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Case 1 :06-cv-00751-IVIPT Document 62 Filed 08/26/2008 Page 1 of 3 - i
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1007 North Orange St.
Francis DiGiovanni Ro. Box 2207 ~
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August 26, 2008
VIA ELECTRONIC FILING
Magistrate Judge Mary Pat Thynge
J. Caleb Boggs Federal Building
844 N. King Street
» Wilmington, Delaware 19801
Re: Parker—HannUirz Corporation v. Zzppertubing (JAPAN), Ltd.
Civil Action No. 06-751-MPT
Dear Judge Thynge:
I write on behalf of Parker—l-lannifin Corporation ("Parker") in connection with
the discovery conference scheduled for August 28, 2008. (D.I. 61.) Zippertubing asked
for the conference to discuss Parker’s request that the Court authorize the U.S. Consulate
at Osaka-Kobe, Japan to conduct depositions.
Discussions with Zippertubing’s counsel have since revealed that the
disagreement among the parties reaches far beyond the depositions. Accordingly, the
parties have agreed that each would send a letter to the Courtr48 hours prior to the
conference, and a brief reply 24 hours prior.
ln advance of the depositions and opening expert reports, Parker recently
completed its review of numerous J apanese—language documents produced by
Zippertubing. The review revealed that Zippertubing’s production consists almost
. exclusively of activity prior to the Bling dates of the patents—in-suit. Except for a scant
few letters between Zippertubing and Underwriter’s Laboratories, the production fails to
include a single document, electronic or otherwise, relating to Zippertubing’s accused .
"65T" or "8lT” products. Documents relating to the accused products are clearly
l requested in Parker’s document requests and should have been produced long ago. The
` information withheld includes all documents and electronically stored information (ESD
T relating to sales (customers, price, and quantity), marketing plans, materials used to make
the gaskets, methods of manufacture, and comrnrmications regarding same. It appears
that Zippertubing has substantially limited its production to alleged prior art activities.
Based on discussions over the past few days, Zippertubing’s withholding of
responsive documents is deliberate, and Zippertubing affirmatively refuses to produce
them. Parker understands that Zippertubing’s objections extend to all fonns of discovery,
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Case 1:06-cv-00751-IVIPT Document 62 Filed 08/26/2008 Page 2 of 3 \
Magistrate Judge Mary Pat Thynge
August 26, 2008 A
Page 2 of 3
including depositions, document production, and lnterrogatories. Accordingly,
Zippertubing refuses to provide even basic information in any form relating to the core
issues in the case}
Zippertubing contends that it is not subject to discovery on these basic issues
because such discovery would be a violation of Japanese sovereignty. Parker’s counsel
has reviewed various cases cited by Zippertubing in support of its position, and has found
nothing supporting it. Rather, the Supreme Court has consistently held that a court has
the power to impose discovery under the Federal Rules when it has personal jurisdiction
over a foreign party. Societe Nationale Industrielle Aerospatiale v. United States District
Court, 482 U.S. 522, 544 n.4 (1987) (Blackmun, J., dissenting in part). Applying this
principle, a Japanese party, such as Zippertubing, is subject to the discovery provisions of
the Federal Rules where personal jurisdiction lies. In re Vitamins Antitrust Litig., 120 F.
Supp. 2d 45, 55 (D.D.C. 2000).
In the instant case, Zippertubing has twice waived any defense of lack of personal
jurisdiction. See Zippertubing Answer (D.I. 7) $[3; Zippertubing Proposed Amended
Answer (D.I. 56-2) ‘ll4. Having done so, Zippertubing cannot now claim that it is not
subject to jurisdiction or the rules of this Court, including the discovery rules.
Further, Zippertubing has availed itself of the Federal Rules of Civil Procedure
l and taken advantage of the Rules to propound discovery upon Parker. See Zippertubing’s
l First Set of interrogatories (Jan. 4, 2008) ("Pursuant to Rule 33 of the Federal Rules of
Civil Procedure, Zippertubing . . . directs the following interrogatories to Plaintiff Parker-
Hannifin."); Zippertubing’s First Set of Production Requests (Jan. 4, 2008)
l ("Zippertubing . . . requests that Plaintiff Parker-Hannifin . . . produce for inspection and
copying . . . pursuant to the Federal Rules of Civil Procedure, the local rules of this court,
and this court’s Default Standard for Discovery • Electronic Documents.").
. Zippertubing has also availed itself of Rule 45 to issue subpoenas on three U.S.-based
third parties. Zippertubing desires to use the rules of this Court when they suit it, yet
claims exemption from them when they are inconvenient. Such conduct should not be
tolerated.
Parker requests that this Court find that Zippertubing is subject to all discovery
provisions of the Federal Rules of Civil Procedure and the Default Standard for
Discovery of Electronic Documents. Further, Parker requests the following:
• The Court compel production of all documents responsive to Parker’s
1 Document Requests without any objections based on Japanese sovereignty
I Yesterday, Mr. Pegram offered over the telephone to disclose the identity of the Seiren
fabrics used to make "65'l"’ or "81T."
l

Case 1:06-cv-00751-IVIPT Document 62 Filed 08/26/2008 Page 3 of 3
Magistrate Judge Mary Pat Thynge
August 26, 2008
Page 3 of 3 \
or the like, including the production of ESI in accordance with this Court’s (
Default Standard for Discovery of Electronic Documents. (
• The Court order Zippertnbing to supplement its answers to all of Parker’s
Interrogatories to the extent any answer was fully or partially withheld
based on objections relating to Japanese sovereignty.
• The Court’s assistance in resolving the parties’ disagreement on the proper
scope of Zippertubing’s depositions, such that Parker is pennitted to
examine on all issues relevant to the case, including topics relating to sales
(customers, price, and quantity), marketing plans, channels of trade, the ·
materials used to make the gaskets, methods of manufacture, and
communications regarding same. V
• If Zippertnbing refuses to voluntarily produce appropriate witnesses for
depositions on all relevant topics in Osaka—Kobe, Japan and without the
above objections, Parker requests that the Court order the proposed
deponents to appear in Delaware for depositions, where the Court could —
oversee the depositions and ensure compliance with the Federal Rules.
• To the extent Zippertubing’s improper conduct has delayed the case and
impaired Parker’s ability to prepare expert reports and take effective
depositions as currently scheduled, Parker requests that expert and fact
discovery be extended and, if necessary, new dates for dispositive motions
and trial be established. Parker cannot determine whether an extension is
K necessary until Zippertnbing commits to document and witness production
dates.
Parker thanks Your Honor for her time and attention to this matter.
t
Francis DiGiovanni
SN/el
cc: Clerk of Court (via Electronic Filing)
John B. Pegram, Esq. (via email)
r William J. Marsden, Jr. (via email)
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