目前主要存在兩種裁判思路，一種是來自於Aérospatiale案的三因素判斷，一種是來自於禮讓（comity）分析的五要素判斷。

1987年，美國聯邦最高法院在Societe Nationale Industrielle Aérospatiale v. United States Dist. Ct. for S. Dist.案[3]中初步確立了當被請求開示方基於外國法主張無法進行證據開示時的裁判思路。該案中，法國飛機制造商Aérospatiale因墜機事故被美國的遇難者家屬起訴，美國原告要求法國公司開示其位於法國的資料資料。法國公司主張，在證據位於法國的情況下，證據開示會違反法國的法律。

美國聯邦最高法院在該案中指出法院可以考慮“特定事實、主權利益以及訴諸[海牙公約]程式將被證明有效的可能性”三個因素。當事人須向法院呈遞確切的證據檔案，以證實證據所在國家之法律確實對履行美國法律下披露義務造成阻礙，即存在實際的法律衝突（true conflict），涉及到具體的國家主權利益。

Rather, a party seeking to apply the Hague Convention procedures has the burden to “demonstrate appropriate reasons for employing Convention procedures.” Although the Supreme Court has not “articulate[d] specific rules to guide” whether adoption of the Hague Convention procedures is proper, a court may consider “the particular facts, sovereign interests and likelihood that resort to [Hague Convention] procedures will prove effective.”

Autodesk provides computer-aided design software which “create[s] digital models and workflows that allow visualization, simulation and analysis of designs before implementation.” AutoCAD is Autodesk’s “flagship product” and largest revenue-generating product. Autodesk alleges that ZWSoft engaged in wholesale copying of “large portions of Autodesk source code” in order to create its software program ZWCAD+.

First, ZWSoft has not established that genuine sovereign interests pertain to production of the source code and related documents at issue here. As both parties acknowledge, Chinese law prohibits exporting state secrets from China without the government’s permission. However, ZWSoft has not shown that production of its source code and related documents necessarily implicates this prohibition. In particular, ZWSoft does not adequately support its contention that China “may” consider its source code to be or contain state secret information. While ZWSoft may be right that information that could be considered “ordinary business information in the United States” may constitute a state secret under Chinese law, ZWSoft offers nothing specific to the materials at issue here.

ZWSoft also do not adequately support its claim that it is “reasonable” to believe that the Chinese government could consider its source code to contain state secrets. Article 2 of China’s State Secrets Law defines state secrets as “matters that have a vital bearing on state security and national interests and, as specified by legal procedure, are entrusted to a limited number of people for a given period of time.” Article 8 expands this definition to include, among other materials, matters that involve “national economic and social development” and “science and technology.” ZWSoft claims that because government interpretation of these “broad” categories is “lacking,” it is “reasonable” to believe that China could find that ZWSoft’s source code is a secret state because it constitutes “technology” the exportation of which from a “successful and growing PRC corporation” would impact China’s “national and economic development.” 

However, ZWSoft not only does not cite to authority or expert declarations that support this belief, but also fails to respond to testimony from Autodesk’s expert Hui Zhang, a former intellectual property judge on the Supreme People’s Court of the People’s Republic of China and an intellectual property attorney, who challenges ZWSoft’s assertions about Chinese secrecy law. In particular, Zhang contends that contrary to ZWSoft’s claims, “Chinese law does not prohibit the disclosure of source code developed by Chinese companies outside of China” and that “there is no broad prohibition against exporting documents relating to ‘science and technology.’” 

Rather, the Chinese government “[n]ormally” considers documents to contain state secrets only if they are “prepared by government agencies or are related to a government-funded project.” Further, Zhang contends that in order to be a state secret, ZWSoft’s source code must be designated as such by the Chinese government. Because ZWSoft’s source code was developed by “a private company, for private business purposes,” Zhang opines that “it is highly unlikely that the source code contains state secrets.” 

Rather than presenting expert testimony or other authority that contradicts Zhang’s assertions about Chinese law, ZWSoft claims that Autodesk disregards the “very real and potentially [severe] consequences” ZWSoft could face under Chinese law. In particular, ZWSoft contends that the court must “gloss” over Zhang’s qualification that the Chinese government “[n]ormally” considers only documents prepared by government agencies or in relation to a government-fund project to be state secrets and Zhang’s acknowledgment that she is not “aware” of any cases in which the CAD software or documents relating to CAD software were found to contain state secrets in order to conclude that there is no real risk of liability here. ZWSoft is correct that Zhang’s declaration is not equivalent to a “guarantee” that ZWSoft will not “face stiff and severe government penalties for cross-border production.” 

However, in light of ZWSoft’s failure to respond with expert testimony or other authority that contradicts Zhang’s assertions, the court cannot credit ZWSoft’s unsubstantiated claims that production of its source code and related document would subject it to genuine risk of violating Chinese state secrecy laws.

ZWSoft may be correct that ZWSoft cannot allege precisely what information within its source code and related documents the Chinese government might consider to be a state secret because “the ambiguity in the PRC’s state secrecy laws” makes it “unclear when and how they can be applied.” However, Chinese companies may not avoid producing documents in United States litigation by citing to broad concerns that liability may be imposed under “unclear” or “amorphous” Chinese laws. Because ZWSoft has not cited to expert testimony or other authorities that support its characterizations of Chinese state secrecy and privacy laws, ZWSoft’s generalized allegations that production of its source code and related documents may subject it to liability under Chinese laws are insufficient to establish that a genuine sovereign interest is at issue here.

Further, discovery under the Hague Convention is too slow to be an effective alternative to the Federal Rules of Civil Procedure. “[I]t is generally recognized that procedures under the Hague Convention are far more cumbersome than under the Federal Rules of Civil Procedure.” As ZWSoft notes, the court in Tiffany rejected the plaintiff’s assertion that “China’s Hague Convention procedures ‘do not offer a meaningful avenue to discovery’ because the process is likely to be ‘unduly time consuming and expensive, as well as less certain to produce needed evidence than direct use of the Federal Rules.’” 

However, in Tiffany the court ultimately concluded that application of Hague Convention procedures was proper in part because the discovery requests at issue implicated China’s “significant interest in enforcing its bank secrecy laws.”In contrast, here ZWSoft has not shown that production of its source code and related documents presents a genuine risk of liability under Chinese law such that “the benefits of compliance with PRC laws” justify the costs imposed by application of the Hague Convention.

Third, ZWSoft has not shown that the “particular facts” of this case warrant application of Hague Convention procedures. ZWSoft’s assertion that Autodesk has “propounded extensive and largely unnecessary discovery” lacks merit because at the time ZWSoft took this position, Autodesk had not even served discovery on ZWSoft. 

Despite this lack of discovery, ZWSoft argues that Autodesk has propounded discovery requests on its United States distributor GFD which are “overly broad as to both time and geographic location and not rationally limited to the needs of the case” and which indicate that ZWSoft “will also receive overly broad written discovery.” However, Autodesk’s assertion that it propounded these discovery requests on GFD because Autodesk believed that GFD is a small entity with “only three known employees” whose entire business “appears to be directed to the subject matter of this lawsuit” suggests that Autodesk is unlikely to propound similarly broad discovery requests on ZWSoft.  

Further, even if the requests Autodesk propounded on GFD did indicate that ZWSoft “will be served with substantially the same requests,” ZWSoft’s belief that these “anticipated” discovery requests will be overly broad is not sufficient to justify imposition of Hague Convention procedures.69 Likewise, ZWSoft’s citation to its motion to dismiss in support of its assertion that Autodesk is trying to use overly broad discovery requests as a “fishing license” to make up for its failure to put ZWSoft on notice of “what specific software source code is at issue” and to state a claim upon which relief can be granted is unavailing. Regardless of merits of these claims, ZWSoft’s concerns about the potentially overly broad nature of discovery Autodesk may make in the future are not sufficient to justify imposition of the Hague Convention procedures here.

ZWSoft also has not established that inspection of the source code in China is more efficient than production of the source code in the United States. ZWSoft contends that inspection of the source code in China will serve “judicial economy” and avoid duplicative production because ZWSoft has already made the source code available in Beijing under an order of the Dutch court. However, as Autodesk notes, the source code in China was deposited for the use of a neutral expert which the Dutch court had not yet appointed and which Autodesk had not yet analyzed at the time Autodesk’s opposition was filed. 

ZWSoft’s argument that having the data examined by a “native speaker” in China is less expensive than bringing the data to the United States and translating it before production similarly lacks merit.  Autodesk asserts that it intends to use local attorneys and experts to examine the source code in the United States and that multiple rounds of source code examination as well as motion practice related to the adequacy of the initial deposit of source code are likely. Requiring Autodesk’s attorneys and experts to travel to Beijing every time they need to examine the source code would be more burdensome and expensive than sending the source code to the United States.

ZWSoft is correct that as a large multinational company with multiple offices in China, Autodesk is more able than ZWSoft to shoulder burdens imposed by onerous or expensive discovery. But, as explained above, ZWSoft has not shown than a sovereign interest or other factor justifies the additional expense and burden that examination of the source code in China imposes on Autodesk.

Fourth, ZWSoft has not met its burden to show that good cause exists under Rule 26(c) to amend the protective order to require ZWSoft to collect and make available its source code and related documents for inspection in China rather to produce this data in the United States. “A party asserting good cause [under Rule 26(c)] bears the burden, for each particular document it seeks to protect, of showing that specific prejudice or harm will result if no protective order is granted.”

ZWSoft’s claim the process outlined in the amended order “is authorized under the Federal Rules of Civil Procedure” lacks merit because this assertion does not establish that production and examination of ZWSoft’s source code and related documents in United States will cause a specific prejudice or harm. For instance, ZWSoft claims that Rule 26 authorizes examination of the source code in China because Rule 26 allows courts to limit discovery to promote international comity and because the factors described in proposed amendments to the Federal Rules of Civil Procedure favor adoption of ZWSoft’s suggested procedures. ZWSoft also contends that the court may properly order adoption of its amended protective order because Rule 34 allows a party to make documents available “as they are kept in the usual course of business” and because the timelines provided in the amended protective order are consistent with the Federal Rules of Civil Procedure. 

However, even if ZWSoft is correct that the Federal Rules of Civil Procedure authorize the production process outlined in its amended order, this compliance is not sufficient to show that good cause exists for amending the order under Rule 26(c). To the contrary, “[b]road allegations of harm, unsubstantiated by specific examples or articulated reasoning, do not satisfy the Rule 26(c) test.” Further, although ZWSoft is that correct that production of trade secrets and source code presents inherent risks that the information produced may lose its trade secret status or value because it can be “copied or stolen without proper security measures,” this risk does not justify amendment of the order.

As Autodesk notes, ZWSoft does not state why the existing protective order does not sufficiently protect ZWSoft’s information or how the amended order will provide more protection against these risks.ZWSoft itself acknowledges that these risks are “inherent in the production of source code even in the PRC.” Similarly, ZWSoft’s contentions that it was not meaningfully involved in the current protective order because it was not in the case when the order was entered and that this case allows Autodesk access into the “highly proprietary data of a competitor” do not identify specific prejudice or harm that will result if the current protective order is not amended.