Rockwell Automation, Inc. et al v. Kontron Modular Computers

Filing 40

ORDER Granting Kontron's Motion To Quash The Subpoena Of Thomas Sparrvik And Denying Rockwell's Cross-Motion To Enforce The Subpoenas (Re Docs. 17 , 21 ). Signed by Magistrate Judge William McCurine, Jr on 1/7/2013. (All non-registered users served via U.S. Mail Service; ECF registration requirement notices also were mailed to Atty Michael Davi and Atty Paul Tanck.)(mdc)(jrd)

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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ROCKWELL AUTOMA nON, INC. AND
ROCKWELL AUTOMA nON
TECHNOLOGIES, INC.,

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Plaintiffs,
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v.

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KONTRON MODULAR COMPUTERS,

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Case No. 12cv566-WQH (WMc)
ORDER GRANTING KONTRON'S
MOTION TO QUASH THE SUBPOENA
OF THOMAS SPARRVIK AND
DENYING ROCKWELL'S CROSSMOTION TO ENFORCE THE
SUBPOENAS

Defendant.
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(ECFNos. 17,21)

Introduction and Background

Plaintiffs, Rockwell Automation and Rockwell Automation Technologies ("Rockwell"),

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sued the W AGO Corporation ("W AGO") for patent infringement of industrial programmable

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controllers in the United States District Court for the Western District of Wisconsin. Rockwell

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alleged W AGO markets and sells infringing controllers and Kontron Modular is responsible for

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the design, development and manufacture ofthe accused products. However, Rockwell has not

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sued Kontron Modular in Wisconsin, California, or any other jurisdiction.

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Initially, Rockwell sought to supplement its discovery efforts in Wisconsin by seeking to

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compel Kontron Modular, a German company, to produce documents pursuant to a Subpoena

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Duces Tecum from the United States District Court for the Southern District of California and

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purportedly served on Kontron Modular by delivery to a receptionist at the offices of Kontron

12cv566-WQH (WMc)

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America, Inc. ("Kontron America") in Poway, California. The subpoena sought documents from

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Kontron Modular relating to Rockwell's claims against WAGO even though Rockwell

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successfully moved the district court' in Wisconsin to compel WAGO to produce the same ,

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documents it now seeks here. The Court denied Rockwell's motion. (ECF No. 39).

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Before the Court issued its order ~enying Rockwell's motion to enforce the out of district

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subpoena, Rockwell sought additional subpoenas from Kontron Modular and its affiliates.

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Counsel for Kontron Modular filed a motion to quash the subpoena to testify at a deposition

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purportedly served by Rockwell on Thomas Sparrvik. (ECF No. 17). Also, Kontron Modular

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filed an objection to Rockwell's four additional subpoenas

two directed at Kontron Modular

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and two directed at Kontron AG (one each for documents, one each for documents and

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testimony) - purportedly served on Thomas Sparrvik. Rockwell responded with an opposition to

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Kontron Modular's motion to quash and a cross-motion to enforce the additional subpoenas.

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(ECF No. 21). Kontron Modular filed a reply/opposition to Rockwell's opposition and cross-

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motion. (ECF No. 27). Trial commenced in the underlying action on October 9,2012.' The jury

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found in favor of Rockwell as to liability and awarded Rockwell over ten million dollars in

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damages.

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Applicable Law

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Under Fed. R. Civ. P. 45(a){l )(C), a nonparty to a civil suit, like Kontron Modular,

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Kontron America, and Thomas Sparrvik, can be subpoenaed for documents relevant to the suit.

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Under Fed. R. Civ. P. 26(b)(l), documents are discoverable if they are not privileged and

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"relevant to any party's claim or defense" or "reasonably calculated to lead to the discovery of

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admissible evidence." A court may quash an otherwise relevant subpoena for several enumerated

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reasons, such as: (1) if the subpoena "requires disclosure of privileged or other protected matter,

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if no exception or waiver applies," (2) ifthe subpoena "requires disclos[ ure of] a trade secret or

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other confidential research, development, or commercial information," or (3) if the subpoena

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"subjects a person to undue burden." Fed. R. Civ. P. 45(c)(3)(A)(iii)-(B)(i). The burden is on the

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I The Court takes judicial notice of the CM/ECF docket of the Wisconsin Federal District CourtWestern District. See Fed. R. Evid. 201 (b)(2).

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12cv566-WQH (WMc)

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party resisting discovery to demonstrate that discovery should not be permitted. Fed. R. Civ. P.

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26(b).

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Analysis
Based on the commencement of trial and jury findings in the underlying action, the Court

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concludes the subpoenas at issue here ar~ no longer relevant to the determination of the

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underlying action. Although the Wisconsin District Court has not yet entered final judgment in

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the action and several post-trial motions are pending, the discovery sought by Rockwell's

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subpoenas here does not appear to be relevant to the Wisconsin Court's determination of the

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post-trial motions. Because the testimony sought is not relevant to the determination of the

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underlying action, subjecting non-party Mr. Sparrvik or any of the non-party Kontron entities to a

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deposition or document production would impose upon them an unnecessary, unfair, and undue

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burden.

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Accordingly, Thomas Sparrvik's motion to quash is GRANTED and Rockwell's cross-

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motion to enforce the subpoena is DENIED as moot.

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IT IS SO ORDERED.

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DATED: January 7, 2013

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Hon. William McCurine, Jr.
U.S. Magistrate Judge, U.S. District Court

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12cv566-WQH (WMc)