Fifth Circuit Reverses Motorola Section 1782 Order
The US Court of Appeals for the Fifth Circuit on 29 October reversed a discovery order in Motorola v Advanced Standard Communication (ASC), No. 26-10747. Granted under 28 U.S.C. § 1782, the order required ASC to hand over the unredacted agreement under which it bought patents from ZTE, with exhibits, for Motorola's FRAND defence at the Unified Patent Court (UPC) and in Germany.
## Background
ASC bought a bundle of telecoms patents from ZTE on 31 December 2022.
After licence talks with Motorola failed, it sued over three patents in autumn 2025: one at the UPC and two before the Munich District Court I. Motorola Mobility, Lenovo (Deutschland) and two related companies deny infringement and argue that ASC's royalty demands are not FRAND. The redacted public version of the purchase agreement refers to licences disclosed in Exhibit IV, which Motorola hoped would show FRAND terms.
In December 2025 Motorola applied for Section 1782 discovery in the Northern District of Texas, where ASC is headquartered, and in January 2026 asked the UPC for the same agreement. The UPC refused in April, finding the facts to be proven insufficiently substantiated and calling it highly doubtful that a reasonable royalty could be inferred from a purchase price, while leaving room for an order at a later stage. In May a US magistrate judge nonetheless ordered production, and the district court affirmed on clear-error review.
The Fifth Circuit's reasons
- Standard of review: a Section 1782 application is a stand-alone case and the functional equivalent of a dispositive matter, so the district court should have reviewed the magistrate judge's order de novo.
- Burden of proof: requiring ASC to give authoritative proof that the European courts would reject the evidence was wrong; the circuit has never placed that burden on a respondent.
- Receptivity: the UPC had already ruled on the same document and left the door open for a later order, so US discovery now was premature.
- Circumvention: with the UPC's refusal on record and German courts likely to follow, Motorola's request amounted to an end-run around the European proceedings.
ASC is a party in Europe, where the courts can order it to produce documents directly, which also counted against Motorola; the finding that production would not be unduly burdensome stood. Weighing the factors afresh, the court reversed.
This is not a blanket bar. The court stressed that Section 1782 has no foreign-discoverability requirement. If the UPC or German courts need the documents later, Motorola can renew its request there, and a new Section 1782 application is possible on a significant change in circumstances, with a stronger case.
J&C recommends that Chinese companies facing standard essential patent suits at the UPC or in Germany who want the other side's US documents for a FRAND defence first set out, before the European court, the specific facts to be proven and why the documents are needed, timed to the right stage of the case. Turning to US Section 1782 discovery straight after a European refusal is likely to be seen as circumventing European evidence rules.
Source: www.ca5.uscourts.gov
