Federal-Mogul World Wide, Inc. et al v. Mahle GmbH et al

Filing 39

ORDER denying 37 Motion. Signed by District Judge Julian Abele Cook. (KDoa)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION

FEDERAL-MOGUL WORLD WIDE, INC.,
a Michigan corporation, and FEDERAL-MOGUL
CORPORATION, a Delaware corporation,
Plaintiffs,
Case No. 11-10675
Honorable Julian Abele Cook, Jr.

v.
MAHLE GMBH, a German corporation, and
MAHLE ENGINE COMPONENTS USA, INC., a
Delaware corporation,
Defendants.

ORDER
This lawsuit involves a claim by the Plaintiffs, Federal-Mogul World Wide, Inc. and
Federal-Mogul Corporation (collectively, “Federal-Mogul”) that the Defendants, Mahle GMBH
and Mahle Engine Components USA, Inc. (collectively, “MEC”), are guilty of infringing their
exclusive rights in U.S. Patent No. 6,620,472 (the ‘472 Patent), in violation of 35 U.S.C. § 1, et.
seq. Federal-Mogul has filed a request for the entry of a preliminary injunction, which is currently
pending before the Court and scheduled for a hearing on June 30, 2011.
To facilitate the development of a sufficient factual record in advance of the preliminary
injunction hearing, the Court entered an order on May 10, 2011 in which it granted FederalMogul’s request to conduct limited discovery into certain areas. Acting under the authority of Fed.
R. Civ. P. 26(d), the Court permitted discovery on narrow grounds, “in the manner set forth in
paragraphs 20-24 of [the Plaintiffs’] motion [for expedited discovery].” (May 10th Order at ¶ 5).
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Those referenced portions of Federal-Mogul’s motion, in turn, provided that the company was
seeking “limited” discovery from MEC and their Confidential Supplier “in the form of a Federal
Rule of Civil Procedure 30(b)(6) deposition, and document requests.” Moreover, their inquiry was
restricted, in relevant part, to “the design, development, and manufacture of steel friction-welded
pistons for MEC.”
The parties are currently in the midst of exchanging discovery pursuant to the Court’s May
10th order. Nevertheless, they disagree about the scope of evidence to which the Plaintiff is entitled.
The main point of contention revolves around whether the May 10th order requires MEC to produce
tangible items and supporting testimony during a deposition scheduled for Monday, June 13, 2011.
For its part, Federal-Mogul asks the Court to interpret the May 10th order as requiring
“Defendants’ production of documents [to] include samples of the accused products (i.e., steel
friction-welded pistons), including physical samples of the piston intended for GM’s 2015 Diesel
Engine Program and the piston supplied to Caterpillar for its C145 engine family.” In the
company’s view, the Court’s May 10th order fairly contemplates the production of a tangible sample
of the allegedly infringing pistons, along with supporting testimony both from MEC and its
Confidential Supplier.
MEC opposes Federal-Mogul’s request, however. In its judgment, the Court’s order is
sufficiently clear, and Plaintiffs’ motion reflects an improper attempt to expand discovery beyond
the narrow categories identified its motion and later approved by the Court. It further opines that
no true emergency exists here, inasmuch as the Plaintiffs have known about MEC’s objections to
the discovery requests since May 19th. It characterizes the motion as one that (1) will cause undue

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burden to MEC executives, and (2) reflects a deliberate attempt by the Plaintiffs to cast doubt on
the scope of the depositions they intend to take.
Upon reviewing the record, the Court finds the request by Federal-Mogul to be unjustified.
As the Defendants note, the Court entered its order of May 10th based on the Plaintiffs’
representations that discovery would be limited both in nature and scope. Federal-Mogul averred
quite specifically that (1) it would seek information relevant only to its efforts to secure a
preliminary injunction, and (2) any requests would come in the form of depositions and document
requests related to potentially infringing steel friction-welded pistons supplied to GM and/or
Caterpillar. Nevertheless, a review of the company’s request for the production of documents
reveals an attempt to secure data related to “any steel pistons” manufactured or sold by MEC, along
with physical samples of same, whether they are related to MEC’s business with GM and/or
Caterpillar or not. This far exceeds the original scope of the Court’s order. Moreover, the Court
acknowledges that Rule 34 would, ordinarily, support the production of “any designated tangible
things” in response to a normal discovery request. See Fed. R. Civ. P. 34(a)(1)(B). Yet, this rule
has no application here, where the exchange of information is intentionally narrow and being
conducted with special permission from the Court, based largely on Federal-Mogul’s representation
that good cause existed for granting its limited discovery request.
Because the Plaintiffs’ proposed interpretation of the Court’s May 10th order is unwarranted,
their request for a clarification must be, and is, denied.

IT IS SO ORDERED.
Dated:

June 10, 2011
Detroit, Michigan

s/Julian Abele Cook, Jr.
JULIAN ABELE COOK, JR.
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United States District Court Judge

CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing Order was served upon counsel of record via the Court's ECF System to their respective
email addresses or First Class U.S. mail to the non-ECF participants on June 10, 2011.
s/ Kay Doaks
Case Manager

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