United States District Court, D. Maine
ORDER ON MOTION FOR ISSUANCE OF LETTER
C. Nivison U.S. Magistrate Judge
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.
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.
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.
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.)
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.)
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.
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.
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
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).
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.”). The good cause
standard “focuses on the diligence (or lack thereof) of
the moving ...