JUBILANT GENERICS LIMITED, Plaintiff v. DECHRA VETERINARY PRODUCTS, LLC, Defendant 2:23-cv-00237-JDL United States District Court, D. Maine Filed February 22, 2024 Counsel Bernard J. Kubetz, Hampden, ME, J. Scott Humphrey, Pro Hac Vice, Rebecca L. Dircks, Pro Hac Vice, Benesch Friedlander Coplan & Aronoff LLP, Chicago, IL, John N. Dagon, Pro Hac Vice, Benesch, Friedlander, Copland & Aronoff LLP, Cleveland, OH, for Plaintiff. Michael S. Cargnel, Pro Hac Vice, Shook Hardy & Bacon LLP, Kansas City, MO, Timothy J. Bryant, Preti, Flaherty, Portland, ME, for Defendant. Nivison, John C., United States Magistrate Judge ORDER ON MOTION FOR LETTER REQUEST *1 Pursuant to the Hague Evidence Convention, Plaintiff asks the Court to issue a letter request to require two England business entities (the entities) to produce documents that Plaintiff contends are relevant to Plaintiff's claim that Defendant misappropriated certain confidential and proprietary information Defendant obtained from Plaintiff pursuant to the parties’ contract. (Motion for Letters, ECF No. 54.) One of the entities (Dechra Pharmaceutical PLC) is Defendant's parent company, and the other entity (Freya Bidco Limited) acquired Defendant during the pendency of the parties’ dispute regarding the information. Defendant opposes Plaintiff's motion. After consideration of the parties’ arguments and following a review of the record, the Court grants Plaintiff's motion. DISCUSSION Plaintiff seeks from the entities information that it believes will confirm that Defendant misappropriated Plaintiff's confidential information and will demonstrate the benefits Defendant has realized and will realize as the result of the misappropriation. Defendant contends Plaintiff's document requests are overly broad and seek information available by other means. A letter of request, or a letter rogatory, is “a formal request from a court in which an action is pending, to a foreign court to perform some judicial act.” 22 C.F.R. § 92.54. Letters rogatory are commonly used to facilitate the taking of evidence from non-parties located in foreign jurisdictions. Id.; Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 248 n.1 (2004). “Requests rest entirely upon the comity of courts toward each other, and customarily embody a promise of reciprocity.” 22 C.F.R. § 92.54. This Court has the inherent authority to issue letters rogatory and may issue letters rogatory directly to a foreign tribunal. 28 U.S.C. § 1781(b)(2); Google Inc. v. Rockstar Consortium U.S. LP, No. 4:13-cv-05933, 2014 WL 8735114, at *1 (N.D. Cal. Oct. 3, 2014). The decision to exercise that authority is a matter of discretion. Triumph Aerostructures, LLC v. Comau, Inc., No. 3:14-CV-02329, 2015 WL 5502625, at *2 (N.D. Tex. Sept. 18, 2015); Rockstar Consortium, 2014 WL 8735114, at *1. A court generally will not weigh the evidence sought or predict whether the evidence will be obtained in the foreign jurisdiction. Rockstar Consortium, 2014 WL 8735114, at *1. However, “[j]udicial supervision of discovery should always seek to minimize its costs and inconvenience and to prevent improper uses of discovery requests.” Societe Nationale Industrielle Aerospatiale v. U.S. Dist. Court for S. Dist. of Iowa, 482 U.S. 522, 546 (1987). In assessing a request for letters, a court considers “(1) the importance to the ... litigation of the documents or other information requested; (2) the degree of specificity of the request; (3) whether the information originated in the United States; (4) the availability of alternative means of securing the information; and (5) the extent to which noncompliance with the request would undermine important interests of the United States, or compliance with the request would undermine important interests of the state where the information is located.” Luminati Networks Ltd. v. Teso LT, UAB, No. 2:29-CV-00395-JRG, 2020 WL 6815153, at *1) (quoting Societe Nationale, 482 U.S. at 544 n.28). Additionally, a court's exercise of discretion is informed by the discovery standards set forth in Rule 26(b) of the Federal Rules of Civil Procedure. Triumph Aerostructures, LLC, 2015 WL 5502625, at *3. Rule 26 authorizes the following discovery: *2 Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Information within this scope of discovery need not be admissible in evidence to be discoverable. Fed. R. Civ. P. 26(b)(1). Here, the relevant factors militate in favor of granting Plaintiff's request. The gravamen of Plaintiff's complaint is that Defendant misappropriated Plaintiff's confidential information and Plaintiff has persuasively argued that the entities, which consist of Defendant's parent company and its successor, likely have relevant information to Plaintiff's liability and damages claims. Although certain aspects of Plaintiff's requests warrant modification to remain proportional to the needs of the case, contrary to Defendant's argument, the core of the requests is neither overbroad nor vague. Rather, with some modest modification and temporal limit, the requests are reasonably focused and designed to obtain information that is relevant and potentially material to Plaintiff's claim (e.g., documents the entities possess or have generated regarding Defendant's use and possible dissemination of Plaintiff's confidential information as that term is defined in the parties’ contract). The Court is unpersuaded by Defendant's assertion that the requests should be denied because they go beyond the scope of permissible discovery under the law of the foreign jurisdiction. Courts do not necessarily apply precisely the same criteria when receiving letters rogatory as they might during a comparable domestic civil action, cf. Intel, 542 U.S. at 261, and while it can be a relevant factor in some cases, that question is ordinarily appropriate for the receiving court to assess when deciding whether to provide the requested assistance. See Triumph Aerostructures, 2015 WL 5502625, at *15 (“[W]hether the discovery sought through a letter of request will be executed in light of possible limitations in foreign law is a matter appropriate for the foreign tribunal, rather than this Court, to determine”) (collecting cases). Defendant's contention that the information can be obtained through alternative means is also unpersuasive. While the availability of an alternative means of obtaining the requested information is a legitimate consideration, particularly “in the face of objections by foreign states,” Societe Nationale Industrielle Aerospatiale, 482 U.S. 522, 544 n. 28 (1987), the Court is not convinced that Plaintiff could obtain the information from other sources. CONCLUSION Based on the foregoing analysis, the Court grants Plaintiff's motion for letter request.[1] The approved Letter Request is attached to this Order. NOTICE *3 Any objections to this Order shall be filed in accordance with Federal Rule of Civil Procedure 72. Dated this 22nd day of February, 2024. TO THE APPROPRIATE AUTHORITY IN THE UNITED KINGDOM REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE PURSUANT TO THE HAGUE CONVENTION OF 18 MARCH 1970 ON THE TAKING OF EVIDENCE ABROAD IN CIVIL OR COMMERCIAL MATTERS The United States District Court for the District of Maine presents its compliments to the Royal Courts of Justice and has the honor of requesting its assistance in obtaining evidence for use at trial in a civil proceeding now pending before this Court in the above-captioned matter. To the extent that leave is necessary, the parties are hereby granted leave to take discovery as requested in the Letter of Request. The Court respectfully requests the assistance described herein as necessary in the interests of justice. The assistance that is requested is that the Royal Courts of Justice compel the production of documents by Dechra Pharmaceutical PLC[1] (“Dechra UK”) and Freya Bidco Limited[2] (“Freya”) for use at trial in the above captioned matter. Based on the evidence and information provided to this Court, and the information set forth in Sections F and G below, this Court finds there are sufficient grounds to obtain evidence sought through this Letter of Request. A. Requesting Judicial Authority Office of the Clerk United States District Court for District of Maine 156 Federal Street Portland, ME 04101 United States of America Telephone: (207) 780-3356 B. Competent Authority of the Requested State The Senior Master For the attention of the Foreign Process Section Room El6 Royal Courts of Justice Strand LONDON WC2A 2LL Telephone: 0207-947-7772 (option 2) C. Persons to whom the Executed Request is to be Returned If the U.K. Authority requires additional information, please contact the applicants’ representatives below. Please notify the representatives for the Plaintiff once the Request has been executed, when and where the requested documents are ready to be produced. J. Scott Humphrey, Rebecca L. Dircks, John N. Dagon Benesch, Friedlander, Coplan & Aronoff LLP 71 South Wacker Drive, Suite 1600 Chicago, Illinois 60606-4637 D. Date by which the Requesting Authority Desires Receipt of the Response to the Letter of Request A response is requested as soon as possible to ensure that the evidence may be obtained in advance of the deadline for summary judgment motions, currently set for March 22, 2024. E. Names and Addresses of the Parties and their Representatives 1. Plaintiff Jubilant Generics Limited 1-A, Sector 16-A Nodia 201 301 UP, India 2. Plaintiff's Representatives J. Scott Humphrey Rebecca L. Dircks Benesch, Friedlander, Coplan & Aronoff LLP 71 South Wacker Drive, Suite 1600 Chicago, Illinois 60606-4637 312-212-4949 shumphrey@beneschlaw.com rdircks@beneschlaw.com John N. Dagon Benesch, Friedlander, Coplan & Aronoff LLP *4 127 Public Square, Suite 4900 Cleveland, Ohio 44114 216-363-4500 jdagon@beneschlaw.com Bernard J. Kubetz 104 Griffin Avenue Hampden, Maine 04444 207-745-0198 bkubetz@gmail.com 3. Defendant Dechra Veterinary Products, LLC 7015 College Boulevard Overland Park, Kansas 66211 913-327-0015 4. Defendant's Representatives Timothy Bryant Preti, Flaherty, Beliveau & Pachios, LLP One City Center, PO Box 9546 Portland, ME 04112 207-791-3000 tbryant@preti.com Michael Carnel Shook, Hardy & Bacon LLP 2555 Grand Blvd. Kansas City, MO 64108 816-474-6550 mcargnel@shb.com F. Nature of the Proceedings[3] In 2007, Plaintiff Jubilant Generics Limited, a corporation established in the country of India with its principal place of business located in India, and Defendant Dechra Veterinary Products, LLC, a Delaware limited liability company with its headquarters and principal place of business located in Kansas, entered into Confidentiality Agreement and a Licensing and Supply Agreement under which the two companies agreed to develop for sale in the United States a fluoroquinolone antibiotic tablet called Enrofloxacin (the Product) used for the treatment of animals. Plaintiff was to supply the Product, Defendant was to secure and finance all required testing and regulatory approvals, and if the product was approved by the United States Food & Drug Administration (FDA), Defendant would market and sell the Product and share the profits with Plaintiff. In 2013, the Product was approved by the FDA and sales began under Defendant's registered trademark, Enroquin. After a series of negotiations to resolve issues that developed between the parties, in February 2023, the parties’ contractual relationship ended. Despite Plaintiff's requests that Defendant return Plaintiff's confidential information, Defendant has not returned the information. In June 2023, Plaintiff filed suit in the United States District Court for the District of Maine alleging Defendant breached the parties’ agreements and misappropriated Plaintiff's confidential trade secrets. Defendant has countersued Plaintiff for failing to supply the Product according to the parties’ contracts. With the parties’ consent, the Court entered a temporary injunction prohibiting further use or sharing of Plaintiff's intellectual property during the litigation process. G. Evidence to be Obtained Plaintiff respectfully requests that Dechra UK and Freya produce documents in its possession, custody, or control, as described below, at a reasonable time and place to be fixed by the Senior Master, with the Plaintiff's representative being allowed an opportunity to inspect and copy the documents. The evidence requested is in the interest of justice, as the requested documents in the possession of Dechra UK and Freya's possession are relevant to Plaintiff's claims. At all relevant times, Dechra UK served as Defendant's parent company in the United Kingdom. Plaintiff asserts that Dechra UK has information regarding Defendant's alleged transfer of Plaintiff's Confidential Information and attempts to use the Confidential Information without Plaintiff's consent. *5 Freya is a holding company, partially owned by EQT Fund Management S.à r.l. (“EQT”), a Luxembourg entity. Shortly after Defendant transferred Plaintiff's Confidential Information to TRiRX, Freya and EQT purchased Dechra UK. Upon information and belief, based on industry standards, Freya conducted due diligence before this acquisition and gathered information on Defendant's transfer and alleged misuse of Plaintiff's Confidential Information. Plaintiff maintains that Dechra UK may have engaged in independent communications about Plaintiff's Confidential Information and Defendant's use of the Confidential Information, and that Freya may have discovered similar unique information through its due diligence process. It is reasonably likely that Dechra UK and Freya have documents in their possession that are relevant and material to evidentiary issues in the above-referenced litigation, including but not limited to: (i) Defendant's efforts to market manufacture, sell, and supply the Product; (ii) communications regarding the Product and Defendant's use and misuse of Plaintiff's Confidential Information; (iii) profits earned by Defendant from sale of the Product; and (iv) anticipated revenue from Defendant's sale of the Product. 1. Definitions For purposes of the requests described below, the following terms shall be defined as follows: 1. “Documents” refers to all written, electronically stored (e.g., e-mails) or graphic matter of any kind or description however produced or reproduced, whether deleted, erased, destroyed, draft or final, original or reproductions, and all tangible things, specifically including but not limited to: writings, e-mails, drawings, graphs, charts, photographs, phone records, data compilations, letters, correspondence, memoranda, notes, memoranda of conversations, transcripts, desk calendars, appointment books, diaries, logs, telephone messages, notebooks, post cards, summaries or paraphrases of any of the foregoing or material similar to any of the foregoing, however denominated, which are in the possession, custody, or control of subpoena recipient or to which it can obtain access, interpreting the foregoing as broadly as intended under Rules 33 and 34 of the Federal Rules of Civil Procedure. 2. “Related to” or “relating to” means consisting of, referring to, pertaining to, reflecting, supporting, prepared in connection with, used in preparation for, or being in any way legally, logically or factually connected with the matter discussed. 3. “Communication” refers to any transfer of information, ideas, opinions, or thoughts by any means, at any time or place, under any circumstances, and is not limited to written or verbal transfers between natural persons, but includes all other transfers, including, but not limited to, electronic transfers, transfers of information stored on computer disk or computer memory, and memoranda to file. 4. “Person” includes a natural person, partnership, firm, labor organization, corporation, governmental body, or any kind of business or legal entity, its agents, or employees. 5. “And” as well as “or” shall be construed either disjunctively or conjunctively as necessary to bring within the scope of these Requests any documents or other information which might otherwise be construed to be outside their scope. 6. For purposes of the first set of requests for production of documents contained below, “You,” “Your,” or “Dechra UK” means Dechra Pharmaceutical PLC, UK, its representatives, agents, employees, predecessors, assignees, successors, and, unless privileged, attorneys. For purposes of the second set of requests for production of documents contained below, “You,” “Your,” or “Freya/EQT” means Freya Bidco Limited, its representatives, shareholders, agents, employees, predecessors, assignees, successors, and, unless privileged, attorneys. *6 7. “Dechra” or “Defendant” means Dechra Veterinary Products, LLC, its officers, directors, employees, representatives, agents, predecessors, assignees, subsidiaries, affiliates, successors, and, unless privileged, its attorneys. 8. “Jubilant” or “Plaintiff” means Jubilant Generics Limited, India, its officers, directors, employees, representatives, agents, predecessors, assignees, subsidiaries, affiliates, successors, and, unless privileged, its attorneys. 9. “Agreement” means the contract entered into between Dechra and Jubilant titled “Licensing and Supply Agreement” on December 10, 2007, read with its Amendment #1 dated March 28, 2018. 10. “Product” means Enrofloxacin, of which the Agreement governed the marketing, selling, manufacture, supply, and distribution within the United States of America. 11. “TRiRx” means TRiRx Pharmaceutical Services, USA, as well as its partners, officers, directors, employees, representatives, agents, predecessors, assignees, subsidiaries, affiliates, successors, and, unless privileged, its attorneys. 12. “Litigation” means the lawsuit that Jubilant filed against Dechra in the United States District Court for the District of Maine, Case Number 2:23-CV-00237, captioned Jubilant Generics Limited v. Dechra Veterinary Products, LLC. 2. Request for Production of Documents from Dechra UK 1. Produce all Documents and Communications between You and Dechra created on or after March 6, 2019 relating to Jubilant, the litigation, or the Product, including its marketing, selling, manufacture, supply, and distribution within the United States of America. 2. Produce all Documents and Communications created on or after March 6, 2019 and which Dechra shared with or provided to You relating to the Product, including its manufacture, in the United States of America or elsewhere, by Dechra, TriRx, or other third parties. 3. Produce all Documents and Communications relating to Dechra continuing to, or planning to continue to, manufacture, sell, and/or distribute the Product in the United States of America for the years 2022, 2023, 2024, 2025 and 2026, including plans or forecasts of revenue or sales or profitability. 4. Produce all Documents and Communications created on or after March 6, 2019 that identify any Person to whom You provided information, Documents, property, records, data, and/or materials that relate to the Product and its revenue and/or sales in the United States of America. 5. Produce all Documents that identify the revenue and/or sales Dechra received from the sale of the Product in the United States of America from 2020 to the present. 3. Request for Production of Documents from Freya Bidco 1. Produce all Documents and Communications between You and Dechra US or Dechra UK created on or after March 6, 2019 relating to Jubilant, the Litigation, the Product, including its marketing, selling, manufacture, supply, and distribution within the United States of America. 2. Produce all Documents and Communications created on or after March 6, 2019 and which Dechra US or Dechra UK shared with or provided to You relating to the Product, including its manufacture, in the United States of America or elsewhere, by Dechra US, TriRx, or other third parties. 3. Produce all Documents and Communications relating to Dechra or continuing to, or planning to continue to, manufacture, sell, and/or distribute the Product in the United States of the America for the years 2022, 2023, 2024, 2025, and 2026, including plans or forecasts of revenue or sales or profitability. *7 4. Produce all Documents and Communications created on or after March 6, 2019 that identify any Person to whom You provided information, Documents, property, records, data, and/or materials that relate to the Product and its market share, revenue and/or sales, profitability and valuation in the United States of America. 5. Produce all Documents that identify the market share, revenue, and/or sales, profitability and valuation Dechra US and/or Dechra UK received from the sale of the Product in the United States of America. H. Request for Attendance or Participation of Judicial Personnel of the Requesting Authority at the Execution of the Letter of Request This Court respectfully requests that representatives of all parties to this lawsuit, a stenographer, a videographer, and, if necessary, a translator be authorized to be present at the execution of this Letter of Request if deemed necessary. I. Specification of Privilege or Duty to Refuse to Give Evidence under the Law of the State of Origin The privilege or duty of the witness(es) to refuse to give evidence shall, in addition to what follows from U.K. Procedural Code, include the right to withhold evidence if giving such evidence would (1) subject them to real and appreciable danger of criminal liability in the United States, or (2) disclose a confidential and privileged communication between them and their respective attorneys. J. The Party to Pay any Reimbursable Fees and Costs Plaintiff shall bear any fees and costs within the scope of Articles 14 and 26 of the Convention. /s/ John C. Nivison United States Magistrate Judge United States District Court, District of Maine Dated this 22nd day of February, 2024. Footnotes [1] Precedent suggests that the burden is on the party opposing the issuance to show “good reason” for the denial a motion for a letter request. Sec. Ins. Co. of Hartford v. Trustmark Ins. Co., 218 F.R.D. 24, 26-27 (D. Conn. 2003) (“A party opposing issuance of a letter rogatory must show ‘good reason’ why such letter should not issue.”); DBMS Consultants Ltd. v. Computer Assocs. Int'l, Inc., 131 F.R.D. 367, 369 (D. Mass. 1990) (“Courts and commentators take the position that some good reason must be shown by the opposing party for a court to deny an application for a letter rogatory”). In this case, not only has Defendant failed to demonstrate a good reason to deny the request, but Plaintiff has established cause for the letter request. [1] Dechra Pharmaceutical PLC is located at 24 Chesire Avenue Cheshire Business Park, Lostock Gralam, Northwich, England, CW9 7UA. [2] Freya Bidco Limited is located at 30 Broadwick Street, 3rd Floor, London, England, W1F 8JB. [3] The information is derived primarily from the allegations in Plaintiff's complaint and the assertions in Plaintiff's motion for temporary restraining order.