dissenting.
I respectfully dissent. It is not the role of this nation’s courts to adjust the positions of the parties before the tribunal in Germany, by circumventing German law.
The district court ordered the release, to a German tribunal in a German proceeding, of confidential deposition testimony asserted to contain trade secret information that had been produced under protective order in litigation in the United States. Trade secret information is not discoverable under German law. Therma-Wave states that unless the confidential deposition testimony is released by the United States court to the German court, it may never be usable in the German litigation because it is protected by German law. This was the ground on which Therma-Wave obtained release of the information, telling the district court that the Jenoptik information is necessary because it contradicts representations made by Jenoptik in the German action. Thus ThermaWave obtained the assistance of a United States court in circumventing German law, acting contrary to precedent. The district court’s action was inappropriate, and should not be sustained.
The German court did not ask the United States court to aid in obtaining this evidence. The German court has not ordered Jenoptik to produce the evidence in the German action, or requested assistance in obtaining it in the United States. As the Third Circuit stated in John Deere Ltd. v. Sperry Corp., 754 F.2d 132, 134 (3d Cir. 1985), “Had the Canadian tribunal directly petitioned the district court to permit testimony to be taken, there would be little question as to the propriety of honoring the request for assistance.” Federal district courts are authorized to provide assistance to foreign tribunals and litigants in obtaining evidence in the United States, see 28 U.S.C. § 1782 (“The district court of the district in which a person resides or is found may order him to give his testimony or statement or to produce a document or other thing for use in a proceeding in a foreign or international tribunal.”), but the criteria for such assistance are not met in this case.
Several circuits have explored the application of § 1782, and have uniformly held that a party to foreign litigation is not entitled to discover, under § 1782, information that is insulated from discovery in the foreign court in which the action is pending. See, e.g., In re Application of Asta Medica, S.A., 981 F.2d 1, 6 (1st Cir.1992) (district court should not permit parties to circumvent foreign law and procedures by obtaining information, in a § 1782 action, that would not be discoverable in the foreign jurisdiction); In re Lo Ka Chun v. Lo To, 858 F.2d 1564 (11th Cir.1988) (district court is required to determine the discoverability in the foreign jurisdiction before allowing disclosure of the evidence sought under § 1782); In re Request for Assistance from Ministry of Legal Affairs of Trinidad and Tobago, 848 F.2d 1151 (11th Cir.1988) (district court must determine whether the evidence is discoverable in the foreign country before granting assistance).
In In re Application for an Order for Judicial Assistance in a Foreign Proceeding in the High Court of Justice,. Chancery Division, England, 147 F.R.D. 223, 225-26 (C.D.Cal.1993), the district court held that a party to foreign litigation is not entitled to discovery “beyond what is available to them in the foreign court in which the action is proceeding.” In In re the Court of the Commissioner of Patents for the Republic of South Africa, 88 F.R.D. 75, 77 (E.D.Pa.1980), *725the district court expressed concern that foreign discovery provisions not be circumvented, stating that such concern is particularly pronounced when the requested discovery is not by means of letters rogatory, but from an individual litigant. This is not a case of a direct request for assistance from a foreign tribunal. In In re Letters Rogatory from the Tokyo District, Tokyo, Japan, 539 F.2d 1216 (9th Cir.1976), the requested discovery was authorized by the requesting entity.
In In re Asta Medica, 981 F.2d at 6, the First Circuit suggested that the district court obtain the assistance of a foreign law expert, or inquire of the foreign court, if there is doubt as to whether the information sought to be disclosed would be discoverable in the foreign proceeding. In contrast, the Third Circuit thought that such an inquiry would be unnecessarily burdensome. John Deere, 754 F.2d at 135. In this case, however, Jenoptik did submit the affidavit of a German law expert, Dr. Sabine Rojahn, who stated that trade secrets are protected from discovery under German law:
In the German action, Therma-Wave can request that the testimony of Mr. Kowalski be heard in open court. Should the German court deem Therma-Wave’s request to be relevant and meritorious, the testimony of Mr. Kowalski will be heard and both parties will then have a right to examine Mr. Kowalski. Mr. Kowalski will have to answer the questions truthfully, but pursuant to Section 384, no. 3, of the German Civil Code, he may legally refuse to answer questions concerning business or industrial secrets.
There was no contrary advice. Although Therma-Wave argues that the information it seeks is not confidential because it has already been disclosed, if there were no issue of confidentiality these proceedings would be unnecessary, if not frivolous. I take note that the district court recognized the confidential nature of the evidence that it released to the German court. Thus it must be concluded, as Dr. Rojahn’s uneontradicted affidavit states, that the evidence Therma-Wave seeks to present to the German court would not be discoverable under German law.
The Federal Circuit has recognized that foreign countries have different discovery rules and different laws governing trade secrets, and that these may not match United States practices. See Cochran Consulting, Inc. v. Uwatec USA, Inc., 102 F.3d 1224, 41 USPQ2d 1161 (Fed.Cir.1996). Although 28 U.S.C. § 1782 is available to private litigants and foreign courts, its purpose is to facilitate the legitimate gathering of evidence, not to circumvent foreign laws. See S.Rep. No. 1580, 88th Cong., 2d Sess. (1964), reprinted in 1964 U.S.C.C.A.N. 3782. Indeed, Jenoptik is a German company and is directly subject to the jurisdiction of the German court: if the evidence is admissible in Germany its production can be ordered directly, without help from the United States, for the witness at issue is a Jenoptik employee located in Germany, and the asserted confidential information appears to have originated in Germany, not the United States.
United States courts should not be a tool in circumvention of the law of foreign countries. It is improper use of United States discovery procedures, by a party to a German action, to place in evidence, in Germany, trade secret information that is not discoverable under German law. The issue is not the taking of testimony in the United States for proper use in a foreign tribunal, as in John Deere v. Sperry, 754 F.2d at 136, where the Canadian court had ordered the discovery and the Third Circuit held that the witnesses could be deposed in the United States because their testimony could have been obtained in Canada had they been subject to Canadian jurisdiction. Instead, this court has ordered disclosure in Germany of information that is expressly protected from disclosure by German law. I have come upon no precedent supporting such action by a United States court. Cf. Société Internationale Pour Participations Industrielles et Commerciales v. Rogers, 357 U.S. 197, 78 S.Ct. 1087, 2 L.Ed.2d 1255 (1958) (refusing to order production of Swiss documents when such discovery was illegal in Switzerland).
The majority relies on Ninth Circuit precedent concerning the ready transfer of confidential material between courts in the United States. However, such transfer raises no *726issue of illegality of the discovery in the transferee jurisdiction. We have the obligation, in law, international comity, and sound practice, not only to aid foreign process when requested, but also to avoid aiding in deliberate circumvention of foreign laws and procedures. Thus I must, respectfully, dissent from this ruling.