EIDOS DISPLAY, LLC, Eidos III, LLC, Gary Rubloff, Petitioners, v. CHUNGHWA PICTURE TUBES, LTD., Respondent.
Misc. Action No. 12-625 (EGS)
United States District Court, District of Columbia.
July 25, 2013
EMMET G. SULLIVAN, District Judge.
In attempting to characterize its discovery requests as limited only to matters of identity, Sky Angel states that “[i]t is already clear from this Court‘s Memorandum Opinion that a cause of action exists.” Pl.‘s Reply Mem. P. & A. Supp. Mot. Disc. (Dkt. No. 15) at 3 (citation omitted). But in requesting discovery related to the means by which C-SPAN‘s decided to terminate the IPTV Agreement, see Pl.‘s Mot. Disc. (Dkt. No. 11) ¶ 2, Sky Angel tacitly recognizes that its original complaint was dismissed for more than mere failure to identify individual actors. By failing to plead multiple actors, Sky Angel necessarily failed to plead the conduct between the actors—that is, the requisite “contract, combination, or conspiracy” that satisfies the Sherman Act‘s “concerted activity” requirement. See Mem. Op. (Dkt. No. 10) at 13-14 (citing Twombly, 550 U.S. at 553, 127 S.Ct. 1955). And although Sky Angel appears certain that C-SPAN‘s sudden termination of the IPTV Agreement could only have come about as a result of foul play, see Pl.‘s Mem. P. & A. Supp. Mot. Disc. (Dkt. No. 11-1) at 5-6, the Court notes the speculative nature of that assertion and declines to depart from the normal order of discovery in order to indulge Sky Angel‘s theory at this stage.
Finally, the Court finds that there is no good cause for pre-complaint discovery based on Sky Angel‘s own concession that such discovery is not necessary. Sky Angel has stated that it will amend its complaint even without the requested discovery based on additional information already in its possession. See id. at 11. In view of this fact, the Court finds that the benefit of the requested discovery is outweighed by the burden and expense it would inflict upon C-SPAN and the third parties identified as potential deponents. See Def.‘s Opp‘n Mot. Disc. (Dkt. No. 14) at 15 n. 2.
IV. CONCLUSION
For the foregoing reasons, the Court will deny Sky Angel‘s motion for discovery. In accordance with the Court‘s June 28, 2013 minute order, Sky Angel‘s amended complaint will now be due on August 5, 2013. An order consistent with this Memorandum Opinion is separately and contemporaneously issued this 24th day of July, 2013.
David Marion Foster, Fulbright & Jaworski, L.L.P., Washington, DC, for Respondent.
MEMORANDUM OPINION
EMMET G. SULLIVAN, District Judge.
Pending before the Court is a Motion by Eidos Display LLC, Eidos III, LLC, and Gary Rubloff (collectively, “Eidos” or “Plaintiffs“) for an Order Precluding Discovery Sought in a Third Party Subpoena or, in the Alternative, Limiting Discovery (hereinafter “Eidos’ Mot.“); Defendant Chunghwa Picture Tubes, Ltd.‘s (hereinafter “CPT” or “Defendant“) Opposition to the Motion; and Plaintiffs’ Reply to the Opposition. Plaintiffs filed this motion to prevent the deposition of Dr. Gary Rubloff, who they contend is a non-testifying expert not subject to discovery pursuant to
I. Background
In April 2011, Eidos filed the underlying patent infringement suit in Texas. See Eidos’ Mot. at 1. Two months later, in June 2011, a Reexamination Proceeding regarding the ‘958 Patent was initiated at the U.S. Patent and Trademark Office (hereinafter “USPTO“) with an ex parte request asserting that certain prior art references rendered the ‘958 Patent not patentable. Id. at 3. Dr. Rubloff acted as an expert witness for Eidos in the Reexamination Proceeding. Id. at 4. On February 24, 2012, Eidos submitted a declaration by Dr. Rubloff in the Reexamina
As part of the underlying patent case in Texas the parties were to identify extrinsic evidence they intended to use in claim construction proceedings by September 14, 2012, including expert declarations. Id. at 2. Eidos did not identify any extrinsic evidence, nor did it submit any expert declarations at that time. Id. On September 28, 2012, the parties disclosed intrinsic evidence to be presented in claim construction proceedings in a Joint Claim Construction Statement (hereinafter “JCCS“), including the prosecution history of the ‘958 Patent. Id. Eidos identified sections of the patent in the JCCS, as well Dr. Rubloff‘s Declaration from the Reexamination Proceeding. Eidos also made one reference to Dr. Rubloff‘s Declaration in the Reexamination Proceeding in its opening claim construction brief as a “see also” citation to a background issue.1 Id. at 5. Unlike the one background citation to the Declaration in Eidos’ brief, CPT included multiple citations to Dr. Rubloff‘s Declaration in its claim construction brief. See Eidos’ Reply at 13-14. Finally, on January 31, 2013, the parties were required to identify any experts who would testify at the claim construction hearing—no party identified any experts. Id. at 3. The parties were not required to identify testifying experts (except for the purposes of the claim construction proceedings) until April 1, 2013. Id.
On October 15, 2012, CPT informed Eidos that it intended to depose Dr. Rubloff despite the fact that he had not been identified as a claim construction expert. To that end, CPT served Dr. Rubloff with a subpoena on October 18, 2012. The subpoena also called for the production of a wide variety of documents, including drafts of Dr. Rubloff‘s Declaration. Id. After noting that Dr. Rubloff was not available on October 30, the date CPT had proposed for his deposition, Eidos explained that it was not relying on claim construction experts and “agreed that it would not rely upon the intrinsic evidence in the Rubloff declaration [] to avoid unnecessary disputes regarding expert discovery.” Id. at 6. CPT did not agree to this proposal. The parties went back and forth several times regarding the scheduling and scope of Dr. Rubloff‘s deposition, eventually settling on November 29, 2012 in Washington, D.C. Id. at 7; CPT Opposition to Eidos’ Motion (hereinafter “CPT Opp‘n“) at 5-6. Ultimately, Eidos and CPT were unable to resolve their issues and Eidos filed the instant motion. See Eidos’ Mot. at 8-9; CPT Opp‘n at 5-6. As of the filing of the instant motion, Dr. Rubloff had not yet been deposed.
II. Legal Standard
A. Motion for a Protective Order
Pursuant to
The party requesting the protective order bears the burden of demonstrating that good cause for such an order exists. See United States v. Kellogg Brown & RootServs., Inc., 285 F.R.D. 133, 134 (D.D.C. 2012); Alexander v. F.B.I., 186 F.R.D. 71, 75 (D.D.C.1998). Indeed, the moving party “has a heavy burden of showing extraordinary circumstances based on ‘specific facts’ that would justify an order.” Kellogg Brown, 285 F.R.D. at 135 (internal citations omitted). In determining whether a discovery request imposes an undue burden, the court must “balance the party‘s need for the discovery against the potential hardship to the subject of the subpoena.” Achte/Neunte Boll Kino Beteiligungs Gmbh & Co. v. Does, 736 F.Supp.2d. 212, 214 (D.D.C.2010) (citing Alexander, 186 F.R.D. at 75); see also Doe v. Provident Life & Accident Ins. Co., 247 F.R.D. 218, 221 (D.D.C.2008). The Court must then weigh the burden to the moving party against the requestor‘s need for, and relevance of, the information sought. See Doe, 247 F.R.D. at 221.
B. Consulting Expert Immunity
(1) the interest in allowing counsel to obtain the expert advice they need in order [to] properly evaluate and present their clients’ positions without fear ...; (2) the view that each side should prepare its own case at its own expense; (3) the concern that it would be unfair to the expert to compel its testimony and also the concern that experts might become unwilling to serve as consultants if they suspected their testimony would be compelled; and (4) the risk of prejudice to the party who retained the expert as a result of the mere fact of retention.
United States ex rel. Westrick v. Second Chance Body Armor, Inc., 288 F.R.D. 222, 227-28 (D.D.C.2012) (quoting Long Term Capital Holdings, L.P. v. United States, No. 01-CV-1290, 2003 WL 21269586, at *1, 2003 U.S. Dist. LEXIS 14579, at *2 (D.Conn. May 6, 2003)).
To bypass the protection afforded by
III. Discussion
In its motion, Eidos sets forth in detail its argument that it has good cause for seeking a protective order in this case. Eidos argues that Dr. Rubloff has been retained in the underlying patent action as a non-testifying expert; therefore, he is not subject to a deposition pursuant to
In opposition, CPT argues that it has the “right to depose Dr. Rubloff because Eidos put his declaration at issue in the Patent Case” and that “Dr. Rubloff is no different than any other declarant who would be subject to deposition.” CPT Opp‘n at 7. Specifically, CPT claims that by identifying and attaching the declaration that Dr. Rubloff made in the Reexamination Proceeding as support for its claim construction position in the JCCS, and then later to its opening claim construction brief, Eidos has waived the protections of
The Court finds that Eidos has established good cause for seeking a protective order because as it contends, and as CPT does not dispute, Dr. Rubloff is a non-testifying expert in the patent suit. The Court does not agree with CPT‘s argument that Eidos has waived immunity, and that Dr. Rubloff is therefore subject to a deposition and document discovery. Specifically, the Court finds that while it is unclear whether
Several other courts that have confronted the issue have held the same. In Plymovent Corp. v. Air Tech. Solutions, the court affirmed the decision of a magistrate judge finding that even though plaintiff had submitted a video of an interview with an expert and the expert‘s report in support of a preliminary injunction application, it had not waived non-testifying expert immunity. 243 F.R.D. 139, 146 (D.N.J.2007). At the preliminary injunction hearing, plaintiff decided to withdraw the expert report and subsequently relayed to defendant that it did not intend for the expert to testify. Id. at 142. Nevertheless, defendant served plaintiff with a subpoena requesting several types of documents prepared by the expert. Id. The magistrate judge ruled, and the district court affirmed, that there had been no waiver because plaintiff‘s expert had not testified at the preliminary injunction hearing, and therefore, the court did not give the expert report and
Notably, CPT does not cite to any cases to support its argument that Eidos has waived the protections of
Given the uncertain state of the law with respect to waiver and
Upon learning that CPT intended to depose Dr. Rubloff on claim construction issues, Eidos offered to delete the citation to his Declaration and delete the attachment from its opening brief. See Eidos’ Mot. at 6; Eidos’ Reply at 8-9, 15. That CPT refused to agree to that compromise suggests that its purpose in seeking to depose Dr. Rubloff at this juncture has more to do with probing him on invalidity and non-infringement issues than with claim construction, as those issues are what his Declaration largely concerns. See Eidos’ Reply at 17-18. Because the Court finds that to the extent that there has been any waiver, it is very limited, and because CPT has failed to make a showing of exceptional circumstances, the Court grants Eidos’ motion and orders that CPT cannot depose Dr. Rubloff at this time. The Court also finds that CPT‘s document requests are overbroad, and grants Eidos’ motion with respect to them. See Plymovent Corp., 243 F.R.D. at 146 (holding that because plaintiff had not waived non-testifying expert immunity, defendant could not discover documents absent a showing of exceptional circumstances, which it had failed to make). CPT cannot circumvent non-testifying expert immunity by attempting to expand the waiver argument unreasonably, especially where it has made no effort to establish exceptional circumstances to justify the discovery it seeks.
IV. Conclusion
For the reasons explained herein, Eidos’ motion is GRANTED. An appropriate order accompanies this Memorandum Opinion.
SO ORDERED.
EMMET G. SULLIVAN
United States District Judge