IN RE: APPLICATION OF BIOMET ORTHOPAEDICS SWITZERLAND GMBH UNDER 28 U.S.C. 1782 FOR AN ORDER TO TAKE DISCOVERY FOR USE IN A FOREIGN PROCEEDING, 2:17-mc-00158

Biomet filed a 28 U.S.C. § 1782 application seeking thousands of pages of Heraeus documents in the possession of Esschem’s U.S. counsel for use in a German criminal appeal scheduled for Nov. 24, 2017.
The documents were originally produced in U.S. civil litigation (Heraeus Medical GmbH v. Esschem, Inc.) under a protective order; Esschem’s counsel held Heraeus’ produced discovery.
The § 1782 application was initially granted by administrative error by another judge; a subpoena then directed Esschem’s counsel to produce Heraeus’ confidential materials to Biomet.
Heraeus intervened, obtained reassignment of the matter, moved to stay enforcement, and moved to quash the subpoena; the Court stayed enforcement pending briefing.
The Court assumed (without deciding) statutory § 1782 requirements might be met but analyzed Intel discretionary factors and concluded they weigh against enforcement.
Court reasoned enforcement would be untimely, likely not helpful to the German court on the eve of an appeal, would undermine the U.S. protective order and Heraeus’ proprietary interests, and risk creating a precedent allowing circumvention of foreign and domestic discovery rules.

Issue	Plaintiff's Argument (Biomet)	Defendant's Argument (Heraeus)	Held
Whether § 1782 production from Esschem’s counsel may be compelled	§ 1782 authorizes taking discovery from persons in the district for use in foreign proceedings; subpoena valid	Production would breach the U.S. protective order and reveal Heraeus’ confidential, proprietary materials	Court assumed statutory elements might be met but denied enforcement on discretionary grounds
Whether foreign tribunal receptivity and timing counsel in favor of enforcement	Documents will aid Biomet’s German criminal appeal	Application filed late (years after proceedings began) and on eve of appeal; German court likely unreceptive	Intel factor 2 weighs against enforcement due to undue delay and low likelihood of utility
Whether the subpoena is unduly intrusive or burdensome	Seeks relevant materials for appeal; scope justified	Seeks all Heraeus-produced discovery in Esschem counsel’s possession, undermining protective order and causing prejudice	Intel factor 4 weighs against enforcement; subpoena is unduly intrusive and prejudicial
Whether using § 1782 to obtain an opponent’s documents from opposing counsel is proper	Targeting documents in counsel’s possession is permissible under § 1782	Such use circumvents foreign and domestic discovery procedures and risks improper precedent	Court declined to endorse this tactic; enforcement would set improper precedent and was denied

Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 (Sup. Ct. 2004) (sets non-exhaustive discretionary factors for § 1782 requests)
In re Chevron Corp., 633 F.3d 153 (3d Cir. 2011) (discusses application of Intel factors in § 1782 context)
Kulzer v. Esschem, Inc., [citation="390 F. App'x 88"] (3d Cir. 2010) (addresses § 1782 statutory requirements)
In re O'Keeffe, [citation="646 F. App'x 263"] (3d Cir. 2016) (describes § 1782 procedural framework and court discretion)