Eidos Display, LLC v. Chunghwa Picture Tubes, Ltd.
296 F.R.D. 3
| D.D.C. | 2013Background
- Eidos moved for a protective order to preclude discovery of Dr. Rubloff, a non-testifying expert in the underlying patent action.
- The ‘958 Patent reexamination occurred at the USPTO beginning June 2011, with Rubloff serving as an expert for Eidos in the reexamination.
- In the Texas patent case, the parties identified evidence and disclosures for claim construction, with Rubloff’s declaration referenced in support of background issues.
- CPT sought to depose Rubloff and to obtain documents, including drafts of his reexamination declaration, despite no claim-construction expert designation.
- The parties debated scope and timing of deposition; Eidos proposed limiting to claim construction and avoiding reliance on Rubloff’s declaration for non-claim-construction issues.
- The court granted the protective order, finding Rubloff a non-testifying expert and rejecting broad waiver or exceptional-circumstances grounds to permit deposition or discovery.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Rubloff is immune from deposition | Eidos: Rubloff is a non-testifying expert; Rule 26(b)(4)(D) immunizes deposition. | CPT: Rubloff’s declaration is fair game; waiver by reliance on the declaration occurred. | Yes; Rubloff cannot be deposed at this time. |
| Whether CPT waived Rule 26(b)(4)(D) protections | Eidos: No waiver; evidence cited was preliminary and not testimony. | CPT: Waiver occurred by citing Rubloff’s declaration in its briefs. | Limited waiver; no broad deposition or document-discovery waiver. |
| Whether exceptional circumstances justify bypassing non-testifying expert immunity | Eidos: No exceptional circumstances; deposition would be prejudicial and improper. | CPT: Exceptional circumstances exist to obtain needed information. | No exceptional circumstances shown; protective order granted. |
| Scope of deposition and related document requests | Eidos: Scope should be limited to claim construction; avoid merits-related inquiries. | CPT: Deposition should cover issues raised by Rubloff’s declaration. | Deposition and broad document requests are prohibited; scope limited and overbreadth rejected. |
Key Cases Cited
- Hartford Fire Ins. Co. v. Pure Air, 154 F.R.D. 202 (N.D. Ind. 1993) (waiver and scope of non-testifying expert immunity relevance)
- Atari Corp. v. Sega of America, 161 F.R.D. 417 (N.D. Cal. 1994) (waiver nuanced by settlement context; limited deposition scope)
- Hooker Chem. & Plastics Corp. v. United States, 112 F.R.D. 333 (W.D.N.Y. 1986) (expert affidavit/summary judgment deposition waiver concept)