United States District Court, S.D. New York
OPINION & ORDER
A. ENGELMAYER, District Judge.
decision addresses the pending application, Dkt. 1, by
petitioners Purolite Corp., Purolite AG, and Purolite K.K.
(together, "Purolite") for an order, pursuant to 28
U.S.C. § 1782, directing respondent Hitachi America,
Ltd. ("HAL") to comply with third-party discovery
sought in aid of Purolite AG's pending lawsuit in Tokyo
against Hitachi-GE Nuclear Energy, Ltd. ("HGNE"),
Purolite AG v. Hitachi-GE Nuclear Energy, Ltd., Case
No. Heisei 26th Year (Wa) No. 29420, Tokyo District Court,
Civil Division, Section 46-D ("the Japan Action").
The Court assumes familiarity with the parties'
submissions on Purolite's application. For Purolite,
these consist of declarations by Leonard A. Feiwus, Esq.
("Feiwus Decl."), Dkt. 2, and Mitsuhira Kamiya
("Kamiya Decl."), Dkt. 3, and a memorandum of law,
Dkt. 4 ("Purolite Mem."); HAL also submitted a
memorandum of law, Dkt. 18 ("HAL Mem."). The Court
also assumes familiarity with the related action that
Purolite Corp. has brought in this Court against HAL,
AVANTech, Inc. ("Avantech") and certain Avantech
personnel, Purolite Corp. v. Hitachi America, Ltd.,
No. 16 Civ. 6852 (PAE) ("the U.S. Action"). On
January 6, 2017, the Court stayed that action pending
progress in the Japan Action.
Court's analysis, applying the statutory § 1782
factors and the discretionary factors identified by the
Supreme Court in Intel Corporation v. Advanced Micro
Devices, Inc., 542 U.S. 241, 264-265 (2004), follows
summary, the Court's judgment is that there is a proper
basis under § 1782 on which to order HAL to provide
third-party discovery for use in the Japan Action by Purolite
AG. That is because Purolite AG's theory of HGNE's
liability in that action centrally implicates HAL. HAL is
alleged, on HGNE's behalf, to have solicited business
from U.S. entities, and/or to have executed contracts with
such entities, for remediation work at the Fukushima plant
that would use Purolite's proprietary technology,
allegedly in breach of the Partnership Agreement between HGNE
and Purolite. For that reason, § 1782 discovery from HAL
is warranted, much as the United States District Court for
the District of South Carolina, in its order of April 4,
2016, held third-party discovery under § 1782 warranted
from Avantech, a U.S. entity that Purolite alleges was
solicited by HAL and worked with HGNE in connection with the
Fukushima remediation work in a manner that breached the
Partnership Agreement. See Dkt. 2, Ex. 1. The Court
accordingly stands ready to approve a properly drawn subpoena
for such use; and grants Purolite's application, to the
extent that it seeks approval in concept of third-party
discovery by Purolite AG of HAL for use in the Japan Action.
the Court cannot approve Purolite's proposed subpoenas
for documents and testimony as they are currently drafted.
See id., Exs. 2-3. These subpoenas are patently
overbroad. They would improperly reach evidence held outside
the United States, including evidence held in Japan by HAL
affiliates. And they appear aimed in part at fortifying the
incipient U.S. Action, rather than being tailored to the
distinct claims, defenses, and needs of the Japan Action. The
subpoena for documents in particular presents significant
concerns of an undue burden. The Court therefore will direct
counsel for Purolite AG and HAL, now that they are apprised
that the Court will approve properly tailored subpoenas under
§ 1782, promptly to work together to negotiate the
parameters of materially narrowed subpoenas, consistent with
the discussion herein.
Court first considers the three statutory prerequisites for
discovery under § 1782. See Brandi-Dohrn v. IKB
Deutsche Industriebank AG, 673 F.3d 76, 80 (2d Cir.
2012); In re Chevron Corp., 749 F.Supp.2d 141, 160
first statutory requirement is that the person from whom
discovery is sought resides or is found in the District in
which the application is made. Id. Because HAL is
headquartered in Tarrytown, New York, and conducts business
out of its New York headquarters, see Kamiya Decl.
¶ 12, that requirement is met.
as HAL notes, some evidence covered by Purolite's
subpoena appears held abroad, including in Japan. The
document subpoena, for example, defines "Hitachi
America" and "You"-meaning the subpoena's
recipients-to include HAL's "parents, subsidiaries,
and affiliates, " presumably including Japan-based HGNE.
HAL Mem. at 9-10. To the extent that the subpoena seeks
non-U.S. discovery, including by seeking discovery from
HAL's foreign affiliates through the expedient of a
subpoena to HAL, such evidence is beyond the reach of a
§ 1782 subpoena. See In re Sarrio, S.A., 119
F.3d 143, 147 (2d Cir. 1997); In re Microsoft Corp.,
428 F.Supp.2d 188, 194 n.5 (S.D.N.Y. 2006). In finding the
first statutory prerequisite met, the Court relies only on
evidence held by HAL, a U.S. entity, not by its non-U.S.
second statutory requirement is that the discovery requested
be for use in a foreign proceeding. Brandi-Dohrn,
673 F.3d at 80; Chevron, 749 F.Supp.2d at 160. This
requirement, too, is satisfied with respect to some of the
discovery that Purolite seeks. Most obviously, HAL's
efforts in the United States on behalf of or in coordination
with HGNE, either (1) disclosing Purolite's proprietary
technology to other entities in connection with potential
Fukushima remediation work, or (2) seeking to partner, or
partnering, with other entities in connection with such work
as would make use of Purolite's proprietary technology
are centrally germane to the Japan Action. At a minimum, the
Court finds, these efforts by HAL are an appropriate subject
of § 1782 discovery.
same finding cannot be made across-the-board as to
Purolite's two proposed subpoenas. Purolite has not shown
that all 23 calls in its 22-page subpoena duces
tecum, or all 13 subjects covered by its testimonial
subpoena for a corporate witness from HAL, are relevant, let
alone "central to the claims" in the Japan Action.
Purolite Mem. at 18. As HAL notes, some document calls do not
refer to HGNE at all. And some appear targeted to the U.S.
action against HAL as opposed to the Japan Action. Most
revealing in this regard is Purolite's 21st call. It
seeks HAL's "written policies, practices or
procedures and guidelines relating to Your document retention
and destruction, " and specifically demands production
of all such materials as to a host of subsidiary topics.
These include "backup tape rotation schedules, "
"employee use policies of Your computers, data, and any
other technology, " "file naming conventions and
standards, " "password, encryption and other
security protocols, "diskette, CD, DVD, and any other
removable-media labeling standards, " "email
storage conventions (/. e., limitations on mailbox
sizes/storage locations, schedule and logs for storage,
etc.), " "electronic media deployment, allocation
and maintenance procedures for new employees, current
employees, or departed employees, " "software and
hardware upgrades (including patches) through the present
(who and what organization conducted such upgrades)";
and "personal and home computer usage for work-related
activities." Dkt. 2-2, at 21. A United States court
might welcome such production from a party to a lawsuit. But
Purolite offers no reason to believe that the Tokyo court
would have any interest whatsoever in such evidence regarding
a third party's systems, databases, and internal
protocols. In finding the second statutory requirement met,
the Court finds that only some, not all, evidence sought by
Purolite is for use in the foreign proceeding.
third statutory requirement is that Purolite be an
"interested person." Purolite AG, the plaintiff in
the Japan Action, qualifies as such. See In re Lancaster
Factoring Co. v. Mangone, 90 F.3d 38, 42 (2d Cir. 1996).
The Intel Factors
Court next considers the four discretionary factors
identified by the Supreme Court in Intel. These are:
(1) whether the respondent from whom discovery is sought is a
"participant in the foreign proceeding, " (2) the
receptivity of the foreign tribunal to U.S. court assistance,
(3) whether the Section 1782 request is an attempt to
"circumvent foreign proof-gathering restrictions, "
and (4) ...