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HAGENBUCH v. 3B6 SISTEMI ELETTRONICI INDUSTRIALI S.R.L.

September 12, 2005.

LEROY G. HAGENBUCH, Plaintiff,
v.
3B6 SISTEMI ELETTRONICI INDUSTRIALI S.R.L., an Italian Corporation, 3B6 TECHNOLOGIES, LLC, an Illinois limited liability company, VARIOUS JOHN DOE SUPPLIERS, AGENTS, RESELLERS, CUSTOMERS, OWNERS, or ENDUSERS of 3B6 SISTEMI INDUSTRIALI S.R.L., 3B6 TECHNOLOGIES, LLC or selected ones of their products, or Others, Defendants.



The opinion of the court was delivered by: MARTIN ASHMAN, Magistrate Judge

MEMORANDUM OPINION AND ORDER

Plaintiff, Leroy G. Hagenbuch, moves this Court to compel Defendants, 3B6 Sistemi Elettronici Industriali S.R.L. ("3B6 Italy") and 3B6 Technologies, LLC ("3B6 USA"), to produce documents that Plaintiff claims are relevant to his patent infringement suit against them. Defendants oppose Plaintiff's motion and move for a protective order, arguing, among other things, that the Hague Convention on Taking Evidence Abroad, 23 U.S.T. 2555, T.I.A.S. No. 7444 (reproduced in 28 U.S.C.A. § 1781) ("Hague Convention"), governs any discovery requests directed to 3B6 Italy. The parties have submitted briefs focusing on the relevancy of the Hague Convention to Plaintiff's motion and the Court now finds that the Federal Rules of Civil Procedure, and not the Hague Convention, govern discovery in this case. Under the Federal Rules of Civil Procedure, Plaintiff is entitled to the discovery he seeks from 3B6 Italy so the Court grants Plaintiff's motion to compel discovery and denies Defendants' cross-motion for a protective order.

  I. Background

  Plaintiff brings his lawsuit under 35 U.S.C. §§ 271, 281 et seq. and alleges that 3B6 Italy and its United States distributor, 3B6 USA, (as well as other "John Doe" defendants) directly infringed, induced infringement of, and/or contributorily infringed one or more patents issued to Plaintiff*fn1 (either directly or under the doctrine of equivalents) by manufacturing, using, importing into the United States, offering for sale and/or selling, at least, 3B6 USA's and 3B6 Italy's line of on-board weighing systems for vehicles, as well as certain products and components of those systems. (Pl.'s Am. Compl. at 5-6.) Plaintiff further alleges that Defendants' infringement has been willful, has resulted in irreparable injury to him, and has unjustly enriched Defendants. On April 4, 2005, Defendants filed an answer to Plaintiff's complaint, as well as a counterclaim seeking a declaration that Plaintiff's patents are unenforceable, are invalid, and/or are not infringed directly, contributorily, or by inducement, based on the actions of either 3B6 Italy or 3B6 USA. (Defs.' Answer & Countercl. at 10.) Attempting to proceed with pre-trial discovery, Plaintiff served Defendants with requests for documents on April 29, 2005. Not satisfied with Defendants' responses, Plaintiff filed his first motion to compel on July 8, 2005. On July 27, 2005, Defendants responded to Plaintiff's motion with a brief entitled, "Defendants' Opposition to Plaintiff's First Motion to Compel Discovery and Cross-Motion for Protective Order." The parties subsequently filed replies in support of their briefs. The parties appeared before this Court for oral arguments on July 13, 2005, and again on August 17, 2005, after briefing the Hague Convention issue.

  II. Discussion

  3B6 Italy refuses to provide Plaintiff with any documents within its possession, custody, or control, arguing that all discovery against it must take place in accordance with the Hague Convention, as 3B6 Italy is a foreign corporation based in Italy and Italy and the United States are both signatories to the Hague Convention. Plaintiff counters that the Federal Rules of Civil Procedure control discovery in this case and that deferring to the Hague Convention is neither mandatory nor appropriate.

  Both the Federal Rules of Civil Procedure and the Hague Convention are the law of the United States. Societe Nationale Industrielle Aerospatiale v. U.S. Dist. Ct. for the S. Dist. of Iowa, 482 U.S. 522, 533 (1987). In Societe Nationale Industrielle Aerospatiale, the Supreme Court considered the relationship between the federal discovery rules and the Hague Convention and determined that "the Convention was intended as a permissive supplement, not a pre-emptive replacement, for other means of obtaining evidence located abroad." Id. at 536. The Court rejected mandatory resort to the Hague Convention, adopting instead an approach to the Convention that leaves the district courts free to utilize a case by case approach. Id. at 546; Great Lakes Dredge & Dock Co., v. Harnischfeger Corp., No. 89 C 1971, 1990 WL 147066, at *1 (N.D. Ill. Sept. 25, 1990). When making these case by case decisions, district courts are instructed to consider: (1) the intrusiveness of the discovery requests; (2) the sovereign interests involved; and (3) the likelihood that resort to the Hague Convention would be an effective discovery device. Societe Nationale Industrielle Aerospatiale, 482 U.S. at 544-46. The party moving for application of the Hague Convention bears the "not great" burden of showing that the Convention applies. Tulip Computers Int'l B.V. v. Dell Computer Corp., 254 F. Supp. 2d 469, 474 (D. Del. 2003).

  A. Intrusiveness of Discovery Requests

  Plaintiff claims that 3B6 Italy is the manufacturer and seller of allegedly infringing products and, as such, is likely in possession of more useful and detailed documentation than its United States distributor, 3B6 USA. (Pl.'s Reply in Supp. of Mot. at 6.) According to Plaintiff, this is especially true in light of the fact that 3B6 USA refused to provide or lend samples of the accused products to Plaintiff, did not allot Plaintiff sufficient time to examine 3B6 USA's files, and did not appear to have basic documents relating to the allegedly infringing "Load Runner" product. (Id.) Defendants argue that Plaintiff's discovery requests of 3B6 Italy are overbroad and intrusive, as the documents requested are: (1) not relevant to Plaintiff's infringement claim; (2) exactly the same documents requested from 3B6 USA; (3) too vague and generalized; and (4) brought for improper purpose.

  Defendants assert that 3B6 Italy cannot possibly be liable for induced infringement, direct infringement, or contributory infringement, so 3B6 Italy's documents are irrelevant to Plaintiff's claims. (Defs.' Reply to Protective Order at 6.) Defendants argue that 3B6 Italy can only induce infringement if 3B6 USA is a direct infringer. According to Defendants, 3B6 USA cannot be a direct infringer because the asserted claims call for specific uses of components on a vehicle and 3B6 USA only sells components. Because Defendants believe that Plaintiff's asserted claims call for specific uses and are "primarily functional in scope . . . and do not contain any detail about the inner workings of the sensors," (Defs.' Opp'n to Pl.'s Mot. at 3), Defendants characterize Plaintiff's request for 3B6 Italy's documentation of designs, manufacturing, and drawings and information concerning software and parts, as irrelevant and unrelated to infringement.

  Defendants also argue that 3B6 Italy is not liable for contributory infringement because 3B6 Italy never offered to sell nor sold within the United States nor imported into the United States a component of a patented machine. (Defs.' Reply to Protective Order at 6.) According to Defendants, 3B6 USA alone imports and sells the accused products in the United States. (Id.) Thus, Defendants believe that only 3B6 USA is potentially liable in this matter, that all questions about how the allegedly infringing products operate can be ascertained from 3B6 USA, (id.), and that all documents and things relevant and necessary for Plaintiff's discovery have already been produced by 3B6 USA. (Defs.' Opp'n to Pl.'s Mot. at 4.)

  Defendants rely on conclusory statements and declarations to support their arguments. Defendants submit a declaration from Mr. Gianmarco Bonetti, chief engineer and part owner of 3B6 Italy, in which he claims that: (1) Since the formation of 3B6 USA in 2000, 3B6 USA has been the exclusive distributor of 3B6 products in the United States; (2) Prior to the formation of 3B6 USA in 2000, 3B6 Italy did not sell any accused products to any customer in the United States; and (3) 3B6 Italy is not aware of any of its customers outside the United States using or importing any accused products into the United States. (Defs.' Opp'n to Pl.'s Mot. at 1.) Defendants conclude that, in light of Mr. Bonetti's declaration, "there can be no doubt that 3B6 Italy does not now, and has never sold accused products to the United States, except to 3B6 USA." (Defs.' Opp'n to Pl.'s Mot. at 4.) Defendants continue, claiming that discovery from 3B6 Italy is inappropriate because "[Plaintiff] does not make or sell any products that 3B6 could have copied, and there are no known competitors of 3B6 that are licensees of [Plaintiff]." (Defs.' Opp'n to Pl.'s Mot. at 2.)

  The Court is neither persuaded by Defendants' attempts to define the scope and nature of Plaintiff's infringement claim nor the evidence submitted thus far. Under Rule 26 of the Federal Rules of Civil Procedure, Plaintiff is entitled to explore his theory of the case and may request appropriate documentation toward that end. Fed.R.Civ.P. 26. 3B6 Italy, as manufacturer and seller of the products at issue, may very well be in possession of technical, manufacturing, and sales information significant to Plaintiff's claims, including any infringement that may have occurred prior to the incorporation of 3B6 USA. See, e.g., Biotech Biologische Naturverpackungen v. Biocorp, Inc., 249 F.3d 1341, 1350 (Fed. Cir. 2001) (evidence regarding manufacturing activities abroad may be relevant to infringement claims in the United States). Furthermore, it is not obvious that 3B6 USA possess, let alone produced, all of the documents sought by Plaintiff. Plaintiff has alleged, among other things, that 3B6 USA did not have all of the manuals and technical documentation for the "Load Runner" product (which is manufactured by 3B6 Italy),*fn2 (Pl.'s Supplemental Reply at 3), and that 3B6 Italy may have infringed on Plaintiff's patents prior to the incorporation of 3B6 USA. (Pl.'s Mot. to Compel at 8.) Plaintiff is confident that 3B6 Italy possesses all of the documentation relevant to these claims. While Mr. Bonetti's declaration attempts to alleviate some of Plaintiff's concerns, Plaintiff is entitled to explore whether 3B6 Italy has infringed on his patents and need not accept the statements of 3B6 Italy's chief engineer and part owner as the final word on the matter. Simply, Mr. Bonetti's declaration does not end the factual inquiry in this case. Thus, 3B6 Italy's documents are relevant from a discovery standpoint and Defendants' claims that 3B6 USA has already provided Plaintiff with all the documentation he needs and that Plaintiff's requests from 3B6 Italy are irrelevant or duplicative fail.

  Next, Defendants argue that the scope of Plaintiff's discovery request is too vague and generalized and should therefore be denied or, in the alternative, reduced and narrowed by the Court. This Court does have an obligation to protect foreign litigants from abusive and unduly burdensome discovery requests. Societe Nationale Industrielle Aerospatiale, 482 U.S. at 546. In fact, when international discovery is necessary, this Court is instructed to: (1) supervise pretrial proceedings particularly closely in order to prevent discovery abuses, such as unnecessary costs for transportation of documents to or from ...


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