The Fifth Circuit Court of Appeals has reversed a lower court's order that allowed Motorola to obtain discovery from Advanced Standard Communication (ASC) in a patent infringement case. This decision, issued on October 29, 2026, affects how U.S. courts handle requests for evidence intended for use in foreign legal proceedings, particularly in patent cases.

The case, docket number 26-10747, centers around Motorola's attempt to gather evidence from ASC, which had sued Motorola in European courts for patent infringement. The ruling is significant as it clarifies the standards that U.S. courts must follow when considering such discovery requests.

Background

Motorola Mobility, L.L.C. and its affiliated companies, including Motorola Mobility International Sales, L.L.C., Lenovo (Deutschland) GMBH, and Motorola Mobility Germany GMBH, are the plaintiffs in this case. They were sued by ASC, which purchased a bundle of telecommunications patents from ZTE Corporation on December 31, 2022. Some of these patents are claimed to cover technology used in Motorola's 5G-capable devices.

The dispute began when ASC filed lawsuits against Motorola in the Unified Patent Court (UPC) in Europe and in the Munich District Court I in Germany in Fall 2025. Motorola contended that it did not infringe on ASC's patents and argued that ASC's licensing terms were unfair and unreasonable. To support its defense, Motorola sought access to the unredacted Patent Purchase Agreement (PPA) between ASC and ZTE, which it believed could help establish fair, reasonable, and non-discriminatory (FRAND) licensing terms.

Motorola filed an application for discovery in the Northern District of Texas under 28 U.S.C. § 1782, which allows U.S. courts to assist foreign tribunals by ordering the production of evidence. A federal magistrate judge granted Motorola's request, but this decision was later affirmed by the district court. ASC appealed the decision, leading to the current ruling by the Fifth Circuit.

The Ruling

The Fifth Circuit ruled that the district court had erred in its handling of the discovery request. The court found that the district court should have conducted a de novo review of the magistrate judge’s order, rather than simply reviewing it for clear error. The court stated, "The district court erred legally and analytically by shifting the burden of proof onto ASC to disprove receptivity under Intel factor two."

The Fifth Circuit emphasized that the district court misapplied the burden of proof and did not properly weigh the Intel factors that guide Section 1782 discovery requests. The court noted that the UPC had already denied Motorola's request for the same documents, indicating that the European courts were not receptive to such evidence at this stage. As a result, the Fifth Circuit reversed the lower court's order, stating that the balance now leans toward ASC for protection from the Section 1782 discovery.

Impact

This ruling has significant implications for how U.S. courts will handle similar requests for discovery intended for foreign legal proceedings. It reinforces the principle that U.S. courts should respect the decisions of foreign tribunals and not allow parties to circumvent those decisions through U.S. discovery processes.

Going forward, this case sets a precedent for future Section 1782 applications, particularly in patent disputes where parties seek evidence from U.S. courts for use in foreign litigation. The ruling clarifies that the burden of proof does not rest solely on the respondent to demonstrate that foreign courts would reject the evidence sought.

What's Next

Motorola may still pursue discovery in the European courts if circumstances change, as the Fifth Circuit noted that the German courts might eventually require the sought discovery. However, the current ruling means that Motorola cannot obtain the requested documents through U.S. courts at this time. Details were not available in the court filing regarding any related cases pending.