ANDOVER HEALTHCARE, INC., Petitioner-Appellant, v. 3M COMPANY, Respondent-Appellee.
No. 14-3434.
United States Court of Appeals, Eighth Circuit.
Filed: March 31, 2016.
817 F.3d 621
Submitted: Oct. 22, 2015.
In summary, we affirm the judgment of the district court rejecting application of the Rooker-Feldman doctrine, dismissing as time barred the FDCPA claims based upon Barton‘s actions prior to and during the Missouri proceedings, and dismissing the
David Brafman, argued, Patricia M. Carlson, on the brief, West Palm Beach, FL, for Petitioner-Appellant.
Before LOKEN, MURPHY, and COLLOTON, Circuit Judges.
COLLOTON, Circuit Judge.
Andover Healthcare, Inc., appeals an order of the district court1 denying Andover‘s petition under
I.
Andover Healthcare, Inc., and 3M Company both make cohesive, latex-free bandages. Andover holds patents on its bandages in both the United States and Europe. In 2013, Andover filed a patent-infringement suit in the District of Delaware, alleging that 3M had infringed Andover‘s patent with its line of Coban bandages. Andover also sued 3M in Germany, asserting that 3M violated Andover‘s related European patent. This appeal concerns an effort to discover information for use in the German suit.
Claim one of Andover‘s European patent describes “a cohesive product comprising . . . an inherently crystalline elastomer and at least one tackifying agent in an amount effective to disrupt the crystalline structure of the elastomer and maintain the elastomer in a partial polycrystalline state.” In support of its defense in the German case, 3M submitted an expert report stating that 3M‘s raw “elastomer materials are not present in a crystalline . . . state.” The report further observed that “[s]ince no crystallinity could be detected in the elastomer right from the beginning, it can therefore not be disrupted by specifically adding tackifiers.” 3M argued before the German court that because its polychloroprene elastomer material is not crystalline or maintained in a partial polycrystalline state, its products did not infringe Andover‘s European patent.
Andover believes that 3M‘s test results cannot be correct and seeks to conduct its own testing on 3M‘s polychloroprene and 3M‘s polychloroprene and tackifying agent mixture. 3M has refused, however, to reveal to Andover its specific type of polychloroprene or its formula for making the bandages. 3M asserts that this information implicates highly sensitive trade secrets.
3M did disclose the disputed information, under a protective order, in the Delaware infringement suit. Andover first sought permission from the Delaware court to use the information in the parallel German proceeding. The Delaware court denied Andover‘s request, citing the sensitivity of the information and the availability of other mechanisms in Germany and in the United States to obtain the information. Andover then sought the same discovery from the German court, but the German court has not yet ruled on the request. While pursuing these discovery requests, Andover also conducted testing on 3M‘s commercially available bandages, but Andover asserts that these tests on the final product are insufficient to make the necessary comparison with 3M‘s test results on its own raw materials.
In a third attempt to obtain the desired information for use in Germany,
II.
The district court considered Andover‘s petition in light of the considerations identified by the Supreme Court and concluded that three considerations weighed against an order of production. Andover disputes the district court‘s analysis and asserts that all of the pertinent factors favor an order of production.
The district court first observed that 3M is a party to the parallel German infringement suit and that the German court had said it would grant Andover‘s discovery request if necessary to resolve the case. The district court‘s view that this factor weighed against the petition is well grounded in the Supreme Court‘s guidance from Intel: “[W]hen the person from whom discovery is sought is a participant in the foreign proceeding . . . , the need for
Andover contends that whether the German court will order discovery is uncertain, especially if the standard is one of “necessity,” so 3M‘s status as a party in the German litigation should not weigh against an order for discovery under
The district court also determined that the “highly sensitive nature of the request-
As a third factor counseling against the discovery, the district court cited Andover‘s apparent attempt to avoid or preempt an unfavorable decision on discovery by the German court. While the Supreme Court in Intel rejected a foreign discoverability requirement, the Court allowed that considerations of comity may guide the exercise of discretion in a particular case. Id. at 261. Andover, however, disputes the district court‘s characterization of its intent. The company maintains—citing an uncontradicted declaration of counsel that the evidence sought would be “fully admissible” in Germany—that German courts are very receptive to the use of information obtained in the United States.
We are not convinced that a discovery order would be unwelcome by the German court or would implicate the Supreme Court‘s concern about efforts to “circumvent foreign proof-gathering restrictions” of the type that prohibit the use of certain materials. Intel, 542 U.S. at 265; see Mees v. Buiter, 793 F.3d 291, 303 n. 20 (2d Cir.2015). But even if these considerations do not militate against a discovery order, they fail to weigh heavily enough in favor of discovery to overcome the principal factors supporting the district court‘s denial of Andover‘s petition. The German court is in a position to order the requested discovery if the information is needed, and the German court is best positioned to assess whether any disclosure can be accomplished without jeopardizing the sensitive trade secrets involved.
For these reasons, the district court did not abuse its discretion in denying Andover‘s