104 F. Supp. 3d 1150
D. Or.2015Background
- St. Jude served a third‑party subpoena on Biotronik, Inc. (U.S.), seeking documents in the possession of Biotronik’s European affiliates about the hiring of defendant Janssen and alleged misappropriation of St. Jude materials; St. Jude moved to compel.
- The Court granted the motion in part, appointed a special master to resolve remaining discovery disputes, and ordered limited production safeguards for personal data.
- Biotronik moved for reconsideration and, alternatively, to transfer subpoena disputes to the Western District of Texas (the issuing court), raising: (1) lack of “control” under Rule 45 over affiliates’ documents, (2) need for St. Jude to identify alleged trade secrets before discovery, and (3) that Hague Evidence Convention/comity and foreign data‑privacy laws bar production.
- Biotronik changed position on transfer (now consenting) after earlier opposing transfer and after the Oregon court issued merits rulings.
- The Court retained the special master to rule on request‑specific objections, limited foreign personal‑data productions to attorneys’ eyes only (and sealed filings absent agreement), and denied Biotronik’s motion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Biotronik U.S. "controls" documents held by European affiliates for Rule 45 purposes | St. Jude: affiliates acted as agents (negotiators/owners involved) so Biotronik U.S. can obtain documents on demand | Biotronik: Citric Acid controls — separate legal entities and no contractual right to demand affiliates’ records, so no control | Court: Control may be shown by principal‑agent relationship; St. Jude met burden for affiliates tied to executives who negotiated Janssen’s hire; special master to resolve remaining scope issues |
| Whether St. Jude must identify specific trade secrets before pursuing third‑party discovery | St. Jude: identification not required at threshold; factors weighed already and limited disclosure not necessary | Biotronik: Court should require detailed pre‑discovery trade‑secret identification (citing BioD/DeRubeis) | Court: Considered relevant factors and properly declined to impose Biotronik’s proposed pre‑discovery identification requirement |
| Whether discovery must be obtained under the Hague Evidence Convention (comity/foreign law) | St. Jude: Federal Rules are permissible; requested evidence is important, specific, and alternative domestic sources are inadequate | Biotronik: German/Swiss laws (BDSG, TKG, Swiss Penal Code) bar production; comity requires Hague procedures | Court: Aerospatiale/Richmark framework applied; balance favors Federal Rules (most comity factors support U.S. discovery); BDSG permits disclosure under several exceptions; required safeguards (AEO/sealing) for personal data; special master to assess request‑specific comity objections |
| Whether the subpoena dispute should be transferred to the issuing court under Rule 45(f) after the local court already ruled on merits | St. Jude: opposed fees request; implicitly favored local adjudication given nonparty burden | Biotronik: now consents to transfer and asks transfer after adverse rulings | Court: Transfer request waived and, even if not waived, Rule 45(f) does not permit post‑merits transfer to retry rulings; denied transfer |
Key Cases Cited
- In re Citric Acid Litig., 191 F.3d 1090 (9th Cir. 1999) (discusses control under Rule 45 in absence of agency relationship)
- United States v. Int’l Union of Petroleum & Indus. Workers, 870 F.2d 1450 (9th Cir. 1989) (control defined as legal right to obtain documents on demand)
- Societe Nationale Industrielle Aerospatiale v. U.S. Dist. Court for S. Dist. of Iowa, 482 U.S. 522 (1987) (Hague Evidence Convention is a permissive supplement; comity factors for foreign discovery)
- Richmark Corp. v. Timber Falling Consultants, 959 F.2d 1468 (9th Cir. 1992) (adopts Aerospatiale factors and adds hardship/enforcement considerations)
- United States v. Vetco Inc., 691 F.2d 1281 (9th Cir. 1981) (burden on party invoking foreign law to show it bars production)
- In re Automotive Refinishing Paint Antitrust Litig., 358 F.3d 288 (3d Cir. 2004) (noting lack of enforcement examples of German prosecution for complying with U.S. discovery orders)