Fifth Circuit Reverses Section 1782 Discovery Order in UPC FRAND Fight
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A US appeals court has told litigants in European standard-essential patent cases that a US court is not a place to reopen a discovery request that the Unified Patent Court (UPC) has just turned down. On 29 October 2026, the Court of Appeals for the Fifth Circuit reversed an order that would have forced a patent owner in Texas to hand over an unredacted patent purchase agreement for use in FRAND proceedings in Europe.
The dispute
Advanced Standard Communication (ASC), based in Garland, Texas, bought a package of telecommunications patents from ZTE at the end of 2022. In autumn 2025 it sued Motorola Mobility and related Lenovo companies over three patents said to cover 5G technology, one case in the UPC and two before the Munich Regional Court I.
Motorola's main defence is non-infringement. In the alternative, it argues that ASC must license the patents on fair, reasonable and non-discriminatory (FRAND) terms and that the royalties demanded are not FRAND. To test that, Motorola wanted the full patent purchase agreement with ZTE, including an exhibit listing existing licences.
Two forums, two answers
Motorola applied in December 2025 to the Northern District of Texas under 28 U.S.C. § 1782, which lets US courts order discovery "for use" in foreign proceedings. In January 2026 it also asked the UPC for the same document. In April the UPC refused, finding the request unsubstantiated and doubting that a purchase price says much about a reasonable licence rate. The UPC added that its ruling did not stop a later request at another stage.
A month later a US magistrate judge ordered production anyway, and the district judge affirmed under a deferential clear-error standard. Both required ASC to give "authoritative proof" that the European courts would not welcome the evidence.
What the Fifth Circuit held
Writing for the panel, Judge Edith Jones identified two kinds of error.
- Standard of review. A Section 1782 application is a stand-alone case whose end goal is discovery, so it is dispositive. A district judge must review a magistrate judge's ruling on it de novo, not for clear error.
- Burden of proof. Nothing in Fifth Circuit law requires the party resisting discovery to provide "authoritative proof" that a foreign court would reject the material. That phrase in earlier case law concerned foreign privilege, which was not at issue here.
Reweighing the four discretionary factors from the Supreme Court's 2004 *Intel v AMD* decision, the panel found that the balance now favours ASC. ASC is a party in Europe, so the European courts can order it to produce documents themselves. The UPC had just looked at the request and declined it "at least not yet". Granting US discovery a few weeks later would look like an end-run around that ruling. The court called the request premature and noted that Motorola can go back to the UPC, or file a fresh Section 1782 application, if circumstances change.
Why it matters
Section 1782 has become a common tool in global FRAND disputes, because European courts allow far less document discovery than US courts. This decision does not close that door. The court stressed that Section 1782 has no rule requiring that the evidence be discoverable abroad. But it tells applicants in Texas, Louisiana and Mississippi that comity counts. If a European court has just refused the same request at the same stage, US judges should hesitate before stepping in.
The ruling also settles a split among district courts in the circuit: magistrate judges' Section 1782 orders now get full de novo review.
Sources
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