Trueposition, Inc v. Polaris Wireless, Inc.

Filing 8

ORDER denying 2 Non-Party Mark D. Carleton's Motion for Protective Order and to Quash Deposition Subpoena, as set forth in the order, by Magistrate Judge Michael J. Watanabe on 5/16/2013.(mjwcd)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO

Civil Action No. 13-cv-01042-PAB-MJW
TRUEPOSITION, INC.,
Plaintiff(s),
v.
POLARIS WIRELESS, INC.,
Defendant(s).

ORDER REGARDING
NON-PARTY MARK D. CARLETON’S MOTION FOR PROTECTIVE ORDER AND TO
QUASH DEPOSITION SUBPOENA (DOCKET NO. 2)

Entered by Magistrate Judge Michael J. Watanabe

This matter is before the court on a discovery dispute related to a Patent
Infringement case captioned TruePostion, Inc. v. Polaris Wireless, Inc., filed in the
United States District Court for the District of Delaware under case no. 12-CV-00646UNA. The subject motion before this court for consideration and ruling is Non-Party
Mark D. Carleton’s Motion for Protective Order and to Quash Deposition Subpoena
(docket no. 2). The court has reviewed the subject motion (docket no. 2) and the
response by Defendant Polaris Wireless, Inc. (docket no. 7). In addition, the court has
taken judicial notice of the court’s file and the District of Delaware case listed above and
has considered applicable Federal Rules of Civil Procedure and case law. The court
now being fully informed makes the following findings of fact, conclusions of law, and

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order.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
The court finds:
1.

That I have jurisdiction over the subject matter and over the parties
to this dispute;

2.

That venue is proper in the state and District of Colorado;

3.

That each party has been given a fair and adequate opportunity to
be heard on the subject motion (docket no. 2);

4.

That the underlying ‘299 Patent Infringement lawsuit is filed in the
United States District Court for the District of Delaware under case
no. 12-CV-00646-UNA. In the ‘299 Patent Infringement case,
Plaintiff TruePosition, Inc. [hereinafter Plaintiff TruePosition] seeks
the following relief:
a.

Permanently enjoining Polaris, and those in active concert
with Polaris, from further infringement on the ‘299 Patent;

b.

Declaring that Polaris has directly infringed and is directly
infringing the ‘299 Patent;

c.

Declaring that Polaris has indirectly infringed and is indirectly
infringing the ‘299 Patent;

d.

Awarding TruePosition damages adequate to compensate
TruePosition for Polaris’s direct and indirect infringement,
but in no event less than a reasonable royalty for Polaris’s
use of the patented invention, together with prejudgment and

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post-judgment interest and costs, as fixed by the Court and
as provided in 35 U.S.C. § 284;
e.

Declaring that this is an exceptional case under 35 U.S.C. §
285 and awarding treble damages against Polaris, as
provided by 35 U.S.C. § 284;

f.

Awarding TruePosition its attorneys’ fees incurred in
prosecuting this action against Polaris, as provided by 35
U.S.C. § 285; and

g.

Awarding TruePosition such other relief as the Court deems
just and proper. See District of Delaware Complaint Prayer for Relief section - attached to the subject motion
(docket no. 2).

That the relief sought by Plaintiff TruePosition seeks a very
substantial damage award, including treble damages, attorney’s
fees, costs, pre-judgment, and post-judgment interest.
5.

That the Non-Party Mark D. Carleton [hereinafter Non-Party] lives
in Colorado and is neither an officer nor an employee of Plaintiff
TruePosition. He is a senior Vice President of TruePosition’s
parent company, Liberty Media Corporation [hereinafter Liberty
Media], and chairman of TruePosition’s board of directors;

6.

That the Non-Party argues that the court should not allow
Defendant Polaris Wireless, Inc. [hereinafter Defendant Polaris] to
depose him under the “apex” doctrine because: (1) he lacks

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personal and unique knowledge of the facts of this case and
matters relating to this case. He has limited, indirect, and nonunique information regarding the subjects listed in the subpoena
that was served upon him by Defendant Polaris. He has no unique
or personal knowledge of the patent in question in this lawsuit, the
products involved with such patent, or any of the issues involved in
this lawsuit; (2) Defendant Polaris has not sought the discovery of
the topics listed the subpoena served upon the Non-Party from
lower-level corporate employees of Plaintiff TruePosition.
Defendant could depose other lower-level corporate employees of
Plaintiff TruePostion who have knowledge of the topics listed in the
subpoena served upon the Non-Party. These other lower-level
corporate employees are Michael Hoppman, Chief Financial
Officer; Robert Anderson, Chief Technology Officer; David Curran,
a Director of Internal Operations; Brian Bolan, a Director of Product
Line Management; and David McHoul, a Marketing Manager; (3)
the deposition requested of the Non-Party is being used to harass
the Non-Party; and (4) the Non-Party was not listed in any of the
Rule 26(a)(1) disclosures;
7.

Defendant Polaris argues that the Non-Party has unique personal
knowledge regarding matters relevant to the underlying litigation,
including purported loss-profit damage and objective indicia of
patent non-obviousness information. In addition, Defendant

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Polaris argues that the Non-Party has had mulitple communications
with Defendant Polaris CEO Manlio Allegra wherein the Non-Party
confirmed that he was, and is, responsible for Plaintiff
TruePosition’s business within its parent company, and for all
strategic decisions at Plaintiff TruePosition, including independent
decisions regarding mergers and acquisitions and general
corporate strategy. See affidavit of Allegra attached to the
Response (docket no. 7).;
8.

Courts have broad authority to enter protective orders upon a
showing of good cause “to protect a party or a person from
annoyance, embarrassment, oppression, or undue burden or
expense . . . .” Fed. R. Civ. P. 26(c).

Applying the Rule 26(c) standard, the United States Court of
Appeals for the Tenth Circuit affirmed the issuance of a protective
order of a high-level corporate official in the case of Thomas v.
International Business Machines, 48 F.3d 478, 483 (10th Cir. 1995).
In that case, the Tenth Circuit relied on the following facts in
upholding the protective order: (1) the deposition imposed “severe
hardship” on the deponent, (2) the reasons for the deposition were
of little relevance to the plaintiff’s lawsuit, (3) the deponent lacked
personal knowledge about the plaintiff, (4) nothing in the record
demonstrated that the defendant failed to make individuals with

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knowledge available, and (5) the last-minute nature of the
deposition. Id. at 483-84. On the other hand, there is case law that
states that highly-ranking executives are not immune from
discovery. The fact that an executive has a busy schedule cannot
shield that witness from being deposed. Six West Retail
Acquisition, Inc., v. Sony Theatre Management Corp., 203 F.R.D.
98, 102 (S.D.N.Y. 2001); and
9.

That the Non-Party has demonstrated that he has substantial duties
in his position as a senior Vice President of TruePosition’s parent
company, Liberty Media, and as chairman of TruePosition’s board
of directors. There is always an argument that all high-level
executives are busy, just like trial lawyers and trial judges could
argue that we are always busy. However, in this case, there are
conflicting affidavits that have been presented to this court by the
Non-Party and Defendant Polaris concerning the subject motion.
These affidavits are in direct conflict as to the level of involvement,
knowledge, and relevant information that the Non-Party possesses
concerning material disputed issues in the lawsuit. Plaintiff has
offered other lower-level employees, as listed above in paragraph
6, to respond to those topics as outlined the subpoena served upon
the Non-Party. At this point, according to the moving papers, no
depositions of these lower-level corporate employees have been
taken. In balance, I conclude that the discovery process is

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designed to narrow the dispute issues in a case, and the deposition
of the Non-Party will assist in narrowing the disputed issues in this
case. Defendant Polaris has demonstrated that the Non-Party has
unique and relevant information that may lead to admissible
evidence at trial on the those topics as outlined in the subpoena
that was served upon the Non-Party. The hardship to the NonParty to have his deposition taken is outweighed by the need for
this discovery. I note that the Non-Party resides in Colorado, and
the deposition should take place in Colorado where the Non-Party
resides. Further, the parties could schedule the Non-Party’s
deposition on a weekend in order to minimize any impact on the
Non-Party from his duties as the senior Vice President of
TruePosition’s parent company, Liberty Media, and as chairman of
TruePosition’s board of directors.
ORDER
WHEREFORE, based upon these findings of fact and conclusions of law this
court ORDERS:
1.

That the Non-Party Mark D. Carleton’s Motion for Protective Order
and to Quash Deposition Subpoena (docket no. 2) is DENIED. The
parties shall forthwith set a date, time, and location for the NonParty Mark D. Carleton consistent with D.C.COLO.LCivR 30.1, Fed.
R. Civ. P 30, and Fed. R. Civ. P. 45. The parties should work with

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Mr. Carleton’s calendar to try to minimize the impact upon him and,
if necessary, set his deposition on a weekend if requested by the
Non-Party Mr. Carleton. The location of the Non-Party Mr.
Carleton’s deposition shall take place in Colorado unless otherwise
agreed to among the parties and the Non-Party Mr. Carleton; and
2.

That each party and Non-Party Mark D. Carleton shall pay their
own attorney fees and costs for this motion.

Done this 16th day of May 2013.

BY THE COURT

s/Michael J. Watanabe
MICHAEL J. WATANABE
U.S. MAGISTRATE JUDGE