The case of the day is Metso Minerals Industries, Inc. v. Johnson Crushers International, Inc. (E.D. Wis. 2011). Metso Minerals (France) S.A. brought an action against Johnson Crushers seeking a declaration that it did not infringe Johnson’s patent for an adjustment mechanism for a rock crusher. Johnson counterclaimed for infringement. Metso refused to produce documents requested in discovery on the grounds that production would violate the French blocking statute, and Johnson moved to compel. The judge granted the motion, rejecting the argument that discovery had to proceed under the Hague Evidence Convention. The judge noted that Metso had failed to point to French interests that could, under Aérospatiale, be sufficient to require resort to the Convention. The opinion doesn’t dwell on the point, but I would add that Metso was the plaintiff, and a plaintiff, who choses a US forum and invokes the judicial power of the United States, should be prepared to follow US procedures. (That’s a little bit of sermonizing, but it strikes me as a matter of basic procedural fairness). If the judge had considered the issue, I think it would have been necessary to consider whether the fact that Metco was seeking only a declaration should matter. It’s not uncommon for companies that expect to be sued for patent infringement to seek declaratory judgments, and Metso could have argued that in substance, it was a defendant, and the fact that it sued first should be not be counted against it in the Aérospatiale analysis. I find this unpersuasive. The decision to rush into court first rather than waiting to be sued is a tactical decision about choice of forum, the benefit of having your name in front of the “versus”, etc. Plainitffs should simply factor this issue into their tactical calculus.