In re: Subpoena to Testify at a Deposition in a Civil Action to Nicholas Sullivan

Filing 12

ORDER by Judge Maria-Elena James re: 1 Motion to Quash Deposition. (mejlc2S, COURT STAFF) (Filed on 9/21/2016)

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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 NICHOLAS SULLIVAN, 7 Case No. 16-mc-80183-MEJ Petitioner, 8 ORDER RE: MOTION TO QUASH SUBPOENA v. 9 PERSONALIZED MEDIA COMMUNICATIONS, LLC, 10 Respondent. 11 United States District Court Northern District of California Re: Dkt. No. 1 12 13 INTRODUCTION 14 Before the Court is non-party Petitioner Nicholas Sullivan‟s (“Petitioner”) Motion 15 pursuant to Federal Rule of Civil Procedure (“Rule”) 45 to Quash Respondent Personalized Media 16 Communications, LLC‟s (“PMC”) subpoena for the deposition of Petitioner. Mot., Dkt. No. 1; 17 Mem. of P&A (“Mem.”), Dkt. No. 2.1 PMC filed an Opposition (Opp‟n, Dkt. No. 10), and 18 Petitioner filed a Reply (Reply, Dkt. No. 11). Having considered the parties‟ papers, the record, 19 and the relevant legal authority, the Court now issues the following Order. 20 BACKGROUND 21 On August 8, 2016, PMC served Petitioner with a Rule 45 subpoena for his deposition to 22 be taken on August 22, 2016 in San Francisco, California, the city in which Petitioner resides. 23 Mem. at 1; see also Mem., Attach. A.2 The subpoena did not specify any topics for the deposition 24 1 25 26 27 28 As indicated, Petitioner filed his Memorandum of Points & Authorities in a separate document and docket number from his Motion. Pursuant to Civil Local Rule 7-2, Petitioner‟s Motion and “points and authorities in support of the motion” should have been contained in “one filed document.” See Civ. L.R. 7-2(b). 2 Civil Local Rule 7-5 requires that factual contentions and evidentiary matters in support of any motion must be supported by an affidavit or declaration. While no such declaration or affidavit was filed in support of Petitioner‟s Motion, as PMC has not disputed the authenticity of the 1 but indicated it derived from a patent lawsuit pending in the United States District Court for the 2 Eastern District of Texas, Personalized Media Communications LLC v. Apple Inc., Case No. 2:15- 3 cv-1366-JRG-RSP (E.D. Tex.) (the “Texas Action”). 4 In the Texas Action, PMC sued Apple Inc. (“Apple”) for allegedly infringing on “PMC‟s 5 patents through, among other products and applications, its use of a digital rights management 6 technology known as FairPlay, which is built into many of Apple‟s applications and is used by 7 many of Apple‟s products to deliver personalized digital media experiences to its customers.” 8 Opp‟n at 1-2. Petitioner worked for Apple from July of 2007 through July of 2013. Id. at 2; Mot. 9 at 2. PMC contends Petitioner “is a listed inventor on numerous patents related to the accused technology and who PMC believes was an architect of a significant portion of the source code that 11 United States District Court Northern District of California 10 will help to establish Apple‟s infringement of PMC‟s patented technology.” Opp‟n at 2. 12 Specifically, Petitioner is “listed as an inventor in more than 40 patents and patent publications 13 related to FairPlay and FairPlay Streaming from the time he was an employee of Apple” and his 14 “name is listed in many of the relevant source code modules that Apple has produced, indicating 15 that [Petitioner] was responsible for writing the source code that made it possible for Apple to use 16 the Accused Instrumentalities in its products and applications.” Id. (citing Shiferman Decl. ¶ 4, 17 Dkt. No. 10-1). 18 Petitioner now moves to quash PMC‟s subpoena on the ground that being deposed would 19 subject him to undue burden for only cumulative and outdated discovery. See Mem. He notes he 20 left Apple more than three years ago, and that while he worked on aspects of Apple‟s FairPlay 21 technology, he did so under the supervision of Gianpaolo Fasoli, an Apple engineering manager 22 who continues to work at Apple. Id. at 2. Petitioner contends Mr. Fasoli knows all he potentially 23 might know about Apple‟s FairPlay technology and any knowledge he might have of that 24 technology is now outdated, particularly as one of the asserted patents did not issue until 3 months 25 after he left Apple. Id. at 3. Finally, Petitioner argues he is a senior engineer at another company, 26 27 28 Attachments, the Court will consider them for purposes of this Order. Additionally, the Court may take judicial notice of documents in the Texas Action. See Fed. R. Evid. 201(b); Reyn’s Pasta Bella, LLC v. Visa USA, Inc., 442 F.3d 741, 746 n.6 (9th Cir. 2006). 2 1 and requiring him to spend a workday away for his duties with his current employer when the 2 relevance of any information he could give is so limited is unduly burdensome. Id. at 2-3. 3 4 LEGAL STANDARD Federal Rule of Civil Procedure 45 governs discovery of non-parties by subpoena. Rule 45 5 provides, among other things, that a party may command a non-party to testify at a deposition. 6 Fed. R. Civ. P. 45(a)(1)(A)(iii). The scope of discovery through a Rule 45 subpoena is the same 7 as the scope of discovery permitted under Rule 26(b). Beaver Cty. Employers Ret. Fund v. Tile 8 Shop Holdings, Inc., 2016 WL 3162218, at *2 (N.D. Cal. June 7, 2016) (citing Fed. R. Civ. P. 45 9 Advisory Comm.‟s Note (1970); Fed. R. Civ. P. 34(a)). 10 Under Rule 26, in a civil action, a party may obtain discovery “regarding any United States District Court Northern District of California 11 nonprivileged matter that is relevant to any party‟s claim or defense and proportional to the needs 12 of the case considering the importance of the issues at stake in the action, the amount in 13 controversy, the parties‟ relative access to relevant information, the parties‟ resources, the 14 importance of the discovery in resolving the issues, and whether the burden or expense of the 15 proposed discovery outweighs its likely benefit.” Fed. R. Civ. P. 26(b)(1). Additionally, the court 16 must limit the frequency or extent of discovery if it determines that: “(i) the discovery sought is 17 unreasonably cumulative or duplicative, or can be obtained from some other source that is more 18 convenient, less burdensome, or less expensive; (ii) the party seeking discovery has had ample 19 opportunity to obtain the information by discovery in the action; or (iii) the proposed discovery is 20 outside the scope permitted by Rule 26(b)(1).” Fed. R. Civ. P. 26(b)(2)(C)). Rule 45 also 21 specifically provides that “the court for the district where compliance is required must quash or 22 modify a subpoena that: (i) fails to allow a reasonable time to comply; (ii) requires a person to 23 comply beyond the geographical limits specified in Rule 45(c); (iii) requires disclosure of 24 privileged or other protected matter, if no exception or waiver applies; or (iv) subjects a person to 25 undue burden.” Fed. R. Civ. P. 45(d)(3)(A). 26 “The Ninth Circuit has long held that nonparties subject to discovery requests deserve 27 extra protection from the courts.” Lemberg Law LLC v. Hussin, 2016 WL 3231300, at *5 (N.D. 28 Cal. June 13, 2016) (quotation omitted); see United States v. C.B.S., Inc., 666 F.2d 364, 371-72 3 1 (9th Cir. 1982) (“Nonparty witnesses are powerless to control the scope of litigation and 2 discovery, and should not be forced to subsidize an unreasonable share of the costs of a litigation 3 to which they are not a party”). Courts in this district have consequently held that “[o]n a motion 4 to quash a subpoena, the moving party has the burden of persuasion under Rule 45(c)(3), but the 5 party issuing the subpoena must demonstrate that the discovery sought is relevant.” Chevron 6 Corp. v. Donziger, 2013 WL 4536808, at *4 (N.D. Cal. Aug. 22, 2013) (citation omitted); see also 7 Optimize Tech. Solutions, LLC v. Staples, Inc., 2014 WL 1477651, at *2 (N.D. Cal. Apr. 14, 2014) 8 (“The party issuing the subpoena must demonstrate that the information sought is relevant and 9 material to the allegations and claims at issue in the proceedings.” (quotation omitted)). ANALYSIS 10 The Court will not quash PMC‟s subpoena to Petitioner. Petitioner‟s arguments come United States District Court Northern District of California 11 12 down to relevance and burden, and both arguments favor PMC. 13 A. Relevance 14 First, while Petitioner argues he has only outdated, cumulative information that would not 15 be relevant to PMC‟s claims, PMC has demonstrated otherwise. Specifically, the evidence PMC 16 has reviewed through discovery in the Texas Action reveals Petitioner is listed as an inventor on 17 numerous patents and patent publications related to the Accused Instrumentalities. Shiferman 18 Decl. ¶ 4. Furthermore, Apple disclosed source code indicating Petitioner was “an architect of the 19 software infrastructure that Apple put in place so that its products and applications could utilize 20 the Accused Instrumentalities[.]” See id. ¶ 3. Consequently, PMC has demonstrated Petitioner is 21 likely to be “the most knowledgeable source for information about the source code that he wrote” 22 even if other “senior Apple engineers may be generally knowledgeable about the implementation 23 and development of FairPlay[.]” Opp‟n at 5 (emphasis in original). Petitioner does not deny the 24 significance of his role in FairPlay‟s development. And while he argues that all he can do is “help 25 PMC understand how the software works[,]” which “can come from anyone who understands how 26 the software works[,]” Reply at 2, as the architect of this software, he is likely to have relevant 27 information about the “day-today and more technical aspects of developing and integrating 28 FairPlay[,]” which PMC indicates is part its goal in deposing Plaintiff and relevant to its claims in 4 1 the Texas Action. Thus, Petitioner is likely to have information relevant to PMC‟s claims at this 2 point. See Opp‟n at 5 (collecting cases concerning the importance of source code for accused 3 infringing products). Petitioner‟s other arguments do not persuade the Court to a contrary finding. Petitioner 4 argues PMC has not indicated that other Apple deponents have been unable to answer PMC‟s 6 questions (Reply at 1), but this is immaterial. Petitioner may still have relevant, discoverable 7 information even in the situation he posits. The same is true for his argument that PMC did not 8 contend other Apple deponents did not reference Plaintiff by name at their depositions. Id. at 1. 9 Moreover, the fact that one of the patents-in-suit issued three months after Petitioner left Apple 10 does not necessarily mean Petitioner does not have relevant information concerning that patent 11 United States District Court Northern District of California 5 before it issued. It also does not diminish the relevance of information Petitioner may have related 12 to the other patents at issue in the Texas Action. Ultimately, Petitioner has not persuasively 13 undermined PMC‟s arguments that he has relevant information to its case. 14 B. 15 Burden Second, as to burden, Petitioner has not shown how his burden is so significant that the 16 subpoena must be quashed. “A party claiming undue burden or expense ordinarily has far better 17 information -- perhaps the only information -- with respect to that part of the determination.” Fed. 18 R. Civ. P. 26(b)(1), Advisory Comm.‟s Note (2015). “As a result, it has long been clear that a 19 party claiming that discovery imposes an undue burden must „allege specific facts which indicate 20 the nature and extent of the burden, usually by affidavit or other reliable evidence.‟” Nationstar 21 Mortg., LLC v. Flamingo Trails No. 7 Landscape Maint. Ass’n, 2016 WL 4071988, at *4 (D. Nev. 22 July 28, 2016) (quotation omitted). “Conclusory or speculative statements of harm, 23 inconvenience, or expense are plainly insufficient[,]” and “courts have made clear that identifying 24 the generalized burden of being deposed while holding a [high-level] position . . . is insufficient 25 grounds for precluding a deposition.” Id. (citing Apple Inc. v. Samsung Elecs. Co., Ltd, 282 26 F.R.D. 259, 268 (N.D. Cal. 2012)). Petitioner offers nothing more than a generalized burden 27 argument. While the Court does not take lightly the inherent burden of a deposition, particularly 28 for a non-party, PMC subpoenaed Petitioner for his deposition to take place within three miles 5 1 from his home and work and has offered to take his deposition outside of normal business hours to 2 lessen the inconvenience to Petitioner. Opp‟n at 4 (citing Shiferman Decl. ¶ 7). The Court thus 3 has no grounds to find that the burden sufficient to preclude this deposition. 4 CONCLUSION 5 Based on the foregoing analysis, the Court DENIES Petitioner‟s Motion to Quash. 6 However, in deposing Petitioner, PMC must make the efforts to minimize the burden to Petitioner 7 as indicated in its briefing and declarations to the Court. Additionally, as PMC did not provide the 8 precise topics on which it plans to depose Petitioner, the Court ORDERS PMC to provide those 9 topics within five (5) business days before Petitioner‟s deposition date. The Court further LIMITS the deposition to no more than four (4) hours to ensure it is not unduly burdensome in 11 United States District Court Northern District of California 10 light of the information Petitioner may have at this point. See C.B.S., 666 F.2d at 369 (“[A] court 12 may be as inventive as the necessities of a particular case require in order to achieve the benign 13 purposes of [Rule 26(b)(2)(C)].” (quoting 8A Charles Alan Wright et al., Federal Practice & 14 Procedure § 2036)). 15 IT IS SO ORDERED. 16 17 18 19 Dated: September 21, 2016 ______________________________________ MARIA-ELENA JAMES United States Magistrate Judge 20 21 22 23 24 25 26 27 28 6

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