Exmark Manufacturing Company Inc. v. Briggs & Stratton Corporation, 8:10-cv-00187

Plaintiff Exmark seeks protective order to preclude Schiller from deposing attorney Dennis Thomte.
Thomte previously represented Exmark in prosecution of the ’863 patent and signed PTMS/SAPTMS documents.
PTMS and SAPTMS led to a Patent Office action and ultimately the grant of the ’863 patent in 1999.
Schiller alleges inequitable conduct by Exmark in the prosecution and seeks Thomte’s deposition regarding PTMS/SAPTMS.
Court applies Shelton v. American Motors Corp. to determine if deposition of opposing counsel is permissible; requires specific showing.
Court ultimately denies the protective order, allowing limited deposition subject to privilege.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether Shelton controls deposition of opposing counsel here	Shelton applies; Thomte is a former prosecutor; need exists	Shelton does not apply; Thomte not current counsel	Shelton governs; deposition allowed if factors met under Shelton
Whether Schiller proves Shelton factors (A) no other means, (B) relevant/nonprivileged, (C) crucial	No need; information may come from other sources	No other sources exist; information is central	Factors A, B, and C satisfied; protective order denied to extent of deposition
Whether information sought is nonprivileged and crucial to prep	Attorney-client privilege applies to pre-litigation work; information privileged	PTMS/SAPTMS disclose facts; no privilege protection remains	Information nonprivileged and crucial to case preparation

Shelton v. American Motors Corp., 805 F.2d 1323 (8th Cir. 1986) (deposition of opposing counsel only in limited, justified circumstances)
Pamida, Inc. v. E.S. Originals, Inc., 281 F.3d 726 (8th Cir. 2002) ( Shelton-like concerns; limit on deposing opposing counsel)
Gulf Oil Co. v. Bernard, 452 U.S. 89 (U.S. 1981) (good cause required for protective orders in discovery)