Sasol North America, Inc. v. GTLpetrol LLC
2:14-mc-00218
D. Kan.Aug 8, 2014Background
- Sasol North America sued GTLpetrol in S.D. Tex. seeking declarations of noninfringement and no trade-secret misappropriation relating to GTL (gas-to-liquids) technology; Sasol subpoenaed non-party Kansas State University Institute for Commercialization (KSU‑IC) and related entities for documents.
- KSU‑IC (and predecessors NISTAC/MACC) received donated EHTR/GTL‑related technology and licensed related patents to Petrol (GTLpetrol) under a 2006 exclusive license; KSU‑IC has a financial interest in Petrol.
- Sasol served a broad Rule 45 subpoena (50 requests) seeking communications, license/donation agreement materials, patent analyses, and Air Products documents, largely from 2000–present; Sasol later abandoned some requests.
- KSU‑IC objected as untimely, unduly burdensome for a non‑party, and privileged/confidential; it produced no documents and disputed that Sasol first should have requested the material from the party Petrol.
- The magistrate judge held a conference, required proposed ESI search terms, and balanced relevance against non‑party burden, indemnification language in the license, and KSU‑IC’s promises to produce. The court granted a limited production order and denied other relief.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Timeliness / duty to confer under local rules | Sasol filed motion to compel after KSU‑IC failed to produce despite communications; urged court to consider substance over technical delays | KSU‑IC argued Sasol's motion was untimely and Sasol failed to certify meet‑and‑confer under D. Kan. Rule 37.2 | Court found both sides had substantial compliance and overruled technical timeliness objections; reached merits. |
| Third‑party subpoena / undue burden | Sasol argued KSU‑IC likely holds responsive material and should produce; requested ESI and documents | KSU‑IC said non‑party status, limited staff/resources, and breadth make production unduly burdensome; production should be sought from Petrol first | Court applied Rule 45/26 balancing: found minimal relevance but, given KSU‑IC's financial interest, unusual relationship with Petrol, and possible indemnity, KSU‑IC failed to show undue burden; some production required. |
| Scope / time frame and ESI search methodology | Sasol proposed nine search terms and asked for broad date range (largely 2000–present) | KSU‑IC argued requests were overbroad ("all materials," many years) and unduly burdensome | Court limited production: ordered ESI search using Sasol's nine terms, narrowed timeframe to May 1, 2010–present; allowed further discovery later after party discovery proceeds. |
| Privilege / confidentiality concerns | Sasol willing to proceed under protective order; sought production of trade‑secret‑related materials | KSU‑IC invoked confidentiality and privilege concerns to resist production | Court approved the parties' protective order; confidentiality objection moot; ordered privileged withholdings to be logged per Rule 45(e)(2)(A). |
| Related parties, fees, and sanctions (MTM) | Sasol sought production from MTM as well | KSU‑IC said MTM is a KSU‑IC subsidiary with no separate documents and requested fees for opposing motion | Court dismissed MTM from separate response obligation; denied fee award to KSU‑IC; each side bears its own costs. |
Key Cases Cited
- In re Motor Fuel Temp. Sales Practices Litig., 258 F.R.D. 407 (D. Kan. 2009) (nonparties receive heightened protection; court must weigh undue burden under Rule 45)
- Goodyear Tire & Rubber Co. v. Kirk's Tire & Auto Servicenter, 211 F.R.D. 658 (D. Kan. 2003) (scope of subpoena discovery governed by Rule 26(b) relevance/burden balancing)
- Hefley v. Textron, Inc., 713 F.2d 1487 (10th Cir. 1983) (discussing protection afforded nonparty discovery and related considerations)