^1/ Before January 1, 1984 the rules of this court required.that discovery requests be filed with the Clerk of the Court. It does not appear that Graco filed its requests with the Clerk. SKM has not, however, disputed Graco's statement that it served its interrogatories and requests to produce on July 29, 1981. (Graco memo re: motion to compel filed 2/3/83, p. 2.) The text of Graco's discovery requests is part of the record, since copies of the requests were submitted in support of Graco's motion to compel.

^2/ Jurisdiction also might be based on diversity of citizenship,28 U.S.C. $1332. The complaint alleges that Graco is a Minnesota corporation with its principal place of business in Minnesota, that Kremlin is an Illinois corporation with its principal place of business in Illinois, and that SKM is a French body corporate with its principal place of business in France. The amount in controversy does not appear, however,from the face of the complaint.

^3/ The text of the Convention is reprinted as a note following 28 U.S.C.A. $1781 (West Supp. 1983).

^4/ There are some differences between appointing a commissioner and proceeding through diplomatic or consular personnel.’ The Convention therefore may be said to provide three different procedures. Pain v. United Technologies Corp.. 637 F.2d 775,788 n. 67 (D.C. Cir. 1980), cert, denied. 454 U.S. 1128 (1981).

^5/ Law No. 68-678 of July 26, 1968 enacted limited blocking provisions relating to investigation of the International shipping industry. Law No. 80-538 of July 16, 1980 amended Law No. 68-678 and increased its scope greatly. The court's references are to the provisions of Law No. 68-678 as amended by Law No. 80-538, rather than to the provisions of Law No. 80-538 itself.

^6/ Another translation may be found in Toms, The French Response to the Extraterritorial Application of United States Antitrust Laws, 15 Int'l. Law. 585, 611 (1981).

^7/ Because the plaintiff in Societe was suing to recover confiscated property, the Court pointed out, its suit in effect was a post-deprivation hearing guaranteed by the Due Process and Just Compensation Clauses of the Fifth Amendment. 357 U.S. at 210-11. Courts generally have not emphasized this aspect of Societe. But see In re Grand Jury proceedings, 691 F.2d 1384,1389 (11th Cir. 1982), cert, denied. 103 S. Ct. 3086 (1983).

^8/ Certain opinions of the Court of Appeals for the Second Circuit suggested that foreign nondisclosure laws should be treated as absolutely barring court orders compelling production.Whether or not this actually was the law of the Second Circuit, that Circuit “clearly has moved to a more flexible position.” SEC.v. Banca Delia Swizzera Itallana. 92 F.R.D.Ill, 115 (S.D.N.Y. 1981).

^9/ Even where there is no conflict with a foreign law, courts are well advised to proceed cautiously any time they order discovery involving activity within another country. See Restatement(Revised) S420 (Tentative Draft No. 3, 1982).

^10/ In a related context, the Solicitor General has argued that depositions compelled by court order are given under compulsion.Brief for the United States as Amicus Curiae at 10-11 4′n. 6,Volkswaqenwerk A.G. v. Falzon. appeal dismissed, 52 0.S.L.N.3609 (Feb. 21, 1984) (No. 82-1888). The court thanks SKH for supplying it with a copy of the Solicitor General's brief.[23 I.L.M. 412 (1984); please note February 21, 1984, is correct date for dismissal of appeal.]

^11/ This does not mean, however, that Art. 1-bis is not intended to promote the secrecy of certain information. France may believe that It safely can rely on its nationals to maintain a proper level of secrecy merely by acting in their own perceived interests, but that foreign discovery rules may require them to disclose information contrary to their own perceived Interests 12/As SKM has noted. Art. 1-bis would appear to subject Graco, as well as SKM, to criminal liability. Graco has not made-an issue of this potential liability, but it provides another reason for conducting depositions outside France, and for requiring SKM to produce documents and interrogatory answers outside France.

^13/ The text of this letter is reprinted in the appellant's,jurisdictional statement filed before the Supreme Court in Club Mediterranee, S.A. v. Dorln, appeal filed. 52 O.S.L.H.3210 (U.S. Sept. 16, 1983) (No. 83-461), which SKM has submittedto this court. The letter describes the Hague Convention procedures as “the only two methods of Investigation in French territory that may be ordered by foreign legal authorities.”Jurisdictional Statement at 13.

^14/ One case apparently takes the position that all consideration of foreign law problems should be deferred until such time as the court may have to impose sanctions. Arthur anderson t Co.v. Finesilver. 546 F.2d 338, 341 (10th Cir. 1976), cert.denied, 429 U.S. 1096 (1977).

^15/ These cases were not in complete agreement. Schroeder explicitly held that the plaintiff would be required to utilize Convention procedures for all discovery, even that directed at evidence located within the United States. General Electric expressly disagreed with this view, holding that the Convention procedures must be used to obtain evidence located in West Germany, or to question people residing in West Germany. Philadelphia Gear apparently involved only evidence located in West Germany. In the present case, Graco seeks discovery of documents located in France, has served interrogatories which apparently can be answered only with Information located in France, and seeks to depose residents of France.

^16/ The first Volkswaqenwerk case, decided in 1973, referred, to the Convention, but it was a pre-Convention case, since Nest Germany did not ratify the convention until 1979. The Pierburq court mistakenly read the first Volkswaqenwerk case as construing the United States' obligations under the Convention. 137 Cal. App. 3d at 241, 186 Cal. Rptr. at 878.

^17/ If the parties and the court truly were in agreement that the Convention governed discovery of documents located in France,then it is doubtful that the court would have entertained a motion to compel and decide the merits of a privilege claim with respect to those documents. The Convention provides that a person may assert a privilege “(i]n the execution of a Letter of Request.” Convention, Article 11. The Convention also provides that a Letter of Request may mention Information (presumably privileges applicable under the law of the issuing state) necessary for the executing authority's application of Article 11. Convention, Article 3. A decision on privilege therefore seems to be the province of the executing authority, rather than the issuing court, and it appears that the court in Renfield did not intend to suggest that the Letters of Request procedure was being utilized.

^18/ The Toms article on the French Blocking Statute, offered by SKM, also addresses a few comments to the Convention. Interestingly, Toms states that France enacted the Blocking Statute precisely because the Convention does not state that its procedures are exclusive. Toms, 15 Int'l Law. at 586 n. 4, 596-98.

^19/ Amram recommended ratification of the Convention, stating: “It makes no major changes in United States procedure and requires no major changes in United States legislation or rules. on the other front, it will give United States courts and litigants abroad enormous aid by providing an international agreement for the taking of testimony, the absence of which has created barriers to our courts and litigants.” 55 A.B.A.J, at 655.

^20/ The court therefore does not share the Pierburg court's tear that to allow service of written interrogatories and document requests upon foreign parties “would automatically destroy the Convention.” 137 Cal. App. 3d at 245, 186 Cal. Rptr. at 881.See also Schroeder. slip op. at 5.

^21/ See, e.g., Sealed Air Corp. v. United States International Trade Comro'n, 645 F.2d 976, 993 & n. 8 (C.C.P.A. 1981) (opinion of Nies, J.).

^22/ Hague Convention on Civil Procedure, March 1, 1954, 286 U.N.T.S. 265, 1 Am. J. Comp. L. 282 (1952) (translation). The 1970 Convention supersedes the 1954 convention (and an earlier 1905 convention) In part. Convention, Articles 29-31.

^23/ Ironically, perhaps. Article 23 was proposed by the United Kingdom, not by a Civil Law country. Amram, 55 A.B.A.J, at 653. Even among Common Law countries. United States discovery procedures are considered extremely liberal.

^24/ It may be that a person to be deposed could avoid the inconvenience of travel to another country by electing voluntarily to appear before a commissioner or diplomatic or consular official under Chapter II of the Convention. The court notes that this order does not compel the taking of any deposition.

^25/ In addition to the United States, the signatories are Barbados,Czechoslovakia, Denmark, Finland, France, the Federal Republic of Germany, Israel, Italy, Luxemburg, the Netherlands, Norway, Portugal, Singapore, Sweden, and the United Kingdom.

^26/ Several states apparently felt it necessary to elaborate on their Article 23 declarations, stating, in essence, that they would execute document requests only for specifically identified documents, and that they would not execute interrogatories seeking specific identification of relevant documents. These states are: Denmark, Finland, the Netherlands, Norway, Singapore,Sweden, and the United Kingdom. France, Italy, Luxemburg, and Portugal made the Article 23 declaration without modification, and the Federal Republic of Germany modified the Article 23 language only slightly. Barbados, Czechoslovakia, Israel, and the United States did not make Article 23 declarations.

^27/ The court in General Electric held that Convention procedures are exclusive only with respect to documents or people located or residing in another signatory state. There may be a significant number of international suits in which all evidence to be discovered (and all people to be deposed) are in the United States. Even assuming this number to be quite significant,the court believes that the vast majority of international suits still would require mandatory use of Convention procedures under the rule stated in General Electric.

^28/ SKM's position on willfulness apparently is that an increased damage award is not available for two reasons: first, because the patent in suit has not been commercialized, and second,because SKM's products are the result of its own research and development efforts. (Staples letter to Holcomb dated 6/9/83,ex. 2a to Graco's statement filed 6/10/83.) If SKM wished to remove this issue from the case. It could have moved to. Strike Graco's allegations of deliberate Infringement under Fed.R.Civ.P.12(f), or it could have moved for partial summary judgment under Fed.R.Civ.P. 56. SKM has not asserted its position properly, and the court cannot honor it.