Key Points

  • The Fifth Circuit reversed a Northern District of Texas order requiring Advanced Standard Communication to give Motorola its unredacted patent purchase agreement with ZTE under 28 U.S.C. § 1782.
  • The court held that a Section 1782 application is the functional equivalent of a dispositive motion, so district judges must review a magistrate judge's ruling de novo when objections are properly raised.
  • The court held that its precedent does not require a Section 1782 respondent to furnish "authoritative proof" for any Intel factor; that standard applies to claims of foreign privilege.
  • The Unified Patent Court's recent denial of the same request weighed against discovery on both foreign receptivity, by reason of prematurity, and circumvention of foreign proof-gathering restrictions.
  • The court said Motorola could seek the document again in the European courts and would have a stronger case for Section 1782 relief if those courts later decline to order it.

The Fifth Circuit on Thursday reversed an order that let Motorola use a U.S. discovery statute to obtain a patent owner's purchase agreement, a document Europe's Unified Patent Court had refused to order. The court held that a Texas federal court had put the burden of proof on the wrong party and gave too little weight to the foreign court's refusal.

Judge Edith Hollan Jones wrote for a panel that also included Judges Southwick and Duncan. The panel reversed a Northern District of Texas order that required Advanced Standard Communication, L.L.C., a Garland, Texas, company that holds patents it bought from ZTE Corporation, to turn over its unredacted purchase agreement. The lower court had faulted ASC for failing to offer "authoritative proof" that European courts would reject the evidence, a burden the appeals court said its precedent does not impose.

The decision also settles a procedural question that had divided district courts within the circuit. The statute at issue, 28 U.S.C. § 1782, lets federal courts order discovery for use in foreign proceedings. The panel held that an application under it is the "functional equivalent" of a dispositive motion, so a district judge must review a magistrate judge's ruling de novo when a party objects.

ASC bought a bundle of telecommunications patents from ZTE on New Year's Eve 2022. Several allegedly cover technology Motorola needs to make 5G-capable devices. After licensing talks failed, ASC sued Motorola in fall 2025 for infringing three patents, one in the Unified Patent Court, the European Union's patent tribunal, and two in Munich District Court I in Germany.

Motorola denied infringement. It also argued that ASC must license the patents on fair, reasonable, and non-discriminatory terms, known as FRAND, and that ASC's royalty demands fell short of that standard. The public, redacted version of ASC's purchase agreement with ZTE refers to "licenses . . . disclosed in Exhibit IV," but the exhibit was not attached, and Motorola sought it to support its FRAND defense.

In December 2025, Motorola applied in the Northern District of Texas for a subpoena seeking five categories of documents. Only the unredacted agreement remained at issue on appeal. The parties agreed ASC had no responsive, non-privileged material for three of the requests, and the appeals court found the fifth moot because ASC had already posted bond in the Unified Patent Court.

In January 2026, Motorola asked the Unified Patent Court for the same agreement. That court denied the request in April, finding that Motorola had "not substantiated the facts which are intended to be proven by the production of the requested documents." It called it "highly doubtful whether [Motorola] can draw any reliable conclusions regarding a reasonable licence from [ASC's patent] purchase price at all," though it said its ruling "does not preclude an order to produce evidence at a later date."

A magistrate judge ordered production in May without acknowledging the European ruling. The magistrate judge found that all four factors from Intel Corp. v. Advanced Micro Devices, the 2004 Supreme Court decision that guides a judge's discretion over Section 1782 requests, favored Motorola. The district court reviewed that order only for clear error and affirmed it, again placing the "authoritative proof" burden on ASC.

Jones wrote that deferential review conflicted with the circuit's view that "a section 1782 proceeding is a stand-alone case with discovery as the end goal and thus unlike a discovery dispute that arises as one piece of a domestic lawsuit that will end with a merits ruling." The panel noted that no material facts were disputed in this case, "but the issues of law persist."

On the merits, the panel held that the "authoritative proof" requirement in a 2010 Fifth Circuit precedent, Ecuadorian Plaintiffs v. Chevron Corp., applies only when a party claims a foreign privilege, and no privilege was at issue. Weighing the Unified Patent Court's order and expert testimony from both sides that German courts would likely rule the same way, the panel concluded that foreign receptivity "balances against" discovery "by reason of prematurity."

The panel also rejected the district court's finding that Motorola "is not concealing an attempt to circumvent foreign proof-gathering restrictions." Jones wrote: "Motorola is certainly not concealing its efforts. It is outright hoping for an end-run around what it perceives as a blockade to the evidence it wants."

The district court had reasoned that the European court could "simply reject the fruit of any section 1782(a) discovery." Jones wrote that the reasoning might have worked if the European courts had not yet ruled. In a footnote, the panel acknowledged there is no requirement to exhaust foreign remedies first, but said Motorola's "race to the district court" while its European request was pending suggested it "was angling for the most favorable venues first."

The panel stressed that Section 1782 "does not impose" a "foreign-discoverability requirement," but it said comity remains a touchstone. It found that the district court "gave short shrift to the potential clash between United States discovery and ongoing litigation in the respective forums abroad."

The panel agreed with the lower court on two factors. Because ASC is a party abroad, the European courts can order it to produce documents themselves, which weighed against Motorola. And producing the agreement would not be unduly burdensome. The panel noted ASC's concern that the agreement might support new damages theories but said speculating about a protective order "would be premature."

The appeal had been expedited, and the opinion reversed the discovery order without directing further proceedings in the district court. The panel wrote that the European courts "may require the sought discovery in the future," and that if they do not, "Motorola will have a stronger case for Section 1782 relief."