37 F.4th 160
4th Cir.2022Background
- Eli Lilly sought discovery under 28 U.S.C. § 1782 from Novartis in the Eastern District of Virginia to support patent-invalidity and antitrust defenses/claims in several European proceedings after Novartis acquired a Genentech patent portfolio.
- The magistrate judge granted Eli Lilly’s § 1782 application and authorized a subpoena; Novartis intervened and moved to quash.
- The district court vacated the magistrate judge’s order, denied the § 1782 application, and quashed the subpoena, ruling Novartis was not “found” in the district because it lacked a physical presence and, alternatively, that discretionary Intel factors counseled denial.
- Eli Lilly argued “found” should be coextensive with constitutional personal-jurisdiction standards (International Shoe modern test); Novartis argued “found” requires physical presence or analogous contacts (agents/agents carrying on business or designated agent for process).
- The Fourth Circuit affirmed the district court, relying on the statutory/textual meaning of “found” as requiring physical presence (or comparable agent presence) and on the district court’s discretionary Intel analysis (circumvention and burden).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Meaning of “found” in § 1782 | “Found” means within a district’s personal jurisdiction (International Shoe standard). | “Found” requires physical presence or presence via officers/agents carrying on business (traditional meaning). | “Found” requires physical presence/agents carrying on business; statutory/textual meaning controls. |
| Whether Novartis was “found” in EDVA | Novartis had sufficient contacts; thus § 1782 applies. | No physical presence or agents carrying on business in EDVA. | Novartis was not “found” in EDVA; § 1782’s territorial requirement unmet. |
| Discretion under Intel | Even if statutory requirements met, courts should grant § 1782 to aid foreign proceedings. | Denial appropriate where request is burdensome, seeks materials abroad, or attempts to circumvent foreign procedures. | District court did not abuse discretion: Intel factors (circumvention, burden) supported denial. |
Key Cases Cited
- Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 (2004) (district courts have discretion under § 1782; lists four Intel factors)
- People’s Tobacco Co. v. American Tobacco Co., 246 U.S. 79 (1918) (corporation is “found” where present by officers/agents conducting business)
- Eastman Kodak Co. v. Southern Photo Materials Co., 273 U.S. 359 (1927) (distinguishes “found” from “transacts business”; “found” implies presence)
- Neirbo Co. v. Bethlehem Shipbuilding Corp., 308 U.S. 165 (1939) (corporation may be “found” where it consents to suit or appoints an agent)
- Freeman v. Bee Machine Co., 319 U.S. 448 (1943) (observes “found” does not always mean physical presence; discusses consent/appearance)
- International Shoe Co. v. Washington, 326 U.S. 310 (1945) (modern due-process personal-jurisdiction standard based on minimum contacts)
- In re del Valle Ruiz, 939 F.3d 520 (2d Cir. 2019) (held “found” is coextensive with personal-jurisdiction limits under the Due Process Clause)