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United States District Court, S.D. New York

January 27, 2004.


The opinion of the court was delivered by: BARBARA JONES, District Judge


On December 11, 2003, Special Master Peterson issued an Order ("Order") requiring, inter alia, Astra to request a search for, and production of, certain documents from third parties Yoshitomi and Fujisawa, in response to Eon's motion to compel production of these documents. The Special Master reasoned that the documents at issue were within Astra's "possession, custody or control," and therefore, that Astra could be directed to request their production from Yoshitomi and Fujisawa. Order at. 5. Astra appealed the Order on December 15, arguing that the Special Master "clearly erred in his decision by employing the wrong legal standard." This Court does not agree, and therefore affirms the Special Master's Order.

It is beyond dispute that: Federal Rules of Civil Procedure Rule 34 permits a party to serve another party with a request for production of documents "which are in the possession, custody or control of the party upon whom the request is served." Fed.R.Civ.P. 34. Astra argues, however, that in deciding that Astra "controlled" the documents, the Order incorrectly "required Eon Page 2 to show only that Astra has the practical ability to obtain' responsive documents from Fujisawa and Yoshitomi," but declined to require that Astra have the legal ability to obtain these documents (Astra Ltr. at 2 (quoting Order at 8)). The standard employed by the Special Master, however, is the correct one. As discussed at length in the Order, an entity need not have legal control over documents in order to be responsible for their production. See Order at 8 (citing Moore's ยง 34.14[2] [A][b])("The scope of `control' under Rule 34, of course, is not limited to legal ownership of: the requested documents, nor is actual possession necessary."); see id. (quoting Dietrich v. Bauer, 2000 U.S. Dist. Lexis 11729, *7 (S.D.N.Y. 2000)("`Control' has been construed broadly by the courts as the legal right, authority, or practical ability to obtain the materials sought upon demand.").

  Astra also argues that it is inconsistent to order production of the Yoshitomi and Fujisawa documents here when the Special Master previously denied Astra's request that Eon produce GEA and Hexal documents. (Letter from John Carlin to the Hon. Barbara S. Jones, December 15, 2003). The Special Master explicitly considered this argument at length in the Order, and properly distinguished it. First, as the Order makes apparent, the relationships between Eon-GEA and Eon-Hexal were far more attenuated than the relationships between Astra and Fujisawa, and Astra and Yoshtomi. As the Special Master found, the relationship Page 3 between Eon and the third-parties was clearly one of licensee-licensor, whereas here, despite Astra's arguments to the contrary, the parties were joint-venturers whose relationship "le [d] to collaboration between employees of [the] companies that resulted in the inventions of the patents-in-suit." Order at 6-7 (discussing several agreements that Astra entered into with Fujisawa and Yoshitomi). Second, and closely related to the first point, Eon did not have the broad agreements, allowing the exchange of data and information underlying the patents at issue, with the third-parties that Astra had. Order at 7 (citing the agreement between Fujisawa-Astra, the subsidiary formed in the joint-venture between the companies, and Yoshitomi, which specifically stated that the companies "shall co-own the data obtained through the development work performed," by the parties).

  Third, the Special Master properly employed the four-factor test that courts in this circuit use in determining whether one corporate entity has control over a separate entity's documents. Order at 8-9. The Court agrees with the finding that not only were the non-parties intimately involved in the transaction at issue, i.e., they were joint-venturers as well as co-owners of the data, and therefore that they satisfied the second factor, but also that the parties continued to have a close and amicable working relationship. Order at 10 ("The record reflects an Page 4 overall close relationship among the parties to the agreements extending over a significant number of years consistent with having jointly developed the technology at issue"). This relationship gives rise to an affirmative finding on the fourth factor as well: that Astra maintained "the practical ability to obtain responsive documents from Fujisawa and Yoshitomi." Order at 10.

  The Court also notes, in this respect, that the Special Master did not compel production of the documents outright He merely ordered Astra "to request, in good faith, a search for and production of responsive documents from Fujisawa and Yoshitomi" (Order at 11). Thus is not an overly burdensome task, and in fact is more than proper in light of the parties' relationships

  Accordingly, Astra's appeal is DENIED.*fn1 Page 5


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