Metso Minerals Industries Inc et al v. Astec Industries Inc et al

Filing 41

ORDER signed by Judge Lynn Adelman on 11/3/11 granting 31 Motion to Compel;denying 26 Metso Frances motion to use the Hague Convention. See order for details. (cc: all counsel) (dm)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
METSO MINERALS INDUSTRIES, INC.
and METSO MINERALS (FRANCE) S.A.,
Plaintiffs,
v.

Case No. 10-C-0951

JOHNSON CRUSHERS INTERNATIONAL, INC.
and ASTEC INDUSTRIES, INC.,
Defendants.

DECISION AND ORDER
This is an action for patent infringement. Metso Minerals Industries, Inc., and Metso
Minerals (France) S.A., are the parties alleged to have infringed the patent, but they are
the plaintiffs in this suit because they initiated the action in order to obtain a declaratory
judgment stating that they are not liable for infringement. Johnson Crushers International,
Inc. and Astec Industries, Inc. (together, “JCI”) own the patent and are the ones alleging
that the Metso entities have infringed.
This order addresses JCI’s motion to compel discovery from Metso France and
Metso France’s companion motion for permission to take evidence pursuant to the Hague
Convention on the Taking of Evidence Abroad in Civil or Commercial Matters, 28 U.S.T.
2555, reprinted in 28 U.S.C.A. § 1781 (West 2006). Both motions relate to JCI’s requests
for discovery from Metso France, which Metso France contends will require the production
of information physically located in France. Metso France is willing to produce this
information and does not contend that the discovery requests are unduly burdensome or

otherwise abusive. However, it contends that unless the Hague Convention is used, Metso
France will be in violation of the French “blocking statute,” which provides as follows:
Subject to treaties or international agreements and applicable laws and
regulations, it is prohibited for any party to request, seek or disclose, in
writing, orally or otherwise, economic, commercial, industrial, financial or
technical documents or information leading to the constitution of evidence
with a view to foreign judicial or administrative proceedings or in connection
therewith.
French Penal Code Law No. 80-538 (translated). JCI contends that resort to the Hague
Convention is not warranted, and that Metso France, as a party to this litigation, must
respond to JCI’s discovery requests in accordance with the Federal Rules of Civil
Procedure.
JCI is correct. In Societe Nationale Industrielle Aerospatiale v. U.S. Dist. Court for
Southern Dist. of Iowa, the Supreme Court held that the French blocking statute does not
require a party seeking discovery from a party that is a French national to use the Hague
Convention. 482 U.S. 522, 544 n.29 (1987). The Court held that this is so even though
the French national’s act of producing the discovery outside of the Hague Convention will
result in a violation of the statute. Id. Although the Court did not say that the blocking
statute could never justify use of the Hague Convention rather than the Federal Rules of
Civil Procedure, the Court made clear that a party who wishes to proceed under the Hague
Convention must do more than simply point to the blocking statute. That party must
identify the specific French interests that would be undermined if the court permitted
discovery to be taken pursuant to the Federal Rules and then show that, under the facts
of the case before the court, those interests outweigh the interest of the United States in
allowing discovery in its courts to proceed under its own rules. Id.
2

In the present case, Metso France does not attempt to distinguish or apply Societe
Nationale, and it does little more than point to the blocking statute and assert that its fear
of prosecution in France justifies use of the Hague Convention rather than the Federal
Rules. As Societe Nationale has already rejected this line of argument, I conclude that
Metso France must respond to JCI’s discovery requests in accordance with the Federal
Rules.
Therefore, IT IS ORDERED that JCI’s motion to compel is GRANTED and that
Metso France’s motion to use the Hague Convention is DENIED. Because I have granted
JCI’s motion to compel and none of the exceptions in Federal Rule of Civil Procedure
37(a)(5)(A)(i)-(iii) apply, Metso France must pay the reasonable expenses that JCI incurred
in making the motion, including attorney’s fees.1 I assume that the parties will be able to
agree on the details that need to be worked out in order to implement this order, including
the deadline for Metso France’s responses to the outstanding discovery requests and the
amount of JCI’s reasonable expenses and attorney’s fees.
Dated at Milwaukee, Wisconsin, this 3rd day of November 2011.

s/__________________________________
LYNN ADELMAN
District Judge

1

The only potentially applicable exception is the exception stating that fees and
expenses need not be awarded if the nonmovant’s position was substantially justified. See
Fed. R. Civ. P. 37(a)(5)(A)(ii). However, given Societe Nationale and Metso’s failure to
explain how its position could be considered consistent with this dispositive precedent,
Metso’s position was not substantially justified.
3