Dey, LP et al v. Sunovion Pharmaceuticals, Inc.

Filing 25

ORDER by Judge Beeler denying 1 Motion to Quash; denying 24 Discovery Letter Brief (lblc1, COURT STAFF) (Filed on 3/29/2012)

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UNITED STATES DISTRICT COURT

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Northern District of California

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Oakland Division
DEY, L.P., et al.,

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For the Northern District of California

UNITED STATES DISTRICT COURT

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No. C 12-80078 CRB (LB)
Plaintiffs,

ORDER RE MOTION TO QUASH

v.
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[ECF Nos. 1 and 24]
SUNOVION PHARMACEUTICALS, INC.,

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Defendant.
_____________________________________/

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I. INTRODUCTION
On March 19, 2012, the district court referred all discovery, including non-party Michael Joyce’s

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motion to quash a deposition filed at ECF No. 1, to United States Magistrate Judge Laurel Beeler.

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Referral Order, ECF No 7 at 1.1 Joyce’s motion seeks to quash a deposition noticed for March 30,

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2012. By stipulation, the parties requested an abbreviated briefing schedule. ECF No. 5 at 3.

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The court utilizes an alternative mechanism for discovery disputes. And, given the timing issues

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involved, the court ordered counsel for the parties to meet and confer in person or by telephone if an

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in-person meeting wass not feasible and to submit a joint letter of no more than five pages

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summarizing the parties’ respective positions. ECF No. 16 at 1. The parties complied with this

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order, submitting a letter on March 26, 2012. See ECF No. 24 at 1. The court then conducted a

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hearing on March 29, 2012. The court now denies Joyce’s motion to quash because the deposition

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Citations are to the Electronic Case File (“ECF”) with pin cites to the electronic page
number at the top of the document, not the pages at the bottom.
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was not untimely noticed and is not unduly burdensome.

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II. DISCUSSION
A. Facts
Originally filed in March 2007, the underlying patent infringement action involves

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pharmaceuticals containing a substance called formoterol. Order, ECF No. 164 at 1, 1:07-cv-02353

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JGK-RLE (S.D.N.Y. Mar. 2, 2012). Plaintiffs Dey L.P., Dey, Inc., and Mylan, Inc., (collectively,

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“Dey”) are pharmaceutical companies. Id. Dey is the assignee of two families of patents for certain

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pharmaceutical substances containing formoterol and certain methods for the administration of those

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substances. Id. Defendant, Sunovion Pharmaceuticals, Inc., formerly known as Sepracor, Inc.,

obstructive pulmonary disease. Id. Dey alleges that Brovana infringes on its two families of

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produces Brovana, a product that contains formoterol and is used for the treatment of chronic

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patents. Id.

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From July 1999 to May 2000, Joyce was employed as temporary laboratory technician at Dey.

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3/26/2012 Joint Discovery Letter, ECF No. 24 at 1, 3. In May 2008, Dey produced Joyce’s

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laboratory notebooks dated January 28, 2000 and March 21, 2000. Id. at 1. These notebooks

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included material related to Dey’s pharmaceutical development that analyzed the solubility and

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stability of formoterol formulations. Id. Sunovion sought Joyce’s deposition in 2008 but was

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unable to locate him. Id. at 1-2.

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In November 2011, Dey produced additional pages from several laboratory notebook, including

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four additional pages from Joyce’s notebooks. Id. at 2. Judge Koeltl – the presiding judge in the

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underlying action – permitted additional discovery following this supplemental production but the

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exact scope of his order is in dispute. Id. at 2, 4.

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On February 20, 2012, Sunovion served a deposition notice on Joyce. Id. at 4-5. The original

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notice called for a March 1, 2012 deposition. Id. at 1. Sunovion moved the deposition twice at

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Joyce’s request, finally settling on Joyce’s proposed date of March 30, 2012. Id. at 5.

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B. Whether the Deposition was Untimely Noticed

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Joyce argues that the deposition notice was untimely because the notice was served a few weeks

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after the close of the supplemental fact discovery (January 30, 2012) and years after the close of the

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original fact discovery (August 2009). 3/26/2012 Joint Discovery Letter, ECF No. 24 at 3.
Sunovian asserts that Judge Koeltl – the presiding judge in the underlying action – already has

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ordered that the depositions of the authors (including Joyce) of Plaintiff Dey’s late-produced

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laboratory notebooks should go forward based on Dey’s changes to its alleged invention dates. Id.

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at 4. Sunovian also argues that the parties’ stipulated Ninth Amended Scheduling Order stated that

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January 30, 2012 was the deadline for “Sunovion’s supplemental fact discovery (pending witness

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availability)” and that, despite its diligence, Joyce was able to evade service until February 20, 2012

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and then was not available until March 30, 2012. Id. at 5 (quoting Stipulated Ninth Amended

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Scheduling Order, ECF No. 155 at 1 (emphasis added by Sunovian)). Sunovian also contends that
the timeline of its efforts to schedule Joyce’s deposition supports its assertion that it was not seeking

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to delay the case. Id. at 9-10.

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Joyce claims that Judge Koeltl required Dey to identify the specific laboratory notebook pages

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on which it would rely in support of its invention dates for the patents in suit and only allowed

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Sunovion to take additional discovery concerning relied-upon laboratory notebooks pages. Id. at 2.

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Joyce states that Dey will not rely on his pages in support of its claims and defenses. Id. Joyce

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further explains that he was employed at Dey as a temporary laboratory technician for only about ten

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months, that he has had no contact with Dey for almost twelve years, and that he has no information

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beyond that contained in the laboratory notebook pages. Id. Joyce also asserts that Sunovian seeks

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to question him about issues beyond the notebook and that the deposition is a fishing expedition that

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could potentially delay the case. Id. at 2, 3.

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The Ninth Amended Scheduling Order contemplates that the supplemental fact discovery might

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extend beyond January 30, 2012, depending on the availability of the witness. The facts as

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described in both parties’ papers support a finding that Joyce was not available prior to the close of

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fact discovery and that Sunovian has been diligent in its efforts to schedule the deposition.

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Accordingly, the court finds that the deposition notice was not untimely.

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Additionally, the court finds that there is no dilatory or otherwise improper motive animating the

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deposition. First, the court observes that the trial remains set and there are no other deadlines in

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play. Second, Dey improperly characterized Sunovian’s opposition brief as suggesting that it

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intends to question Joyce about what has transpired in the New York case over a five-year period.

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Sunovian actually explained that Joyce appears to lack a basis of knowledge for determining

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whether his testimony would be cumulative or duplicative because Joyce has not established he is

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familiar with all that has transpired (not that he will be questioned about issues beyond the scope

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seemingly contemplated by Judge Koeltl’s order permitting supplemental fact discovery).

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The court’s decision regarding the timing issue is buttressed by two additional factors. First,

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although the trial is set to begin on May 21, 2012, the parties have agreed to extend the deadline for

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completing supplemental expert depositions until March 30, 2012. Second, if Judge Koeltl

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disagrees, the court’s view is that it is easier for Judge Koeltl to provide a remedy for an unnecessary
conducted deposition than a necessary one that did not occur.

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B. Whether the Deposition is Unduly Burdensome

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Joyce also argues that the deposition would be unduly burdensome because his testimony would

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be cumulative or duplicative given his lack of memory and the extensive discovery that has already

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taken place – including the deposition testimony of Dey’s corporate designee. 3/26/2012 Joint

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Discovery Letter, ECF No. 24 at 3. Joyce explained that he has already declared that he does not

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recall any specific details. Id. at 2. And Joyce explains that Dey offered to stipulate that it would

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not call Joyce and that Sunovian could rely on the notebook pages without objections from Dey as to

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their authenticity or admissibility. Id.

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Sunovian argues that Joyce’s deposition is likely to reveal relevant information. Id. at 5. It

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contends that it took significant steps to avoid any undue burden on Joyce, including noticing the

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deposition at a location less than eight miles from Joyce’s home residence and by offering to limit

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the deposition to no more than 5 hours. Id.

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As an initial matter, the court finds that Joyce has not established that his testimony would be

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cumulative or duplicative given that he did not establish that he knows exactly what has otherwise

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been disclosed in the case and it is possible that his memory will be refreshed upon questioning and

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examination of the notebooks. And the court further finds that the deposition would not be unduly

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burdensome given that the location is close to Joyce’s home. Although Rule 45(c) of the Federal

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Rules of Civil Procedure requires a party to avoid undue burden or expense, it does not mean that a

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party must forgo a necessary deposition. As to the timing, Rule 30(b)(1) of the Federal Rules of

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Civil Procedure requires parties to provide “reasonable notice” of depositions. Fed. R. Civ. P.

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30(b)(1). This is a fact-dependant inquiry. A number of cases have held that, for a deposition

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without production of documents, ten days notice is generally considered reasonable. See, e.g.,

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Paige v. Consumer Programs, Inc., 248 F.R.D. 272, 275 (C.D. Cal. 2008) (citing In re Sulfuric Acid

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Antitrust Litig., 231 F.R.D. 320, 327 (N.D. Ill. 2005)). Here, the court finds that Joyce had sufficient

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time to prepare, particularly since the notice was served on February 20, 2012, and the deposition

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ultimately will be held on March 30, 2012.

For the foregoing reasons, the court DENIES Joyce’s motion to quash. The deposition shall

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start at noon and will last no longer than four hours (3.5 hours of deposition time and .5 hour for

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III. CONCLUSION

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breaks).

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This disposes of ECF Nos. 1 and 24.

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IT IS SO ORDERED.

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Dated: March 29, 2012
_______________________________
LAUREL BEELER
United States Magistrate Judge

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