Swanson v. Alza Corporation

Filing 156

ORDER by Judge Kandis A. Westmore denying 143 Motion to Quash. (kawlc1, COURT STAFF) (Filed on 4/25/2014)

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United States District Court
Northern District of California

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Case No.: CV 12-04579-PJH (KAW)

DR. JAMES M. SWANSON,
Plaintiffs,

ORDER DENYING NON-PARTY MARCEL
KINSBOURNE’S MOTION TO QUASH

v.
ALZA CORPORATION,

(Dkt. No. 143)

Defendants.

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United States District Court
Northern District of California

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On March 16, 2014, Non-party Marcel Kinsbourne, M.D. filed a motion to quash Plaintiff
Dr. James M. Swanson’s subpoena. (Kinsbourne’s Mot., Dkt. No. 143.)
In accordance with Civil L.R. 7-1(b), this matter is deemed suitable for disposition

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without hearing. In light of moving papers and documents submitted by the parties, and for the

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reasons set forth below, the Court DENIES Dr. Kinsbourne’s motion to quash.

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DISCUSSION
According to Dr. Kinsbourne, he served as Dr. Swanson’s “supervisor and co-investigator

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in several medical research projects which resulted in several peer reviewed medical journal

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articles co-authored by Dr. Kinsbourne and [Dr.] Swanson.” (Kinsbourne’s Mot. at 3.) It was the

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methodology introduced in those articles that inspired further studies by Plaintiff, which he

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alleges ALZA used in their inventions. Id.

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As a result, Dr. Kinsbourne was asked to provide a declaration in support of Plaintiff’s

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claims. (Kinsbourne’s Mot. at 3; Pl.’s Opp’n, Dkt. No. 147 at 3-4.) On April 24, 2013, Dr.

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Kinsbourne’s signed declaration was received with his CV. (Decl. of Gerald P. Dodson in Supp.

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of Pl.’s Opp’n, “Dodson Decl.,” Dkt. No. 149 ¶ 15.) On July 1, 2013, ALZA served a subpoena,

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which commanded Dr. Kinsbourne to locate and produce numerous documents, many of which

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are allegedly unrelated to the instant action. (See Kinsbourne Mot. at 3.) Plaintiff’s counsel

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agreed to provide Dr. Kinsbourne with legal representation “for the purposes of responding to the

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subpoena to produce documents served by ALZA on July 1, 2013.” (Dodson Decl. ¶ 16.) By

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September 2013, Plaintiff’s counsel and Dr. Kinsbourne had a falling out, and on September 16,

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2013, Dr. Kinsbourne retained new counsel. (Dodson Decl. ¶¶ 17-19.)

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Ultimately, Dr. Kinsbourne sought to withdraw his declaration in order to remove himself

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from the legal dispute. (Kinsbourne’s Reply, Dkt. No. 152 at 3.) In exchange, ALZA agreed not

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to compel compliance with its subpoena. (See Kinsbourne’s Reply at 3; Pl.’s Opp’n t 4; Dodson

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Decl. ¶ 20.)

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On November 20, 2013, Plaintiff served a deposition subpoena on Dr. Kinsbourne to
appear on December 16, 2013. (Subpoena, Pl.’s Opp’n, Ex. A, Dkt. No. 147-1.) The subpoena

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United States District Court
Northern District of California

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also required that Dr. Kinsbourne produce “[a]ny and all correspondence between you, or your

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representatives, and Defendant ALZA Corporation and/or counsel for ALZA Corporation

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between September 4, 2013 and the date of your deposition.” Id. Plaintiff contends that Dr.

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Kinsbourne’s deposition testimony is “critical to resolution of this case in a fair and just manner”

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because many of Dr. Kinsbourne’s “insights seriously undercut ALZA’s claim that it developed

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the methods of the ‘129 Patent.” (Pl.’s Opp’n at 3.)

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Plaintiff also correctly states that “Dr. Kinsbourne’s real complaint is with ALZA’s

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subpoena for documents served on him on July 1, 2013....” Id. at 4. In both his motion and reply,

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Dr. Kinsbourne does not allege that Plaintiff’s subpoena is overbroad or unduly burdensome,

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because it is not. Rather, Dr. Kinsbourne appears to be upset that Plaintiff refuses to “join [him]

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as a plaintiff in this case despite his clear contribution to the invention in question” and otherwise

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refuses to compensate him for his time. (Kinsbourne’s Reply at 2.) Dr. Kinsbourne goes so far as

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to claim that participating in this case in any form, without compensation, is commensurate with

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slavery and is a constitutional violation under the Thirteenth Amendment. (Kinsbourne’s Reply at

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1-2.) This argument is patently frivolous, and an improper basis for a motion to quash a subpoena

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under Rule 45.

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Additionally, Dr. Kinsbourne cites Rule 45(c)(3)(B) to support his claim that he should be
compensated. As an initial matter, there is no Rule 45(c)(3)(B). (Pl.’s Mot. at 5.) The Court
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assumes that Dr. Kinsbourne is referring to Rule 45(d)(3)(C)(ii), which provides for

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compensation for unretained expert witnesses who are providing an “opinion or information that

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does not describe specific occurrences in dispute and results from the expert’s study that was not

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requested by a party.” See also Fed. R. Civ. P. 45(d)(3)(B)(ii). Dr. Kinsbourne’s testimony is

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directly related to Plaintiff’s claims that ALZA infringed on the ‘129 Patent, and so he is not

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entitled to compensation for responding to a subpoena. Accordingly, Dr. Kinsbourne’s motion to

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quash is denied.
CONCLUSION

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For the reasons set forth above, the Court DENIES Non-party Dr. Kinsbourne’s motion to
quash. Dr. Kinsbourne is ordered to meet and confer with the parties to schedule a deposition to

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United States District Court
Northern District of California

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occur within the next 30 days, or on another mutually agreed upon date, in accordance with the

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federal rules.

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IT IS SO ORDERED.
Dated: April 25, 2014

___________________________
KANDIS A. WESTMORE
United States Magistrate Judge

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