Patents
| Pages | 30-32 |
30 Volume 22, April–June 2016 international law update
© 2016 International Law Group, LLC. All rights reserved. ISSN 1089-5450, ISSN 1943-1287 (on-line) | www.internationallawupdate.com
“Good try, SAS, but this is an untenable re-
characterization of objections previously made and
waived or overruled.”
“First, the trial court unquestionably had
authority, whether or not characterized technically
as ‘jurisdiction,’ to rule on the facially proper §
1782 application before it. Republic of Ecuador
v. Connor, 708 F.3d 651, 655 (5th Cir.2013). e
court also found that the three criteria for a § 1782
order were satised. at the consequence of its
discovery order was ultimately service of a subpoena
pursuant to the Hague Service Convention did not
deprive the court of authority. […] e availability
of a motion to quash to protect a party that ‘resides
or is found in the district’ is no dierent, nor more
onerous, for SAS than for any similarly situated
target of a § 1782 order. In sum, the issues raised
by the method of service as well as the scope and
enforceability of the discovery order furnished
ample grounds for a timely motion to quash, but
they did not cast doubt on the district court’s
‘jurisdiction.’”
“Second, SAS failed to le objections ‘before
the earlier of the time specied for compliance
or 14 days after the subpoena is served,’ nor did
it move to quash until the day of the hearing on
the motion to compel before the magistrate judge.
Fed. R.Civ.P. 45(d)(2)(B), (3)(A). Nearly forty days
elapsed between the service of the subpoena and
Grupo Mexico’s motion to compel, yet SAS sat on its
hands. e district court did not abuse its discretion
by holding that the untimely ling, which objected
to the manner of service in the Cayman Islands and
the absence of a court order from a Cayman Islands
court, waived SAS’s personal jurisdiction defense.”
“In so concluding, we are mindful that
interesting issues might have been considered,
some of which have not been raised by SAS but are
suggested by the circumstances here and other case
law. […] [However] [w]e decline to address these
issues simply because SAS resides in or is found
in the district and had, but squandered, abundant
opportunities to raise the issues seasonably in the
trial court. We perceive no fundamental unfairness,
no interference with foreign tribunals in either
Mexico or Cayman Islands, and no procedural
violation inicted on SAS by this holding.”
e Court armed district court’s order
arming the magistrate judge’s grant of the motion
to compel document production.
citation: Grupo Mexico SAB DE CV v. SAS Asset
Recovery, Ltd., 821 F.3d 573 (5th Cir. 2016).
PATENTS
In case of patent infringement lawsuits
in Delaware and Germany, Eighth Circuit
reviews §1782 discovery request for
use in German case; Delaware district
court properly refused to modify the
protective order to allow use of the
information in the German case where
German court had not yet ruled on
discovery request
In 2013, Andover Healthcare, Inc. (“Andover”),
a company that makes cohesive, latex-free bandages,
led a patent-infringement suit in the District of
Delaware, alleging that 3M Company (“3M”), who
also makes cohesive, latex-free bandages, infringed
Andover’s patent with its line of Coban bandages.
Andover also sued 3M, for the related European
patent, in Germany.
In support of its defense in the German case,
3M submitted an expert report and argued that
its products did not infringe Andover’s European
patent. Andover believed that 3M’s test results were
not correct and requested to conduct its own testing
on 3M’s polychloroprene and 3M’s polychloroprene
tackifying agent mixture. 3M refused, asserting that
the information implicates highly sensitive trade
secrets. However, 3M did disclose the disputed
information, under a protective order, in the
Delaware infringement suit. Andover then sought
permission from the Delaware court to use the
information in the parallel German proceeding.
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