Elan Microelectronics Corporation v. Apple, Inc.

Filing 225

Declaration of Derek Walter In Support of Apple Inc.'s Motion to Compel (1) Discovery Relating to US Sales; (2) Documents Improperly Withheld on the Basis of Privilege; and (3) Inventor Depositions filed byApple, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 3, # 3 Exhibit 5, # 4 Exhibit 6, # 5 Exhibit 7, # 6 Exhibit 9, # 7 Exhibit 10, # 8 Exhibit 15, # 9 Exhibit 22, # 10 Exhibit 24, # 11 Exhibit 28, # 12 Exhibit 29, # 13 Exhibit 30, # 14 Exhibit 31, # 15 Exhibit 32, # 16 Exhibit 33, # 17 Exhibit 36)(Greenblatt, Nathan) (Filed on 5/31/2011)

EXHIBIT 33

Page 1

In re NIFEDIPINE CAPSULE PATENT LITIGATION; BAYER AG & PFIZER,
INC., Plaintiffs, v. SIEGFRIED AG & SIEGFRIED PHARMACEUTICALS, INC.,
Defendants
MDL No. 774, M21-51 (JFK), No. 88 Civ. 1374 (JFK)
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF
NEW YORK
1989 U.S. Dist. LEXIS 11061; 13 U.S.P.Q.2D (BNA) 1574

September 19, 1989, Decided; September 20, 1989, Filed

OPINION BY: [*1] KEENAN
OPINION

MEMORANDUM OPINION AND ORDER
JOHN F. KEENAN, UNITED STATES DISTRICT
JUDGE
Background
The parties to this multidistrict patent litigation seek
the Court's intervention in the resolution of two discovery
disputes. First, defendants Siegfried AG and Siegfried
Pharmaceuticals, Inc. ("Siegfried") request that plaintiff
Bayer AG ("Bayer"), a German corporation, make
available for deposition pursuant to the Federal Rules of
Civil Procedure four inventors named on the patent that
is the subject of these infringement actions. * Second,
Bayer seeks production from Siegfried of certain
requested documents.
* Defendant Chase Chemical Company, by letter
to the Court dated September 1, 1989, indicates
its desire to participate in any depositions taken
of the four inventors in this action.
While the Court intervenes in these disputes in order
to expedite discovery, it wishes to impress upon the

parties its unwillingness to do so in the future. It is, after
all, the purpose of discovery to advance the litigation so
that it may proceed in an orderly manner within
reasonable time constraints. It is not the purpose of
discovery to harass the adversary with subterfuge and
delay. [*2] Counsel are advised to consider long and
hard before entering into any further discovery disputes.
Discussion
A. Inventors
The four inventors whose depositions Siegfried
wishes to obtain, Drs. Frederich Bessert, Wulf Vater,
Kurt Bauer and Karl Heinz Adams, are former employees
of Bayer who reside in Germany. Siegfried asserts that
the four were major participants in the invention of the
drug whose patent is at issue in this case. (Siegfried
August 21, 1989 letter to the Court, at 2). On March 27,
1989, Siegfried served on the parties a notice of
deposition of these four inventors. In a letter from Bayer
to Siegfried dated April 21, 1989, Bayer notified
Siegfried that the four were no longer employed with
Bayer, thus Bayer presumably could not exert control
over them to be deposed. (Siegfried August 21, 1989
letter to the Court, Exhs. A & B). Siegfried has
demonstrated its need for deposing the inventors; their
testimony is logically relevant to the determination of this
action. In addition to the relevance of their testimony, the
four inventors entered into a written assignment with

Page 2
1989 U.S. Dist. LEXIS 11061, *2; 13 U.S.P.Q.2D (BNA) 1574

Bayer which states in pertinent part, "we hereby agree,
whenever requested, to . . . testify [*3] in any legal
proceedings." (Siegfried August 21, 1989 letter to the
Court, Exh. J). The Court interprets this clause to mean
that the four inventors have agreed to testify in any legal
proceedings, not just those proceedings in which Bayer
would like them to testify.
Bayer argues that it is powerless to compel the
inventors to testify in an American-style deposition and
suggests that Siegfried request Letters Rogatory pursuant
to German law and the Hague Convention. The Court
disagrees with Bayer's position. The contract clause is
clear. It makes no mention of an expiration of the
inventors' obligation to testify nor does it invoke German
law as controlling. Siegfried points out correctly that
"Bayer . . . has come to a U.S. court, as a U.S. plaintiff,
asserting a U.S. patent" (Siegfried August 6, 1989 letter
to the Court, at 2), and therefore, in the interests of
justice, must proceed according to the Federal Rules of
Civil Procedure. The Court directs the parties to its
decision in Compagnie Francaise D'Assurance v. Phillips
Petroleum Co., 105 F.R.D. 16 (S.D.N.Y. 1984). In that
case, two French companies brought suit in the Southern
District of New York for breach of contract, [*4] then
sought protection under the Hague Convention from
discovery requests pursuant to the Federal Rules of Civil
Procedure. This Court held, among other things, that
plaintiffs were subject to discovery pursuant to the
Federal Rules. The Court stated:
Plaintiffs come into this court seeking the protection of
United States laws that enable injured persons to recover
for breach of contract. Plaintiffs cannot avail themselves
of these benefits, yet neglect their accompanying
responsibility to disclose all relevant facts to their
adversary.

In addition, Bayer is under a statutory injunction
pursuant to the Food and Drug Laws, specifically 21
U.S.C. § 355, which permits it to delay for 30 months
Federal Drug Administration approval of Siegfried's
pending application for permission to sell its product.
Siegfried correctly indicates that 21 U.S.C. §
355(j)(4)(B)(iii) requires that "the parties shall reasonably
cooperate in expediting the action," and empowers the
court to shorten the 30 month injunctive period for failure
of either party to cooperate in expediting the action. [*5]
The Court finds that Bayer's actions concerning the
inventors does not constitute "reasonable cooperation."
Bayer's further refusal to make the four inventors
available for deposition pursuant to the Federal Rules of
Civil Procedure will result in this Court exercising its
aforementioned powers, thus shortening the period of
injunctive relief which Bayer is presently enjoying.
For the reasons set forth above, Bayer is ordered to
make the four inventors available for deposition by
Siegfried pursuant to the Federal Rules of Civil
Procedure.
B. Document Request
In a letter to the Court dated August 29, 1989, Bayer
alleges difficulty in obtaining requested documents from
Siegfried. To the extent that Bayer is already in
possession of some of the documents at issue, the Court's
intervention is unnecessary. However, as to those
documents which Siegfried has failed to produce and to
which Siegfried has admitted their "marginal relevance"
(Siegfried September 12, 1989 letter to the Court), the
Court orders that they be produced to Bayer no later
than October 2, 1989.
SO ORDERED.
Dated: September 19, 1989, New York, New York

Compagnie Francaise, 105 F.R.D. at 32. The Court finds
this logic to be wholly applicable to plaintiff Bayer.