intel factors and broader public policy arguments. | District court did not abuse discretion; order affirmed. |
Key Cases Cited
- Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 (U.S. 2004) (defines § 1782 scope and factors)
- Vivid Entm’t, LLC v. Fielding, 774 F.3d 566 (9th Cir. 2014) (standing requirement for invoking federal jurisdiction)
- Morton v. Mancan, 417 U.S. 535 (U.S. 1974) (irreconcilable conflict principle for implied repeals)
- United States v. Akins (FEC v. Akins), 524 U.S. 11 (U.S. 1998) (injury-in-fact from statutory disclosure rights)
- Pub. L. No. 112-29 (AIA) (text cited as statute), 125 Stat. 284 (2011) (post-grant review provisions; not a patent-conflict case here)
- Hollingsworth v. Perry, 133 S. Ct. 2652 (U.S. 2013) (adequacy of standing and jurisdiction concepts)
- Sealed v. United States, 235 F.3d 1200 (9th Cir. 2000) (district court discretion in § 1782 matters)