Implicit Networks, Inc. v. F5 Networks, Inc.

Filing 108

ORDER DENYING MOTION TO COMPEL AND GRANTING MOTION TO QUASH (Illston, Susan) (Filed on 5/23/2012)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

United States District Court
For the Northern District of California

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No. C 10-03365 SI

IMPLICIT NETWORKS INC,

ORDER DENYING MOTION TO
COMPEL AND GRANTING MOTION TO
QUASH

Plaintiff,
v.
F5 NETWORKS INC,
Defendant.

/

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Currently before the Court is F5 Networks’ motion to compel plaintiff Implicit to resume the

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deposition of Implicit’s prosecution counsel – Randy Gard – as well as Implicit’s motion to quash a

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Rule 30(b)(6) deposition subpoena served on Gard’s law firm, Gard & Kaslow, LLP. In a motion filed

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April 11, 2012, F5 asked this Court to order Implicit to produce a range of documents identified on Mr.

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Gard’s privilege log for review by a magistrate judge to determine whether a member of plaintiff’s

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litigation counsel team, Spencer Hosie, violated the “patent prosecution bar” imposed by the Court’s

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Patent Local Rule 2-2 Model Protective Order. Docket No. 100. The Court denied that request, finding

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that F5 had not produced sufficient evidence to suggest that a violation of the patent prosecution bar had

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occurred after February 11, 2011 - the date on which the prosecution bar took effect. The denial was

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without prejudice, and the Court noted that if F5 accepted plaintiff’s proffer to resume the deposition

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of Mr. Gard about the substance of a conversation he had with Mr. Hosie and others (the proffer

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including a limited waiver as to attorney-client privilege for the contents of that conversation only), F5
could resubmit its request for referral by noticed motion.

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F5 now seeks this Court’s assistance in order to depose Mr. Gard on privileged matters outside

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of the limited proffer offered by Implicit. Docket No. 106. The Court sees no grounds to do so and F5’s

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motion to compel is DENIED.
F5 has also served a Rule 30(b)(6) deposition subpoena on Gard & Karlow seeking to compel

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the person most knowledgeable from that firm – presumably Mr. Gard – to testify on a range of

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subjects, including all communications, notes and documents exchanged with the Hosie, Rice firm

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relating to the patents in suit as well as related patents and patent applications. See Ex. A to Docket No.

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106. Implicit objects to and moves to quash the deposition subpoena, arguing that the subpoena is an

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attempt to secure access to the same attorney-client communications F5 unsuccessfully sought to have

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United States District Court
For the Northern District of California

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produced to a magistrate judge on its prior motion. The Court agrees and finds that the deposition

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subpoena should be quashed. Moreover, the subpoena is fatally overbroad (attempting to delve into

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communications that occurred prior to the imposition of the patent prosecution bar in February 2011)

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and seeks production of clearly privileged information (information exchanged between the two law

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firms as to the patents in suit here, the ‘786 application, all related patents and applications, and all

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related litigation).

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For the foregoing reasons, F5’s motion to compel is DENIED. Implicit’s motion to quash is
GRANTED.

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IT IS SO ORDERED.

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Dated: May 23, 2012

SUSAN ILLSTON
UNITED STATES DISTRICT JUDGE

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