*1 Before the Court is Defendants Flexicare Incorporated, Flexicare Medical Limited, and Flexicare (Group) Limited's (“Flexicare”) Motion for Issuance of Letters Rogatory. See Dkt. 170 (“Motion”). Plaintiff Fisher & Paykel Healthcare Limited (“FPH”) opposed. See Dkt. 173 (“Opposition”). Flexicare replied. See Dkt. 175 (“Reply”). For the reasons set forth below, the Motion is GRANTED in PART.

I. BACKGROUND

On February 7, 2020, FPH filed the operative Third Amended Complaint (“TAC”) consisting of a series of patent infringement claims against Flexicare. See Dkt. 107. FPH asserts nine patents concerning three related respiratory care technologies—breathing circuits, nasal cannulas, and a condensation deflector. Id. at 3, 8, 10. Fact discovery is set to close on January 11, 2021. See Dkt. 171.

In the Motion, Flexicare seeks the Court's assistance in obtaining the deposition and collection of documents from non-parties David Baldwin, Peter John Leonard, and Jason Van Beurden, all of whom are New Zealand nationals. Baldwin is a named inventor on the six asserted breathing tube patents. Leonard is a named inventor on the asserted '979 condensation deflector patent. Van Beurden is a named inventor on the asserted '902 and '376 nasal cannula patents.

II. LEGAL STANDARD

“A 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 and transmitted to the requesting court for use in a pending action.” Barnes & Noble, Inc. v. LSI Corp., No. 11-02709, 2012 WL 1808849 at *1 (N.D. Cal. May 17, 2012); see also Fed. R. Civ. P. 28(b)(1)(B) (“A deposition may be taken in a foreign country ... under a letter of request, whether or not captioned a ‘letter rogatory.’ ”).[1] A federal district court has the inherent authority to issue a letter rogatory. See United States v. Staples, 256 F.2d 290, 292 (9th Cir. 1958). The court is also implicitly authorized to do so under 28 U.S.C. § 1781, which governs the transmittal and receipt of letters rogatory.

“Whether to issue such a letter is a matter of discretion for the court.” Barnes & Noble, 2012 WL 1808849 at *1. “When determining whether to exercise its discretion, a court will generally not weigh the evidence sought from the discovery request nor will it attempt to predict whether that evidence will actually be obtained.” Asis Internet Servs. v. Optin Glob., Inc., No. 05-05124, 2007 WL 1880369 at *3 (N.D. Cal. June 29, 2007). “A court's decision whether to issue a letter rogatory, though, does require an application of Rule 28(b) in light of the scope of discovery provided for by the Federal Rules of Civil Procedure.” Id. (denying request for a letter rogatory that did not appear reasonably calculated to lead to the discovery of admissible evidence under Rule 26(b)(1)).

*2 Accordingly, discovery by letters rogatory “is consistent with the liberal discovery provisions of Rule 26.” Viasat, Inc. v. Space Systems/loral, Inc., No. 12-0260, 2013 WL 12061801, at *3 (S.D. Cal. Jan 14, 2013). Rule 26 allows parties to obtain discovery regarding “any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case.” Fed. R. Civ. P. 26(b)(1). The information sought need not be admissible at trial as long as it appears reasonably calculated to lead to the discovery of admissible evidence.

III. DISCUSSION

FPH contends that the Motion should be denied on various grounds, and that, if granted, Flexicare's RFPs should be narrowed, and the letters modified.

A. Fact Discovery Cutoff

FPH argues that the letters rogatory process will take a “year or more” and thus will not be completed by the January 11, 2011 fact-discovery cutoff. Opposition at 5-6. But FPH's guess of how long the process will take is just that, a guess. And as Flexicare points out, the time involved may be considerably shortened by transmitting a copy of the request through a local attorney rather than utilizing the Department of State, which Flexicare intends to do. See Reply at 3. Even in the worst-case scenario, the District Judge can address any problems by other means, such as extending the fact discovery cutoff (which it has done already) or move the case forward without the requested discovery.

B. Lack of Diligence

FPH argues that Flexicare has not been diligent in seeking discovery from foreign non-parties. See Opposition at 6-9. FPH explains that despite Flexicare's knowledge of the three named inventors since the filing of the Complaint in May 2019, it waited a year to raise this issue. See id.

FPH made a similar diligence argument in its opposition to Flexicare's motion to amend the scheduling order. The District Judge disagreed: “It appears from the record that Flexicare has been sufficiently diligent in its pursuit of testimony from third parties despite running into a number of delays. Flexicare has an application for issuance of letters rogatory pending before the Court as to Baldwin, underwent months of negotiations with DSM in an attempt to obtain discovery, and appears to have been diligent in its request regarding DuPont.” Dkt. 171. The Court agrees and finds that Flexicare has been sufficiently diligent.

C. Other Means of Obtaining the Discovery

In determining whether to issue letters rogatory, courts consider whether the evidence can be obtained through other, less burdensome means, such as domestic discovery processes. See Viasat, 2013 WL 12061801 at *7 (S.D. Cal. Jan. 14, 2013) (denying request for letter rogatory that sought “unnecessarily duplicative information which Plaintiffs can request from the United States-based Defendants”); Calixto v. Watson Bowman Acme Corp., No. 07-60077, 2009 WL 3823390, at *20-22 (S.D. Fla. Nov. 16, 2009) (declining to issue letters rogatory after determining that the documents sought would duplicate most, if not all, of the information already provided by the defendant).

FPH argues that Flexicare's proposed letters rogatory are duplicative and/or cumulative of the discovery Flexicare has already sought and obtained in this action. See Opposition at 10-20. Flexicare responds that FPH's discovery is no substitute for discovery from inventors. See Reply at 4-7.

The Court agrees with Flexicare. FPH's initial disclosures identified the inventors of the asserted patents “as individuals that FPH believes are likely to have knowledge of discoverable facts that FPH may use to support its claims and/or defenses.” Opposition at 3. Additionally, the discovery that Flexicare seeks appears highly significant to the case. As previously noted, Baldwin is a named inventor on six asserted patents, Leonard on one, and Van Beurden on two. Leonard is also the subject of Flexicare's counterclaim for inequitable conduct. See Dkt. 115 ¶¶ 163-256. There is no guarantee that FPH's existing production or its Rule 30(b)(6) testimony is a perfect replacement for the inventors' own testimony and discovery. See Dyson, Inc. v. SharkNinja Operating LLC, 2016 WL 5720702, at *2 (rejecting argument that testimony would be cumulative because “[t]here is no guarantee that the remaining co-inventors will have the same memory of the invention process, and [defendant] should not have to take [plaintiff's] word for it”). As Flexicare points out, the individuals left FPH long ago and Baldwin's emails have been destroyed. Flexicare should thus be permitted to test FPH's claims that the requested discovery will be duplicative and/or cumulative and see if any the named inventors have “sharper memories” or additional documents compared to what FPH has offered so far. Id.

D. Scope of RFPs

*3 FPH argues that many of Flexicare's requests are improper and should thus be denied or narrowed. See Opposition at 21-22.

With respect to scope, FPH contends that Flexicare's pursuit of discovery regarding Related Patents that “share subject matter with any Asserted Patent” is outside the scope of permissive discovery. Id. at 21. The Court agrees except with respect to Leonard, who is the subject of Flexicare's counterclaim for inequitable conduct. Accordingly, Flexicare's request for documents concerning “Related Patents” should be removed from Flexicare's RFP Nos. 1, 5, and 19 to Baldwin and RFP Nos. 1, 5, and 15 to Van Beurden.

Next, FPH contends that RFP No. 5 seeks “all correspondence with any prosecuting attorney” and thus improperly seeks attorney-client privileged communications. See Opposition at 21. That may or may not be true; the Court declines to presume that a presumption of privilege applies. The parties should abide by the Federal Rules for determining attorney-client and work-product privilege protections.

Finally, the Court has already rejected FPH's argument related to cumulative and/or duplicative information. See Opposition at 21-22.

E. Letters of Request

FPH argues that various statements would require the Court to make findings of fact and/or are unduly argumentative. See Opposition at 22-23. The Court agrees that the second bullet FPH complains of should be removed, as well as the reference to the Court requesting that the parties be permitted to attend the examination in person. The remaining statements are appropriate.

IV. CONCLUSION

The Motion is GRANTED in PART. Within seven (7) days, Flexicare is ORDERED to submit revised letters rogatory that comply with this Order.

New Zealand is not a signatory to the Hague Convention Treaty on the Taking of Evidence Abroad in Civil and Criminal Matters.