STERNE KESSLER GOLDSTEIN & FOX, PLLC, Petitioner, v. EASTMAN KODAK COMPANY, Respondent.
Miscellaneous Case No. 11-337 (BAH)
United States District Court, District of Columbia.
Aug. 12, 2011.
376
Byron L. Pickard, David K.S. Cornwell, Sterne, Kessler, Goldstein & Fox, PLLC, Washington, DC, for Petitioner. Eric Christopher Rusnak, Ajohn Longstreth, K & L Gates LLP, Washington, DC, for Respondent.
BERYL A. HOWELL, District Judge.
Before the Court is petitioner Sterne, Kessler, Goldstein & Fox P.L.L.C.‘s (hereinafter “the petitioner“) motion to quash a deposition subpoena served upon it by Eastman Kodak Company (hereinafter “Kodak” or “the respondent“). Kodak seeks to depose the petitioner in connection with a patent infringement action proceeding in the Western District of New York brought by Kodak against Apple, Inc. (hereinafter “Apple“). The petitioner previously provided representation to Apple before the U.S. Patent and Trademark Office (hereinafter “USPTO“) during reexamination of Apple‘s U.S. Patent No. 5,634,074 (hereinafter “074 patent“), one of the patents at issue in the New York litigation. The petitioner now moves to quash the Kodak subpoena on grounds that the deposition will “necessarily touch on information protected by attorney-client privilege and the work-product doctrine” and “[t]his potential intrusion into protected information can and should be avoided.” Pet‘r Mot. Quash, ECF No. 1, at 1. The Court concludes that deposition of the petitioner is not warranted and therefore grants the petitioner‘s motion to quash the respondent‘s subpoena.
I. BACKGROUND
On January 14, 2010, Kodak filed a Complaint in the Western District of New York alleging that Apple had infringed three of its patents (hereinafter the “Kodak-Apple litigation“). Eastman Kodak v. Apple, Inc., No. 6:10-cv-6022 (W.D.N.Y. filed Jan. 14, 2010). Apple counterclaimed, alleging, inter alia, that Kodak infringed on Apple‘s 074 patent. Pet‘r Mot. Quash, ECF No. 1, at 1; Eastman Kodak v. Apple, Inc., No. 6:10-cv-6022 (W.D.N.Y. filed Jan. 14, 2010), Amended Answer, ECF No. 21 (Apr. 15, 2010), ¶¶ 51-57.
Several months after initiation of the Kodak-Apple litigation, on April 28, 2010, “an anonymous third-party” requested the USPTO to conduct an ex parte reexamination of the 074 patent. Pet‘r Mot. Quash, ECF No. 1, at 1. The USPTO granted this request, and Apple retained the petitioner to represent it during the reexamination process. Id. The USPTO ultimately determined that all claims of the 074 patent were patentable, and issued a reexamination certificate on May 31, 2011. Id. at 2. The petitioner states that the “entire prosecution for the reexamination of the 074 patent is contained in the written prosecution file,” or the “file wrapper,” which includes “summaries, submitted by the Examiner and Apple, of the in-person interview that [the petitioner] conducted on January 5, 2011.” Id.
Before the USPTO had concluded its reexamination of the 074 patent, on April 14, 2011, Kodak sought leave to file a Second Amended Answer in the Kodak-Apple litigation in order to add an inequitable conduct defense based “on a continued course of conduct related to the recently concluded 074 patent reexamination.”1 Eastman Kodak v. Apple, Inc., No. 6:10-cv-6022 (W.D.N.Y. filed Jan. 14, 2010), Kodak‘s Mot. Leave File Second Amended Answer and Counterclaims, ECF No. 49 (Apr. 14, 2011); Pet‘r Mot. Quash, ECF No. 1, Ex. 6. This proposed new defense to Apple‘s counterclaim contends that the “074 patent is unenforceable due to inequitable conduct committed by Apple, an inventor of the 074 patent, and/or its attorneys during reexamination of the 074 patent.” Eastman Kodak v. Apple, Inc., No. 6:10-cv-6022 (W.D.N.Y.), Kodak‘s Mot. Leave File Second Amended Answer and Counterclaims, ECF No. 49, Ex. 1, Proposed
On May 12, 2011, Kodak served the petitioner, which is not Apple‘s counsel in the Kodak-Apple litigation, with a subpoena for production of documents and a deposition,2 seeking information, inter alia, on (1) the petitioner‘s analysis of the issues involved in the reexamination of the 074 patent (Topics 5, 19); (2) the prosecution of the 074 patent, including its reexamination (Topics 1, 6-10); (3) the petitioner‘s communications with Apple, other attorneys who prosecuted the 074 patent, and the USPTO (Topics 2-4, 11); (4) the petitioner‘s knowledge of the Kodak-Apple litigation and other litigation concerning the 074 patent (Topics 12-17); and (5) the petitioner‘s understanding of reexamination practice before the USPTO (Topics 20-23). Pet‘r Mot. Quash, ECF No. 1, Ex. 1, Kodak‘s Notice of Subpoena Ad Testificandum and Subpoena Duces Tecum to the Petitioner, Schedule A: Topics of Deposition.
The petitioner objected to the respondent‘s subpoena concerning the documentary portions of the subpoena and also advised the respondent that it believed the deposition subpoena was not proper because “any questions concerning [the petitioner‘s representation of Apple in the USPTO reexamination of the 074 patent] will necessarily touch on matters that are protected from disclosure by the attorney-client privilege and the attorney-work product doctrine.” Pet‘r Mot. Quash, Ex. 7, Letter from B. Pickard to B. Weed dated May 25, 2011, at 2. On June 10, 2011, the petitioner filed a motion to quash the deposition subpoena in this Court,3 pursuant to
The instant motion became ripe when the petitioner filed its Reply brief on July 5, 2011, which was five days after discovery closed in the Kodak-Apple litigation. Due to the June 30, 2011 discovery cut-off date, the respondent urged the Court to resolve this motion on an “expedited basis.” Resp‘t Opp‘n Mot. Quash, ECF No. 5, at 5. Yet, at the same time, the respondent granted the petitioner a seven-day extension to file the instant motion, and then filed its opposition a full fourteen days after the motion was filed, on June 24, 2011, pushing the petitioner‘s reply due date to after the close of discovery. On July 26, 2011, the Court directed the parties to submit a joint report addressing “whether the petitioner‘s pending motion to quash is moot given that, to the Court‘s knowledge, discovery in the underlying litigation closed on June 30, 2011.” Minute Order dated July 26, 2011 (Howell, J.). The parties responded, on August 3, 2011, stating that they believe the motion to quash is not moot because (1) it was served and was returnable prior to the discovery cut-off date, and (2) it was “expected” that the district court in the underlying case will “extend the discovery period for discovery relevant to newly added issues if any amendment is allowed to Kodak‘s Answer and Counterclaims.” Joint Report Regarding Status of Motion, ECF No. 9, at 2.
Having considered the briefs submitted in support and in opposition to this motion, the Court concludes that deposition of the peti-
II. STANDARD OF REVIEW
Under the
III. DISCUSSION
The petitioner moves to quash Kodak‘s subpoena on grounds that the deposition sought is “neither appropriate nor necessary” and “[d]eposing an opposing party‘s attorney is disfavored.” Pet‘r Mot. Quash, ECF No. 1, at 5. It urges the Court to apply the three-part test articulated by the Eighth Circuit in Shelton v. American Motors Corp., 805 F.2d 1323 (8th Cir. 1986), which limited the deposition of opposing counsel “to where the party seeking to take the deposition has shown that (1) no other means exist to obtain the information other than to depose opposing counsel; (2) the information sought is relevant and nonprivileged; and (3) the information is crucial to the preparation of the case.” Id. at 1327 (internal citations omitted); see also Guantanamera Cigar Co. v. Corporacion Habanos, S.A., 263 F.R.D. 1, 8 (D.D.C. 2009) (recognizing that the Shelton standard shifts the burden of proof to the party seeking to depose opposing counsel). The Court of Appeals for the D.C. Circuit has not adopted the Shelton test, but other judges on this court have applied this test to bar requests to depose opposing counsel. See Corp. for Pub. Broad. v. Am. Auto. Centennial Comm‘n, No. 97-cv-1810, 1999 WL 1815561, at *1 (D.D.C. Feb. 2, 1999). The Court finds that Shelton does not apply to the instant situation. Nevertheless, the Court concludes that Kodak‘s subpoena should be quashed because the discovery Kodak seeks may be obtained from other more appropriate sources, and any benefit from deposing the petitioner is outweighed by the burdens it will impose. See
A. The Shelton Factors Do Not Apply In The Instant Case
The petitioner argues that the Court should quash Kodak‘s subpoena because the respondent cannot demonstrate that deposing the petitioner is appropriate under the Shelton three-part test. The Shelton test, however, is limited to circumstances in which the proposed deponent is serving as the opposing party‘s trial or litigation counsel, and does not apply here.
In Shelton, the plaintiffs subpoenaed defendants’ in-house attorney, who was “assigned specifically” to supervise the litigation and refused to answer questions concerning the existence or nonexistence of certain documents that would be pertinent to the plaintiffs’ underlying products liability case. 805 F.2d at 1325. While the district court concluded that the defendants’ attorney had no basis to withhold information, the Eighth Circuit reversed, holding that the deposition of opposing counsel, who was not the trial counsel but intimately involved in the litigation as in-house counsel, was inappropriate when the attorney‘s testimony regarding the existence of certain documents would “reflect her judgment as an attorney in identifying, examining, and selecting from [the defendants‘] voluminous files those documents on
Courts have declined to apply Shelton when the proposed deponent is (1) not trial and/or litigation counsel, and (2) when such questioning would not expose litigation strategy in the pending case. United States v. Philip Morris, Inc., 209 F.R.D. 13, 17 (D.D.C. 2002) (concluding that the Shelton factors did not apply when the proposed deponent attorneys were not litigation or trial counsel, the deponent attorneys were assigned non-litigation responsibilities, and the proposed deposition would not cover litigation strategies related to the case). The Eighth Circuit itself limited the applicability of Shelton, stating that “[t]he Shelton test was intended to protect against the ills of deposing opposing counsel in a pending case which could potentially lead to the disclosure of the attorney‘s litigation strategy.” Pamida, Inc. v. E.S. Originals, Inc., 281 F.3d 726, 730 (8th Cir. 2002).
In this case, the petitioner served as Apple‘s counsel in the USPTO‘s now-completed reexamination of the 074 patent, and the petitioner is neither serving as Apple‘s trial counsel in the underlying Kodak-Apple litigation, nor providing support to that litigation in any manner that has been disclosed to the Court. Apple is represented by a different law firm in the Kodak-Apple litigation, and thus, application of the Shelton test to the instant situation would be a stretch beyond the recognized reach of that test. See also Philip Morris, 209 F.R.D. at 16 (To apply Shelton “to any attempt to depose an attorney, without regard to the subject matter of the deposition or the attorney‘s role in the pending litigation ... is not only a misinterpretation of the holding in Shelton and the subsequent case law re-affirming that holding, but is contrary to the language and philosophy of the Federal Rules of Civil Procedure.“).
B. Deposition Of The Petitioner Is Not Appropriate Under The Federal Rules of Civil Procedure
Although the Shelton test is inapplicable to the instant facts, the Court nonetheless finds to be inappropriate the deposition sought here of former counsel concerning that counsel‘s representation of a party during reexamination of the same patent concurrently at issue in a pending patent infringement action against the same party. Some of the same concerns that animated the Shelton test regarding the risks to and burdens on the attorney-client privilege and work-product doctrine are implicated when the proposed deponent is former counsel to a party in pending litigation on matters that are plainly at issue in that litigation, even when the proposed deponent is not currently opposing trial counsel.
The
Courts confronted by demands for counsel depositions have noted a number of concerns that such discovery poses. Allowing depositions of opposing counsel, even if these depositions were limited to relevant and nonprivileged information, may disrupt the ef-
While the petitioner is not currently counsel to a party in the Kodak-Apple litigation for which the deposition is sought, the fact that the petitioner was involved in representing Apple while that litigation was pending, and on the patent matter at issue both before the USPTO and in that lawsuit, puts petitioner in a position somewhere in between the situation of opposing trial counsel, which would trigger the heightened Shelton test, and former counsel on a matter unrelated to the litigation, which would fall under the standard application of
1. Kodak Has Not Demonstrated A Need To Depose The Petitioner
Kodak contends that the deposition of the petitioner is necessary because this testimony would be relevant to Kodak‘s inequitable conduct defense, and courts have generally permitted depositions of prior pat-
First, no inequitable conduct defense is currently pled in the Kodak-Apple litigation. Although Kodak has sought leave to amend its pleadings to assert that defense, the district court has yet to allow Kodak to do so.5 Kodak cites Exmark Manufacturing Co. v. Briggs & Stratton Power Products Group, LLC, No. 8:10-cv-187, 2011 WL 1467435 (D. Neb. Apr. 18, 2011), for the contention that “discovery may proceed on inequitable conduct, even while a motion is pending.” Resp‘t Opp‘n Mot. Quash, ECF No. 5, at 8. In Exmark, however, the motion referenced by the court is a motion to dismiss, not a motion for leave to amend pleadings. The Exmark court clearly stated that until the motion to dismiss was decided, “[t]he fact is, [the defendant‘s] inequitable conduct defense is properly before the court at this time.” Exmark, 2011 WL 1467435, at *5. In complete contrast, an inequitable conduct defense is not properly at issue in the Apple-Kodak litigation. The Court will not sanction deposition of counsel in the petitioner‘s situation on the mere prospect of Kodak being granted leave to amend its pleadings. See also ResQNet.com, Inc. v. Lansa, Inc., No. 01-cv-3578, 2004 WL 1627170, at *5 (S.D.N.Y. July 21, 2004) (quashing subpoena to depose counsel for information relating to an inequitable conduct defense because the defendant had not properly asserted inequitable conduct in its pleadings). In this respect, the proposed discovery of the petitioner is not important—at least not yet—to “the issues at stake in the action.”
Second, even if an inequitable conduct defense were properly pled, deposition of the petitioner is inappropriate. The cases in which courts have allowed deposition of patent prosecution counsel have done so
2. Any Benefit Of The Proposed Deposition Is Outweighed By The Risk of Encountering Privilege and Work-Product Issues
A significant problem that Shelton sought to restrict was an effort to preview an opponent‘s litigation strategy simply by noticing the deposition of opposing counsel. Indeed, “counsel‘s tasks in preparing for trial would be much easier if he could dispense with interrogatories, document requests, and depositions of lay persons, and simply depose opposing counsel in an attempt to identify the information that opposing counsel has decided is relevant and important to his legal theories and strategy.” Shelton, 805 F.2d at 1327. This is certainly a concern here where the Kodak-Apple litigation was ongoing during the petitioner‘s representation of Apple on an integrally related matter. According to Kodak, the deposition of the petitioner is intended to illuminate topics at issue in the Kodak-Apple litigation, but this is also likely to implicate the petitioner‘s communications with Apple, Apple‘s patent prosecution strategy, and discussions regarding the history and scope of the 074 patent. See Desert Orchid Partners, L.L.C. v. Transaction Sys. Architects, Inc., 237 F.R.D. 215, 220 (D. Neb. 2006) (quashing deposition subpoena issued to defendant‘s former general counsel even though he was “never litigation counsel” because “he was involved with the defense strategy and the litigation of this case and similar actions against the defendants” and “[the plaintiffs have failed to show that [he] has relevant, nonprivileged information.“). “Discovery was hardly intended to enable a learned profession to perform its functions either without wits or on wits borrowed from the adversary.” Hickman, 329 U.S. at 516. The risk that the proposed deposition would be used to uncover aspects of Apple‘s strategy through deposition of former counsel on a concurrently pending and identical patent matter is a significant concern.
Kodak argues that it is “entitled to examine [the petitioner‘s] relationship with the 074 Patent inventors and this topic may lead to non-privileged, factual information relevant to Kodak‘s defenses.” Resp‘t Opp‘n Mot. Quash, ECF No. 5, at 12. This is exactly the type of fishing expedition that courts have attempted to prevent when seeking to deter deposition of counsel. Kodak does not state what information it seeks to elicit from the petitioner, what benefit that information would provide, or the defenses (other than the proposed inequitable conduct defense) for which it seeks information. While
3. Kodak May Obtain the Information It Seeks From Other More Appropriate and Convenient Sources
Kodak seeks information regarding the USPTO reexamination proceedings. There are other more appropriate sources for that information rather than deposition of the petitioner. The reexamination of the 074 patent “was done on the written record,” which includes a written summary of Apple‘s in-person interview conducted with the USPTO. Pet‘r Mot. Quash, ECF No. 1, at 4; see also
Kodak contends that it should be allowed to depose the petitioner regarding the “scope of the 074 patent” and the patent‘s prosecution history. Resp‘t Opp‘n Mot. Quash, ECF No. 5, at 11. Yet, Kodak has already deposed the inventor of the patent, who can speak directly on that topic. In ResQNet.com, Inc. v. Lansa, Inc., No. 01-cv-3578, 2004 WL 1627170 (S.D.N.Y. July 21, 2004), the court not only denied deposition of the plaintiff‘s counsel because the defendant had not pled an inequitable conduct defense, but also rejected the defendant‘s attempt to depose opposing party‘s counsel regarding the disputed patents’ prosecution history and scope. The defendant in that case had “already deposed the inventors of the patents alleged to be relevant, and those depositions included detailed questions about the patent prosecution histories, the cited prior art, the patents in suit, and numerous related issues.” Id. at *5. Additionally, “the prosecution histories speak for themselves, and the relevant inquiry in terms of prior art and claim construction is how one of ordinary skill in the art would interpret and understand those prosecution histories, not what [plaintiff‘s] litigation counsel thinks about them.” Id. The situation in this case is analogous, and the Court is not persuaded that the opposing party‘s former counsel should be deposed regarding this information when the information can be obtained elsewhere.
IV. CONCLUSION
For the reasons discussed above, the petitioner‘s motion to quash the respondent‘s subpoena is granted. Kodak‘s May 11, 2011 deposition subpoena to the petitioner is here-
BERYL A. HOWELL
United States District Judge
James K. BRYANT, Plaintiff, v. PEPCO, Defendant.
Civil Action No. 09-1063 (GK).
United States District Court, District of Columbia.
Sept. 15, 2011.
Nathaniel D. Johnson, Waldorf, MD, for Plaintiff. Susanne Harris Carnell, Lorenger & Carnell PLC, Alexandria, VA, Jill D. Flack, Pepco Holdings, Inc., Washington, DC, for Defendant.
GLADYS KESSLER, District Judge.
Defendant, PEPCO, has filed a Motion for an Order to Show Cause why Plaintiff‘s counsel, Nathaniel Johnson, should not be sanctioned, pursuant to
A fairly detailed chronology of events is necessary in order to fully understand the Court‘s ruling.
June 4, 2009: The Complaint is filed.
January 14, 2011: Discovery was scheduled to close.
Plaintiff requested Defendant‘s consent for a 30-day extension of the discovery deadline; Defendant agreed; Plaintiff failed to make a timely motion and on January 5, 2011, Defendant filed a Motion for Enlargement of Time.
January 6, 2011: The Motion was granted; discovery was set to close on February 14,