District Judge Jesse M. Furman denied defendant PilePro, LLC’s application for a Letter of Request for International Judicial Assistance pursuant to Article 1 of the Hague Convention of 18 March 1970 on the Taking of Evidence Abroad in Civil or Commercial Matters to obtain evidence of alleged infringement.
Plaintiff Skyline Steel, LLC brought a declaratory judgment action against PilePro seeking declaration of non-infringement and invalidity of PilePro’s U.S. Patent No. 8,556,543 (“the ’543 patent), which relates to a method for manufacturing sheet pile wall components. PilePro moved for a Letter of Request to allow it to inspect the Luxembourg facility in which the product at issue is manufactured “on the ground that PilePro’s observation of the manufacturing process is relevant to its defense….” The court stated that it “has serious doubts about whether the discovery sought by PilePro could, in fact, ever lead to the discovery of non-cumulative evidence relevant to its defense against Skyline’s non-infringement claim.” However, the court found it did not need to address this issue because PilePro’s more than eight month delay in filing its application for the Letter of Request was “an independent and adequate ground for denying PilePro’s application.” The court stated that PilePro delayed filing its motion with no explanation, even after the court “admonished PilePro for its delays in pursuing discovery.” Additionally, the court found that PilePro’s recent substitution of counsel could not be used to justify the delay. Finally, the court found that PilePro failed to show that information about the HZM System’s manufacturing process “could not be obtained through other, more efficient means.” In fact, the court noted, PilePro previously asserted that its principal “has the professional experience and expertise to glean at least some of the relevant information . . . from a visual inspection alone.”
Case: Skyline Steel, LLC v. PilePro, LLC, No. 13-CV-08171(JMF) (S.D.N.Y. Jan. 28, 2015)