By Jorge Schmidt, Legal Schmidt PLLC · Published July 9, 2026
A company’s most sensitive contracts can get swept into someone else’s U.S. discovery. It happens in cross-border litigation: a party uses Section 1782 to pull documents from a third party in the United States, and your confidential terms come along for the ride. The danger is not only that your files will be read — it is that the confidentiality limits you negotiated might be erased by a U.S. judge who never signed your contract.
That is the risk the Fifth Circuit addressed in Apple Inc. v. Key Patent Innovations, Ltd., No. 25-40802 (5th Cir. June 30, 2026), an unpublished decision. The court held that a district court cannot ignore a contract’s confidentiality limits just because foreign law might require broader disclosure later. “Might” is not “will.” If your documents are caught in a Section 1782 net, you can still enforce the limits you bargained for — unless a foreign court actually requires more.
Malikie Innovations is asserting former BlackBerry patents against Xiaomi in litigation in Germany and India. To support those foreign cases, Malikie used 28 U.S.C. § 1782 — which lets a party in a foreign proceeding ask a U.S. court for discovery from someone found in the United States — to subpoena BlackBerry in the Eastern District of Texas for its patent-licensing agreements.
Among the files BlackBerry agreed to produce were the “A-B Agreements” — confidential BlackBerry patent-licensing agreements, including its licenses to Apple. Apple had nothing to do with the Malikie–Xiaomi lawsuit. It was a stranger to the case, and it was not the target of the subpoena. Apple surfaced only because its own contracts were caught in Malikie’s net.
Here is the key point: no one disputed that the documents would be produced. BlackBerry was ready to hand them over. The fight was entirely about who could see them. The A-B Agreements let their terms be disclosed during litigation only under a protective order limited to outside counsel. Apple wanted that limit kept in place. It moved to quash the subpoena or, in the alternative, for a modified protective order that would keep Xiaomi’s in-house counsel from viewing the terms.
The magistrate judge ordered broader disclosure, reasoning that German and Indian law let a party’s in-house counsel — not just its outside lawyers — inspect litigation documents, so Xiaomi’s in-house counsel could see the agreements too. The district court reviewed that ruling for clear error and adopted it. Apple lost, and appealed.
The Fifth Circuit reversed in part. A U.S. judge, it held, cannot rewrite a private contract on a guess about foreign procedure. The A-B Agreements allowed disclosure “required by applicable law,” but they also confined disclosure during litigation to outside counsel. The magistrate judge had let the first clause swallow the second. That was error: “the district court erred by vitiating the provisions contained in the A-B Agreements that would serve to restrict their production in the foreign litigation to outside counsel.”
The flaw was treating a possibility as a certainty. Malikie had shown only that foreign law might require production to in-house counsel, not that it would. “Lacking a definitive mandate — from either foreign court or governing law — that the A-B Agreements must be shared with Xiaomi’s in-house counsel, the district court had no valid ground to ignore” the outside-counsel clause. Absent that mandate, a court must give force to both clauses: “Because Malikie has shown only that it might be required to produce the A-B Agreements to in-house counsel, the ‘applicable law’ provision does not override the ‘course of litigation’ provision.” The outside-counsel limit stands.
The ruling leaves a path open. If a German or Indian court later orders the agreements disclosed to Xiaomi’s in-house counsel regardless of their terms, Malikie can return to the district court and ask to loosen the protective order. Until then, the contract controls.
Malikie had a clever fallback. The A-B Agreements also allow disclosure required by an “order of a governmental authority of competent jurisdiction” — and, Malikie argued, the magistrate judge’s own order was exactly that, so the order compelling disclosure also authorized it. The Fifth Circuit called the argument circular: “It cannot be correct that the district court’s own order meets the A-B Agreements’ exception for ‘order[s] of a governmental authority of competent jurisdiction.’” The order under review cannot supply its own justification. The exception needs a real, independent command — a foreign court or a governing law — not the U.S. discovery ruling being challenged.
First, Apple could appeal right away. A magistrate judge’s non-dispositive order usually waits for final judgment, but the Fifth Circuit held this one was reviewable now under the collateral-order doctrine, “even if the magistrate judge’s order was nondispositive in nature.” The reason is practical: once in-house counsel reads the terms, no later appeal can put the secret back.
Second, the court did not decide whether the order was dispositive or non-dispositive — the two carry different standards of review — because the result was the same either way. It kept the focus on the contract, not the procedural label.
The decision is unpublished and narrow. It does not touch the discretionary Intel factors that decide whether Section 1782 discovery issues at all, and it does not say what happens once a foreign court actually orders in-house disclosure. Those are for another day.
The practical lesson is clear. If your confidential documents are swept into a Section 1782 subpoena aimed at someone else, do not assume the U.S. court will brush your contract aside. Appear and enforce its limits. The mere possibility that foreign law could require more will not beat them — only an actual foreign order will. Jorge Schmidt (Legal Schmidt PLLC, Miami) advises foreign counsel and litigants on bringing and defending Section 1782 applications. For the full framework, see A Practical Guide to Bringing and Defending Section 1782 Applications.