Kimera Labs Inc v. Jayashankar et al

Filing 259

ORDER Following Motion Hearing on May 8, 2024. Motion Hearing set for 5/29/24 at 8:30 AM before Magistrate Judge David D. Leshner. Signed by Magistrate Judge David D. Leshner on 5/9/24. (aas)

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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KIMERA LABS INC,

Case No.: 21-cv-2137-MMA-DDL
Plaintiff,

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v.

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EXOCEL BIO INC., et al.,

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ORDER FOLLOWING MOTION
HEARING ON MAY 8, 2024
[Dkt. Nos. 233, 235]

Defendants.

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On May 8, 2024, the Court heard oral argument on multiple discovery-related

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motions. Having considered the parties’ briefing and the arguments of counsel, the Court

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GRANTS Defendants’ motion to compel deposition testimony [Dkt. No. 233] and

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DENIES Plaintiffs’ motions for leave to serve third party subpoenas and to compel

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production of financial information [Dkt. No. 235] as set forth below:

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Plaintiff’s Motions (Dkt. No. 235)
Motion for Leave to Serve Third Party Subpoenas

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For the reasons stated on the record at the May 8 hearing, the Court DENIES

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Plaintiff’s motion to for leave to serve additional third party subpoenas. Plaintiff’s counsel

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clarified at the motion hearing that Plaintiff seeks to issue seven third party subpoenas;

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however, the motion does not describe why Plaintiff believes each of these third parties

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have information that is relevant to a claim or defense or what specific information Plaintiff

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would seek through the subpoenas.

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Plaintiff’s counsel clarified at the hearing that the proposed subpoenas seek

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documents exchanged between Defendants and the third parties, but Plaintiff has not

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sought leave to propound additional requests for production on Exocel Bio. See Fed. R.

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Civ. P. 26(b)(2)(C)(i) (court must limit the extent of discovery otherwise allowed if “the

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discovery sought is unreasonably cumulative or duplicative, or can be obtained from some

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other source that is more convenient, less burdensome, or less expensive”); Nidec Corp.

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v. Victor Co. of Japan, 249 F.R.D. 575, 577 (N.D. Cal. 2007) (“There is simply no reason

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to burden nonparties when the documents sought are in possession of the party

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defendant.”); Amini Innovation Corp. v. McFerran Home Furnishings, Inc., 300 F.R.D.

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406, 410 (C.D. Cal. 2014) (“A court may prohibit a party from obtaining discovery from a

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non-party if that same information is available from another party to the litigation.”)

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(citation omitted).

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As discussed at the hearing, the Court will allow each side to propound up to ten
requests for production (“RFPs”) as follows:

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Both sides must serve their RFPs by not later than May 13, 2024.

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The parties must meet and confer regarding the RFPs by not later than May 15,

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2024.

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If there are any outstanding objections to any RFPs following the meet and confer,

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the parties must file a joint motion for determination of discovery dispute by not later than

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May 20, 2024. The joint motion shall consist of a chart containing the text of the disputed

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discovery response and each party’s position (in one or two sentences) regarding the RFP.

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The Court will hold a motion hearing to resolve any disputes on May 29, 2024, at

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8:30 a.m. via Zoom.

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Motion to Compel Production of Financial Documents

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For the reasons stated at the May 8 hearing, the Court DENIES Plaintiff’s motion

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to compel production of financial documents. Defendants have produced Exocel Bio’s
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general ledger for 2021 and 2022, and they will produce the 2023 general ledger promptly

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when it is finalized on or before September 1, 2024. Exocel Bio will prepare an exhibit for

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its Rule 30(b)(6) deposition that contains the attorney’s fees expenses reflected in the

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general ledger and a separate figure showing the fees incurred by Exocel Bio in defending

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this litigation. The Court DENIES Plaintiff’s request to require Exocel Bio to provide

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redacted attorney invoices for this litigation.
Defendants’ Motion to Compel Deposition Testimony (Dkt. No. 233)

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For the reasons stated on the record at the May 8 hearing, the Court GRANTS
Defendants’ motion to compel deposition testimony.

At the deposition of Maryel

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Gonzalez-Perez, Plaintiff’s Chief Regulatory Officer, Plaintiff’s counsel instructed the

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deponent not to answer multiple questions on the grounds of “trade secret privilege.”

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“Questions of privilege that arise in the course of the adjudication of federal rights are

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governed by the principles of the common law as they may be interpreted by the courts of

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the United States in the light of reason and experience.” United States v. Zolin, 491 U.S.

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554, 562 (1989) (citing Fed. R. Evid. 501). Federal privilege law applies here because

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Plaintiff asserts violations of the federal Defend Trade Secrets Act, 18 U.S.C. § 1836, et

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seq.

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Plaintiff’s authorities do not support the existence of a federal “trade secret

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privilege” per se. See Terry v. Register Tapes Unlimited, Inc., 2:16-CV-0806-WBSAC,

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2017 WL 3226867, at *3 (E.D. Cal. July 31, 2017) (applying California state law trade

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secret privilege). Rather, the issue is whether defense counsel’s questions regarding

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changes to Kimera Labs’ exosome manufacturing processes from 2019 to the present seek

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information that is relevant to a claim or defense and proportional to the needs of the case

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under Fed. R. Civ. P. 26(b). The Court concludes that questions regarding changes in the

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“Kimera Process” seek information that is relevant to the existence of a trade secret, the

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value of the trade secret, and the appropriate scope of injunctive relief if Plaintiff were to

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prevail on its trade secret misappropriation claim.

The information sought is also

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proportional to the needs of the case and can be gathered through Ms. Gonzalez-Perez’s

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deposition.

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The Court is mindful of Plaintiff’s concerns with providing additional information

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regarding its trade secrets; however, the parties agreed that Plaintiff may designate such

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testimony as “CONFIDENTIAL-FOR COUNSEL ONLY” under the protective order.

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Dkt. No. 124.

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IT IS SO ORDERED.
Dated: May 9, 2024

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Hon. David D. Leshner
United States Magistrate Judge

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