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Marical Inc. v. Cooke Aquaculture Inc., 1:14-cv-00366-JDL. (2017)

Court: District Court, D. Maine Number: infdco20170726d87 Visitors: 3
Filed: Jul. 25, 2017
Latest Update: Jul. 25, 2017
Summary: ORDER ON MOTION FOR ISSUANCE OF LETTER ROGATORY JOHN C. NIVISON , Magistrate Judge . The matter is before the Court on Plaintiffs' Motion for Order Issuing Letters Rogatory. (ECF No. 219.) Through the motion, Plaintiffs seek assistance from the Supreme Court of Newfoundland and Labrador, Canada, to obtain testimony from an individual (Jean Willcott, P.O. Box 237, Milltown, NL, Canada), who is not a party to this litigation and who is not subject to the compulsory process of this Court in th
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ORDER ON MOTION FOR ISSUANCE OF LETTER ROGATORY

The matter is before the Court on Plaintiffs' Motion for Order Issuing Letters Rogatory. (ECF No. 219.) Through the motion, Plaintiffs seek assistance from the Supreme Court of Newfoundland and Labrador, Canada, to obtain testimony from an individual (Jean Willcott, P.O. Box 237, Milltown, NL, Canada), who is not a party to this litigation and who is not subject to the compulsory process of this Court in the context of this litigation.

Background

According to the parties' submissions, Ms. Willcott worked for Defendant Cooke Aquaculture as a senior technician at Cooke's Swanger Cove Hatchery. Sometime prior to the commencement of this litigation, Cooke's CEO, Glenn Cooke, appeared in an episode of Undercover Boss Canada, with Ms. Willcott. During the show, Ms. Willcott informed Mr. Cooke about various aspects of hatchery operations. In addition, Mr. Cooke assisted Ms. Willcott with the task of pouring bags of magnesium chloride and calcium chloride into tanks containing salmon.

Plaintiffs allege the activity depicted on the program (pouring "PVCR modulators" into the tanks) infringed the patents-in-suit. Plaintiffs seek to question Ms. Willcott about several matters, including the salts and the feed used in Cooke's operations at the Swanger Cove Hatchery. Plaintiffs argue that Ms. Willcott's anticipated testimony is highly relevant and cannot be obtained from another witness because Mr. Cooke has testified that he has no recollection of the specific events that transpired during filming of the Undercover Boss program.

Plaintiffs previously noticed Ms. Willcott's deposition for December 2016, in Portland, Maine. (ECF No. 219-9.) At that time, Defendants informed Plaintiffs that Ms. Willcott was on disability leave and not available for deposition. (ECF No. 228-5.) Defendants further advised that they expected Ms. Willcott's leave to continue for several months and, therefore, they "consider[ed] the issue closed." (Id. at 11.)

On January 10, 2017, the Court issued an order regarding discovery. The Court extended the deadline for the close of fact discovery to February 28, 2017, and advised the parties (1) that "[a]bsent extraordinary circumstances, the Court is not inclined to extend further the deadlines" and (2) "that absent some excusable circumstance, discovery initiatives must be undertaken so that the response of the opposing party is filed prior to the discovery deadline." (ECF No. 196.)

On March 24, 2017, the Court authorized Plaintiffs to file a motion requesting a letter rogatory to obtain Ms. Willcott's testimony, but did so without prejudice to Defendants' ability to oppose the motion. As of the March 24 conference, the deadline for completion of fact discovery had closed, but the Court conducted the hearing to consider all remaining issues concerning fact discovery.

Legal Standard

A letter rogatory, or letter of request, is "a formal request from a court in which an action is pending, to a foreign court to perform some judicial act." 22 C.F.R. § 92.54. Letters rogatory are commonly used to facilitate the taking of evidence from non-parties located in foreign jurisdictions. Id.; Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 248 n.1 (2004). In addition to document discovery and other forms of non-testimonial discovery, a letter rogatory may include a request for the deposition of a foreign witness. Fed. R. Civ. P. 28(b)(2). A letter rogatory requesting a deposition may issue "on appropriate terms after an application and notice" and "without a showing that taking the deposition in another manner is impracticable or inconvenient." Id. "Requests rest entirely upon the comity of courts toward each other, and customarily embody a promise of reciprocity." 22 C.F.R. § 92.54.

This Court has inherent authority to issue letters rogatory and may issue letters rogatory directly to a foreign tribunal. 28 U.S.C. § 1781(b)(2). Google Inc. v. Rockstar Consortium U.S. LP, No. 4:13-cv-05933, 2014 WL 8735114, at *1 (N.D. Cal. Oct. 3, 2014). The decision to exercise that authority is a matter of discretion. Triumph Aerostructures, LLC v. Comau, Inc., No. 3:14-CV-02329, 2015 WL 5502625, at *2 (N.D. Tex. Sept. 18, 2015); Rockstar Consortium, 2014 WL 8735114, at *1. A court generally will not weigh the evidence sought or predict whether the evidence will be obtained in the foreign jurisdiction. Rockstar Consortium, 2014 WL 8735114, at *1. However, "[j]udicial supervision of discovery should always seek to minimize its costs and inconvenience and to prevent improper uses of discovery requests." Societe Nationale Industrielle Aerospatiale v. U.S. Dist. Court for S. Dist. of Iowa, 482 U.S. 522, 546 (1987). Additionally, the Court's exercise of discretion is informed by the discovery standards set forth in Rule 26(b) of the Federal Rules of Civil Procedure. Triumph Aerostructures, LLC, 2015 WL 5502625, at *3. Rule 26 authorizes the following discovery:

Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Information within this scope of discovery need not be admissible in evidence to be discoverable.

Fed. R. Civ. P. 26(b)(1).

Because Plaintiffs' request also requires an extension of the deadline for completion of fact discovery and a modification of the ten-deposition limit stated in the scheduling order, Plaintiffs' request must also satisfy the good cause standard of Rule 16. See Fed. R. Civ. P. 16(b)(4) ("A schedule may be modified only for good cause and with the judge's consent.").1 The good cause standard "focuses on the diligence (or lack thereof) of the moving party more than it does on any prejudice to the party-opponent." Steir v. Girl Scouts of the USA, 383 F.3d 7, 12 (1st Cir. 2004).

Analysis

Before the expiration of the applicable discovery deadline, Plaintiffs noticed the deposition of Ms. Willcott and communicated on more than one occasion with Defendants' counsel about Plaintiffs' request to conduct Ms. Willcott's deposition. The Court rules not only encourage, but require, the parties obtain permission of the Court to file a discovery motion only after the parties have been unable to resolve the matter. D. Me. Local Rule 26(b). Consistently, Defendants informed Plaintiffs that Ms. Willcott was out of work on disability and thus unavailable for a deposition.

Given that Ms. Willcott is one of two individuals depicted in a program in which alleged infringing conduct occurred, the Court cannot conclude Plaintiffs' efforts to obtain her testimony are unreasonable or that her anticipated testimony is not relevant despite the discovery conducted to this point in the case. In addition, while Plaintiffs' failure to seek a letter rogatory earlier is concerning, given Plaintiffs' attempt to conduct the deposition within the discovery period, and given that Plaintiffs were informed that Ms. Willcott was unavailable due to a disability, the Court finds good cause to authorize an additional deposition beyond the discovery deadline.

The Court nevertheless is uncertain whether Ms. Willcott's disability would prevent her from appearing for a deposition or that given her disability, the deposition would present an undue hardship for her. Accordingly, the Court will issue the letter rogatory attached as Exhibit A unless within 10 days of the date of this Order, Defendants show cause in writing that Ms. Willcott's disability prevents her from appearing for a deposition or that given her disability, the deposition would present an undue hardship for her.

Conclusion

Based on the foregoing analysis, the Court grants Plaintiffs' Motion for Order Issuing Letters Rogatory (ECF No. 219) subject to Defendants' ability to show cause as set forth herein.

NOTICE

Any objections to this Order shall be filed in accordance with Fed. R. Civ. P. 72.

EXHIBIT A

UNITED STATES DISTRICT COURT DISTRICT OF MAINE MARICAL INC., et al., Plaintiffs, v. 1:14-cv-00366-JDL COOKE AQUACULTURE INC., et al., Defendants

LETTER ROGATORY TO THE SUPREME COURT OF NEWFOUNDLAND AND LABRADOR, CANADA

The United States District Court for the District of Maine presents its compliments to the Supreme Court of Newfoundland and Labrador, Canada, and requests international judicial assistance to obtain evidence to be used in a civil proceeding before this Court in the above captioned matter. The United States District Court for the District of Maine is a competent court of law and equity which properly has jurisdiction over this proceeding and is authorized to issue letters rogatory pursuant to, inter alia, 28 U.S.C. § 1781(b)(2) and Rule 28(b) of the Federal Rules of Civil Procedure.

In this action, Plaintiffs and Counter Claim Defendants Marical Inc., Europharma AS, and Europharma Inc. Canada ("Plaintiffs"), allege that Defendants and Counter Claim Plaintiffs Cooke Aquaculture Inc., Cooke Aquaculture USA Inc., True North Salmon Co. Ltd., True North Salmon US Inc., True North Sales US Inc., and Salmones Cupquelan SA, Co. ("Defendants"), produce and import salmon raised by methods that infringe United States Patent No. 6,463,883, United States Patent No. 6,475,792, United States Patent No. 6,481,379, and United States Patent No. 6,564,747, which patents-in-suit teach methods for raising pre-adult anadromous fish. (Complaint, ECF No. 1.) By way of counterclaim, Defendants seek a declaratory judgment of invalidity and non-infringement. (Answer and Counterclaims, ECF No. 16.)

Plaintiffs assert that the cause in question cannot be justly resolved without the opportunity to depose Ms. Jean Willcott, P.O. Box 237, Milltown, NL, Canada. Upon review of Plaintiffs' request for issuance of letter rogatory, this Court has concluded that the just resolution of the claims and counterclaims in this action calls for Ms. Willcott's deposition, as her testimony is likely to be probative of material facts relevant to Plaintiffs' claims of patent infringement and Defendants' counterclaims of patent invalidity. Accordingly, this Court requests the assistance of the Supreme Court of Newfoundland and Labrador to secure production of the evidence outlined herein.

This request is made with the understanding that it will in no way require any person to commit any offense, or to undergo a broader form of inquiry than he or she would if the litigation were conducted in a Canadian court. The requesting Court is satisfied that the evidence sought to be obtained through this request is relevant and necessary and cannot reasonably be obtained by other methods. Because this Court lacks authority to compel participation by Ms. Willcott and because such participation is necessary in order that justice be served in the above-captioned proceedings, this Court respectfully requests assistance from the Supreme Court of Newfoundland and Labrador.

The applicants for this Letter are Plaintiffs and it is respectfully requested that the executed request be returned to lead Counsel for Plaintiffs:

Brian T. Moriarty HAMILTON BROOK SMITH & REYNOLDS P.C. 530 Virginia Road P.O. Box 9133 Concord, MA 01742-9133 bmoriarty@hbsr.com (617) 607-5960

A response is requested as soon as possible in order to ensure that the evidence may be obtained in advance of the schedule for post-discovery motion practice, currently anticipated to begin in the fall of 2017.

I. Summary of the Action

Plaintiffs' Complaint asserts that Defendants infringed one or more claims of the U.S. Patents referenced above, each of which patents pertains to methods of raising preadult anadromous fish, such as salmon. Ms. Willcott is or was a senior technician at Defendants' Swanger Cove Hatchery. In that capacity, she has participated in hatchery practices that, according to Plaintiffs, infringed the patents-in-suit. Important factual issues in this action include Defendants' hatchery practices related to the addition of PVCR modulator to freshwater fish tanks, whether the practices met the specifications of the patents-in-suit, and whether they were understood in the prior art or would have been obvious to the person of ordinary skill in the art. Plaintiffs seek to depose Ms. Willcott in part because she appeared in an episode of Undercover Boss Canada with Cooke Aquaculture CEO, Glenn Cooke, as set forth more fully in this Court's Order on Motion for Issuance of Letter Rogatory.

II. Evidence Requested from Jean Willcott.

This Court requests that the Supreme Court of Newfoundland and Labrador summon Jean Willcott to appear before a person empowered under Newfoundland law to administer oaths and take testimony. The questions asked of Ms. Willcott under oath or affirmation will pertain to the activities appearing in the Undercover Boss Canada, Season 2, Episode 4 and the regular practices and procedures of the Swanger Cove Hatchery from 2009 to the present, including:

1) the reasons why Ms. Willcott was instructing Mr. Cooke to add magnesium chloride and calcium chloride into the tanks;

2) from whom Ms. Willcott received instructions to add magnesium chloride and calcium chloride into the tanks or from where she obtained the idea to do so;

3) how Ms. Willcott determined the number of bags of magnesium chloride and calcium chloride that were to be added to the tanks by Mr. Cooke;

4) identification or confirmation of the tanks appearing in the episode as correlating to "Cell A" and "Cell B" of the log books;

5) the hatchery's practices and procedures for adding magnesium chloride and calcium chloride to the tanks, as well as identification of any other materials, particularly PVCR modulators, added to the tanks;

6) the hatchery's methodology in adding a varying number of bags of magnesium chloride and calcium chloride to each of the tanks each day;

7) the volume of each of the tanks;

8) the hatchery's purpose in recording water hardness and the practices involving such record keeping;

9) whether the varying amounts of magnesium chloride and calcium chloride recorded as having been added each day were in response to measured water hardness;

10) the hatchery's practices and procedures for feeding fish, including on the day the Undercover Boss TV episode was filmed;

11) why particular fish feeds were used at the Swanger Cove Hatchery and how they were administered to salmon; and

The deposition would be taken by the parties' legal representatives, including their counsel based in the United States, and recorded verbatim, including by audio and/or video recording.

IV. Reimbursement for Costs

To the extent the Court incurs expenses associated with providing assistance in response to this Letter Rogatory, this Court will see that the Supreme Court of Newfoundland and Labrador is reimbursed by Plaintiffs. If the Supreme Court of Newfoundland and Labrador determines that Ms. Willcott will incur significant costs to provide the requested discovery, the reimbursable expenses will be borne by Plaintiffs.

V. Reciprocity

This Court stands ready to extend similar assistance to the judicial tribunals of Canada pursuant to 28 U.S.C. § 1782(a).

/s/John C. Nivison John C. Nivison United States District Court, District of Maine 202 Harlow Street Bangor, Maine 04401 (207) 945-0315

FootNotes


1. Plaintiffs' contention that the deposition of Ms. Willcott is not subject to the 10-deposition limit of the Scheduling Order because the limit does not apply to "international letters rogatory" and because "there is no limit on the number of third party depositions" (Reply at 5, ECF No. 237) is unavailing.
Source:  Leagle

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