In Re Ishihara Chemical Co., Ltd.

121 F. Supp. 2d 209, 2000 U.S. Dist. LEXIS 16710, 2000 WL 1727350
CourtDistrict Court, E.D. New York
DecidedNovember 16, 2000
Docket99 MISC. 232(FB)
StatusPublished
Cited by3 cases

This text of 121 F. Supp. 2d 209 (In Re Ishihara Chemical Co., Ltd.) is published on Counsel Stack Legal Research, covering District Court, E.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
In Re Ishihara Chemical Co., Ltd., 121 F. Supp. 2d 209, 2000 U.S. Dist. LEXIS 16710, 2000 WL 1727350 (E.D.N.Y. 2000).

Opinion

MEMORANDUM AND ORDER

BLOCK, District Judge.

Shipley Company, L.L.C. (“Shipley”) has moved for vacatur of an order of the Court, dated April 18, 2000, granting the ex parte application of Ishihara Chemical Company, Ltd. (“Ishihara”) for discovery pursuant to 28 U.S.C. § 1782 (“ § 1782”), and to quash or delimit a subpoena issued by Ishihara as a result thereof. 1 The motion requires the Court to resolve a number of issues under that statute, which provides, inter alia, that “upon the application of any interested person,” the “district court of the district in which a person resides or is found may order him to give his testimony or statement or to produce a document or other thing for use in a proceeding in a foreign or international tribunal.” Principally, the Court is asked to determine (1) whether § 1782 autho *211 rizes discovery from a party to a foreign proceeding and, if so, (2) whether such discovery may encompass requests for admissions and interrogatories. These questions presuppose that a proceeding before the Japanese Patent Office (“JPO”) is a proceeding “in a foreign or international tribunal,” an issue also in dispute. There is no circuit court authority explicitly addressing any of these issues.

In opposing discovery, Shipley has enlisted the aid of a preeminent authority on the statute, Hans Smit (“Professor Smit”), the Stanley H. Fuld Professor of Law and Director of the Center for International Arbitration and Litigation at Columbia University. As the Reporter to the United States Commission and Advisory Committee on International Rules of Judicial Procedure, Professor Smit states that he prepared the final versions of various proposed amendments to the statute submitted to Congress during the 1960s, and the explanatory notes accompanying these proposals, which proposals “were adopted by Congress without change.” Shipley’s Memorandum of Law in Support of its Motion to Vacate the Court’s Order Compelling Discovery, Quash the Subpoena, and Deny Discovery (“Shipley Mem. of L.”) Ex. C (Declaration of Hans Smit, dated May 18, 2000 (“Smit Decl.”)) ¶ 8. According to Professor Smit, the JPO may not be a “foreign tribunal;” in any event, § 1782 does not authorize discovery from a party and, if so, admissions and interrogatories are not permitted.

The Court concludes that (1) the JPO is a foreign tribunal within the intendment of § 1782; (2) discovery under the statute is available from a party to a foreign proceeding, but (3) such discovery does not embrace requests for admissions and interrogatories. The Court refers this matter to a Magistrate Judge to afford the parties a full opportunity to address matters of Japanese law that might assist the Magistrate Judge in determining the scope of deposition and document discovery that may be sought from Shipley by Ishihara.

BACKGROUND

The following facts are gleaned from the parties’ submissions and are not disputed: Ishihara, a Japanese corporation, sells, inter alia, products used for tin and tin-alloy electroplating. Shipley, a Delaware corporation, with a place of business in Free-port, New York, is a direct competitor of Ishihara. In or about January 1999, Ship-ley acquired LeaRonal, Inc., (“LeaRonal”), including nine foreign subsidiaries, and assumed ownership of Japanese Patent Number 2140707 (the “ ’707 Patent”) held by LeaRonal. 2 On July 14, 1999, Ishihara instituted a proceeding against Shipley, presently pending before the JPO, to invalidate the ’707 Patent in an effort to avoid royalty payments. Ishihara claims that Shipley offered for sale in Japan electroplating products that are the subject of the ’707 Patent (sold in the United States under the name SOLDERON) prior to the filing of Shipley’s patent application on September 20, 1985. Ishihara alleges that such offers of sale invalidate the ’707 Patent under Japanese law.

In its ex parte discovery application and subpoena, Ishihara noticed one deposition, and sought sixty-nine requests to admit, twelve interrogatories and four document requests, three of which were tied to the interrogatories. 3 Ishihara’s discovery requests concerned not only the ’707 Patent, but also Japanese Patent Number 2807637 (the “’637 Patent”). Subsequently, Ishi-hara abandoned discovery regarding the ’637 Patent because no action had been instituted before the JPO concerning that *212 patent. Consequently, what remains are Ishihara’s discovery requests concerning the ’707 Patent.

DISCUSSION

I. Overview of the 1964 Amendments to § 1782 and Relevant Second Circuit Precedent.

Section 1782, entitled “Assistance to foreign and international tribunals and to litigants before such tribunals,” provides as follows:

(a) The district court of the district in which a person resides or is found may order him to give his testimony or statement or to produce a document or other thing for use in a proceeding in a foreign or international tribunal, including criminal investigations conducted before formal accusation. The order may be made pursuant to a letter rogatory issued, or request made, by a foreign or international tribunal or upon the application of any interested person and may direct that the testimony or statement be given, or the document or other thing be produced, before a person appointed by the court. By virtue of his appointment, the person appointed has power to administer any necessary oath and take the testimony or statement. The order may prescribe the practice and procedure, which may be in whole or part the practice and procedure of the foreign country or the international tribunal, for taking the testimony or statement or producing the document or other thing. To the extent that the order does not prescribe otherwise, the testimony or statement shall be taken, and the document or other thing produced, in accordance with the Federal Rules of Civil Procedure. A person may not be compelled to give his testimony or statement or to produce a document or other thing in violation of any legally applicable privilege.
(b) This chapter does not preclude a person within the United States from voluntarily giving his testimony or statement, or producing a document or other thing, for use in a proceeding in a foreign or international tribunal before any person and in any manner acceptable to him.

28 U.S.C. § 1782 (1994 & Supp.1997). In all relevant parts, the current language of the statute mirrors its revision and amendment in 1964. 4

Before its amendment in 1964, § 1782 provided:

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121 F. Supp. 2d 209, 2000 U.S. Dist. LEXIS 16710, 2000 WL 1727350, Counsel Stack Legal Research, https://law.counselstack.com/opinion/in-re-ishihara-chemical-co-ltd-nyed-2000.