In this antitrust action, plaintiff alleged in its amended complaint that defendant had imposed certain contractual restrictions upon plaintiff’s United States distributor that violated Sections 1 and 2 of the Sherman Act, and that in an earlier related action, defendant engaged in sham litigation in violation of Section 1 of the Sherman Act. Here, plaintiff filed a motion seeking to invoke provisions of the Hague Convention in order to obtain the court’s assistance in requesting action by foreign judicial officials to compel the appearance at deposition of witnesses located in Europe. Defendant opposed plaintiff’s motion, in part, asking the court to exclude from the letters to foreign officials any request for questioning regarding alleged inequitable conduct in obtaining the issuance by the USPTO of a particular patent (the ‘726 patent).

Magistrate Judge Thynge denied plaintiff’s motion in part. First, the court ruled that in connection with its claim that the contractual restrictions violated the antitrust laws, plaintiff would not be permitted to examine the witnesses regarding inequitable conduct in its prosecution of the ‘726 patent. The court noted that, in support of its allegation of inequitable conduct in the amended complaint, plaintiff failed to satisfy the particularity requirements of Fed. R. Civ. P. 9(b) and related case law. Because plaintiff had not met those pleading requirements, the court ruled that it would be improper to allow plaintiff to conduct discovery in search of a factual predicate for its claim that the contractual restrictions were unlawful.

Second, the court declined to allow plaintiff to question the witnesses regarding inequitable conduct related to the ‘726 patent, in connection with its sham litigation claim. The earlier litigation that was alleged to be a sham did not involve the ‘726 patent. Further, the ‘726 patent did not bear such an “immediate and necessary relation to the enforcement” of the patents that were the subject of the earlier case, that inequitable conduct in the prosecution of the ′726 patent would render the other patents unenforceable. Therefore, an examination of witnesses regarding inequitable conduct in connection with the ‘726 patent would be nothing more than an improper fishing expedition.