The U.S. Court of Appeals for the Third Circuit recently issued an opinion holding that when a district court has ordered discovery under 28 U.S.C. § 1782, but has not yet conclusively defined the scope of that discovery, the decision is not “final” and thus may not be appealed under 28 U.S.C. § 1291. The opinion arises in the context of ongoing patent litigation in South Korea between Amgen and Celltrion regarding Celltrion’s denosumab biosimilar.
Section 1782 allows U.S. district courts to order discovery “for use in a proceeding in a foreign or international tribunal,” provided that the applicant shows the target of the discovery “resides or is found” in the relevant district. 28 U.S.C. § 1782(a). After bringing suit against Celltrion Inc. in South Korea, Amgen filed a Section 1782 application in the District Court for the District of New Jersey, seeking to subpoena Celltrion USA for documents and testimony related to Celltrion Inc.’s Korean denosumab product. The Section 1782 application was granted, and Celltrion USA appealed.
In the opinion, the Third Circuit noted that while discovery orders are usually not “final” under Section 1291, orders under Section 1782 are different because they are limited to the resolution of a discovery dispute: once the district court has resolved the Section 1782 discovery dispute, there is no further case or controversy before the district court, and the decision is immediately appealable. The Court noted, however, that the present dispute had not yet been fully resolved. While an order had been granted allowing the discovery, the lower court had not yet defined the scope of the permissible discovery, and this open question precluded a final resolution of the issue. Thus, because the Section 1782 order had permitted discovery but declined to define the scope of the discovery, it was not “final” for the purposes of Section 1291 and the Third Circuit lacked jurisdiction to hear the appeal. In its opinion, the Court noted that both the Ninth and Fifth Circuits have addressed very similar circumstances and have come to the same conclusion.