North American Deer Registry, Inc. v. DNA Solutions, Inc.
4:17-cv-00062
E.D. Tex.Apr 21, 2017Background
- Deer Registry contracted with DNA Solutions (DNAS) to process and host deer genetic data beginning in 2007, with revised agreements in 2013–2014 that required confidentiality and return of data on termination.
- Deer Registry stopped using DNAS on January 1, 2017, and alleges DNAS continued to use confidential data, claiming misappropriation of trade secrets and Lanham Act/unfair competition violations and seeking injunctive relief.
- Deer Registry filed suit January 27, 2017, and simultaneously moved for expedited discovery; the court granted limited expedited discovery on February 9, 2017.
- Deer Registry noticed three depositions for February 20–21, 2017 (30(b)(6) and two individual witnesses). DNAS moved to quash those deposition notices and sought a protective order, and also moved to compel arbitration.
- The court considered whether expedited discovery and the Discovery Order were proper in light of arbitration and Rule 26 limits, and whether DNAS met the burden to obtain a protective order.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity of expedited discovery/Discovery Order | Expedited discovery is necessary for injunctive relief and court previously found good cause. | Order void because entered before DNAS responded; depositions premature. | Denied — any timing harm is moot; court had already found good cause for limited expedited discovery. |
| Authority to depose party officers without subpoena | Depositions of parties and their officers are permissible under the Federal Rules. | Notices violate Rule 45(c) geographic limits and require subpoenas. | Denied — party depositions and officers do not require subpoenas; Rule 45 argument without merit. |
| Effect of arbitration clause on discovery/jurisdiction | Arbitration clause does not bar all claims here; AAA rules permit judicial interim relief. | Arbitration clause divests court of authority to order discovery and should stay discovery. | Denied — AAA Rule R-37 allows parties to seek interim judicial measures; arbitration motion does not strip court of authority to grant preliminary relief or order discovery. |
| Need for protective order under Rule 26(c) | N/A (Plaintiff seeks discovery). | Depositions are burdensome, harassing, and oppressive. | Denied — DNAS failed to make particularized showing of annoyance, burden, or harassment required for protective order. |
Key Cases Cited
- Janvey v. Alguire, 647 F.3d 585 (5th Cir. 2011) (filing motion to compel arbitration does not automatically deprive district court of authority to grant preliminary injunctive relief)
- In re Terra Int’l, Inc., 134 F.3d 302 (5th Cir. 1998) (movant bears burden to show necessity for protective orders with particularized facts)
- St. Louis Grp., Inc. v. Metals & Additives Corp., 275 F.R.D. 236 (S.D. Tex. 2011) (explaining ‘good cause’ analysis for expedited discovery requests)
- El Pollo Loco, S.A. de C.V. v. El Pollo Loco, Inc., 344 F. Supp. 2d 986 (S.D. Tex. 2004) (expedited discovery may be appropriate in advance of preliminary injunction proceedings)