MARICAL INC et al v. COOKE AQUACULTURE INC et al

Filing 280

ORDER granting 219 Motion for Issuance of Letter Rogatory. By MAGISTRATE JUDGE JOHN C. NIVISON. (Attachments: # 1 Exhibit A Letter Rogatory) (CWP)

UNITED STATES DISTRICT COURT
DISTRICT OF MAINE
MARICAL INC., et al.,
Plaintiffs,
v.
COOKE AQUACULTURE INC.,
et al.,
Defendants

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1:14-cv-00366-JDL

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).

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.
1

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.
/s/ John C. Nivison
U.S. Magistrate Judge
Dated this 25th day of July, 2017.