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Grupo Petrotemex, S.A. De C.V. v. Polymetrix AG

United States District Court, D. Minnesota

May 24, 2019

Grupo Petrotemex, S.A. De C.V. and DAK Americas LLC, Plaintiffs,
v.
Polymetrix AG, Defendant.

          ORDER

          HILDY BOWBEER, UNITED STATES MAGISTRATE JUDGE

         This matter is before the Court on Plaintiffs Grupo Petrotemex, S.A. De C.V. and DAK Americas LLC’s (“GPT/DAK”) Renewed Motion to Compel [Doc. No. 416]. For the reasons set forth below, the Court grants in part and denies in part the motion.

         I. BACKGROUND

         At the Court’s invitation, GPT/DAK has renewed their Second Motion to Compel [Doc. No. 148], the particulars of which have been discussed by this Court in several prior orders, including its Orders of June 28, 2018 [Doc. No. 210], and February 25, 2019 [Doc. No. 398]. The Court had deferred resolution of the full scope of GPT/DAK’s Second Motion to Compel while Polymetrix’s Motion to Dismiss was pending and discovery in this case was limited to material pertinent to the issue of subject matter jurisdiction. However, Polymetrix’s motion was denied by the Honorable Susan Richard Nelson, United States District Judge, see (Mar. 5, 2019, Mem. Opinion & Order [Doc. No. 408]), and this Court has determined that discovery should now proceed on all issues. See (Apr. 22, 2019, Order [Doc. No. 424 at 2].) The Court will not provide a full recitation of the facts or procedural posture of the instant motion, and instead incorporates by reference the factual underpinnings and relevant background set forth in its June 28, 2018, and February 25, 2019, orders. In short, the Court is now tasked with determining whether Polymetrix may properly withhold pursuant to Swiss law any documents that it has determined to be responsive to GPT/DAK’s discovery requests beyond those that the Court previously ordered Polymetrix to produce on subject matter jurisdiction. Put another way, the Court must determine to what extent Polymetrix must produce additional documents pursuant to Federal Rule of Civil Procedure 34, and whether and to what extent GPT/DAK will be required to pursue certain documents through the processes established by the Hague Convention for the Taking of Evidence Abroad.

         II. DISCUSSION

         A. Legal Standard

         When it is necessary to seek evidence abroad, “the district court must supervise pretrial proceedings particularly closely to prevent discovery abuses.” Societe Nationale Industrielle Aerospatiale v. U.S. Dist. Court for S. Dist. of Iowa, 482 U.S. 522, 546 (1987). American law has “long recognized the demands of comity in suits involving . . . sovereigns with a coordinate interest in the litigation.” Id. at 546. In suits involving extraterritorial discovery, “[t]he exact line between reasonableness and unreasonableness in each case must be drawn by the trial court, based on its knowledge of the case and . . . the governments whose statutes and policies they invoke.” Id. However, that evidence sought is subject to a foreign nation’s blocking statute does not necessarily prevent an American court from ordering a party to produce it. Id. at 544. Furthermore, “[a] review of case law reveals that courts have not looked favorably on blocking statutes.” Skky, Inc. v. Thumbplay Ringtones, LLC, No. 13-cv-2072 (PJS/JJG), 2014 WL 11429038, at *5 (D. Minn. Apr. 4, 2014) (Graham, Mag. J.).

         The party opposing discovery of relevant, non-privileged information has “the burden of establishing some good cause or sound reason for blocking disclosure.” Rolscreen Co. v. Pella Prod. of St. Louis, Inc., 145 F.R.D. 92, 95 (S.D. Iowa 1992); see also In re: Nat'l Arbitration Forum Litig., No. CV 09-1939 (PAM/JSM), 2010 WL 11469529, at *3 (D. Minn. Feb. 16, 2010) (Mayeron, Mag. J.) (it is “axiomatic” that the resisting party bears the burden of explaining why discovery should be limited). Thus, the party relying on foreign law to resist discovery has the burden to show such law applies to the discovery at issue. See, e.g., United States v. Vetco, Inc., 691 F.2d 1281, 1288 (9th Cir. 1981). Furthermore, a party seeking to require that discovery be obtained through Hague Convention international discovery procedures must “demonstrate appropriate reasons for employing [them].” Aerospatiale, 482 U.S. at 547.

         B. Analysis

         In its opposition to GPT/DAK’s Second Motion to Compel, Polymetrix based its resistance to producing certain concededly relevant and responsive documents on Article 162 and Article 273 of the Swiss Criminal Code. To be clear, Polymetrix did not take the position that either of these laws precludes it from producing its own confidential information. Instead, it asserted that Swiss law precludes it from producing confidential third-party information in its possession, and that the third-party information is so intertwined with Polymetrix’s information that there is no practicable way to redact the former and produce the latter. See, e.g., (Def. Polymetrix AG’s Mem. of Law in Opp’n to Pls.’ Mot. to Compel Discovery, “Def.’s Mem. in Opp’n to Mot. to Compel” [Doc. No. 91 at 2].) Before proceeding to the question of whether the Swiss blocking statutes should be understood to apply to and preclude the production of documents by Polymetrix, however, the Court must first address the proper scope of discovery in this case.

         1. The Proper Scope of Discovery

         GPT/DAK’s complaint alleges that Polymetrix induced infringement of the patents-in-suit, thereby subjecting it to liability under 35 U.S.C. §§ 271. See (Compl. [Doc. No. 1 ¶¶ 20, 27–28, 33–34, 39–40].) But, as GPT/DAK acknowledged in its opposition to Polymetrix’s motion to dismiss, the complaint does not allege direct infringement under 35 U.S.C. § 271(a). See (Opp’n to Def.’s Mot to Dismiss Compl. Pursuant to Fed. R. Civ. P. 12(b)(1), “Opp’n to Mot. to Dismiss” [Doc. No. 161 at 2–3, 11–12].) Furthermore, although the Complaint does not specify the origin of the PET allegedly made using the accused EcoSphere™ technology, the evidence and argument adduced in connection with the motion to dismiss made it abundantly clear that the only competent evidence GPT/DAK has regarding the importation into the United States of such PET relates to PET manufactured at a plant located in Wloclawek, Poland owned by Indorama Ventures Poland Sp. Z.O.O (hereinafter the “Indorama Poland plant”), which Polymetrix had “revamped” to incorporate the EcoSphere™ technology. See generally (Mar. 5, 2019, Mem. Opinion & Order at 9–15.) Yet GPT/DAK’s requests to Polymetrix seek wide-ranging information about the marketing, advertising, commercialization, sale, and offer for sale of the EcoSphere™ technology to any customer for any plant located anywhere in the world.[1]

         The Court has not forgotten that Polymetrix explicitly withdrew any relevance objections to GPT/DAK’s requests that it might have asserted under the Federal Rules of Civil Procedure. See (Def.’s Mem. in Opp’n to Mot. to Compel at 2.) But the Court has its own independent obligation under Rule 1 to assure that discovery in this case does not become a fishing expedition but instead is focused on matters for which there is some foundation in the record, and it concludes that the scope of discovery sought by GPT/DAK’s requests go far beyond the bounds of discovery that are reasonably implicated by the claims and the record in this case.

         Accordingly, the Court denies GPT/DAK’s motion to the extent it seeks to compel responsive information or documents regarding the offer for sale, sale, installation, or support of the EcoSphere™ technology to or for any specific customer other than (1) Indorama, its customers or affiliates, or (2) a customer to or for whom it has offered to sell the Ecosphere™ technology to be operated in the United States. Thus, for example, the Court will not compel discovery into activities, products, or facilities in China, such as the PET plant under construction for Jiangyin Chengold Packaging Materials Co., Ltd.[2] This limitation should be read narrowly, however, in that the Court does not intend to preclude reasonable and proportional discovery into documents that, although they may pertain to another customer, are relevant to the claims and issues in this case for some other reason, such as documents that that describe the development of the Ecosphere™ process itself or documents that analyze the claims of the patents-in-suit and whether they read on the EcoSphere™ process; or ...


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