Opinion
18-12869
09-21-2023
TECNOMATIC S.p.A., Plaintiff, v. ATOP S.p.A. and MAGNETI MARELLI S.p.A., Defendants.
ORDER GRANTING IN PART ATOP'S APPLICATION FOR ISSUANCE OF LETTER OF REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE [189]
LAURIE J. MICHELSON, UNITED STATES DISTRICT JUDGE
Plaintiff Tecnomatic S.p.A. (“Tecnomatic”) alleges that Defendants ATOP S.p.A. (“ATOP”) and Magneti Marelli (“Magneti”) have infringed several of its patents related to the method of manufacturing stators for electric motors. The accused products are manufacturing equipment designed and built by ATOP for use by Magneti to produce stators. Each of the patents-in-suit lists Sante Guercioni of Teramo, Italy, as the sole inventor. So that ATOP may secure a follow-up deposition of Guercioni, ATOP asks the Court to issue to the Italian Ministry of Foreign Affairs a Letter of Request for International Judicial Assistance under Federal Rule of Civil Procedure 28(b), 28 U.S.C. § 1781, and the provisions of the Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters. (ECF No. 189; see also ECF No. 192-1 (English translation of Italian proceeding on July 3, 2023 at which Guercioni gave his deposition).) Tecnomatic opposes ATOP's request. (ECF No. 192.)
The Court held a hearing on the request on September 19, 2023. For the reasons stated more fully on the record during the hearing, the Court GRANTS IN PART ATOP's request as follows:
Prior to issuing another Letter of Request for International Judicial Assistance, the Court will grant leave to all parties to depose Guercioni by written questions in accordance with the procedures set forth in Federal Rule of Civil Procedure 31 and limited to the following issues: (1) the declaration signed by Guercioni that is referenced under the heading “Other Publications” in U.S. Patent No. 8,215,000 (ECF No.75-3, PageID.1536) and under the fourth topic of the Court's previous Letter of Request for International Judicial Assistance (ECF No. 155, PageID.7410), i.e., the questions proposed by ATOP at ECF No. 189-1, PageID.9765-67 and any like number of questions proposed by Tecnomatic that are necessary to respond to these questions, and (2) what Guercioni believes he invented under the patents and for what purpose or goal;
If, within 30 days of entry of this order, Guercioni is not willing to participate in a deposition by written questions under Fed.R.Civ.P. 31, then the Court will GRANT the issuance of another Letter of Request for International Judicial Assistance, to be submitted by ATOP pursuant to the limitations set forth in this order.
In that event, the Court DENIES Tecnomatic's request for ATOP's payment of costs and fees associated with any travel to Italy.
SO ORDERED.