The opinion of the court was delivered by: M. James Lorenz United States District Court Judge
ORDER (1) SUSTAINING OBJECTIONS; (2) MODIFYING ORDER REGARDING JURISDICTIONAL DISCOVERY; AND (3) SETTING BRIEFING
This patent infringement case was referred to Magistrate Judge Anthony J. Battaglia for determination of non-dispositive pretrial matters, including discovery, pursuant to Federal Rule of Civil Procedure 72(a) and Civil Local Rule 72.1(b). Plaintiff Synthes (U.S.A.) ("Synthes") timely filed Objections to the Magistrate Judge's Order re: Jurisdictional Discovery ("Order"). Defendant G. M. dos Reis Jr. Ind. Com. de Equip. Mexico a/k/a GMReis ("GMReis") filed a response, and Plaintiff was granted leave to file a reply. For the reasons which follow, Plaintiff's objections are SUSTAINED, and the Order re: Jurisdictional Discovery is MODIFIED as explained below.
Prompted by GMReis' motion to dismiss for lack of personal jurisdiction pursuant to Federal Rule of Civil Procedure 12(b)(2), which is pending before this court, Synthes sought certain document discovery, a Rule 30(b)(6) deposition of GMReis' person most knowledgeable on certain topics, as well as depositions of Gerald Marins dos Reis Jr. and Jose Luiz Linda Lecumberri, who submitted declarations in support of the motion. After GMReis failed to produce the requested discovery, Synthes filed a motion to compel. GMReis responded with motions for a protective order and to stay discovery during the pendency of the motion to dismiss.
The Magistrate Judge granted in part and denied in part Synthes' motion to compel, granted in part and denied in part GMReis' motion for a protective order and denied GMReis' motion to stay discovery. While Synthes was granted the right to obtain jurisdictional discovery, its document discovery was limited to documents and activities occurring on or after the date when the patent-in-suit issued. In addition, jurisdictional discovery was to be conducted according to the laws of Brazil, because GMReis is a Brazilian corporation and the requested documents and witnesses are located in Brazil. Synthes objects to the Order insofar it requires jurisdictional discovery to comply with Brazilian law and limits discovery to the period after the patent-in-suit issued.
District court review of magistrate judge orders on non-dispositive motions is limited. Discovery motions, such as the motions at issue here, are considered non-dispositive. See 28 U.S.C. § 636(b)(1)(A); Civ. Loc. R. 72.1(b). A district court judge may reconsider a magistrate judge's ruling on a non-dispositive motion only "where it has been shown that the magistrate's order is clearly erroneous or contrary to law." 28 U.S.C. § 636(b)(1)(A); Fed. R. Civ. Proc. 72(a). This essentially amounts to an abuse of discretion standard. See Foster v. Skinner, 70 F.3d 1084, 1087 (9th Cir. 1995) ("An abuse of discretion occurs if the district court does not apply the correct law or rests its decision on a clearly erroneous finding of fact.").
The Order limits permissible discovery to the time period after the issuance of the patent-in-suit. (Order at 10.) Because specific jurisdiction is "based on the relationship between the defendant's forum contacts and the plaintiff's claim," Yahoo! Inc. v. La Ligue Contre le Racisme et l'Antisemitisme, 433 F.3d 1199, 1205 (9th Cir. 2006), the Order correctly concludes that facts predating the patent are irrelevant for purposes of specific personal jurisdiction. (Order at 9-10 ("Request Nos. 1-18 are overly broad and should be limited to the time period after issuance of the patent-in-suit . . ., as GMReis activities prior to this date would not constitute infringement.") (emphasis added).) However, the Order does not consider the issue whether the same discovery may be relevant for purposes of general personal jurisdiction. (See Mem. of P.&A. in Supp. of Pl. Synthes' Mot. to Compel Jurisdictional Disc., filed May 17, 2007 ("Mot. Below"), at 16.) Because the magistrate court "did not exercise its discretion in this regard, the issue of whether or not it should have presents a legal question which is subject to de novo review." First Pac. Bank v. Gilleran, 40 F.3d 1023, 1027 (9th Cir. 1994).
General jurisdiction exists "over a defendant who has had continuous and systematic contacts with the forum state," Harris Rutsky & Co. Ins. Serv., Inc. v. Bell & Clements Ltd., 328 F.3d 1122, 1129 n.1 (9th Cir. 2003), "even if the action is unrelated to those contacts," Bancroft & Masters, Inc. v. Augusta Nat'l. Inc., 223 F.3d 1082, 1086 (9th Cir. 2000). See also Trintec Indus., Inc. v. Pedre Promotional Prod., Inc. 395 F.3d 1275, 1279 (Fed. Cir. 2005) (defining specific and personal jurisdiction). It is undisputed that GMReis had contacts with the United*fn1 prior to the issuance of the patent-in-suit. (See Order at 8.) These contacts are relevant to the issue of general jurisdiction. Accordingly, to the extent Synthes challenges the temporal limitation of jurisdictional discovery to the time after the issuance of the patent-in-suit, its objection is sustained, and the Order is modified in this regard. Consistent with the Order, jurisdictional discovery, whether before or after the issuance of the patent-in-suit, is limited to the issues relevant to personal jurisdiction, that is the timing, quality, quantity and nature of GMReis' contacts with the United States.
The Order also requires Synthes to comply with the laws of Brazil to obtain jurisdictional discovery from GMReis. (Order at 12.) However, it does not cite legal authority in support of this conclusion. The conclusion is based on the "principles of comity and the relevant treaty provisions." (Id.) The principles of comity and treaty provisions are not discussed.
It is undisputed that Brazil does not allow depositions of its nationals on its soil by American attorneys for use in courts in the United States, even if the deposition were to take place before a United States consular officer, with the assistance of a Brazilian attorney, or in any other manner. (See Lapple Decl., filed May 24, 2005 ("Lapple Decl."), Exh. D & E.)*fn2
"Brazil is not a party to the Hague Convention on the Taking of Evidence Abroad in Civil and Commercial Matters. The United States is not a party to the evidence provisions of the Inter-American Convention on Letters Rogatory." (Id. Exh. D.) "Judicial assistance between the United States and Brazil in civil . . . matters is governed by Article 5 . . . of the Vienna Convention of Consular Relations," which provides in relevant part for "transmitting judicial and extra-judicial documents or executing letters rogatory or commissions to take evidence for the courts of the sending State in accordance with international agreements in force or, in the absence of such international agreements, in any manner compatible with the laws and regulations of the receiving State." (Id. Exh. E ¶ 4 (emphasis added).) No agreements are in effect between the United States and Brazil for taking evidence abroad. Therefore, any request made pursuant to the Vienna Convention to obtain deposition testimony in Brazil must comply with the laws of Brazil. To do so, an American attorney must make a request for judicial assistance to the Ministry of Justice in Brazil. (Id. Exh. D.) Typically, such requests are made by letters rogatory submitted to the United States Department of State, Bureau of Consular Affairs for transmission through the diplomatic channels. (See id.) If and when the request is granted, the deposition is taken by Brazilian judicial authorities. (Id.) Neither party contends that Brazil precludes depositions of its nationals abroad according to the laws of the country where the deposition is held.
In United States District Courts, the determination whether discovery should proceed under the Federal Rules or some other law is made based on a balancing test endorsed in Societe Nationale Industrielle Aerospatiale v. United States District Court, 482 U.S. 522 (1987). See Richmark Corp. v. Timber Falling Consultants, 959 F.2d 1468, 1474-75 (9th Cir. 1992). The Order does not indicate whether this balancing test was considered. Accordingly, the appropriateness of requiring compliance with Brazilian law for purposes of jurisdictional discovery is reviewed de novo. See First Pac. Bank, 40 F.3d at 1027.
In its opposition to Synthes' objections, GMReis disputes the relevance of Aerospatiale because the choice in Aerospatiale was between the evidence-gathering provisions of the Hague Convention and the Federal Rules, whereas the Hague Convention is inapplicable in this case. No legal authority is cited in support of this argument. The distinction argued by GMReis was deemed irrelevant in Richmark Corporation v. Timber Falling Consultants, where the Ninth Circuit followed the Aerospatiale balancing test in a case which did not involve the Hague Convention. See 959 F.2d 1468. Furthermore, the Advisory Committee Notes to the 1993 Amendments to Federal Rule of Civil Procedure 28 refer attorneys to Aerospatiale "[f]or a discussion of the impact of . . . treaties upon the discovery process, and of the application of principles of comity upon discovery in countries not signatories to a convention." (Emphasis added.) GMReis' argument is therefore unavailing.
GMReis further disputes Aerospatiale's applicability because personal jurisdiction was not disputed therein, whereas it is disputed in this case. Aerospatiale expressly acknowledged that personal jurisdiction over the foreign defendant was undisputed. 482 U.S. at 524, 525 (personal jurisdiction not questioned by defendant). It did not address the issue whether the balancing test it endorsed would apply in a case where personal jurisdiction is disputed and discovery is sought to establish personal jurisdiction over the foreign defendant. Neither party cites a Ninth Circuit decision on point, and the court is aware of none. The court therefore looks to other circuits. Synthes relies on the Third Circuit opinion In re Automotive Refinishing Paint Antitrust Litigation, 358 F.3d 288 (3d Cir. 2004) ("Automotive"). Although Automotive references a "split of authorities among federal district courts and state courts regarding the extension of Aerospatiale to jurisdictional discovery," it does not reference any split in the circuits. See Automotive, 358 F.3d at 301. Neither party cites to any alternative federal circuit court decision, and this court is not aware of any. Automotive held that "there should be no exception to the Aerspatiale holding for jurisdictional discovery" and that "the Aerospatiale balancing test applies equally to jurisdictional discovery." Id. at 302, 305.
The primary basis for the holding of Automotive is the court's authority to determine whether it has personal jurisdiction over defendants:*fn3 a trial court has authority to determine its jurisdiction. See Ins. Corp. of Ireland, Ltd. v. Compagnie des Bauxites de Guinee, 456 U.S. 694, 706, 102 S.Ct. 2099, 72 L.Ed.2d 492 (1982) ("By submitting to the jurisdiction of the Court for the limited purpose of challenging jurisdiction, the defendant agrees to abide by that court's determination on the issue of jurisdiction"). Because the District Court has jurisdiction over these foreign defendants to the extent necessary to determine whether they ...