Schlich v. Broad Inst., Inc. (In Re Schlich)
893 F.3d 40
| 1st Cir. | 2018Background
- Schlich, a European patent attorney for Intellia, sought discovery under 28 U.S.C. § 1782 from the Broad Institute and Broad researchers for use in EPO opposition proceedings challenging Broad patents on CRISPR‑Cas9 in mammalian cells.
- Schlich sought documents and testimony about an inventorship study (conducted by Broad's U.S. counsel Thomas Kowalski and Dr. Uthaman) and assignments relevant to priority and inventorship disputes at the EPO.
- Broad opposed, submitted a declaration from a former EPO official saying the EPO lacks jurisdiction to resolve entitlement/inventorship in opposition proceedings, and asked the district court to deny § 1782 discovery as irrelevant to the EPO proceedings.
- The district court found the § 1782 statutory prerequisites largely satisfied but denied discovery after weighing the Intel discretionary factors, concluding the EPO would not be receptive because inventorship is outside its jurisdiction and thus the requested discovery appeared irrelevant.
- Schlich appealed, arguing the district court improperly shifted the burden to him to prove the EPO’s receptivity (or required ‘‘authoritative proof’’ of receptivity), and that the court erred in finding lack of relevance.
Issues
| Issue | Plaintiff's Argument (Schlich) | Defendant's Argument (Broad) | Held |
|---|---|---|---|
| Whether the party opposing § 1782 discovery must prove the foreign tribunal is unreceptive (burden on respondent) | Burden should be on Broad to prove EPO would be unreceptive; absent authoritative proof of unreceptivity, the factor favors discovery | No such bright‑line burden; court should evaluate evidence submitted by both sides; relevance/control issues justify denial | Court of Appeals: No fixed burden on either party; Intel factors are discretionary considerations for the district court to weigh using the parties’ submissions |
| Whether § 1782 discovery was "for use" in the EPO (relevance as statutory threshold) | Schlich: discovery is for use in EPO oppositions and at least generally relevant | Broad: evidence about inventorship is irrelevant because EPO lacks jurisdiction to decide entitlement/inventorship in opposition | Court: Statutory "for use" requirement was assumed met, but district court permissibly considered relevance under Intel factors and found the requested evidence effectively irrelevant to EPO proceedings |
| Whether the district court abused its discretion by denying discovery under Intel factors | Schlich: district court inverted burden and improperly required proof of receptivity; abuse of discretion | Broad: district court properly weighed Intel factors and relied on Broad's evidence showing lack of relevance/receptivity | Court: No abuse of discretion; district court reasonably credited Broad’s evidence and concluded Intel factors weighed against discovery |
| Preservation/waiver of burden argument on appeal | Schlich: preserved the argument below and developed legal standard | Broad: argument not sufficiently developed below and thus waived | Court: Schlich adequately preserved and developed the issue; addressed merits |
Key Cases Cited
- Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 (Sup. Ct. 2004) (sets discretionary factors district courts should weigh under § 1782)
- Euromepa S.A. v. R. Esmerian, Inc., 51 F.3d 1095 (2d Cir. 1995) (endorses requiring authoritative proof that a foreign tribunal would reject § 1782‑obtained evidence)
- In re Chevron Corp., 633 F.3d 153 (3d Cir. 2011) (places burden on respondent to show foreign tribunal unreceptive)
- Akebia Therapeutics, Inc. v. FibroGen, Inc., 793 F.3d 1108 (9th Cir. 2015) (evidence obtained under § 1782 admitted and relied upon by the EPO in opposition)
- In re Clerici, 481 F.3d 1324 (11th Cir. 2007) (examines Intel factors neutrally; no fixed burden placed on parties)