United States District Court, D. Arizona
HONORABLE JOHN J. TUCHI UNITED STATES DISTRICT JUDGE.
issue is Defendant/Counterclaimant Taylor Made Golf Company
Inc.'s (“Taylor Made”) Motion for Issuance of
Letter Rogatory for International Judicial Assistance (Doc.
102, Mot.), to which Plaintiff/Counter-Defendant Parsons
Xtreme Golf LLC (“PXG”) filed a Response (Doc.
112, Resp.), and Taylor Made filed a Reply (Doc. 114, Reply).
No. party requested oral argument, and the Court finds the
Motion appropriate for resolution on the briefs. See
LRCiv 7.2(f). The Court will grant Taylor Made's Motion.
parties are designers, manufacturers, and sellers of golf
clubs used worldwide by professional and amateur golfers
alike. PXG filed this lawsuit in October 2017 seeking both a
temporary restraining order and preliminary injunction
against Taylor Made to block the release of Taylor Made's
latest set of irons, the P790. In its Second Amended
Complaint, PXG alleges that the P790 Irons infringe upon 11
separate PXG patents, which PXG contends were lawfully issued
by the United States Patent and Trademark Office
(“USPTO”) and used in PXG's own irons, the
0311. (See Doc. 76, 2d Am. Compl. ¶¶
42-151.) Taylor Made subsequently filed an answer and its own
set of counterclaims, which seek declaratory judgments that
each patent named in PXG's Complaint is invalid and that
the P790 Irons do not infringe any PXG patent. (Doc. 86, 2d
Am. Countercl. ¶¶ 29-188) Taylor Made also alleges,
to various degrees, that PXG's Irons, Drivers, Fairway
Woods, and Hybrid infringe upon several of Taylor Made's
patents. (2d Am. Countercl. ¶¶ 189-248.)
Made now seeks additional discovery from a non-party
manufacturer of golf clubs-the Yamaha Corporation-which is
based in Japan. As discussed in its Motion, Taylor Made
wishes to authenticate a club purported to be Yamaha's
inpresX 425V Iron (the “425V Iron”) and
accompanying Yamaha Spring 2007 golf catalog. (Mot. at 4),
which arguably render PXG's patents invalid. Prior to
seeking relief from this Court, Taylor Made contacted
representatives from Yamaha Corporation of America, who in
turn forwarded Taylor Made's requests to Yamaha's
representatives in Japan. (See Doc. 102-1, Mot. Ex.
C., Email from N. Kosugi to L. Tran.) Yamaha's
representatives, however, indicated that the company would
comply only through an inquiry properly submitted through the
United States and Japanese courts.
Taylor Made now moves for the Court to issue a letter
rogatory to the courts of Japan. In particular, Taylor Made
desires to obtain oral testimony from a representative from
Yamaha in response to a list of written questions provided by
Taylor Made. (Doc. 102-1, Mot. Ex. 1 at 2-4.)
letter rogatory is a formal written request sent by a court
to a foreign court asking that the testimony of a witness
residing within that foreign court's jurisdiction be
taken pursuant to the direction of that foreign court . . .
for use in a pending action.” Barnes & Noble,
Inc. v. LSI Corp., 2013 WL 812331, at *1 (N.D. Cal. Mar.
5 2013) (citing Marroquin-Manriquez v. INS, 699 F.2d
129 (3d Cir. 1983)); 8A Charles Alan Wright & Arthur R.
Miller, Federal Practice and Procedure § 2063
(3d ed. 2018) (hereinafter, “Wright &
Miller”). Federal Rule of Civil Procedure 28(b)(1)
permits litigants to take a deposition in a foreign country
“under a letter of request, whether or not captioned a
‘letter rogatory.'” A court may issue such a
letter “without a showing that taking the deposition in
another manner is impractical or inconvenient.”
district court has inherent authority to issue a letter
rogatory. United States v. Staples, 256 F.2d 290,
292 (9th Cir. 1958); Wright & Miller § 2063. Whether
to issue such a letter is within a court's discretion;
however, a court should neither “weigh the evidence
sought from the discovery request nor . . . attempt to
predict whether that evidence will actually be
obtained.” Barnes & Noble, 2013 WL 812331,
at *2. Generally, a court should grant such a request absent
a showing by the opposing party demonstrating good cause to
deny the motion. See, e.g., MicroTechnologies, LLC v.
Autonomy, Inc., 2016 WL 1273266, at *1 (N.D. Cal. Mar.
14, 2016); Evanston Ins. Co. v. OEA, Inc., 2006 WL
1652315, at *2 (E.D. Cal June 13, 2006). The decision whether
to permit a deposition pursuant to Rule 28 must be guided by
the scope of discovery permitted under Rule 26. See B
& L Drillings Elecs. v. Totco, 87 F.R.D. 543, 545
(W.D. Okla. 1978).
offers two primary arguments in opposition to Taylor
Made's Motion: (1) that that Taylor Made has not
exhausted other means to obtain the desired discovery and (2)
that the burden of Taylor Made's request outweighs any
benefit of the proposed discovery. Each of PXG's
arguments, however, lands well short of the green.
Whether Taylor Made Must Exhaust All Other Means Prior to
Obtaining the Desired Discovery
argues that good cause exists to deny Taylor Made's
Motion because Taylor Made fails to demonstrate that it
exhausted all other means for obtaining the information it
now seeks. (Resp. at 8-9.) In particular, PXG cites to both
B & L Drilling Electronics v. Totco, 87 F.R.D.
543 (W.D. Okla. 1978) and Del Estado v. Navistar
International Transportation Corp, 1996 WL 745313 (N.D.
Ill. 1996) in support of this proposition. Yet, neither
supports the arguments made by PXG, and in fact, only serve
to bolster Taylor Made's Motion. Indeed, PXG is correct
that the court in B & L Drilling conditioned its
issuance of a letter rogatory on the propounding party first
seeking discovery by a less burdensome means; however, PXG
fails to recognize that the less burdensome means permitted
by that court-a Rule 31 deposition-is the precise means of
discovery sought by Taylor Made in this case. See B &
L Drilling Elecs., 87 F.R.D. at 545. Similarly, although
the Del Estado Court sequenced discovery such that
international discovery proceeded following domestic efforts,
the Court explicitly exempted discovery through letters
rogatory and depositions from that sequencing. Del
Estado, 199 WL 745313, at *5 (“[I]nternational
discovery (other than Letters Rogatory and deposition) will
proceed after completion of fact written discovery in the
United States.”) Moreover, the imposition of an
exhaustion requirement in such a case would appear to stand
in opposition to the plain language of Rule 28, which permits
taking a deposition by letter rogatory “without a
showing that taking the deposition in another manner is
impractical or inconvenient.” See Fed. R. Civ.
P. 28(2)(B). The Court thus rejects PXG's argument that
Taylor Made must exhaust all other possible means of
obtaining the desired information prior to seeking a letter
rogatory from this Court.
Whether the Burden of Taylor Made's Request Outweighs the