Apple Inc v. Key Patent Innovations, Ltd.; Malikie Innovations Ltd Plaintiffs
June 30, 2026·25-40802·Per Curiam·By Maria Santos
The Fifth Circuit reversed a district court order that allowed patent licensing agreements to be disclosed to in-house counsel in foreign proceedings. The court held that foreign law did not unequivocally require such disclosure, so contractual confidentiality protections limiting access to outside counsel remained enforceable.
Apple Inc. entered into licensing agreements with Blackberry that restricted disclosure of terms to outside counsel only. When a third party, Malikie Innovations, sought discovery from Blackberry under Section one thousand seven hundred eighty-two of Title twenty-eight for use in foreign patent litigation, the district court ordered production of the agreements to in-house counsel for the opposing party, Xiaomi, based on German and Indian law. Apple sought a protective order to enforce the agreements’ confidentiality provisions.
The court’s reasoning
The court determined that the district court erred in concluding that applicable foreign law required disclosure to in-house counsel. The record showed that neither German nor Indian law unequivocally mandated such disclosure at this stage. The agreements contained a clause allowing disclosure during litigation if restricted to outside counsel, and this clause should have been enforced absent a definitive mandate from a foreign court.
What it means going forward
Parties can now rely on contractual confidentiality provisions in Section one thousand seven hundred eighty-two discovery disputes unless a foreign court explicitly orders broader disclosure.
