Ojmar US, LLC v. Security People, Inc. et al

Filing 66

Discovery Order re Dkt. No. 63 . Signed by Judge Maria-Elena James on 2/22/2017. (mejlc3, COURT STAFF) (Filed on 2/22/2017)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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OJMAR US, LLC,

Case No. 16-cv-04948-HSG (MEJ)

Plaintiff,
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DISCOVERY ORDER

v.

Re: Dkt. No. 63

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SECURITY PEOPLE, INC., et al.,
Defendants.

United States District Court
Northern District of California

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INTRODUCTION

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Plaintiff Ojmar US, LLC (“Ojmar”) sued Defendants Security People, Inc. (“Digilock”)

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and Asil Gokcebay (together, “Defendants”), asserting a number of claims relating to Digilock’s

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Patent No. 6,655,180 (the “180 Patent”). The district judge presiding over the matter, the

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Honorable Haywood Gilliam, referred discovery disputes arising between the parties to the

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undersigned. See Dkt. No. 59.

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Pending before the Court is a Joint Letter regarding (1) a document and deposition

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subpoena issued by Ojmar to third party Thomas Freiburger, and (2) a document subpoena issued

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by Ojmar to third party Stephen Schmid. See Letter, Dkt. No. 63. Mr. Freiburger is a patent

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attorney for Digilock, and Mr. Schmid is Digilock’s litigation counsel. Digilock asserted an

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advice of counsel defense in connection with Ojmar’s lawsuit, and Ojmar seeks to compel the

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deposition of Mr. Freiburger, production of documents from Mr. Freiburger and Mr. Schmid, and

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production of a privilege log for documents withheld on privilege grounds. Defendants move to

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quash the subpoenas or in the alternative, for an order of protection pursuant to Federal Rule of

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Civil Procedure 26(c).

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Having considered the parties’ positions, the relevant legal authority, and the record in this
case, the Court issues the following order.

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LEGAL STANDARD
Federal Rule of Civil Procedure 26 provides that a party may obtain discovery “regarding

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any nonprivileged matter that is relevant to any party’s claim or defense and proportional to the

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needs of the case[.]” Fed. R. Civ. P. 26(b)(1). Factors to consider include “the importance of the

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issues at stake in the action, the amount in controversy, the parties’ relative access to relevant

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information, the parties’ resources, the importance of the discovery in resolving the issues, and

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whether the burden or expense of the proposed discovery outweighs its likely benefit.” Id.

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Discovery need not be admissible in evidence to be discoverable. Id. However, “[t]he parties and

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the court have a collective responsibility to consider the proportionality of all discovery and
consider it in resolving discovery disputes.” Fed. R. Civ. P. 26 advisory committee notes (2015

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United States District Court
Northern District of California

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amendments). Thus, there is “a shared responsibility on all the parties to consider the factors

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bearing on proportionality before propounding discovery requests, issuing responses and

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objections, or raising discovery disputes before the courts.” Salazar v. McDonald’s Corp., 2016

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WL 736213, at *2 (N.D. Cal. Feb. 25, 2016); Goes Int’l, AB v. Dodur Ltd., 2016 WL 427369, at

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*4 (N.D. Cal. Feb. 4, 2016) (citing advisory committee notes for proposition that parties share a

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“collective responsibility” to consider proportionality and requiring that “[b]oth parties . . . tailor

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their efforts to the needs of th[e] case”).

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Rule 26(c) “confers broad discretion on the trial court to decide when a protective order is

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appropriate and what degree of protection is required.” Seattle Times Co. v. Rhinehart, 467 U.S.

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20, 36 (1984). “The court may, for good cause, issue an order to protect a party or person from

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annoyance, embarrassment, oppression, or undue burden or expense,” including by (1) prohibiting

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disclosure or discovery; (2) conditioning disclosure or discovery on specified terms; (3)

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preventing inquiry into certain matters; or (4) limiting the scope of disclosure or discovery to

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certain matters. Fed. R. Civ. P. 26(c)(1).

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DISCUSSION
Ojmar is entitled to discover evidence relevant to the 180 Patent and to Digilock’s

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assertion of the advice-of-counsel defense with respect to the 180 Patent. It is not entitled to

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discover evidence relating to other Digilock patents or to litigation decisions pertaining to topics
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other than the 180 Patent. While Digilock cannot use the advice of counsel defense “both as a

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sword and a shield[,]” Digilock’s assertion of this defense does not give Ojmar “unfettered

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discretion to rummage through all of [Digilock’s] files and pillage all [its] litigation strategies.”

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See Chevron Corp. v. Pennzoil Co., 974 F.2d 1156, 1162 (9th Cir. 1992); In re EchoStar

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Commc’ns Corp., 448 F.3d 1294, 1303 (Fed. Cir. 2006).

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A.

Mr. Freiburger
The Court declines to quash the subpoena to Mr. Freiburger, but grants the request for

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protection under Rule 26(c). Mr. Freiburger shall produce non-privileged documents responsive

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to these requests for production (“RFPs”), but only to the extent they relate to the 180 Patent.
Upon entry of a protective order, Mr. Freiburger also shall produce otherwise privileged

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United States District Court
Northern District of California

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documents to the extent they reflect information Digilock will rely upon in asserting its advice-of-

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counsel defense in this matter. Ojmar has not shown discovery relating to other patents is relevant

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to its claims or Digilock’s defenses, or that it is proportional under Rule 26(b)(1).
The Court agrees that Mr. Freiburger should produce a privilege log, but lacks information

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sufficient to craft an appropriate order. The parties accordingly shall meet and confer in person

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about the scope of an appropriate privilege log regarding documents that relate to the 180 Patent

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and that predate the filing of this lawsuit.
Ojmar may depose Mr. Freiburger regarding the 180 Patent; Digilock may object and

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instruct the witness not to answer questions that exceed the scope of the waiver.

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B.

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Mr. Schmid
The documents requests in Ojmar’s subpoena to Mr. Schmid are facially unreasonable

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because they pertain to topics unrelated to the 180 Patent, and clearly invade the attorney-client

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privilege and the attorney work product doctrine. See especially Letter, Ex. 3 at RFPs 9, 10, 14,

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15-23, 25-27. Mr. Schmid has represented Digilock for twenty-years as trial counsel on numerous

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matters (Letter at 2, 4), and any waiver of privilege with respect to his communications or work

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product must be construed very narrowly, or rejected all together. See Sharper Image Corp. v.

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Honeywell Int’l Inc., 222 F.R.D. 621, 636-37, 643-46 (N.D. Cal. 2004). Ojmar has not made a

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showing that waiver of the attorney client privilege or work product protection is appropriate
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under these circumstances. Cf. Sharper Image, 222 F.R.D. at 640-41. Ojmar may propound

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discovery to Digilock to demonstrate circumstances exist that make waiver appropriate, but for

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now, the Court finds Ojmar is not entitled to any discovery from Digilock’s long-time trial counsel

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and quashes the Schmid subpoena.

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C.

Next Steps

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If Ojmar believes that any of the requests the Court has limited or quashed seek

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information that is relevant and proportional, it shall meet and confer in person with Digilock to

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attempt to narrow the requests in a mutually acceptable manner. If the parties cannot resolve the

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dispute during their meet and confer, they may file another joint letter brief addressing specific

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United States District Court
Northern District of California

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requests.
If the parties cannot agree to the proper scope of a privilege log for Mr. Freiburger, they

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may file another joint letter brief provided they meet and confer in-person in accordance with the

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Court’s Standing Order.

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If the parties disagree about the scope of the waiver at the conclusion of Mr. Freiburger’s

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deposition, they may file another joint letter brief if they cannot resolve the dispute after an in-

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person meet and confer session. Mr. Freiburger may need to sit for a second deposition if the

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Court disagrees with Digilock’s assessment of the scope of the waiver.

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IT IS SO ORDERED.

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Dated: February 22, 2017
______________________________________
MARIA-ELENA JAMES
United States Magistrate Judge

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