On July 22, 2015, in In re: POSCO, the US Court of Appeals for the Federal Circuit granted petitioner's request for a writ of mandamus and directed the district court to conduct a new inquiry into whether the parties' protective order should be modified to permit use of confidential discovered materials in a foreign proceeding. The court held that the new inquiry should include the considerations relevant to a request for evidence under 28 U.S.C. § 1782 and the factors laid out by the Supreme Court in Intel Corp. v. Advanced Micro Devices, 542 U.S. 241 (2004) as well as those relevant to protective orders under Fed. R. Civ. P. 26 and the standard set out by the Third Circuit in Pansy v. Borough of Stroudsburg, 23 F.3d 772 (3d Cir. 1994) (No. 2015-112, (Fed. Cir. July 22, 2015)).

The parties to the appeal were involved in three actions: one in the United States, one in Japan and one in Korea. On April 24, 2012, Nippon Steel & Sumitomo Metal Corp. (Nippon) sued POSCO and its US subsidiary POSCO America Corporation (collectively, POSCO) in the US District Court for the District of New Jersey alleging patent infringement and unfair competition. The court entered a protective order a year later requiring that confidential materials discovered in the action could be used by the receiving party solely for the prosecution or defense of the US action.

Nippon also sued POSCO in Japan for trade secret misappropriation. POSCO responded by filing a declaratory judgment action in Korea countering Nippon's allegations of misappropriation. Because discovery is more restrictive in Japan and Korea, Nippon moved the district court to modify the protective order to provide foreign counsel in the Japan and Korea actions access to documents discovered in the United States.

The Special Discovery Master issued a letter opinion concluding that the request should be granted under the framework laid out by the US Court of Appeals for the Third Circuit in Pansy v. Borough of Stroudsburg (23 F.3d 773 (3d Cir. 1994)). The Pansy decision addressed the modification of a protective order under Rule 26 but not in the context of providing documents to foreign courts. Over POSCO's objection, the district court affirmed the Special Master's ruling and granted Nippon's motion to modify the protective order. However, neither the Special Master nor the district court addressed the use of discovery in foreign proceedings or the role that 28 U.S.C. § 1782 and the factors laid out by the Supreme Court in Intel Corp. v. Advanced Micro Devices, Inc. should play in the analysis (542 U.S. 241 (2004)). POSCO sought a writ of mandamus to review the district court's order.

In a matter of first impression, the Federal Circuit granted POSCO's petition, vacated the order and directed the district court to conduct the proper assessment on Nippon's motion to modify, giving due consideration to the Intel factors. The court first noted that a writ of mandamus was available to POSCO as a means of immediate appellate review of a discovery order, especially one that raised a novel and important issue as in this case.

The court clarified that the question before it was the role of 28 U.S.C. § 1782, which governs production of documents for use in a foreign proceeding, in the present dispute. Intel provided additional guidance on this point, including factors to guide the district court in whether it was appropriate to provide evidence for use in foreign proceedings. The court concluded that, while 28 U.S.C. § 1782 may not directly govern requests to modify a protective order to make material available in a foreign proceeding, no fewer than three district courts acknowledged that the statute and related Intel analysis were relevant in such an inquiry. The Intel factors include:

Thus the court concluded that while 28 U.S.C. § 1782 may not directly govern the dispute at issue, the considerations of the statute and Intel were relevant, as were the considerations set out by the Third Circuit in Pansy.