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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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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NICHOLAS SULLIVAN,

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Case No. 16-mc-80183-MEJ

Petitioner,
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ORDER RE: MOTION TO QUASH
SUBPOENA

v.
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PERSONALIZED MEDIA
COMMUNICATIONS, LLC,

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Respondent.

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United States District Court
Northern District of California

Re: Dkt. No. 1

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INTRODUCTION

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Before the Court is non-party Petitioner Nicholas Sullivan‟s (“Petitioner”) Motion

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pursuant to Federal Rule of Civil Procedure (“Rule”) 45 to Quash Respondent Personalized Media

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Communications, LLC‟s (“PMC”) subpoena for the deposition of Petitioner. Mot., Dkt. No. 1;

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Mem. of P&A (“Mem.”), Dkt. No. 2.1 PMC filed an Opposition (Opp‟n, Dkt. No. 10), and

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Petitioner filed a Reply (Reply, Dkt. No. 11). Having considered the parties‟ papers, the record,

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and the relevant legal authority, the Court now issues the following Order.

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BACKGROUND

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On August 8, 2016, PMC served Petitioner with a Rule 45 subpoena for his deposition to

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be taken on August 22, 2016 in San Francisco, California, the city in which Petitioner resides.

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Mem. at 1; see also Mem., Attach. A.2 The subpoena did not specify any topics for the deposition

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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).
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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

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but indicated it derived from a patent lawsuit pending in the United States District Court for the

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Eastern District of Texas, Personalized Media Communications LLC v. Apple Inc., Case No. 2:15-

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cv-1366-JRG-RSP (E.D. Tex.) (the “Texas Action”).

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In the Texas Action, PMC sued Apple Inc. (“Apple”) for allegedly infringing on “PMC‟s

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patents through, among other products and applications, its use of a digital rights management

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technology known as FairPlay, which is built into many of Apple‟s applications and is used by

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many of Apple‟s products to deliver personalized digital media experiences to its customers.”

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Opp‟n at 1-2. Petitioner worked for Apple from July of 2007 through July of 2013. Id. at 2; Mot.

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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

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United States District Court
Northern District of California

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will help to establish Apple‟s infringement of PMC‟s patented technology.” Opp‟n at 2.

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Specifically, Petitioner is “listed as an inventor in more than 40 patents and patent publications

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related to FairPlay and FairPlay Streaming from the time he was an employee of Apple” and his

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“name is listed in many of the relevant source code modules that Apple has produced, indicating

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that [Petitioner] was responsible for writing the source code that made it possible for Apple to use

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the Accused Instrumentalities in its products and applications.” Id. (citing Shiferman Decl. ¶ 4,

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Dkt. No. 10-1).

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Petitioner now moves to quash PMC‟s subpoena on the ground that being deposed would

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subject him to undue burden for only cumulative and outdated discovery. See Mem. He notes he

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left Apple more than three years ago, and that while he worked on aspects of Apple‟s FairPlay

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technology, he did so under the supervision of Gianpaolo Fasoli, an Apple engineering manager

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who continues to work at Apple. Id. at 2. Petitioner contends Mr. Fasoli knows all he potentially

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might know about Apple‟s FairPlay technology and any knowledge he might have of that

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technology is now outdated, particularly as one of the asserted patents did not issue until 3 months

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after he left Apple. Id. at 3. Finally, Petitioner argues he is a senior engineer at another company,

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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).
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and requiring him to spend a workday away for his duties with his current employer when the

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relevance of any information he could give is so limited is unduly burdensome. Id. at 2-3.

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LEGAL STANDARD
Federal Rule of Civil Procedure 45 governs discovery of non-parties by subpoena. Rule 45

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provides, among other things, that a party may command a non-party to testify at a deposition.

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Fed. R. Civ. P. 45(a)(1)(A)(iii). The scope of discovery through a Rule 45 subpoena is the same

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as the scope of discovery permitted under Rule 26(b). Beaver Cty. Employers Ret. Fund v. Tile

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Shop Holdings, Inc., 2016 WL 3162218, at *2 (N.D. Cal. June 7, 2016) (citing Fed. R. Civ. P. 45

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Advisory Comm.‟s Note (1970); Fed. R. Civ. P. 34(a)).

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Under Rule 26, in a civil action, a party may obtain discovery “regarding any

United States District Court
Northern District of California

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

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of the case considering the importance of the issues at stake in the action, the amount in

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controversy, the parties‟ relative access to relevant information, the parties‟ resources, the

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importance of the discovery in resolving the issues, and whether the burden or expense of the

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proposed discovery outweighs its likely benefit.” Fed. R. Civ. P. 26(b)(1). Additionally, the court

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must limit the frequency or extent of discovery if it determines that: “(i) the discovery sought is

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unreasonably cumulative or duplicative, or can be obtained from some other source that is more

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convenient, less burdensome, or less expensive; (ii) the party seeking discovery has had ample

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opportunity to obtain the information by discovery in the action; or (iii) the proposed discovery is

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outside the scope permitted by Rule 26(b)(1).” Fed. R. Civ. P. 26(b)(2)(C)). Rule 45 also

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specifically provides that “the court for the district where compliance is required must quash or

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modify a subpoena that: (i) fails to allow a reasonable time to comply; (ii) requires a person to

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comply beyond the geographical limits specified in Rule 45(c); (iii) requires disclosure of

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privileged or other protected matter, if no exception or waiver applies; or (iv) subjects a person to

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undue burden.” Fed. R. Civ. P. 45(d)(3)(A).

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“The Ninth Circuit has long held that nonparties subject to discovery requests deserve

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extra protection from the courts.” Lemberg Law LLC v. Hussin, 2016 WL 3231300, at *5 (N.D.

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Cal. June 13, 2016) (quotation omitted); see United States v. C.B.S., Inc., 666 F.2d 364, 371-72
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(9th Cir. 1982) (“Nonparty witnesses are powerless to control the scope of litigation and

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discovery, and should not be forced to subsidize an unreasonable share of the costs of a litigation

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to which they are not a party”). Courts in this district have consequently held that “[o]n a motion

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to quash a subpoena, the moving party has the burden of persuasion under Rule 45(c)(3), but the

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party issuing the subpoena must demonstrate that the discovery sought is relevant.” Chevron

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Corp. v. Donziger, 2013 WL 4536808, at *4 (N.D. Cal. Aug. 22, 2013) (citation omitted); see also

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Optimize Tech. Solutions, LLC v. Staples, Inc., 2014 WL 1477651, at *2 (N.D. Cal. Apr. 14, 2014)

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(“The party issuing the subpoena must demonstrate that the information sought is relevant and

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material to the allegations and claims at issue in the proceedings.” (quotation omitted)).
ANALYSIS

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The Court will not quash PMC‟s subpoena to Petitioner. Petitioner‟s arguments come

United States District Court
Northern District of California

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down to relevance and burden, and both arguments favor PMC.

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A.

Relevance

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First, while Petitioner argues he has only outdated, cumulative information that would not

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be relevant to PMC‟s claims, PMC has demonstrated otherwise. Specifically, the evidence PMC

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has reviewed through discovery in the Texas Action reveals Petitioner is listed as an inventor on

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numerous patents and patent publications related to the Accused Instrumentalities. Shiferman

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Decl. ¶ 4. Furthermore, Apple disclosed source code indicating Petitioner was “an architect of the

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software infrastructure that Apple put in place so that its products and applications could utilize

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the Accused Instrumentalities[.]” See id. ¶ 3. Consequently, PMC has demonstrated Petitioner is

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likely to be “the most knowledgeable source for information about the source code that he wrote”

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even if other “senior Apple engineers may be generally knowledgeable about the implementation

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and development of FairPlay[.]” Opp‟n at 5 (emphasis in original). Petitioner does not deny the

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significance of his role in FairPlay‟s development. And while he argues that all he can do is “help

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PMC understand how the software works[,]” which “can come from anyone who understands how

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the software works[,]” Reply at 2, as the architect of this software, he is likely to have relevant

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information about the “day-today and more technical aspects of developing and integrating

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FairPlay[,]” which PMC indicates is part its goal in deposing Plaintiff and relevant to its claims in
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the Texas Action. Thus, Petitioner is likely to have information relevant to PMC‟s claims at this

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point. See Opp‟n at 5 (collecting cases concerning the importance of source code for accused

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infringing products).
Petitioner‟s other arguments do not persuade the Court to a contrary finding. Petitioner

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argues PMC has not indicated that other Apple deponents have been unable to answer PMC‟s

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questions (Reply at 1), but this is immaterial. Petitioner may still have relevant, discoverable

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information even in the situation he posits. The same is true for his argument that PMC did not

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contend other Apple deponents did not reference Plaintiff by name at their depositions. Id. at 1.

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Moreover, the fact that one of the patents-in-suit issued three months after Petitioner left Apple

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does not necessarily mean Petitioner does not have relevant information concerning that patent

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United States District Court
Northern District of California

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before it issued. It also does not diminish the relevance of information Petitioner may have related

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to the other patents at issue in the Texas Action. Ultimately, Petitioner has not persuasively

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undermined PMC‟s arguments that he has relevant information to its case.

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B.

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Burden
Second, as to burden, Petitioner has not shown how his burden is so significant that the

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subpoena must be quashed. “A party claiming undue burden or expense ordinarily has far better

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information -- perhaps the only information -- with respect to that part of the determination.” Fed.

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R. Civ. P. 26(b)(1), Advisory Comm.‟s Note (2015). “As a result, it has long been clear that a

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party claiming that discovery imposes an undue burden must „allege specific facts which indicate

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the nature and extent of the burden, usually by affidavit or other reliable evidence.‟” Nationstar

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Mortg., LLC v. Flamingo Trails No. 7 Landscape Maint. Ass’n, 2016 WL 4071988, at *4 (D. Nev.

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July 28, 2016) (quotation omitted). “Conclusory or speculative statements of harm,

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inconvenience, or expense are plainly insufficient[,]” and “courts have made clear that identifying

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the generalized burden of being deposed while holding a [high-level] position . . . is insufficient

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grounds for precluding a deposition.” Id. (citing Apple Inc. v. Samsung Elecs. Co., Ltd, 282

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F.R.D. 259, 268 (N.D. Cal. 2012)). Petitioner offers nothing more than a generalized burden

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argument. While the Court does not take lightly the inherent burden of a deposition, particularly

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for a non-party, PMC subpoenaed Petitioner for his deposition to take place within three miles
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from his home and work and has offered to take his deposition outside of normal business hours to

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lessen the inconvenience to Petitioner. Opp‟n at 4 (citing Shiferman Decl. ¶ 7). The Court thus

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has no grounds to find that the burden sufficient to preclude this deposition.

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CONCLUSION

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Based on the foregoing analysis, the Court DENIES Petitioner‟s Motion to Quash.

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However, in deposing Petitioner, PMC must make the efforts to minimize the burden to Petitioner

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as indicated in its briefing and declarations to the Court. Additionally, as PMC did not provide the

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precise topics on which it plans to depose Petitioner, the Court ORDERS PMC to provide those

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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

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United States District Court
Northern District of California

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light of the information Petitioner may have at this point. See C.B.S., 666 F.2d at 369 (“[A] court

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may be as inventive as the necessities of a particular case require in order to achieve the benign

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purposes of [Rule 26(b)(2)(C)].” (quoting 8A Charles Alan Wright et al., Federal Practice &

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Procedure § 2036)).

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IT IS SO ORDERED.

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Dated: September 21, 2016
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MARIA-ELENA JAMES
United States Magistrate Judge

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