Hetronic International Inc v. Hetronic Germany GMBH et al

Filing 507

ORDER re 504 Status Report filed by Hetronic International Inc, 506 Response filed by Abitron Germany GmbH, Abitron Austria GmbH, Hetronic Germany GMBH, Albert Fuchs, Hydronic-Steuersysteme-GMBH, ABI Holding Gmbh. Telephonic Scheduling Conference set for 10/27/2021 04:00 PM before Judge Stephen P. Friot, to address matters such as (i) the need for discovery in preparation for a hearing, and (ii) the setting of a date for the hearing (as well as other deadlines). Signed by Judge Stephen P. Friot on 10/12/2021. (llg)

IN THE UNITED STATES DISTRICT COURT FOR THE
WESTERN DISTRICT OF OKLAHOMA
HETRONIC INTERNATIONAL,
INC.,
Plaintiff,
-vsHETRONIC GERMANY, GmbH,
et al.,
Defendants.

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Case No. CIV-14-650-F

ORDER
The court’s permanent injunction, as originally entered, extends worldwide.
Specifically, it applies “to the defendants and their activities both within and outside
of the United States.” Doc. no. 434, ECF p. 8. On appeal, the Tenth Circuit
concluded the injunction’s scope was “improperly broad.” Doc. no. 500, ECF p. 48.
Applying Emergency One, Inc. v. Am. Fire Eagle Engine Co., 332 F.3d 264, 269
(4th Cir. 2003), the appellate court stated: “Hetronic isn’t entitled to injunctive relief
in markets it hasn’t actually penetrated.” Doc. no. 500, ECF p. 49. Thus, the
appellate court “narrow[ed] the injunction to the countries in which Hetronic
currently markets or sells its products,” and stated that “[t]o the extent those
countries have changed since the district court entered the injunction, we remand for
the court to modify the injunction in accordance with this opinion.” Id. at ECF 50.
According to plaintiff, there has been no change in the countries in which it
markets or sells since the entry of the court’s injunction. Doc. no. 504, ECF p. 3. It

represents that it markets and sells in all countries in the world, except for Iran, North
Korea, and Syria. Id. Plaintiff has submitted a declaration of Timothy R. Glandon
to verify the representation. Doc. no. 504-2. Plaintiff has no objection to the court
modifying its injunction to apply worldwide except for the three named countries.
Defendants posit that plaintiff carries the burden of proof on its request for
permanent injunction and the company cannot rely upon affidavits to satisfy its
burden. Doc. no. 506, ECF pp. 2-3. It specifically objects to the use of Mr.
Glandon’s affidavit as hearsay under Rule 801, Fed. R. Evid., and further notes the
affidavit is unreliable because Mr. Glandon does not list “Afghanistan, Burma, Cote′
d’Ivoire, Cuba, Eritrea, Guinea-Bissau, Haiti, Iraq, Kenya, Lebanon, Liberia, Lybia,
Rwanda, Nigeria, and the Democratic Republic of Congo” as countries in which the
company markets or sells, despite claiming it markets and sells in all countries other
than Iran, North Korea and Syria. Id. at ECF p. 3, p. 4 & n. 1.
Upon review, the court agrees that it is plaintiff’s burden to establish the
countries in which it currently markets or sells its products. The record does not
clearly indicate which countries those are. The court concludes that a factual dispute
exists with respect to the countries in which plaintiff currently markets or sells,
which necessities an evidentiary hearing. The hearing will be limited to addressing
the factual dispute as to the countries in which plaintiff currently markets or sells its
products.1

1

The court anticipates (but certainly does not invite) a semantic dispute as to the meaning of
“markets” in this context. The yet-to-be-entered scheduling order will require pre-hearing briefs.
The court will require plaintiff’s brief to be filed first, with a section devoted to plaintiff’s position
as to what it takes to “market” plaintiff’s products in any given country. Then, if defendant takes
issue with plaintiff’s position, defendant can respond in its pre-hearing brief.

2

A telephonic scheduling conference to address matters such as (i) the need for
discovery in preparation for the hearing, and (ii) the setting of a date for the hearing
(as well as other deadlines) will be held on October 27, 2021, at 4:00 p.m.
DATED this 12th day of October, 2021.

14-0650p111 rev_.docx

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