Highland Tank & Mfg. Co. v. PS International, Inc.

227 F.R.D. 374, 2005 U.S. Dist. LEXIS 8377
CourtDistrict Court, W.D. Pennsylvania
DecidedFebruary 18, 2005
DocketCivil Action No. 3:04-100J
StatusPublished
Cited by5 cases

This text of 227 F.R.D. 374 (Highland Tank & Mfg. Co. v. PS International, Inc.) is published on Counsel Stack Legal Research, covering District Court, W.D. Pennsylvania primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Highland Tank & Mfg. Co. v. PS International, Inc., 227 F.R.D. 374, 2005 U.S. Dist. LEXIS 8377 (W.D. Pa. 2005).

Opinion

MEMORANDUM OPINION AND ORDER

GIBSON, District Judge.

This case comes before the Court on PS International, Inc.’s (hereinafter “Defendant” or “PSI”) Motion for Protective Order (Document No. 11) and Motion to Quash Subpoenas, (Document No. 17-1) or, in the alterna[376]*376tive for Protective Order (Document No. 17-2). In consideration of the Defendant’s Motions, the record in the case sub judice, Federal Rules of Civil Procedure 45 and 60(b), and relevant ease law, the Court determines that it lacks jurisdiction to resolve Defendant’s Motions for Protective Orders (Documents 11, 14, & 17), and the Court finds that it is appropriate to remit the parties’ discovery dispute to the District Court of South Dakota for the following reasons.

JURISDICTION

Jurisdiction of this civil action is proper in the United States District Court for the Western District of Pennsylvania pursuant to 35 U.S.C. §§ 1 et seq., Patent Laws of the United States (“Patent Act”), 15 U.S.C. § 1051 et seq., the Lanham Act, 15 U.S.C. § 1051 et seq., the Copyright Act of 1976, and pursuant to 28 U.S.C. §§ 1331 and 1338, and 15 U.S.C. § 1121 based on federal question jurisdiction. Furthermore, venue is proper in this District pursuant to 28 U.S.C. §§ 1391(b) and 1400(b) for acts of infringement committed in this judicial district. (Document No. 13).

FACTUAL AND PROCEDURAL BACKGROUND

On May 7, 2004, Highland Tank & Mfg. Co. (hereinafter “Plaintiff’) filed a Patent Infringement claim (“Count One”) against the Defendant. The Plaintiff avers that Plaintiff is the “owner by assignment of United States Patent No. 4,722,800 (‘the ’800 patent’)”, which was issued on February 2, 1988 and titled “Oil-Water Separator.”1 (Document No. 1). However, the Plaintiff alleges that the Defendant “has manufactured, used, sold and offered for sale in the United States devices for separating immiscible liquids, particularly oil-water mixtures” which infringe upon “one or more claims of the ’800-patent under 35 U.S.C. § 271(a) by making, using, selling, and/or offering for sale the PSRC Model Rectangular Separator and the PSR Model Rectangular Separator.” (Document Nos. 1 & 13).

On November 29, 2004, the Defendant filed a Motion for Protective Order regarding a subpoena served by the Plaintiff upon Mr. Gary Aleck and Aleck Manufacturing (collectively “Aleck”). (Document No. 11). The Defendant observed that while “Aleck manufactures a variety of oil-water separators designed and sold” by the Defendant, the subpoena served upon Aleck was defective for the following reasons: (1) the Plaintiff failed to follow proper procedure regarding notice to the Defendant; (2) the Plaintiff failed to permit Aleck to respond to the subpoena by producing certain documents within a reasonable time; and (3) the request for documents went “far beyond the issues relevant” in the case sub judice. (Document No. 11). Specifically, the Defendant noted that the two products at issue in this civil action are the PSR and PSRC Model Rectangular Separators; therefore, any request for production regarding PS Model Cylindrical Separators went beyond the scope of discovery. Id.

On December 23, 2004, with leave of Court, the Plaintiff filed an Amended Complaint, which included additional claims against the Defendant. (Document No. 13). Specifically, the Plaintiff alleged that based upon deposition testimony of two of the Defendant’s principals, additional claims against the Defendant were supported and warranted.2 The following counts were added by the Plaintiff in its Amended Complaint: Count [377]*377II- Trade Secret Misappropriation; Count III- Violation of the Lanham Act; and Count IV- Copyright Infringement. Id.

On January 4, 2005, the Defendant filed a second Motion for Protective Order. (Document No. 14). This particular motion sought protection from the production of “privileged, confidential and commercial information”. Id. In support of this motion, the Defendant asserted that the Plaintiff sought the production of documents from “various third parties, including South Dakota counsel for PSI, vendors of PSI, and perhaps even customers of PSI.” Id. Furthermore, the Defendant alleged that these particular subpoenas were defective for essentially the same reasons alleged in Defendant’s November 29, 2004 Motion for Protective Order. Id.

On January 6, 2005, upon its initial review of the Defendant’s Motion for Protective Order (Document No. 14), the Court granted Defendant’s Motion in part and denied Defendant’s Motion in part as more fully stated in the following order:

AND NOW, the 6th day of January, 2005, upon consideration of Defendant’s Motion for Protective Order (Document No. 14), the record of the case sub judice, and pursuant to the Federal Rules of Civil Procedure 26 and 45, IT IS HEREBY ORDERED that the Defendant’s Motion is granted in part and denied in part.
IT IS FURTHER ORDERED that pursuant to Federal Rule of Civil Procedure 45(c)(3)(A) that persons or entities that have been served with subpoenas by Plaintiff in December 2004 and/or January 2005 are provided with thirty (30) days from the date of this Order to respond to any Subpoenas Duces Tecum served upon them;
IT IS FURTHER ORDERED that pursuant to Federal Rule of Civil Procedure 45(c)(3)(B) PS International, Inc. is permitted to inspect the documents to be produced by the served parties prior to their production to Plaintiff, for privileged material, and if any documents are withheld or redacted, PS International, Inc. shall provide a privilege log within ten (10) days of production of the document; and
IT IS FURTHER ORDERED that the Court shall reserve its ruling on the relevance of PSI’s cylindrical separators, and the aforementioned subpoena issued by Plaintiff is not limited to the PSI’s PSR and PSRC Model Rectangular Separators identified in Plaintiffs Original Complaint (Document No. 1), but also includes PSI’s cylindrical separators included in Plaintiffs Amended Complaint (Document No. 12).

(Document No. 15).

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Bluebook (online)
227 F.R.D. 374, 2005 U.S. Dist. LEXIS 8377, Counsel Stack Legal Research, https://law.counselstack.com/opinion/highland-tank-mfg-co-v-ps-international-inc-pawd-2005.