## Facts

- Pronova BioPharma Norge A.S. sued Teva Pharmaceuticals USA, Inc. and other generic manufacturers in an ANDA-related patent infringement action involving omega‑3 drug products.
- During discovery, Teva sought testimony and documents from non-party individuals residing in Norway and Sweden who were outside the court’s subpoena power.
- Teva moved for issuance of letters of request under the Hague Evidence Convention to obtain evidence through the foreign states’ procedures.
- Pronova opposed, contending the requests were overly broad under Norwegian and Swedish limits on evidence-gathering and risked compelled disclosure of attorney–client privileged and similarly protected material.
- The dispute concerned only international discovery mechanics, not the merits of infringement or validity.

## Issues

1. Whether the court should issue letters of request under the Hague Evidence Convention to obtain documents and testimony from non-party witnesses in Norway and Sweden.
2. Whether, and how, the court should narrow or modify the proposed requests to account for burdens and foreign-law constraints.
3. How attorney–client privilege and comparable protections should be addressed in letters of request seeking evidence abroad.

## Decision

- The court granted Teva’s motion in substantial part and authorized issuance of letters of request under the Hague Evidence Convention.
- The court modified the proposed letters to narrow categories of discovery and to require greater specificity as to topics, time frames, and document types.
- The court directed that privilege protections be recognized in the letters, permitting withholding of attorney–client privileged and similarly protected communications, with any disputes subject to later court review.
- The ruling governed discovery only and did not resolve substantive patent claims.

## Legal Principles

- A federal court may use the Hague Evidence Convention to seek evidence from foreign non-parties beyond its compulsory process, particularly when the foreign state is a contracting party.
- Issuance and framing of letters of request are discretionary and should account for international comity and the foreign state’s procedural rules.
- Requests transmitted abroad should be sufficiently particular and limited to avoid overbreadth and undue burden in light of foreign evidence-gathering practices.
- Privilege remains protected when evidence is sought abroad; letters of request may include express language preserving attorney–client privilege and analogous confidentiality protections, with the U.S. court retaining authority to resolve privilege disputes.

## Conclusion

The court permitted Teva to pursue foreign third-party discovery through Hague Evidence Convention letters of request, but required narrowing and express privilege safeguards to balance U.S. discovery needs with comity and foreign legal limits.


Pronova BioPharma Norge A.S. v. Teva Pharms. USA, Inc., 708 F. Supp. 2d 450 (D. Del. 2010)