Akebia Therapeutics, Inc. v. Fibrogen, Inc.

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
AKEBIA THERAPEUTICS, INC.,
Petitioner-Appellee,
v.
FIBROGEN, INC.,
Respondent-Appellant.
No. 15-15274
D.C. No.
3:14-mc-80294-JD
OPINION
Appeal from the United States District Court
for the Northern District of California
James Donato, District Judge, Presiding
Argued and Submitted
July 8, 2015—San Francisco, California
Filed July 16, 2015
Before: Susan P. Graber and Paul J. Watford, Circuit
Judges, and Paul L. Friedman,* District Judge.
Opinion by Judge Graber;
Concurrence by Judge Watford
* The Honorable Paul L. Friedman, United States District Judge for the
District of Columbia, sitting by designation.

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AKEBIA THERAPEUTICS V. FIBROGEN 2
SUMMARY**
Discovery
The panel affirmed the district court’s order granting an
ex parte application, filed by Akebia Therapeutics, Inc.,
pursuant to 28 U.S.C. § 1782, for discovery in aid of foreign
proceedings.
Title 28 U.S.C. § 1782 permits any “interested person” to
file an application in the district court requesting that the
court order another person to produce testimony or
documents for use “in a proceeding in a foreign or
international tribunal.”
FibroGen, Inc. is the owner of certain foreign patents.
Akebia disputed the validity of FibroGen’s European and
Japanese patents, and initiated opposition proceedings in both
the European Patent Office and the Japanese Patent Office.
In its application to conduct discovery, Akebia sought
permission to serve FibroGen with document and deposition
subpoenas relating to the pending foreign proceedings.
The panel held that Akebia was an “interested person”
seeking to invoke the discovery mechanism set forth under
§ 1782. The panel held that Akebia, which is a party to the
foreign proceedings underlying this case, had a “reasonable
interest” in obtaining judicial assistance, and therefore, could
apply for judicial assistance pursuant to § 1782. The panel
also held that Akebia demonstrated it had Article III standing
** This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.

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AKEBIA THERAPEUTICS V. FIBROGEN 3
to invoke the power of a federal court where Akebia had an
individualized, legally protected interest in receiving the
information it sought, and it demonstrated an “injury in fact”
caused by FibroGen’s failure to disclose.
The panel held that both the European and Japanese
Patent Offices were “foreign or international tribunal[s]”
within the meaning of § 1782. The panel also held that the
scope of discovery permissible under § 1782 was not limited
by certain later-enacted provisions of the Leahy-Smith
America Invents Act. Finally, the panel held that the district
court was not required to address explicitly every factor or
argument, and the district court properly exercised its
discretion in granting the application.
Judge Watford concurred, joining the opinion in full,
except for the paragraph addressing Article III standing.
COUNSEL
Philip L. Hirschhorn (argued), Buchanan Ingersoll & Rooney
PC, New York, New York; S. Lloyd Smith, Todd R. Walters,
Buchanan Ingersoll & Rooney PC, Alexandria, Virginia;
Steven A. Ellis, Goodwin Procter LLP, Los Angeles,
California, for Respondent-Appellant.
Lawrence D. Rosenberg (argued), Jones Day, Washington,
D.C.; Gregory Louis Lippetz, Jones Day, Palo Alto,
California; J. Patrick Elsevier, Jones Day, San Diego,
California, for Petitioner-Appellee.

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AKEBIA THERAPEUTICS V. FIBROGEN 4
OPINION
GRABER, Circuit Judge:
Respondent FibroGen, Inc., appeals the district court’s
order granting an ex parte application, filed by Petitioner
Akebia Therapeutics, Inc., pursuant to 28 U.S.C. § 1782, for
discovery in aid of foreign proceedings. The district court
held, among other things, that Akebia was an “interested
person” within the meaning of § 1782 and that the Japanese
and European Patent Offices are “tribunals” to which § 1782
applies. It therefore granted Akebia’s application.
Reviewing the district court’s decision for abuse of
discretion, Four Pillars Enters. Co. v. Avery Dennison Corp.,
308 F.3d 1075, 1078 (9th Cir. 2002), we affirm.
FibroGen is a biotechnology company based in San
Francisco, California. It is the owner of certain foreign
patents, two of which are relevant to this appeal: European
Patent No. EP 1 463 823 and Japanese Patent No. 4804131.
Both patents concern the use of various chemical compounds
in treating anemia. Akebia, a biopharmaceutical company
that develops products using similar chemical compounds,
disputes the validity of FibroGen’s European and Japanese
patents and, accordingly, has initiated opposition proceedings
in both the European Patent Office and the Japanese Patent
Office. Neither Office has established procedures through
which Akebia may seek discovery of potentially relevant
information located in the United States for use in those
foreign proceedings.
Pursuant to 28 U.S.C. § 1782, Akebia filed, in the United
States District Court for the Northern District of California,
an application to conduct discovery in aid of foreign

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proceedings. Specifically, Akebia sought permission to serve
FibroGen with document and deposition subpoenas relating
to the pending foreign proceedings and relating to “additional
foreign adversarial proceedings being contemplated by
Akebia.” The district court granted Akebia’s application but
imposed a restrictive protective order because of the
confidential nature of the information sought. FibroGen
timely appeals.
Title 28 U.S.C. § 1782 permits any “interested person” to
file an application in the district court requesting that the
court order another person to produce testimony or
documents for use “in a proceeding in a foreign or
international tribunal.” The statute’s purpose is twofold: to
“provid[e] efficient assistance to participants in international
litigation” and to “encourag[e] foreign countries by example
to provide similar assistance to our courts.” Intel Corp. v.
Advanced Micro Devices, Inc., 542 U.S. 241, 252 (2004)
(internal quotation marks omitted). In this appeal, FibroGen
argues that (1) Akebia is not an “interested person” within the
meaning of § 1782, (2) neither the European Patent Office
nor the Japanese Patent Office is a “tribunal” to which § 1782
applies, (3) the scope of discovery permissible under § 1782
is limited by certain later-enacted provisions of the Leahy-
Smith America Invents Act (“AIA”), and (4) the district court
abused its discretion by failing to consider certain factors in
its decision to order discovery. We address each of those
arguments in turn.
1. “Interested Person” and Standing
An “interested person” seeking to invoke the discovery
mechanism set forth under § 1782 may include “’not only
litigants before foreign or international tribunals, but also

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foreign and international officials as well as any other person
whether he be designated by foreign law or international
convention or merely possess a reasonable interest in
obtaining [judicial] assistance.’” Intel, 542 U.S. at 256–57
(quoting Hans Smit, International Litigation Under the
United States Code, 65 Colum. L. Rev. 1015, 1027 (1965)).
Akebia is a party to the foreign proceedings underlying this
case; indeed, it is the entity that seeks to invalidate
FibroGen’s European and Japanese patents because of their
potential effect on the nature of the products that Akebia
develops. Accordingly, Akebia has a “reasonable interest” in
obtaining judicial assistance and, therefore, may apply for
judicial assistance pursuant to § 1782.
Because Akebia seeks to invoke the power of a federal
court, it also must demonstrate that it has standing to do so
under Article III. See Vivid Entm’t, LLC v. Fielding,
774 F.3d 566, 573 (9th Cir. 2014) (noting that “’any person
invoking the power of a federal court must demonstrate
standing to do so’” (quoting Hollingsworth v. Perry, 133 S.
Ct. 2652, 2661 (2013))). FibroGen contends that Akebia
lacks standing because it cannot show an individualized,
legally protected interest. But Akebia has an interest in
receiving the information that it seeks, and it has a statutory
right, as an “interested person” under § 1782, to receive that
information. It has demonstrated an “injury in fact,” caused
by FibroGen’s failure to disclose, which suffices to satisfy
Article III. See Fed. Elections Comm’n v. Akins, 524 U.S. 11,
21 (1998) (noting that a person generally suffers an injury in
fact when that person fails to obtain information that,
pursuant to a statute, must be disclosed (citing Pub. Citizen v.
U.S. Dep’t of Justice, 491 U.S. 440, 449 (1989))).

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2. Foreign or International “Tribunal”
FibroGen’s second argument pertains to the meaning of
the word “tribunal” as it is used in § 1782. Specifically,
FibroGen argues, because the proceedings in the European
and Japanese Patent Offices are not court proceedings and
“do not resemble civil trials,” those entities cannot be
considered “tribunals” to which § 1782 applies. We disagree.
A “proceeding in a foreign or international tribunal”
within the meaning of § 1782 “’is not confined to proceedings
before conventional courts,’ but extends also to
‘administrative and quasi-judicial proceedings.’” Intel,
542 U.S. at 249 (quoting S. Rep. No. 1580, at 7 (1964)).
Both of the foreign patent offices here conduct quasi-judicial
proceedings. Those proceedings take place within the agency
but carry many of the hallmarks of traditional judicial
proceedings: serving as first-instance decision-makers tasked
with resolving patent validity disputes, id. at 257, collecting
and reviewing evidence in order to resolve those disputes, and
permitting their decisions to be appealed and become subject
to further review. Just as in Intel, we see “no warrant [for this
court] to exclude” the foreign proceedings here from the
ambit of § 1782. Id. at 258; see also id. (“The term ‘tribunal’
includes investigating magistrates, administrative and arbitral
tribunals, and quasi-judicial agencies, as well as conventional
civil, commercial, criminal, and administrative courts.’”
(alterations omitted) (quoting Smit, 65 Colum. L. Rev. at
1026 n.71)).
3. Leahy-Smith America Invents Act
FibroGen next argues that the scope of § 1782 should be
construed together with the provisions of the later-enacted

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AIA, which amended the Lanham Act to provide for, among
other things, post-grant review proceedings in the U.S. Patent
& Trademark Office (“USPTO”). See Leahy-Smith America
Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011).
FibroGen views Congress’ decision to enact those provisions
of the AIA, which it believes “severely limit discovery for
U.S. patent proceedings” in the USPTO, to signal a
congressional intent to limit the scope of discovery
permissible in proceedings worldwide. Thus, according to
FibroGen, reading § 1782 to permit discovery in these foreign
proceedings would conflict—in text, structure, and purpose—
with the current state of patent law.
FibroGen overstates the tension, if any, that exists
between § 1782 and the AIA. Section 1782 applies to any
“proceeding in a foreign or international tribunal,” including
a criminal proceeding. It does not exclude patent
proceedings, and it makes no mention of proceedings in
United States courts. As noted above, the statute has two
broad purposes: (1) to assist participants in international
litigation, and (2) to encourage foreign countries to provide
similar assistance to litigation in the United States. Intel,
542 U.S. at 252. Neither of those purposes affects domestic
proceedings in the USPTO.
The AIA, by contrast, is far more limited. It revised
existing “inter partes review” proceedings and created an
entirely new administrative proceeding titled “post-grant
review,” available for certain patent claims upon a certain
threshold showing of merit. See AIA, 125 Stat. at 299, 306.
Although it limits discovery with respect to the former, it
permits discovery of any “evidence directly related to factual
assertions advanced by either party” in a post-grant review
proceeding. 125 Stat. at 308. The AIA applies only to

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AKEBIA THERAPEUTICS V. FIBROGEN 9
proceedings conducted in the United States, making no
mention of foreign proceedings.
We see no apparent conflict, and certainly not an
“irreconcilable” one, between § 1782 and the AIA. See
Morton v. Mancari, 417 U.S. 535, 551 (1974) (requiring an
“irreconcilable conflict” to justify a repeal by implication and
noting that the “intention of the legislature to repeal ‘must be
clear and manifest’” (quoting United States v. Borden Co.,
308 U.S. 188, 198 (1939))). We therefore hesitate to read
into the AIA any intent to impliedly repeal, or limit the scope
of, an unrelated statutory provision. See id. The district court
properly applied § 1782 to the foreign patent office
proceedings underlying this case.
4. District Court’s Exercise of Discretion
Finally, FibroGen contends that the district court abused
its discretion by giving “short shrift” to the nonexclusive
factors that the Supreme Court set forth in Intel, and to
“other factors, such as the effect broad discovery in patent
proceedings would have in the United States contrary to the
express intent of Congress.” We are not persuaded. It is
clear from the transcript that the district court considered the
nature of the foreign proceedings, the receptivity of the
foreign government to discovery, the nature of foreign proof-
gathering restrictions, and the intrusive nature of the
requested production, in granting Akebia’s request. See Intel,
542 U.S. at 264–65 (noting that courts should consider those
factors in ruling on a § 1782 application). The court rejected,
with some discussion, FibroGen’s argument that the
application was overly burdensome and not narrowly tailored.
See id. at 265. It recognized the highly confidential nature of

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the information that Akebia seeks to obtain and entered a
restrictive protective order to guard against disclosure.
The district court was not required to address explicitly
every factor or argument, nor was it required to issue a
written order. See United States v. Sealed 1, 235 F.3d 1200,
1206 (9th Cir. 2000) (noting the broad discretion afforded the
district courts under § 1782 and the lack of specific guidance
with which to exercise that discretion). The district court
properly exercised its discretion in granting the application.
In summary, the district court permissibly granted
Akebia’s application for discovery in aid of a foreign
proceeding. Both the European Patent Office and the
Japanese Patent Office are “tribunals” within the meaning of
28 U.S.C. § 1782, and Akebia, as the party challenging the
validity of the foreign patents, is an “interested person” that
is allowed to seek judicial assistance.
AFFIRMED.
WATFORD, Circuit Judge, concurring:
I join the opinion in full, except for the paragraph
addressing Article III standing.

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