Janssen Prods., L.P. & Pharma Mar, S.A. v. EVER Valinject GmbH, et al., Slip Op, 24 C 7319 (N.D. Ill. Oct. 21, 2025) (McNally, Mag. J.).
Magistrate Judge McNally denied defendants’ motion to issue letters of request under the Hague Evidence Convention seeking documents and depositions from three foreign inventors and a Netherlands research institute related to the asserted patent.
Applying the comity analysis recognized in Aerospatiale and its progeny, the Court found the proposed letters lacking on multiple fronts:
- insufficiently tailored to issues of infringement and validity;
- overly broad and vague (including sweeping requests about undefined “foreign counterparts” and “any” trabectedin formulations); and
- unjustified in light of available alternatives, including laboratory notebooks and records already produced by Pharma Mar and testimony from a co-inventor still employed by the patentee.
Defendants did not tie specific requests to specific issues or explain why inventor-level materials abroad would materially differ from, or be necessary beyond, what had been produced domestically.
The Court also addressed timing. With fact discovery closing in about six weeks, the Court found it “almost certainly” impossible to timely complete the Hague processes, especially given the breadth of the requests and likely foreign challenges. Respecting comity includes avoiding futile burdens on foreign courts where the U.S. case schedule renders relief impractical.
This decision delivers several strategic lessons for litigators seeking foreign discovery. First, importance is distinct from relevance: parties must articulate why each specific item is necessary to adjudicate particular issues, not merely that inventors “may have” relevant information. Second, specificity is paramount: define counterpart patents precisely, cabin requests to the claimed subject matter, and limit deposition topics to discrete areas. Third, alternatives matter: account for what has been produced, what a domestic co-inventor can supply, and why additional foreign evidence is indispensable. Finally, timing and case management are dispositive—Hague requests should be targeted, sequenced early, and harmonized with the discovery schedule to avoid denial on practicality and comity grounds.