          United States Court of Appeals
                      For the First Circuit


No. 17-1377

              IN RE: APPLICATION OF GEORGE W. SCHLICH

                        GEORGE W. SCHLICH,

                      Petitioner, Appellant,

                                v.

              THE BROAD INSTITUTE, INC., FENG ZHANG,
                     NAOMI HABIB, and LE CONG,

                      Respondents, Appellees.


          APPEAL FROM THE UNITED STATES DISTRICT COURT
                FOR THE DISTRICT OF MASSCHUSETTS

         [Hon. F. Dennis Saylor IV, U.S. District Judge]


                              Before

                  Torruella, Lipez, and Kayatta,
                          Circuit Judges.


     Melissa Arbus Sherry, with whom Michael A. Morin, Ryan C.
Grover and Latham & Watkins LLP were on brief, for appellant.
     Raymond N. Nimrod, with whom William B. Adams, Matthew D.
Robson and Quinn Emanuel Urquhart & Sullivan LLP were on brief,
for appellees.


                           June 20, 2018
              TORRUELLA,   Circuit      Judge.        Petitioner-Appellant

George W. Schlich, a patent agent for Intellia Therapeutics, Inc.,

appeals   from    the   district   court's   denial   of   a   petition   for

discovery under 28 U.S.C. § 1782.          That statute allows a party to

file a petition in district court to obtain discovery for use in

a   foreign    proceeding. 1    Here,   Schlich   sought   discovery      from

Respondents-Appellees The Broad Institute, Inc., Dr. Feng Zhang,

Dr. Naomi Habib, and Dr. Le Cong (collectively, "Broad") in

relation to opposition proceedings currently before the European

Patent Office ("EPO").2        In the opposition proceedings, Schlich

challenges the validity of several of Broad's European patents

involving CRISPR-Cas9 technology used in the programmable genome

editing of mammalian cells.          Schlich contends that the district


1   28 U.S.C. § 1782(a) provides in pertinent part:

      The district court of the district in which a person
      resides or is found may order him to give his testimony
      or statement or to produce a document or other thing for
      use in a proceeding in a foreign or international
      tribunal, including criminal investigations conducted
      before formal accusation. The order may be made pursuant
      to a letter rogatory issued, or request made, by a
      foreign   or   international   tribunal  or   upon   the
      application of any interested person and may direct that
      the testimony or statement be given, or the document or
      other thing be produced, before a person appointed by
      the court.
2  An opposition proceeding before the EPO "allows any member of
the public to challenge a European patent within nine months of
its grant."


                                     -2-
court erred in requiring him to prove the EPO's receptivity to the

district court's assistance in providing the requested discovery,

and in denying the request for discovery under § 1782 for lack of

relevance to the foreign proceeding.        After careful consideration,

we affirm.

                              I.   Background

A. Factual Background

             The   Broad   Institute,    Inc.   is   a   nonprofit   medical

research organization founded in 2003 by Eli and Edythe Broad,

alongside Harvard University, Harvard-affiliated hospitals, and

the Massachusetts Institute of Technology.           The nonprofit launched

in 2004, focusing on the development of genomic research for the

advancement of medical science.         Dr. Feng Zhang is a member of the

Broad Institute, and both Dr. Naomi Habib and Dr. Le Cong are

Postdoctoral Associates who worked with Dr. Zhang.               Dr. Zhang

dedicates part of his research to the CRISPR-Cas9 system for genome

editing.

             Intellia is a "genome editing company" whose primary

focus is the development of "potentially curative therapeutics"

using the CRISPR-Cas9 system.             Schlich is a European patent

attorney providing legal services to Intellia in the EPO opposition

proceedings against four of Broad's patents related to CRISPR-

Cas9.   Dr. Jennifer Doudna is a founding member of Intellia, and


                                    -3-
the   company   holds       an   exclusive   license   to     Dr. Doudna's

intellectual property in the CRISPR-Cas9 therapeutics field.

          The CRISPR-Cas9 system emerged from research on certain

bacteria that can precisely target and "carve up" genetic material.

When applied to human DNA, the potential curative value of this

technology is allegedly tremendous, and its potential worth is

estimated to be in the billions of dollars.

          Dr. Doudna and Dr. Emmanuelle Charpentier led a team

working on the bacteria associated with the CRISPR-Cas9 technology

and, on May 25, 2012, filed a provisional patent application3 at

the United States Patent and Trademark Office ("U.S.P.T.O.") for

certain   "methods    and    compositions"   for   "DNA     modification."

Additionally, they published an article describing their findings

in June 2012.   See Martin Jinek et al., A Programmable Dual-RNA-

Guided DNA Endonuclease in Adaptive Bacterial Immunity, 337(6096)

Science 816 (2012).




3  A provisional patent application "serves as a placeholder with
the [U.S.P.T.O.] that grants the applicant 'the benefit of
priority' for an invention," United States v. Camick, 796 F.3d
1206, 1218 (10th Cir. 2015) (quoting U.S. Patent & Trademark
Office, Manual of Patent Examination Procedure § 201.04 (9th ed.
2014)), if the applicant subsequently files a non-provisional
application within a certain period of time, see Chinsammy v.
United States, 417 F. App'x 950, 951 (Fed. Cir. 2011) (citing
35 U.S.C. §§ 119, 154).


                                    -4-
           On October 5, 2012, Dr. Zhang and other members of the

Broad team, including Dr. Habib and Dr. Le Cong, submitted a

manuscript that "reported the first successful programmable genome

editing of mammalian cells using CRISPR-Cas9."            On December 12,

2012, Broad filed its first provisional patent application with

the U.S.P.T.O. relating to genomic sequence manipulation, and

subsequently   filed    several    other    related   provisional   patent

applications in the following months.

           Based on two provisional patent applications filed by

Broad in December 2012 and January 2013, Thomas Kowalski, a U.S.

Patent   Attorney,     filed   a   Patent   Cooperation   Treaty    ("PCT")

application4 on behalf of Broad.       Since Broad's provisional patent

applications included various inventions, Kowalski and Dr. Smitha

Uthaman conducted an inventorship study to determine the different

inventions and the corresponding contributions from each inventor.

Subsequently, Broad filed ten separate PCT applications.               The

subject matter of the initial provisional patent applications was

divided among these PCT applications listing different inventors

and a "divided priority" based on the findings of the inventorship



4   A PCT application, also known as an international patent
application, allows an applicant to simultaneously seek protection
for an invention in over 150 countries. See World Intellectual
Prop. Org., http://www.wipo.int/pct/en/ (last visited June 8,
2018).


                                     -5-
study.     Eventually, the PCT applications resulted in several

European patents, which Intellia now challenges at the EPO.

           Schlich   filed    oppositions   with     the    EPO   seeking   the

revocation of four of Broad's European patents.            At the opposition

proceedings, Schlich argued, among other things, that Broad's

European   patents   cannot    claim   right    of   priority     to   Broad's

provisional patent applications filed with the U.S.P.T.O. because

the applicants listed in the latter are not the same as those

listed in the subsequent PCT applications, as is required by

European patent law.    In response, Broad argued that United States

law, and not European law, should determine whether its European

patents can claim priority to the provisional applications because

those provisional patent applications were filed in the United

States.    According to Broad, United States law allows multiple

inventions to be disclosed and multiple inventors to be listed in

a provisional application without requiring that every inventor

have contributed to every invention.           The right of priority from

that provisional application could then be severed into different

PCT applications without requiring complete identity between the

inventors listed in both applications, as long as the applicant

"claim[s] priority in [the PCT] application with regard to an

invention to which [he or she] contributed."               In support of its

contention that the proper procedure was followed here, Broad


                                   -6-
submitted a declaration from Kowalski describing the process he

followed and the findings of his inventorship study.

B. Procedural History

             In September 2016, Schlich filed an application for

discovery under 28 U.S.C. § 1782 in the United States District

Court for the District of Massachusetts.           Schlich sought documents

and testimony from Broad.            The discovery sought focused on the

inventorship study conducted by Kowalski and Dr. Uthaman, as well

as the assignment of the relevant rights over the corresponding

inventions.        Broad opposed discovery and a hearing was held on

October 24, 2016.          At the hearing, the parties disputed, among

other things, whether the discovery sought was relevant to the EPO

proceedings and whether the EPO would be receptive to the requested

discovery.        Broad informed Schlich and the court that it would

submit a request to the EPO to confirm "that the EPO is not

receptive to the discovery sought by [] Schlich."             Broad filed the

request on October 31, 2016.

             On    November   1,     2016,   the   district   court   ordered

supplemental       briefing   after   noting   that   the   parties   had   not

addressed the issue of the EPO's receptivity to the district

court's assistance in providing the requested discovery prior to

the   hearing. 5     The   parties    then   submitted   their   supplemental


5   The supplemental briefing order directed the parties to address

                                       -7-
briefs.         Broad's submission included a declaration from a former

EPO official, who stated that the issue presented by Schlich in

his § 1782 application "is a potential dispute over inventorship"

or "entitlement," yet, "the EPO has no authority or jurisdiction

to resolve issues of entitlement," including "whether inventorship

is   or    is     not   correct."       The   declarant     thus   concluded       that

"discovery relating to this issue would not be considered relevant

and therefore would not be considered by the EPO."                  On December 9,

2016,     the     district     court    denied    Schlich's      petition     without

prejudice.        In re Schlich, 2016 WL 7209565 (D. Mass. Dec. 9, 2016).

It found that three of the four statutory requirements of § 1782

were met -- including that the discovery be "for use" in a foreign

proceeding        --    and   assumed   without       deciding   that   the    fourth

requirement was also satisfied.                  Id. at *3.        The court then

considered the factors established by the Supreme Court in Intel

Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 (2004) (the

Intel factors) and concluded, inter alia, that "because the EPO

will      not    make    a    determination      as    to   inventorship      in   the

[o]pposition proceeding[s]," Schlich had not demonstrated that the


the EPO's receptivity issue, including the following questions:
"(1) why the Kowalski affidavit was submitted to the EPO,
(2) whether the EPO has authority or jurisdiction to resolve issues
of inventorship in the pending proceeding, and (3) if it does not
have such authority or jurisdiction, how the EPO would be receptive
to this Court's assistance in providing the requested discovery."


                                          -8-
discovery sought was "relevant" to the opposition proceedings and

thus had "failed to show that the EPO would be receptive to the

Court's assistance."         In re Schlich, 2016 WL 7209565 at *6.

Relying heavily on this reasoning, the court denied Schlich's

petition, but clarified that if it became clear that the EPO would

be receptive to the assistance of the court, or if fairness

otherwise required that the decision be reconsidered, Schlich

could renew his petition.       Id. at *7.

           On March 15, 2017, the district court denied Schlich's

Motion for Reconsideration.           Schlich timely appealed.          Shortly

after the notice of appeal was filed, the EPO issued a preliminary

and   non-binding   opinion     and    summoned     the    parties    for   oral

proceedings.

                              II.     Discussion

A. Standard of Review

           Because § 1782 is a mechanism for obtaining discovery,

and "[t]he trial court is in the best position to weigh fairly the

competing needs and interests of parties affected by discovery,"

Seattle   Times   Co.   v.   Rhinehart,      467   U.S.   20,   36   (1984),   we

generally review the grant or denial of a discovery request under

§ 1782 for abuse of discretion, In re Asta Medica, S.A., 981 F.2d

1, 4 (1st Cir. 1992), abrogated on other grounds by Intel Corp.,

542 U.S. at 259-61.     However, if the district court's decision is


                                       -9-
based on an interpretation of the law, we review it de novo.

See Santiago-Sepúlveda v. Esso Standard Oil Co. (P.R.), 643 F.3d

1,   4   (1st   Cir.   2011);   see     also   Consorcio   Ecuatoriano      de

Telecomunicaciones S.A. v. JAS Forwarding (USA), Inc., 747 F.3d

1262, 1268 (11th Cir. 2014); In re Bayer AG, 146 F.3d 188, 191 (3d

Cir. 1998).

B. Section 1782(a)'s statutory requirements and the Intel factors

            Today's § 1782 is the product of over 150 years of

Congressional effort and manifests the intent to provide "federal-

court    assistance    in   gathering    evidence   for    use   in    foreign

tribunals."     Intel Corp., 542 U.S. at 247.         The text of § 1782

provides that granting discovery is proper only if: 1) the person

from whom discovery is sought "resides or is found" in the district

where the court sits; 2) the request seeks evidence (the "testimony

or statement" of a person or the production of a "document or other

thing") "for use in a proceeding in a foreign or international

tribunal"; 3) the request is made by a foreign or international

tribunal or by "any interested person"; and 4) the material sought

is not protected by "any legally applicable privilege."6              28 U.S.C.


6  We note that although the district court and the parties all
make reference to these four requirements as the "statutory
requirements" of § 1782, some circuits only consider the first
three of these as statutory requirements.      See, e.g., Certain
Funds, Accounts and/or Inv. Vehicles v. KPMG, L.L.P., 798 F.3d
113, 117 (2d Cir. 2015). We do not delve into this because it has
not been raised by the parties and, in any event, the statute does

                                   -10-
§ 1782(a).   If all of these statutory requirements are met, the

district court is authorized, but not required, to provide judicial

assistance by permitting discovery. Intel Corp., 542 U.S. at 247;

see 28 U.S.C. § 1782(a) ("The district court . . . may order

. . . .") (emphasis added).

          The district court's discretion to allow discovery if

all § 1782 requirements are met is not boundless.   Rather, district

courts must exercise their discretion under § 1782 in light of the

twin aims of the statute: "providing efficient assistance to

participants in international litigation and encouraging foreign

countries by example to provide similar assistance to our courts."

Intel Corp., 542 U.S. at 252 (quoting Advanced Micro Devices, Inc.

v. Intel Corp., 292 F.3d 664, 669 (9th Cir. 2002)).       The Supreme

Court has identified four discretionary factors that also "bear

consideration" in arriving at a decision.   Id. at 264.     The first

factor to consider is whether the person from whom discovery is

sought is a party to the foreign proceeding, in which case "the

need for § 1782(a) aid generally is not as apparent" because a

"foreign tribunal has jurisdiction over those appearing before it,

and can itself order them to produce evidence."     Id.   The second




prohibit compelling a person "to give his testimony or statement
or to produce a document or other thing in violation of any legally
applicable privilege." 28 U.S.C. §1782(a).


                               -11-
factor, at issue here, was adopted from a Senate Report explaining

that a court "may take into account the nature of the foreign

tribunal, the character of the proceedings underway abroad, and

the receptivity of the foreign government or the court or agency

abroad to U.S. federal-court judicial assistance."                   Id. (citing

S. Rep. No. 88-1580, at 7 (1964), as reprinted in 1964 U.S.C.C.A.N.

3782, 3788 (hereinafter "Senate Report")).                The third factor to

consider is whether the request "conceals an attempt to circumvent

foreign    proof-gathering       restrictions      or    other    policies   of   a

foreign country or the United States."              Id. at 265.     Finally, the

fourth factor addresses whether the request is "unduly intrusive

or burdensome" to the extent that it should either be "trimmed" or

rejected outright.         Id.     In sum, a district court must first

determine whether the statutory requirements are met.                     If they

are, the district court should then consider the four discretionary

factors before arriving at a decision.

C. The district court's decision

             Here,   the    district      court     addressed     the    statutory

requirements and the discretionary Intel factors before arriving

at   its   decision.       It    found    that    the   first    three   statutory

requirements were met, and assumed without deciding that the fourth

requirement was also satisfied.             In re Schlich, 2016 WL 7209565

at *6.     Specifically as to the "for use" requirement, the district


                                         -12-
court noted as "undisputed" that "the material is requested for

use in a pending [o]pposition proceeding before the EPO."           Id. at

*3.     It then considered the Intel factors.           The district court

found that the last two Intel factors weighed in favor of granting

the discovery request because the request was "not obviously

frivolous" nor appeared to be pursued for "improper means," and

because Broad "d[id] not contend that all of the information sought

[was] confidential or would be damaging if revealed" and, in any

event, the court could "narrowly tailor[]" the request and issue

protective orders.     Id. at *6-7.      The district court, however,

found that the first two discretionary factors weighed in favor of

denying the petition.      Id. at *4-5.     Regarding the first Intel

factor, the district court noted that Broad is a party in the

foreign proceeding and, although Drs. Zhang, Habib, and Le Cong

were not named parties, "the information sought from them relates

to their employment with Broad" and "appears to come within the

EPO's jurisdiction."      Id. at *4-5.     With respect to the second

discretionary   factor,   the   court    noted   that    "[t]he   requested

discovery relates to the issue of inventorship," yet inventorship

determinations or disputes regarding inventorship seemed to be out

of the jurisdiction of the EPO in opposition proceedings.           Id. at

*5-6.    The court also noted that Schlich had not shown that the




                                 -13-
requested discovery was relevant to the foreign proceeding.7                       Id.

at *6.     After considering and balancing all of the Intel factors,

the court denied the petition, primarily because it did not appear

that the foreign tribunal would be "receptive to the assistance of

the [c]ourt in providing discovery."              Id. at *7.

             Both parties agree that the only issue on appeal is the

district    court's    interpretation        of   the    second    Intel    factor.

Specifically,       Schlich     argues    that,     as    the     party    opposing

discovery, Broad should have borne the burden of establishing, by

authoritative    proof, 8 that      the   foreign       tribunal   would     not   be

receptive to the discovery sought.                He further claims that the

district    court    erroneously    inverted       the   burden    of     proof    and

required him to provide authoritative proof that the foreign

tribunal would be receptive to the assistance of the court in

obtaining discovery.          Had the district court properly placed the

burden of proof on Broad, Schlich's argument goes, it would have

granted the discovery request because "Broad had not definitively



7  The court's memorandum and order stated that "Broad" had not
demonstrated that the discovery sought was relevant, but it is
evident that the court was referring to "Schlich." Id. at *6.
8  "Authoritative proof" has been defined as proof that provides
"clear directive" of something, such as proof "embodied in a forum
country's judicial, executive or legislative declarations."
Euromepa S.A. v. R. Esmerian, Inc., 51 F.3d 1095, 1100 (2d Cir.
1995).


                                      -14-
and conclusively shown by authoritative proof or otherwise that

the EPO would not be receptive to the discovery."

            Broad urges us to find Schlich's arguments on appeal

waived.    It argues that Schlich did not argue below that Broad

bore the burden to demonstrate that the EPO would be unreceptive

to the requested discovery, "let alone that Broad was required to

submit    'authoritative    proof'   of     the    EPO's    position."        Broad

further argues that Schlich's arguments also fail on the merits

because although Schlich -- as the "party seeking relief" -- did

have the burden to prove the elements of his claim, the district

court never placed the burden on Schlich to provide "'authoritative

proof' of the EPO's receptivity -- indeed, that standard appears

nowhere in the district court's decision."               Instead, Broad posits,

the   district   court's    determination         "was    based    on    undisputed

evidence submitted by Broad" showing that the requested discovery

was irrelevant to the foreign proceedings "and thus did not turn

on the burden of proof."     We first address Broad's waiver argument.

Because   we   conclude    that   Schlich's       arguments       were   adequately

preserved, we then turn to the merits of his arguments.

D. The arguments were adequately preserved

            Broad acknowledges that Schlich addressed the "differing

views" regarding who bore the burden of proof, but claims that he

"did not take a position as to which view was correct" and,


                                     -15-
instead, argued in the district court that, under any of these

views, the second Intel factor weighed in favor of granting the

requested discovery.       Broad further argues that Schlich did not

develop    the   legal   standard    argument   below.   In     consequence,

according to Broad, Schlich has waived the arguments he now makes

on appeal.

             We find the issues adequately preserved below.         Schlich

raised the burden of proof argument in the district court, both in

his writings prior to the hearing and at the hearing.            On several

occasions, Schlich recognized that the First Circuit has yet to

determine the issue, but argued that Broad, as a respondent

opposing     discovery,     should     prove    the   foreign    tribunal's

unreceptivity.     See, e.g., ECF No. 27, Transcript of Hearing at 14

("[O]nce you show that the discovery is relevant . . . then the

burden shifts to the opposing party, to Broad, to demonstrate that

the petition should not be granted."); id. at 18 ("[S]everal . . .

other courts . . . presume that the foreign tribunal will accept

the evidence unless the respondents prove otherwise, in other

words, the burden is on the other side to prove that the Court

won't be receptive."). Furthermore, Schlich sufficiently developed

his legal standard argument by referencing other courts applying

that same standard, and by further characterizing his evidence as

meeting that standard.       See ECF No. 22 at 5 (stating that while


                                     -16-
"Broad    failed       to   offer     any    evidence     that    the    EPO   would   be

unreceptive to the requested discovery, [Schlich] has offered

authoritative          evidence      to     the     contrary")    (emphasis     added).

Therefore, the issues were adequately preserved.                        We thus address

the merits of Schlich's arguments.

E. Merits

               The Supreme Court has not established the appropriate

burden of proof, if any, for any of the discretionary factors, or

the legal standard required to meet that burden.                          Intel Corp.,

542 U.S.       at   264-65;    see    Certain        Funds,    Accounts    and/or   Inv.

Vehicles v. KPMG, L.L.P., 798 F.3d 113, 118 (2d Cir. 2015) (noting

that     the    Intel       opinion       lacks     guidance     regarding     "minimum

requirements or tests to be met").

               It is undisputed that Schlich, as the party seeking

discovery under § 1782, had the burden of establishing that all

the statutory requirements were met in order for the court to even

consider exercising its discretion to grant the requested relief.

See, e.g., Certain Funds, Accounts and/or Inv. Vehicles, 798 F.3d

at 120 (burden on movant to establish the statutory requirements);

Consorcio Ecuatoriano de Telecomunicaciones S.A., 747 F.3d at 1271

(implying       that    the    movant       must     "satisf[y]    the     prima    facie

requirements" of § 1782). Nor do the parties challenge the district

court's conclusion that the first three statutory requirements


                                             -17-
were met here, and that the fourth requirement was presumed to

have been met.     The parties part ways, however, as to what, if

any, burden applies to the second Intel factor, and who bears it.

          There are differing views as to the second Intel factor.

Some courts have ruled that the party opposing discovery bears the

burden of proving that the foreign tribunal would be unreceptive

to the evidence and that, absent such proof, the factor weighs in

favor of granting discovery. See In re Chevron Corp., 633 F.3d 153,

162-63 (3d Cir. 2011) (the party opposing discovery bears the

burden of proof as to the second Intel factor and thus must

"present adequate evidence to support [its] contention" that the

"foreign jurisdiction" is not receptive to the discovery sought);

Euromepa S.A. v. R. Esmerian, Inc., 51 F.3d 1095, 1100 (2d Cir.

1995)   (holding   that   "a   district    court's   inquiry   into    the

discoverability    of   requested    materials   should   consider    only

authoritative proof that a foreign tribunal would reject evidence

obtained with the aid of section 1782. . . .         Absent this type of

clear directive, however, a district court's ruling should be

informed by section 1782's overarching interest in 'providing

equitable and efficacious procedures for the benefit of tribunals

and litigants involved in litigation with international aspects'"

(quoting Senate Report at 3783)).




                                    -18-
               Other courts have required "authoritative proof" of the

receptivity of the foreign tribunal before finding that this factor

weighs in favor of discovery.         See, e.g., In re Babcock Borsig AG,

583 F. Supp. 2d 233, 241 (D. Mass. 2008) (denying discovery until

there    was    an   affirmative    indication    of   the   relevant   foreign

tribunal's       receptivity   to    the     requested   materials,     despite

recognizing it had authority under the statute to allow the

discovery "even in the face of uncertainty about the [foreign

tribunal's] position").

               Still other courts have not specifically placed a burden

of proof on either party as to any of the Intel factors and,

instead, seem to have neutrally analyzed the contentions and

supporting evidence presented by all the parties in deciding

whether to exercise their discretion.             See, e.g., In re Clerici,

481 F.3d 1324, 1335 (11th Cir. 2007) (considering the "particular

factual circumstances" of the case as to the first Intel factor;

looking at the entire record to conclude that there was nothing in

it "to suggest that the district court should have declined to

grant the § 1782 application" as to the second and third Intel

factors; and noting that if the party opposing discovery "wished

to pursue his 'unduly intrusive' argument" under the fourth Intel

factor, that party should have moved the court to limit discovery);

see     also    Consorcio   Ecuatoriano      de   Telecomunicaciones      S.A.,


                                      -19-
747 F.3d at 1271, 1273 (noting that the Supreme Court established

in Intel the "factors to be considered" and refusing to find abuse

of discretion where the party opposing the discovery failed to

substantiate its "blanket claim" that the discovery sought was

unduly burdensome under the fourth Intel factor); Heraeus Kulzer,

GmbH v. Biomet, Inc., 633 F.3d 591, 598 (7th Cir. 2011) (holding

that the district court's denial of discovery was unreasonable

because,   among   other   things,   the   party   opposing   discovery

"refus[ed] to present any evidence" in support of its contention

that granting the discovery request would be burdensome); see also

In re ASML U.S., Inc., 707 F. App'x 476, 477 (9th Cir. 2017)

(second Intel factor met because movant submitted "unrebutted

declarations [] that the foreign tribunals would welcome the

discoverable evidence"); Chevron Corp. v. Shefftz, 754 F. Supp. 2d

254, 261–62 (D. Mass. 2010) (acknowledging there are different

views on who bears the burden of proof on the second Intel factor

and taking "a middle ground between the two views").

           In Intel, the Supreme Court set out a list of factors

-- rather than elements of a claim -- "that bear consideration" by

the district court when it exercises its discretion under the

statute, leaving it up to the district court to assign those

factors weight based on the particular circumstances of each case.

Intel Corp., 542 U.S. at 264.        Because the Supreme Court gave


                                 -20-
great flexibility and discretion to district courts in weighing

the different factors, we believe the Supreme Court did not intend

to place a burden on either party.        Rather, it intended for both

parties to make their arguments as to all of the factors, and for

the district court to then determine whom those factors favor.           In

this sense, we do not see the factors as creating a "burden" for

either party to meet, but rather as considerations to guide the

district court's decision.       Both parties are free to argue their

positions and submit evidence in support thereof, and the district

court is then to consider all of that in weighing these factors.

Of course, a party who relies on a "blanket assertion" or does not

properly   substantiate   its    contentions   runs   the   risk    of   not

persuading the court to exercise its discretion in its favor.

           We understand the Second and Third Circuits' reasoning

for placing the burden of proof on the party opposing discovery,

especially in light of the interest in "providing equitable and

efficacious procedures for the benefit of tribunals and litigants

involved in litigation with international aspects."                Euromepa

S.A., 51 F.3d at 1100 (quoting Senate Report at 3783).                   We,

however, do not believe that such a requirement is necessary to

further these interests.        It is clear that, even if all of the

statutory requirements are met, the district court may still deny

the discovery request if it finds that the weighing of the Intel


                                   -21-
factors favors denial, regardless of whether the respondent has

proffered    reasoning   for   the   district     court   to   exercise   its

discretion.     Likewise, the fact that courts may adjudicate ex

parte petitions under § 1782, see Gushlak v. Gushlak, 486 F. App'x

215, 217 (2d Cir. 2012) (noting that "it is neither uncommon nor

improper for district courts to grant applications made pursuant

to § 1782 ex parte"), and should still consider the Intel factors

regardless of the absence of the respondent, further suggests that

respondent does not bear a burden of proof as to the discretionary

factors.    Furthermore, requiring the party opposing discovery to

present     "authoritative     proof"       of   the   foreign   tribunal's

unreceptiveness, as Schlich proposes, could place pressure on the

foreign tribunal and could exacerbate comity and parity concerns

which "may be important as touchstones for a district court's

exercise of discretion."       Intel Corp., 542 U.S. at 261.        And, if

the opposing party fails to provide such exigent proof, then that

could give carte blanche to the moving party for seeking discovery

that is only marginally relevant to the foreign proceeding, thus

potentially promoting fishing expeditions.             We thus believe that

the construction we have given to the Intel factors is consistent

with the purpose of the statute, as well as with Congress's intent

to give the district court broad discretion to determine whether

discovery is warranted in a specific case.


                                     -22-
           Here, both parties argued and submitted authority in

support of their respective positions as to the EPO's receptivity

to   assistance   from   U.S.   courts.      Schlich    pointed   to   Akebia

Therapeutics, Inc. v. FibroGen, Inc., 793 F.3d 1108, 1112-13

(9th Cir. 2015), where, after the Ninth Circuit affirmed the

district court's grant of discovery pursuant to § 1782, the

evidence obtained pursuant to that order was submitted to the EPO

in an opposition proceeding, and the EPO admitted and relied upon

the evidence obtained with the U.S. court's assistance.                 Broad

tried to rebut Schlich's contention by arguing that Akebia is

distinguishable     inasmuch    as   the    discovery   sought    there   was

relevant to the EPO proceedings in that case, as opposed to the

discovery being sought here which, according to Broad, is not

relevant to these opposition proceedings.         Broad also submitted a

declaration from a former EPO official stating that the EPO lacked

jurisdiction to determine inventorship issues and, thus, that the

evidence sought by Schlich would be irrelevant.            Schlich did not

rebut this evidence. The district court considered these arguments

and evidence and determined that, because it appeared that the EPO

would not make a determination as to inventorship in the opposition

proceedings, the EPO would not be receptive to the evidence sought

by Schlich.       The district court then concluded that, because

Schlich had not demonstrated that the evidence he was seeking was


                                     -23-
relevant, as the evidence in Akebia was, he had failed to convince

the   court    that   the   EPO    would   be   receptive    to    the    court's

assistance.      Contrary to Schlich's assertions, we do not read the

court's decision as placing the burden of proof on Schlich on the

receptiveness issue.         Instead, our reading indicates that the

district court correctly considered all of the arguments and

evidence submitted by both parties, found Broad's position and

supporting      evidence    more   convincing,    and   thus      found   itself

unconvinced that the second Intel factor favored granting the

discovery.

              We note that the district court considered the relevance

of the discovery sought as part of its consideration of the EPO's

receptivity to assistance from U.S. courts under the second Intel

factor.   Broad argues that relevance should instead be treated as

a threshold statutory factor that the applicant must prove before

the court exercises its discretion. We have not had the opportunity

to address the role of relevance in the § 1782 analysis since Intel

was decided, but the Second Circuit has stated that the statutory

requirement prescribing that information be "for use" in a foreign

proceeding incorporates a relevance requirement.                   See Certain

Funds, Accounts and/or Inv. Vehicles, 798 F.3d at 120 n.7; Mees v.

Buiter, 793 F.3d 291, 299 n.10 (2d Cir. 2015).              We agree with the

Second Circuit that "it is difficult to conceive how information


                                      -24-
that is plainly irrelevant to the foreign proceeding could be said

to be 'for use' in that proceeding."          Certain Funds, Accounts

and/or Inv. Vehicles, 798 F.3d at 120 n.7.         Therefore, a request

for discovery under § 1782 that is plainly irrelevant to the

foreign proceeding will fail to meet the statutory "for use"

requirement, and must be denied before the court reaches the

discretionary Intel factors.

              However, even when a discovery request is sufficiently

relevant to be deemed "for use" in a foreign proceeding, there is

nothing that prevents district courts from considering relevancy

under   the    discretionary   Intel   factors,   including   the   second

factor, which focuses on the "nature of the foreign tribunal, the

character of the proceedings underway abroad, and the receptivity

of the foreign government or the court or agency abroad to U.S.

federal-court judicial assistance."       Intel Corp., 542 U.S. at 264.

For example, although evidence may be broadly relevant to the

applicant's claims in a foreign tribunal, the nature of the foreign

proceedings and the rules of the foreign tribunal may relegate the

information to marginal relevance.        Where the information sought

is only marginally relevant, the district court may decide to

exercise its discretion to exclude the evidence because other

concerns outweigh the need for the discovery.        See Mees, 793 F.3d

at 299 n.10 (noting that "[a] request that appears only marginally


                                  -25-
relevant     to    the     foreign    proceeding"         may     be     denied    as   a

discretionary matter because it "may in certain cases suggest that

the   application        'is   made   in    bad    faith,   for        the   purpose    of

harassment,       or   unreasonably        seeks       cumulative       or   irrelevant

materials'" (quoting Euromepa S.A., 51 F.3d at 1101 n.6)); In Re

Green Dev. Corp. S.A. De C.V., No. CCB-15-2985, 2016 WL 640791

(D. Md. 2016) (finding the "for use" requirement satisfied where

petitioner requested discovery in relation to an adverse party's

alleged ex parte communications with the Honduran Supreme Court in

order to submit that discovery to the Honduran Supreme Court and

mitigate the effect of the improper communications, but ultimately

denying the requested discovery under the Intel discretionary

factors because the request was based on "sheer speculation," among

other reasons).

             Here, although the information sought by Schlich may

have been relevant to the EPO opposition proceeding in a general

sense, the district court concluded that limitations on the EPO's

jurisdiction to consider inventorship rendered it irrelevant.

Accordingly, although the district court treated as "undisputed"

Schlich's satisfaction of the "for use" statutory requirement, it

was   well   within      its   discretion         to   conclude    that      the   second

discretionary factor weighed against ordering discovery because

the information sought was irrelevant due to the nature of the


                                           -26-
proceedings before the EPO, and to deny the discovery request based

on that conclusion.

                           III.     Conclusion

           For the reasons stated above, we conclude that the

district court did not misapply the law in denying the requested

discovery under § 1782.     Based on its finding that the requested

discovery would be irrelevant under the second Intel factor and,

thus, that the EPO would be unreceptive to that information, the

district court did not abuse its discretion.9         Furthermore, the

district   court   also   ordered   supplemental   briefing   to   better

apprehend the issues before it and showed foresight and restraint

in denying without prejudice pending further developments. We thus

affirm the district court's order denying discovery under § 1782.

           Affirmed.




9  We decline Broad's invitation to consider the EPO's preliminary
and non-binding opinion of April 13, 2017 -- which stated that the
discovery proceedings underlying this appeal "are based on issues
of entitlement in so far as they attempt to put into question the
inventorship as allocated by the distribution of the contribution
by Mr. Kowalski," and that "the EPO has no power to resolve . . .
matters of entitlement" -- because it was issued after the district
court had rendered its decision and, thus, was not considered or
relied on by the district court.


                                    -27-
