Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc.
Filing
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Discovery Order re 116 Joint Letter Brief Regarding Specialized Bicycle Components, Inc.'s Request for Protective Order Regarding Deposition of Mike Sinyard. Signed by Judge Maria-Elena James on 10/21/2014. (cdnS, COURT STAFF) (Filed on 10/21/2014)
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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ICON-IP PTY LTD.,
Case No. 12-cv-03844-JST (MEJ)
Plaintiff,
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DISCOVERY ORDER
v.
Re: Dkt. No. 116
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United States District Court
Northern District of California
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SPECIALIZED BICYCLE COMPONENTS,
INC.,
Defendant.
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INTRODUCTION
Pending before the Court is the parties’ Joint Discovery Dispute Letter, filed October 09,
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2014. Dkt. No. 116. By this Joint Letter, Defendant Specialized Bicycle Components, Inc.
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(“Specialized”) seeks a protective order preventing Plaintiff Icon-IP Pty Ltd. (“Icon”) from
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deposing Specialized’s CEO and Chairman of the Board, Mike Sinyard. Jt. Ltr. at 1. After
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considering the parties’ arguments and controlling authorities, the Court GRANTS the motion for
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a protective order for the reasons set forth below.
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BACKGROUND
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On July 23, 2012, Icon filed a Complaint against Specialized in which it accused 33
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bicycle saddles of infringing U.S. Patent No. 6,378,938 and/or U.S. Patent No. 6,254,180. Dkt.
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No. 1. Icon has propounded 93 document requests, 25 interrogatories, and noticed 8 depositions.
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Jt. Ltr. at 1. Additionally, Icon seeks to depose Specialized’s CEO and Chairman of the Board
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regarding four topics: (1) a declaration Mr. Sinyard made during the prosecution of an unrelated
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Specialized patent application; (2) alleged communications between Mr. Sinyard and third parties
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Selle Italia, Paul Nelson, and Selle San Marco; (3) negotiations of contracts and royalties with
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inventor Dr. Minkow; and (4) development of the accused saddle technology. Id. at 1-3.
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Specialized now seeks a protective order preventing Icon from deposing Mr. Sinyard,
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arguing that he does not possess unique, non-repetitive knowledge material to the issues in the
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case, and, even if he did, Icon has not yet exhausted less intrusive means of discovery.
DISCUSSION
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“A party seeking to prevent a deposition carries a heavy burden to show why discovery
should be denied.” Websidestory, Inc. v. Netratings, Inc., 2007 WL 1120567, at *2 (S.D. Cal.
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Apr. 6, 2007). Unless extraordinary circumstances exist, it is unusual for a court to deny a party
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the opportunity to take a deposition. Affinity Labs of Tex. v. Apple, Inc., 2011 WL 1753982,
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at *15 (N.D. Cal. May 9, 2011). However, courts have consistently observed that deposition
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notices directed to officials at the highest levels of corporate management (so-called “apex”
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United States District Court
Northern District of California
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depositions) create “‘a tremendous potential for abuse or harassment’ that may require the court’s
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intervention for the witness’s protection under Rule 26(c).” K.C.R. v. Cnty. of Los Angeles, 2014
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WL 3434257, at *3 (C.D. Cal. July 11, 2014) (quoting Apple, Inc. v. Samsung Elecs. Co., Ltd.,
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282 F.R.D. 259, 263 (N.D. Cal. 2012)). For this reason, a party seeking to depose a high-ranking
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corporate official bears the burden of demonstrating that (1) “the deponent has unique first-hand,
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non-repetitive knowledge of facts at issue in the case,” and (2) “the party seeking the deposition
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has exhausted other less intrusive discovery methods.” Groupion, LLC v. Groupon, Inc., 2012
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WL 359699, at *2 (N.D. Cal. Feb. 2, 2012). “In sum, while a party opposing a deposition ‘carries
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a heavy burden to show why discovery should be denied,’ courts may ‘protect high level corporate
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officers from depositions when the officer has no first hand knowledge of the facts of the case or
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where the officer’s testimony would be repetitive.’” K.C.R., 2014 WL 3434257, at *4 (quoting
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Google Inc. v. Am. Blind & Wallpaper Factory, Inc., 2006 WL 2578277, at *3 n.3 (N.D. Cal. Sept.
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6, 2006)).
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The Court need not determine at this time whether Mr. Sinyard possesses unique, non-
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repetitive, first-hand knowledge of the facts at issue in this case, because Icon has failed to meet
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the second prong of this conjunctive test. That is, Icon has not demonstrated that it has exhausted
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other means of obtaining this information, such as interrogatories and depositions of lower-level
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employees. According to Specialized, it offered Icon the opportunity to propound up to 12
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additional interrogatories addressing the four identified subject areas, and has stated that it will
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provide detailed responses in a shortened time, all without prejudicing Icon’s ability to later seek
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to depose Mr. Sinyard should the responses not yield the information Icon seeks. Jt. Ltr. at 1.
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Icon refused to avail itself of this less intrusive discovery option. Id. Additionally, it appears
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from the Joint Letter that – at least as to the first and fourth subject areas – Icon has noticed, but
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not yet conducted depositions for other individuals involved in Specialized’s development of
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saddle patents. Id. at 2.
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Accordingly, the Court finds that Icon has not adequately exhausted available, less
intrusive means of discovery, and therefore GRANTS the motion for a protective order. This
ruling is without prejudice to Icon’s ability to later seek to depose Mr. Sinyard should its
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United States District Court
Northern District of California
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utilization of less intrusive discovery methods such as the additional interrogatories and
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depositions discussed above prove unsuccessful.
CONCLUSION
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For the foregoing reasons, Specialized’s motion for a protective order preventing Icon
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from deposing its CEO and Chairman of the Board, Mike Sinyard, is GRANTED, without
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prejudice to Icon seeking to depose him at a later time should less intrusive discovery methods
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prove unsuccessful.
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IT IS SO ORDERED.
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Dated: October 21, 2014
______________________________________
MARIA-ELENA JAMES
United States Magistrate Judge
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