233 F. Supp. 3d 1
D.D.C.2017Background
- Audio MPEG and Sisvel sued Dell for patent infringement in the Eastern District of Virginia; Dell counterclaimed with antitrust defenses and alleges licensing negotiations are relevant to damages, exhaustion, and antitrust counterclaims.
- Dell served third-party subpoenas (July 20, 2016) on two Finnegan attorneys, Frank DeCosta and John Paul, who were long‑time licensing counsel to Audio MPEG/Sisvel, seeking documents and depositions.
- Defendants (and their firm) opposed, arguing the subpoenas are overbroad, unduly burdensome, risk privileged or confidential disclosures, and the information is available from Audio MPEG (a more convenient source); they also sought transfer to Virginia.
- The Court evaluated discovery scope under FRCP 26 and subpoena limits under FRCP 45, balancing relevance, burden, and privilege concerns.
- The Court found the document requests overbroad and unduly burdensome as drafted but found the deposition notices proper; it narrowed the document requests and ordered depositions for seven hours (or the Virginia Action’s general fact‑witness duration, whichever is longer).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Scope of document subpoenas to former counsel | Documents re: licenses, settlement negotiations, and negotiations involving Dell are relevant to damages, exhaustion, and antitrust issues | Requests are overbroad, disproportionate, and information is available from Audio MPEG; privilege/confidentiality concerns | Grants in part: narrows requests to (1) documents as originated outside Finnegan and (2) communications between defendants (or their agents) and any “Licensee” as defined in subpoena |
| Burden of privilege log and volume of potentially privileged material | Seeks broad production; plaintiff did not limit to non‑privileged materials | Respondents would be forced to log thousands of potentially privileged documents, creating undue burden | Court limited scope to reduce undue burden; emphasized Rule 45 required privilege description and warned failure can waive claims |
| Depositions of former counsel | Depositions relevant; permit testimony about dealings with non‑client third parties | Should be exempt from deposition or limited to a single lawyer for two hours | Court ordered each defendant to be deposed for seven hours (or the Virginia Action’s standard fact‑witness duration, whichever is longer); privilege may be asserted question‑by‑question |
| Transfer / forum convenience | Implicitly favors discovery where witnesses/practice located but sought relief in D.C. | Urged transfer to Virginia where the underlying case is pending | Court did not transfer the discovery dispute to Virginia; resolved subpoenas on merits in D.C. docket |
Key Cases Cited
- American Elec. Power Co. v. United States, 191 F.R.D. 132 (S.D. Ohio 1999) (factors for balancing subpoena burden: relevance, need, breadth, time period, particularity, burden)
- Concord Boat Corp. v. Brunswick Corp., 169 F.R.D. 44 (S.D.N.Y. 1996) (same subpoena‑burden balancing factors)
- Anwar v. Fairfield Greenwich Ltd., 297 F.R.D. 223 (S.D.N.Y. 2013) (courts must balance interests when deciding subpoenas imposing burden)
- GFL Advantage Fund, Ltd. v. Colkitt, 216 F.R.D. 189 (D.D.C. 2003) (failure to provide privilege log under Rule 45 can waive privilege)
- In re Grand Jury Subpoena, 274 F.3d 563 (1st Cir. 2001) (privilege log requirement is mandatory and failure may waive privilege)