In Re Subpoena to Ping Wang v. Genentech, Inc., 214 F. Supp. 3d 91

Background

Phigenix sued Genentech in the Northern District of California for infringement of U.S. Patent No. 8,080,534; Dr. Ping Wang was Phigenix’s outside patent prosecution counsel and attorney of record for the patent application that issued as the ’534 patent.
Genentech asserted inequitable conduct as an affirmative defense, centering on a terminal disclaimer Dr. Wang filed during prosecution and alleging intent to deceive the PTO.
Genentech subpoenaed Dr. Wang for deposition to develop the factual record on the inequitable conduct defense; Phigenix asserted attorney-client privilege over certain documents responsive to discovery requests.
A discovery dispute in the California Action concerns whether Phigenix waived privilege as to some documents (including an e-mail from Dr. Wang); resolution could expose documents on which Dr. Wang is an author or recipient.
Phigenix sought a protective order to stay Dr. Wang’s deposition until the California court resolves the privilege-waiver/discovery dispute, arguing risk of eliciting privileged testimony and burden of a second deposition if documents are later produced.
Genentech agreed Dr. Wang may be deposed on non-privileged matters but opposed delaying the deposition, arguing taking testimony now would help clarify whether Phigenix intends to assert privilege over particular topics.

Issues

Issue	Plaintiff's Argument (Phigenix / Wang)	Defendant's Argument (Genentech)	Held
Whether Dr. Wang’s deposition should proceed before the California court resolves the privilege-waiver dispute	Delay deposition until the privilege-waiver/discovery dispute is resolved to avoid eliciting privileged testimony and the risk of a second deposition	Take deposition now to test Phigenix’s privilege line-drawing and determine what testimony will be allowed	Court stayed the deposition pending resolution of the discovery/privilege-waiver dispute in the California Action
Whether taking the deposition now would likely elicit privileged/work-product material	Deposing now creates near-certain risk of encountering privileged material because disputed documents involve Dr. Wang	Deposition will reveal what testimony Phigenix permits; not unduly burdensome to require a second deposition later	Court found the risk of eliciting privileged material weighs in favor of stay
Whether requiring a second deposition would be an undue burden	Second deposition would be burdensome and is protected against by Rule 45	A subsequent second deposition would not be a genuine hardship	Court credited the protection against multiple depositions and found Phigenix’s burden persuasive
Whether Genentech would be prejudiced in the California Action by delaying the deposition	No demonstrated prejudice from delay; Genentech can depose Dr. Wang after scope clarified	Argued need to proceed now for discovery efficiency	Court found no showing of prejudice to Genentech and granted stay

Key Cases Cited

Linder v. Department of Defense, 133 F.3d 17 (D.C. Cir.) (burden to show subpoena oppressive is on movant)
Northrop Corp. v. McDonnell Douglas Corp., 751 F.2d 395 (D.C. Cir.) (reasonableness of subpoena assessed by need and burden)
Eidos Display, LLC v. Chunghwa Picture Tubes, Ltd., 296 F.R.D. 3 (D.D.C.) (good-cause/extraordinary-circumstances standard to limit subpoena)
United States v. Kellogg Brown & Root Servs., Inc., 285 F.R.D. 133 (D.D.C.) (standard for showing extraordinary circumstances to modify discovery)
Sterne Kessler Goldstein & Fox, PLLC v. Eastman Kodak Co., 276 F.R.D. 376 (D.D.C.) (risk of encountering privilege/work-product is crucial when deposing opposing counsel)
In re Subpoena Issued to Dennis Friedman, 350 F.3d 65 (2d Cir.) (discussing protections against probing privileged matters in depositions)
Coleman v. District of Columbia, 284 F.R.D. 16 (D.D.C.) (heightened scrutiny when deposing opposing counsel)
Shelton v. American Motors Corp., 805 F.2d 1323 (8th Cir.) (courts limit depositions of opposing counsel)