Chief Judge Gilstrap of the Eastern District of Texas has denied a motion seeking foreign discovery from a third party pursuant to the Hague Convention, holding that the movant waited too long to seek such discovery. The court explained that allowing the “late breaking attempt at discovery,” coming two months after the close of fact discovery and two months before the start of trial, “would almost certainly delay trial, prejudice [the patent owner], and run counter” to the court’s previous clear direction to the parties.
The case began on July 19, 2018, when Luminati Networks Ltd. filed a complaint for patent infringement against UAB Tesonet (“Tesonet”). In its initial disclosures, Tesonet disclosed two witnesses who were on the board of directors of Luminati and also managing partners of EMK Capital, a non-party UK-based private equity fund that is an investor in Luminati.
The court issued a scheduling order setting September 16, 2019, as the close of fact discovery. On September 3, 2019, Tesonet and its codefendant filed a motion to compel Luminati to produce documents and emails from EMK. Following an October 1, 2019 hearing, the court denied the motion explaining that its ruling was based on Luminati’s representation that it had produced all relevant EMK documents in its possession. But the court added that Tesonet had leave to pursue discovery directly from EMK through the Hague Convention, in light of Tesonet’s representation that it would “not seek to change the trial date or any other deadline.”
On November 15, 2019, Tesonet moved the court to sign a Letter Rogatory. Tesonet stated that while Luminati opposed the motion based on a purported delay, the delay was caused by Tesonet’s need to retain U.K. counsel and to prepare a conforming Letter Rogatory. In response, Luminati argued first that Tesonet’s request was irreconcilable with its earlier statement to the court that it did not want a delay and would not ask for a delay on account of the overseas discovery request. Luminati then argued that Tesonet had not identified a specific need for EMK documents, nor had Tesonet explained how any documents could be admitted at trial when no EMK witnesses were identified on its trial witness list. Finally, Luminati argued that allowing the discovery would delay trial because a request to the U.K. would take between six and twelve months to complete, and that numerous pretrial deadlines had already passed, and Luminati would be highly prejudiced by any ensuing delay.
The court denied Tesonet’s motion and stated that it was “not convinced” that the trial date would hold if it allowed Tesonet to pursue the EMK discovery. The court also explained that it “seriously doubt[ed]” whether the discovery could be completed in time given that trial was two months away. Furthermore, the court found that Luminati would be prejudiced.
Luminati Networks Ltd. v. UAB Tesonet, 18-cv-00299, slip op. (E.D. Tex. Nov. 27, 2019) (Gilstrap, C.J.)
Practice Tip: Litigants contemplating discovery through the Hague Convention should prepare early in the discovery period and seek overseas counsel as early as possible to minimize delays in preparing suitable foreign discovery requests for the court’s approval.