Cross-Border IP Litigation Checklist: Forum Mapping, Service and Jurisdiction, Section 1782 Applications, Evidence Transfer, and Judgment Recognition

By Casey Scott McKay · 2025-12-12

This checklist runs a multinational intellectual property dispute from the first commercial complaint to a global settlement, in the sequence the decisions actually arise. It begins with the four maps that identify the national rights, the conduct, the parties, and the evidence, then works through forum selection against a stated remedy objective, service and jurisdiction over foreign entities, section 1782 applications and the defence of them, the conflict between United States discovery and foreign blocking statutes and data protection law, anti-suit relief, and the recognition of whatever is finally obtained. Gate items mark the points where the campaign should stop until a question is answered. The traps are structural rather than doctrinal: filing where the client sits rather than where a remedy would matter, missing the section 1782 window, taking inconsistent positions across forums, and settling one front while four remain open.

IP and Technology > Patent Litigation | Checklist | Published 12 December 2025 - Updated 26 March 2026 | Casey Scott McKay - marksy.us

Summary. This checklist runs a multinational intellectual property dispute from the first commercial complaint to a global settlement, in the sequence the decisions actually arise: the four maps that identify the national rights, the conduct, the parties, and the evidence; forum selection against a stated remedy objective; service and jurisdiction over foreign entities; section 1782 applications and the defence of them; the conflict between United States discovery and foreign blocking statutes and data protection law; anti-suit relief; and the recognition of whatever is finally obtained. Gate items mark where the campaign should stop until a question is answered.

Keywords: cross-border litigation checklist · forum mapping · Hague Service Convention · personal jurisdiction · Rule 4(k)(2) · section 1782 · Hague Evidence Convention · blocking statutes · GDPR Article 48 · anti-suit injunction · ITC section 337 · judgment recognition · New York Convention · global settlement · consistency register

How to use this checklist

| Phase | What it establishes | Who runs it | Gate | |---|---|---|---| | 1. The four maps | Rights, conduct, parties, evidence | Lead counsel and the business | No filing before the maps are complete | | 2. Remedy and forum | What would change the client's position | The business, advised by counsel | Written remedy statement approved | | 3. Service and jurisdiction | Whether the defendant can be reached | Local and lead counsel | Route chosen before the complaint issues | | 4. Evidence abroad | What can be obtained and from whom | Lead counsel | Section 1782 filed before the foreign case hardens | | 5. Foreign law conflicts | What cannot lawfully be produced | Local counsel | Conflict raised before an order issues | | 6. Anti-suit assessment | Whether a contract makes the foreign suit a breach | Lead counsel | No application without a contractual hook | | 7. Coordination | One coherent position everywhere | Consistency coordinator | Every filing checked before issue | | 8. Budget and governance | What the campaign costs in total | Client and lead counsel | Stop rule agreed in writing | | 9. Settlement and recognition | Whether the outcome is enforceable | Lead counsel | Global architecture, all forums named |

The matter. A United States medical device company has discovered a competitor selling an accused product in Germany, the Netherlands, and the United States, assembled in Malaysia from components made in China, and distributed through a Dutch entity. It holds a European patent, a United States patent, and registrations for its mark in the United States and the European Union but not in Malaysia or China. The competitor has written asserting invalidity and has, counsel suspects, obtained the design from a former supplier. The client's chief executive wants "to sue them everywhere," and has not been asked what outcome would actually help.

Phase 1. Build the four maps

[ ] The rights map. Every registered right by jurisdiction, with status, term, renewal dates, and known validity exposure. Include unregistered rights and note that their availability varies enormously by country.
- Why. A dispute cannot be fought in a market where no right was obtained, and this is discovered at the worst possible moment if it is not checked first.
- Trap. The manufacturing jurisdiction is the one most often unregistered, and it is the one where leverage over supply actually sits.
[ ] The conduct map. Where the accused product is designed, made, assembled, tested, warehoused, transited, sold, and used.
- Why. Each act corresponds to a different national right and a different possible remedy, and transit points determine where customs recordation matters.
[ ] The party map. Every entity in the chain, with jurisdiction of incorporation, assets, affiliates, and any United States presence.
- Why. United States presence determines both personal jurisdiction and section 1782 exposure, and it is frequently the only route to evidence.
[ ] The evidence map. Where the documents and the custodians are, whose law governs production, and which jurisdictions impose blocking statutes or data transfer restrictions.
[ ] [Gate] Do not file anywhere until the four maps are complete. They take a week and they determine everything that follows.

Phase 2. State the remedy objective, then choose the forums

[ ] Write one paragraph stating what outcome would change the client's commercial position, and have the business approve it.
- Why. "Sue them everywhere" is not an objective. An injunction covering the market that carries sixty percent of the defendant's revenue is.
- Trap. Counsel who skip this step file in the client's home district, which is the single most common and most expensive error in this area.
[ ] Match forum to objective. Fast injunctive pressure in Europe; territorial breadth at the Unified Patent Court; a border remedy at the ITC under 19 U.S.C. § 1337; damages and discovery in a United States district court, with patent venue confined by 28 U.S.C. § 1400(b); worldwide licence terms in England after Unwired Planet International Ltd. v. Huawei Technologies (UK) Co. Ltd., [2020] UKSC 37; leverage over supply where the factory sits.
[ ] Note that United States injunctive relief is discretionary after eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), while several European systems grant it close to automatically on a finding of infringement.
[ ] Confirm the reach of United States law over the conduct at issue. 35 U.S.C. § 271 for domestic acts and the narrow extensions in sections 271(f) and (g); Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S. 412 (2023), for trademark; and the possibility of foreign damages from domestic infringement after WesternGeco LLC v. ION Geophysical Corp., 585 U.S. 407 (2018).
[ ] Do not plead foreign patent infringement in a United States complaint. Voda v. Cordis Corp., 476 F.3d 887 (Fed. Cir. 2007), forecloses supplemental jurisdiction over it.
[ ] Sequence the filings. Fast forum first to create pressure; damages case in parallel; ITC where imports matter, remembering that the parallel district court action can be stayed at the respondent's election under 28 U.S.C. § 1659.
[ ] [Gate] Record the forum decision and the rejected alternatives in a memorandum. It is the document that answers the board's question eighteen months later.

Phase 3. Service and jurisdiction over the foreign parties

[ ] Check whether a United States affiliate can be served domestically under state law, which takes the case outside the Hague Service Convention entirely under Volkswagenwerk Aktiengesellschaft v. Schlunk, 486 U.S. 694 (1988).
- Why. It saves up to a year, and it is the first question rather than the last.
[ ] Where the Convention applies, lodge the Central Authority request immediately and plan the schedule around it.
- Trap. Service in China routinely takes twelve months or more, and a case timetable that assumes otherwise collapses.
[ ] Consider service by mail where the destination state has not objected and the forum's law permits it, following Water Splash, Inc. v. Menon, 581 U.S. 254 (2017).
[ ] Consider court-ordered alternative service under Fed. R. Civ. P. 4(f)(3), including email and marketplace messaging, where no international agreement prohibits it.
[ ] Do not assume general jurisdiction. Daimler AG v. Bauman, 571 U.S. 117 (2014), and Goodyear Dunlop Tires Operations, S.A. v. Brown, 564 U.S. 915 (2011), confine it to incorporation and principal place of business.
[ ] Plead Fed. R. Civ. P. 4(k)(2) in the alternative for federal claims against a defendant with national but not state-concentrated contacts.
- Trap. It costs a paragraph and is routinely omitted, forfeiting jurisdiction over the foreign manufacturer that matters most.
[ ] Prepare the forum non conveniens response in advance under Piper Aircraft Co. v. Reyno, 454 U.S. 235 (1981), including evidence on the adequacy of the alternative forum.
[ ] [Gate] Confirm the service route and the jurisdictional basis before the complaint issues, not after the first motion.

Phase 4. Section 1782 applications

[ ] Identify every potential target found in a United States district: affiliates, customers, distributors, service providers, banks, logistics providers, and testing houses.
- Why. Non-participants in the foreign proceeding are the strongest targets, because the first Intel factor cuts against applications aimed at participants.
[ ] Confirm the statutory elements of 28 U.S.C. § 1782: the target resides or is found in the district; the material is for use in a foreign or international proceeding; and the applicant is an interested person.
- Note. The foreign proceeding need not be pending, but it must be within reasonable contemplation.
[ ] Address the Intel discretionary factors expressly in the application, following Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 (2004): participation, receptivity, circumvention, and burden.
[ ] Support receptivity with a declaration from foreign counsel.
- Trap. Applications that assert receptivity without evidence draw the sharpest questioning.
[ ] Keep the requests narrow. Breadth is the most common reason a motion to quash succeeds.
[ ] Confirm the foreign proceeding is not a private commercial arbitration, which ZF Automotive US, Inc. v. Luxshare, Ltd., 596 U.S. 619 (2022), places outside the statute.
[ ] File early, ideally before the foreign case hardens and positions are fixed.
- Trap. The window is routinely missed by a year, and the material is worth far less once the foreign pleadings are closed.
[ ] If defending an application, attack the statutory elements, the Intel factors, burden, and privilege, and negotiate a protective order under Fed. R. Civ. P. 26(c) confining use to the foreign proceeding.
[ ] [Gate] Do not begin foreign proceedings before the section 1782 strategy is settled.

Phase 5. Foreign law conflicts on evidence

[ ] Identify blocking statutes and data protection restrictions applying to each custodian, with a written opinion from local counsel rather than an assumption.
[ ] Understand that the Hague Evidence Convention is not exclusive where the court has personal jurisdiction, following Société Nationale Industrielle Aérospatiale v. United States District Court, 482 U.S. 522 (1987).
- Why. United States courts will order production under the Federal Rules regardless of foreign objection, which is what creates the conflict.
[ ] Assess GDPR exposure. Article 48 conditions recognition of foreign orders requiring personal data transfer on an international agreement, and Chapter V restricts transfers generally.
[ ] Raise the conflict with the court early and specifically, with evidence of foreign law, and propose a staged production: unproblematic material first, a Hague request for the remainder, argument on what is left.
- Trap. A conflict raised after an order has issued leaves the client choosing which law to break.
[ ] Minimise and anonymise personal data before any transfer, and document the minimisation.
[ ] Negotiate a protective order that addresses the foreign regulator's proportionality concerns, not merely the opponent's confidentiality concerns.
[ ] [Gate] Confirm no production order will require an act unlawful where the custodian sits.

Phase 6. Anti-suit relief

[ ] Ask first whether a contract makes the foreign action a breach. A forum clause, a licence, a covenant not to sue, or a FRAND undertaking, as in Microsoft Corp. v. Motorola, Inc., 696 F.3d 872 (9th Cir. 2012).
- Why. This is where anti-suit relief is actually granted, and outside it the application usually fails.
[ ] Identify the applicable circuit standard. Permissive, as in Gallo v. Andina Licores S.A., 446 F.3d 984 (9th Cir. 2006), or restrictive, as in China Trade & Development Corp. v. M.V. Choong Yong, 837 F.2d 33 (2d Cir. 1988).
[ ] Establish the threshold elements: same parties, same issues, and a domestic proceeding dispositive of the foreign one.
[ ] Plan for the anti-anti-suit response, which in standard-essential disputes is now routine.
[ ] Weigh the signal. An anti-suit application reads as an expectation of losing abroad, and where the merits are strong the better course is to litigate them.
[ ] [Gate] No anti-suit application without a contractual hook and a considered answer to the escalation problem.

Phase 7. Coordination across the forums

[ ] Appoint a consistency coordinator with authority to hold any filing in any jurisdiction.
- Why. Inconsistency across forums is the most common self-inflicted wound in this practice, and nobody owns it by default.
[ ] Maintain a consistency register listing every substantive position taken anywhere: claim scope, the state of the art, dates of first use, inventorship, valuation, and the reason a licence was or was not taken.
[ ] Circulate every draft filing to every team before it issues.
- Trap. A broad infringement theory advanced in Germany reappears in an inter partes review within days.
[ ] Coordinate expert positions centrally. Experts retained separately in each jurisdiction will contradict each other on the state of the art unless someone owns the question.
[ ] Reconcile valuation across litigation, tax, and licensing. A royalty rate in a damages report, a transfer price in a tax filing, and a figure in a negotiation are all discoverable and all comparable.
[ ] Map privilege by jurisdiction, noting that in-house and patent attorney communications are protected in some systems and not others, and route sensitive analysis accordingly.
[ ] Instruct the business in writing on what to put in writing, and refresh the instruction when a new forum opens.

Phase 8. Budget, governance, and the stop rule

[ ] Budget by front, with phase estimates and milestone dates for each proceeding.
[ ] Report the aggregate, and obtain approval for the campaign rather than for each front.
- Trap. A five-front campaign approved incrementally is how businesses spend several times what they would have authorised as a single decision.
[ ] Write the stop rule before filing. Identify the outcomes — a revocation, an adverse construction, a refused injunction, a defence cost threshold — that trigger re-evaluation, and agree what happens then.
[ ] Check insurance early. Advertising injury coverage responds to some trademark and copyright claims, rarely to patent claims, and narrowly to foreign proceedings.
[ ] Build a single reporting format across all firms, with next milestone, next spend, and what the proceeding can deliver.
[ ] Agree the escalation route and the time zones, because a foreign court will set a hearing on three weeks' notice and someone must be able to instruct overnight.
[ ] [Gate] Confirm the client has approved the total campaign budget and the stop rule in writing before the first filing.

Phase 9. Settlement, recognition, and enforcement

[ ] Structure any settlement globally. Every forum named with a withdrawal obligation and a stated costs position; every entity on both sides released, including customers and contract manufacturers; every right covered, including continuations and divisionals from the same priority; and worldwide territorial scope.
- Trap. A settlement closing one front leaves the leverage already spent and four proceedings running.
[ ] Put an arbitration clause in the settlement agreement, seated in a New York Convention state, so that breach produces an award enforceable under 9 U.S.C. § 201 wherever assets sit.
[ ] Record the tax and transfer pricing treatment of any payment consistently across jurisdictions.
[ ] If enforcing a United States judgment abroad, expect punitive and treble components to be refused in civil law jurisdictions, and structure the judgment accordingly where possible.
[ ] If resisting a foreign judgment here, examine the recognition grounds under the applicable state statute — impartial tribunal, jurisdiction, fraud, public policy — and note that specific bars exist, such as the SPEECH Act at 28 U.S.C. § 4102.
[ ] Locate the assets before judgment, not after, and plan post-judgment discovery, which is itself a section 1782 use case.
[ ] Prevent the next dispute. Arbitration clauses in every cross-border agreement; registrations in every manufacturing jurisdiction; customs recordation under 19 U.S.C. § 1526 and its foreign analogues; and a deliberate Unified Patent Court opt-out position at portfolio level.

Outcome. At the end of this checklist the client should hold: four maps that describe the dispute accurately; a written statement of the remedy that would change its position; a forum decision recorded with its rejected alternatives; a service and jurisdiction route confirmed before filing; evidence obtained through section 1782 that no foreign procedure could have produced; a documented position on every foreign law conflict, raised before any order issued; one coherent set of substantive positions across every proceeding; an approved campaign budget with a stop rule; and, at the end, a settlement that actually ends the dispute in every forum and is enforceable wherever the counterparty holds assets. A client with those things has run a campaign. A client with five lawsuits and no maps has funded one.

Phase 10. Running the ITC front

[ ] Assemble the domestic industry evidence before filing. Significant investment in plant and equipment, significant employment of labour or capital, or substantial investment in engineering, research and development, or licensing relating to protected articles.
- Trap. Licensing-based domestic industry is available and heavily contested, and the evidence cannot be assembled during the investigation.
[ ] Plan for the pace. A target date set within weeks, discovery in months, and an evidentiary hearing before an administrative law judge within roughly nine months.
- Trap. A respondent that spends the first thirty days seeking an extension is behind for the whole investigation.
[ ] Choose the remedy sought. A limited exclusion order against the named respondents, a general exclusion order where circumvention is likely and the source is hard to identify, and cease and desist orders reaching domestic inventory.
[ ] Remember there are no damages at the ITC, which is why the parallel district court case exists and why it is normally stayed under 28 U.S.C. § 1659.
[ ] Plan Presidential review and Customs enforcement. The sixty-day review period is followed by enforcement that depends on the relationship built with Customs during the investigation.
[ ] Consider the ITC for trade secrets. It reaches misappropriation occurring entirely abroad where the resulting imports injure a domestic industry, which no district court can do.
[ ] [Gate] Confirm the domestic industry showing is genuinely supportable before filing, because a failed showing ends the investigation regardless of the merits.

Phase 11. Defending a multi-front campaign

[ ] Identify the one front that actually threatens the business, and resource it properly rather than spreading evenly.
[ ] Attack validity everywhere it is cheap. Inter partes review under 35 U.S.C. § 311, European opposition, and national nullity proceedings each put the same right at risk at a fraction of the cost of an infringement defence.
- Trap. The one-year bar from service of a complaint is the most commonly missed deadline in defensive practice, and the estoppel consequences under 35 U.S.C. § 315(e) have to be modelled before filing.
[ ] Start the design-around immediately. A non-infringing alternative available in six months changes the settlement value of every proceeding, usually at a fraction of the legal cost.
[ ] Test standing and title. Unrecorded assignments, missing inventor assignments, and co-owner joinder defects are common in portfolios that have moved between entities, and they are dispositive where they exist.
[ ] Consider filing a declaratory action first where the demand letter supports jurisdiction under MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007).
[ ] Watch for customer suits, which create indemnity obligations and commercial pressure disproportionate to the merits, and prepare intervention and customer-suit-exception arguments.
[ ] Check whether a protective letter is available in the jurisdictions that permit them, to prevent ex parte preliminary relief.
[ ] Price the settlement honestly at the outset, because a defendant that spends three years and then takes the month-two licence has bought only delay.

Phase 12. Managing foreign counsel

[ ] Retain litigators, not correspondents. In each jurisdiction, the person who will stand up in court, with a named partner accountable.
[ ] Ask every firm the same five questions at the outset. Time to first-instance decision; availability and speed of preliminary relief; whether validity is heard with infringement; total cost through judgment; and what the losing party pays.
- Why. The answers, side by side, make the forum decision almost self-evident, and they are rarely collected in a comparable form.
[ ] Instruct with the campaign context, not the national question. Counsel given a single national instruction will optimise locally, which is correct there and frequently damaging globally.
[ ] Share the consistency register with every firm, and require that each proposed filing be checked against it before issue.
[ ] Impose a single reporting format. Five firms reporting in five styles produce a board pack nobody reads.
[ ] Establish who holds privilege in each jurisdiction, and route sensitive analysis through those who do.
[ ] Agree the escalation route and the time zones. A foreign court will list a hearing on three weeks' notice, and someone must be able to instruct overnight.
[ ] Meet the teams. Campaigns run for years, and the firms that perform are the ones whose partners understand the client's business rather than only its file.

Phase 13. The documents this checklist should leave behind

[ ] The four maps, refreshed at each major development.
[ ] A remedy statement approved by the business.
[ ] A forum decision memorandum recording the rejected alternatives.
[ ] A campaign budget by front, with an aggregate and a stop rule.
[ ] A consistency register covering every position in every forum.
[ ] A privilege map and the written instruction to the business derived from it.
[ ] A section 1782 file for each application, including the receptivity declaration.
[ ] A foreign law evidence file on blocking statutes and data protection, prepared before any production order.
[ ] A settlement architecture naming forums, entities, rights, territory, and the arbitration clause.
[ ] A prevention plan: arbitration clauses, foreign registrations, customs recordations, and the Unified Patent Court opt-out position.

Ten documents. The first two decide whether the campaign should exist; the rest decide whether it is run competently.

Phase 14. A working timetable

[ ] Weeks one and two. The four maps. The remedy statement. Preliminary advice from candidate-forum counsel on the five questions.
[ ] Weeks three and four. Forum decision memorandum. Campaign budget. Stop rule. Consistency coordinator appointed. Privilege map drafted. Insurance checked.
[ ] Week five. Section 1782 applications filed against United States affiliates, customers, and service providers, before any foreign case is on file.
[ ] Weeks five to eight. Lead filings issued in the chosen sequence. Service commenced by the chosen route, with Central Authority requests lodged where required.
[ ] Months three to six. Foreign law evidence assembled. Protective orders negotiated. Every position registered as filings issue.
[ ] Months six to twelve. The fast forum reaches decision. Reassess against the stop rule. Settlement takes its shape from that outcome.
[ ] Months twelve to twenty-four. Slower forums proceed; any ITC investigation reaches its initial determination while the parallel district court case is stayed.
[ ] On settlement. Global architecture, all forums named, arbitration clause included, tax treatment recorded.
[ ] Afterwards. Registrations in manufacturing jurisdictions, customs recordations, and arbitration clauses in every agreement — so that the next dispute is smaller than this one.

A note on proportion

Most cross-border IP problems do not warrant this. A single infringing seller, a distributor exceeding its territory, or a supplier producing overruns are resolved by a demand letter, a customs recordation, and a platform takedown, at a cost measured in thousands rather than millions.

Run the full checklist where a genuine competitor sells an infringing product in markets that matter, has resources to defend, and has no interest in a licence.

Run Phases 1 and 2 always. The maps and the remedy statement take a week, cost almost nothing, and prevent the most expensive error available in this practice — which is filing in the wrong place for the wrong reason and discovering it two years later.

Phase 15. Working the matter in the opening example

Applied to the device company described above, the checklist produces a short and unglamorous answer.

[ ] The rights map shows the gap immediately. No mark registration in Malaysia or China, which is where the goods are made — so no route to stop them at the point of manufacture, and an exposure to a broker or supplier registering the mark there.
[ ] The conduct map identifies the pressure point. Assembly in Malaysia, components from China, distribution through a Dutch entity into Europe. The Dutch entity is the choke point for the European market and is within reach of European proceedings.
[ ] The party map identifies the section 1782 targets. The competitor's United States sales subsidiary, the United States distributors, and the testing house that certified the device — none of them likely to be participants in a European proceeding, all of them found in United States districts.
[ ] The evidence map flags the problem. The former supplier's documents sit in a jurisdiction whose law restricts transfer, and the European entity's employee communications engage data protection restrictions.
[ ] The remedy statement writes itself. European sales are the majority of the competitor's revenue for this product, so a European injunction is transformative and a United States damages award is not.
[ ] So the campaign is two fronts, not five. A German infringement action against the Dutch distributor and the competitor, for speed and injunctive pressure; and section 1782 applications in the United States, filed first, to obtain the supplier-relationship documents that will support both the infringement case and any trade secret claim.
[ ] And the United States case waits. It is filed only if the European result does not produce a settlement, because its function is damages rather than leverage.
[ ] The chief executive's instruction to "sue them everywhere" would have cost several times as much and produced less. That conversation, held in week two on the basis of four maps, is the single most valuable thing in this checklist.

A closing note

Nothing in this checklist is about who is right. The doctrines that decide a domestic case — infringement, validity, damages — are present here too, and they matter, but they are not what separates a campaign that works from one that consumes several million dollars and ends in the same place it started.

What separates them is a week of mapping, one paragraph stating the objective, one person owning consistency, one budget covering the whole campaign, and one settlement that names every forum.

Those five things are unglamorous, cheap, and almost always skipped, which is why the same failures recur across matters that otherwise have nothing in common.

Phase 16. Questions clients ask

[ ] "Can we get one worldwide ruling?" Not for registered rights, which are national and must be enforced where granted. The exceptions are a worldwide FRAND rate set by a court that both parties are before, and an arbitral award, which is enforceable in more than one hundred and seventy states under the New York Convention.
[ ] "Why can't we sue them here for what they do abroad?" Because Abitron confines the Lanham Act to domestic use in commerce, Subafilms confines copyright liability to domestic acts, and section 271 reaches domestic acts with narrow statutory extensions. Foreign damages are recoverable where the infringing act was domestic, which is a different point.
[ ] "How do we get their documents?" Section 1782 against their United States affiliates, customers, and service providers — a tool their home system does not offer them and often does not offer against them.
[ ] "Can they get ours?" Yes, symmetrically, and the client should be told this before the first application is filed rather than after the reciprocal one arrives.
[ ] "Can we stop their foreign case?" Only by enjoining the party, only where the court has jurisdiction over it, and realistically only where a contract makes the foreign suit a breach.
[ ] "What will this cost?" More than any single-forum estimate suggests, because the coordination, the foreign law evidence, and the consistency work are real workstreams that do not appear in any national budget.
[ ] "How long?" Three to five years across all fronts. A client told this in week one makes better decisions at every branch than a client told it in year two.

Key Authorities at a Glance

| Authority | Proposition | Where it bites | |---|---|---| | 28 U.S.C. § 1782 | Discovery for foreign proceedings | Phase 4 | | Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 (2004) | Elements and discretionary factors | Phase 4 | | ZF Automotive US, Inc. v. Luxshare, Ltd., 596 U.S. 619 (2022) | Private arbitration excluded | Phase 4 | | Société Nationale Industrielle Aérospatiale v. U.S. Dist. Court, 482 U.S. 522 (1987) | Hague Evidence Convention not exclusive | Phase 5 | | Volkswagenwerk AG v. Schlunk, 486 U.S. 694 (1988) | Domestic service on an affiliate | Phase 3 | | Water Splash, Inc. v. Menon, 581 U.S. 254 (2017) | Service by mail | Phase 3 | | Fed. R. Civ. P. 4 | Alternative service; Rule 4(k)(2) | Phase 3 | | Daimler AG v. Bauman, 571 U.S. 117 (2014) | General jurisdiction narrowed | Phase 3 | | Goodyear Dunlop Tires Operations, S.A. v. Brown, 564 U.S. 915 (2011) | At-home jurisdiction | Phase 3 | | Piper Aircraft Co. v. Reyno, 454 U.S. 235 (1981) | Forum non conveniens | Phase 3 | | Voda v. Cordis Corp., 476 F.3d 887 (Fed. Cir. 2007) | No foreign patent claims here | Phase 2 | | Abitron Austria GmbH v. Hetronic Int'l, Inc., 600 U.S. 412 (2023) | Lanham Act reaches domestic use | Phase 2 | | WesternGeco LLC v. ION Geophysical Corp., 585 U.S. 407 (2018) | Foreign losses from domestic infringement | Phase 2 | | 35 U.S.C. § 271 | Infringing acts; sections 271(f) and (g) | Phase 2 | | eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) | Discretionary injunctions | Phase 2 | | Microsoft Corp. v. Motorola, Inc., 696 F.3d 872 (9th Cir. 2012) | Anti-suit on a FRAND commitment | Phase 6 | | Gallo v. Andina Licores S.A., 446 F.3d 984 (9th Cir. 2006) | Permissive anti-suit standard | Phase 6 | | China Trade & Dev. Corp. v. M.V. Choong Yong, 837 F.2d 33 (2d Cir. 1988) | Restrictive anti-suit standard | Phase 6 | | 19 U.S.C. § 1337 | Exclusion orders | Phase 2 | | 28 U.S.C. § 1659 | Stay of the parallel district court action | Phase 2 | | 28 U.S.C. § 1400(b) | Patent venue | Phase 2 | | 9 U.S.C. § 201 | New York Convention | Phase 9 | | 28 U.S.C. § 4102 | SPEECH Act recognition bar | Phase 9 | | 19 U.S.C. § 1526 | Customs recordation | Phase 9 | | Fed. R. Civ. P. 26(c) | Protective orders | Phases 4 and 5 | | 18 U.S.C. § 1837 | Extraterritorial reach of the DTSA | Phase 2 |

The five things people get wrong

One: filing where the client sits. The complaint goes to the home district because that is where the general counsel is, rather than to the forum whose remedy would change the defendant's behaviour. Write the remedy statement first, and let it choose the forum. Everything expensive that follows is downstream of this one decision.

Two: missing the section 1782 window. The application is most valuable before the foreign proceeding hardens — while the targets are unprepared, the positions are unfixed, and the material has not been curated. It is routinely made a year late, against participants rather than non-participants, with requests broad enough to invite a successful motion to quash. File in week five, narrowly, against non-participants, with a foreign counsel declaration on receptivity.

Three: discovering the blocking statute after the order. Aérospatiale means a United States court will order production regardless of foreign objection, and the client is then choosing which law to break. Raise the conflict early, with evidence of foreign law, and propose a staged production — that is the sequence courts respond to, and it is unavailable once the order exists.

Four: contradicting yourself across forums. A broad claim construction in Germany, a narrow one in an inter partes review, and a valuation in a tax filing that is inconsistent with the damages model. All discoverable, all quoted, and all preventable by one person with a register and the authority to hold a filing. Nobody owns consistency unless it is assigned.

Five: settling one front. The leverage that was purchased over three years is spent in a single agreement that closes the United States case and leaves the German injunction, the Chinese action, and the ITC investigation running. Every release should name every forum, every entity, every right, and the whole world — and should contain its own arbitration clause, so that a breach produces something enforceable everywhere.