EIDOS DISPLAY, LLC et al v. CHUNGHWA PICTURE TUBES LTD.
Filing
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MEMORANDUM OPINION. Signed by Judge Emmet G. Sullivan on July 25, 2013. (lcegs1)
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
EIDOS DISPLAY, LLC,
EIDOS III, LLC, GARY RUBLOFF,
Petitioners,
v.
CHUNGHWA PICTURE TUBES, LTD.,
Respondent.
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) Misc. Action No. 12-625 (EGS)
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MEMORANDUM OPINION
Pending before the Court is a Motion by Eidos Display LLC,
Eidos III, LLC, and Gary Rubloff (collectively, “Eidos” or
“Plaintiffs”) for an Order Precluding Discovery Sought in a Third
Party Subpoena or, in the Alternative, Limiting Discovery
(hereinafter “Eidos’ Mot.”); Defendant Chunghwa Picture Tubes,
Ltd.’s (hereinafter “CPT” or “Defendant”) Opposition to the
Motion; and Plaintiffs’ Reply to the Opposition.
Plaintiffs
filed this motion to prevent the deposition of Dr. Gary Rubloff,
who they contend is a non-testifying expert not subject to
discovery pursuant to Federal Rule of Civil Procedure
26(b)(4)(D).
The motion arises out of an underlying patent
infringement action regarding U.S. Patent No. 5,879,958
(hereinafter the “‘958 Patent”) filed in April 2011 in the United
States District Court for the Eastern District of Texas by Eidos
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against seven defendants, including CPT.
For the reasons
explained below, the motion will be GRANTED.
I.
Background
In April 2011, Eidos filed the underlying patent
infringement suit in Texas.
See Eidos’ Mot. at 1.
Two months
later, in June 2011, a Reexamination Proceeding regarding the
‘958 Patent was initiated at the U.S. Patent and Trademark Office
(hereinafter “USPTO”) with an ex parte request asserting that
certain prior art references rendered the ‘958 Patent not
patentable.
Id. at 3.
Dr. Rubloff acted as an expert witness
for Eidos in the Reexamination Proceeding.
Id. at 4.
On
February 24, 2012, Eidos submitted a declaration by Dr. Rubloff
in the Reexamination Proceeding regarding his opinions
“concerning ‘certain technical aspects of manufacturing liquid
crystal displays.’”
Declaration, at
Id. (quoting Eidos’ Mot., Exhibit H, Rubloff
2).
As part of the underlying patent case in Texas the parties
were to identify extrinsic evidence they intended to use in claim
construction proceedings by September 14, 2012, including expert
declarations.
Id. at 2.
Eidos did not identify any extrinsic
evidence, nor did it submit any expert declarations at that time.
Id.
On September 28, 2012, the parties disclosed intrinsic
evidence to be presented in claim construction proceedings in a
Joint Claim Construction Statement (hereinafter “JCCS”),
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including the prosecution history of the ‘958 Patent.
Id.
Eidos
identified sections of the patent in the JCCS, as well Dr.
Rubloff’s Declaration from the Reexamination Proceeding.
Eidos
also made one reference to Dr. Rubloff’s Declaration in the
Reexamination Proceeding in its opening claim construction brief
as a “see also” citation to a background issue.1
Id. at 5.
Unlike the one background citation to the Declaration in Eidos’
brief, CPT included multiple citations to Dr. Rubloff’s
Declaration in its claim construction brief.
13-14.
See Eidos’ Reply at
Finally, on January 31, 2013, the parties were required
to identify any experts who would testify at the claim
construction hearing - no party identified any experts.
3.
Id. at
The parties were not required to identify testifying experts
(except for the purposes of the claim construction proceedings)
until April 1, 2013.
Id.
On October 15, 2012, CPT informed Eidos that it intended to
depose Dr. Rubloff despite the fact that he had not been
identified as a claim construction expert.
To that end, CPT
served Dr. Rubloff with a subpoena on October 18, 2012.
1
The
Eidos’ claim construction brief cites to Figure 169 of the ‘958
Patent and then cites to one paragraph of Dr. Rubloff’s Declaration
from the Reexamination Proceeding, which confirms what is in Figure
169. See Eidos’ Mot. at 5. Specifically, in that paragraph, “Dr.
Rubloff discusses: (1) that one of ordinary skill in the art would
understand that the gate wiring connection terminal is used for an
electrical connection between the gate wiring and the scanning
circuit, as shown in Figure 169 of the ‘958 Patent; and (2) the use of
distinct contact holes for gate wiring and gate wiring connection
terminals.” Id. at 5, n. 1.
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subpoena also called for the production of a wide variety of
documents, including drafts of Dr. Rubloff’s Declaration.
Id.
After noting that Dr. Rubloff was not available on October 30,
the date CPT had proposed for his deposition, Eidos explained
that it was not relying on claim construction experts and “agreed
that it would not rely . . . upon the intrinsic evidence in the
Rubloff declaration [] to avoid unnecessary disputes regarding
expert discovery.”
proposal.
Id. at 6.
CPT did not agree to this
The parties went back and forth several times
regarding the scheduling and scope of Dr. Rubloff’s deposition,
eventually settling on November 29, 2012 in Washington, D.C.
Id.
at 7; CPT Opposition to Eidos’ Motion (hereinafter “CPT Opp’n”)
at 5-6.
Ultimately, Eidos and CPT were unable to resolve their
issues and Eidos filed the instant motion.
8-9; CPT Opp’n at 5-6.
See Eidos’ Mot. at
As of the filing of the instant motion,
Dr. Rubloff had not yet been deposed.
II.
Legal Standard
A.
Motion for a Protective Order
Pursuant to Rule 26(c), a “party or any person from whom
discovery is sought may move for a protective order . . . on
matters relating to a deposition, in the court for the district
where the deposition may be taken.”
Upon such a motion, the
“court may, for good cause, issue an order to protect a party or
person from annoyance, embarrassment, oppression, or undue burden
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or expense, including . . . forbidding inquiry into certain
matters, or limiting the scope of disclosure or discovery to
certain matters.”
Fed. R. Civ. P. 26(c).
If the court decides
to grant a protective order, it may “limit the conditions, time,
place, or topics of discovery.”
Burka v. U.S. Dep’t of Health
and Human Servs., 87 F.3d 508, 518 (D.C. Cir. 1996).
The party requesting the protective order bears the burden
of demonstrating that good cause for such an order exists. See
United States v. Kellogg Brown & Root Servs., Inc., 285 F.R.D.
133, 134 (D.D.C. 2012); Alexander v. F.B.I., 186 F.R.D. 71, 75
(D.D.C. 1998).
Indeed, the moving party “has a heavy burden of
showing extraordinary circumstances based on ‘specific facts’
that would justify an order.”
Kellogg Brown, 285 F.R.D. at 135
(internal citations omitted).
In determining whether a discovery
request imposes an undue burden, the court must “balance the
party’s need for the discovery against the potential hardship to
the subject of the subpoena.”
Achte/Neunte Boll Kino
Beteiligungs GmbH & Co. KG v. Doe, 736 F. Supp. 2d. 212, 214
(D.D.C. 2010) (citing Alexander, 186 F.R.D. at 75); see also Doe
v. Provident Life & Accident Ins. Co., 247 F.R.D. 218, 221
(D.D.C. 2008).
The Court must then weigh the burden to the
moving party against the requestor’s need for, and relevance of,
the information sought.
See Doe, 247 F.R.D. at 221.
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B.
Consulting Expert Immunity
Rule 26(b)(4)(D) provides that “a party may not, by
interrogatories or deposition, discover facts known or opinions
held by an expert who has been retained or specially employed by
another party in anticipation of litigation or to prepare for
trial and who is not expected to be called as a witness at
trial.”
There are four commonly stated policy considerations
underlying the rule:
(1) the interest in allowing counsel to obtain the expert
advice they need in order [to] properly evaluate and present
their clients’ positions without fear . . . ; (2) the view
that each side should prepare its own case at its own
expense; (3) the concern that it would be unfair to the
expert to compel its testimony and also the concern that
experts might become unwilling to serve as consultants if
they suspected their testimony would be compelled; and (4)
the risk of prejudice to the party who retained the expert
as a result of the mere fact of retention.
United States ex rel. Westrick v. Second Chance Body Armor, Inc.,
288 F.R.D. 222, 227-28 (D.D.C. 2012) (quoting Long Term Capital
Holdings, L.P. v. United States, No. 01-CV-1290, 2003 U.S. Dist.
LEXIS 14579, at * 2 (D. Conn. May 6, 2003)).
To bypass the protection afforded by Rule 26(b)(4)(D), a
party must demonstrate “exceptional circumstances under which it
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is impracticable for [it] to obtain facts or opinions on the same
subject by any other means.”
Rule 26(b)(4)(D)(ii).
Such
exceptional circumstances may exist “when a non-testifying
expert’s report is used by a testifying expert as the basis for
an expert opinion, or where there is evidence of substantial
collaborative work between a testifying expert and a
non-testifying expert.”
citations omitted).
Westrick, 288 F.R.D. at 228 (internal
A party may also demonstrate that
exceptional circumstances warrant discovery from a non-testifying
expert when “(1) the object or condition observed by the
non-testifying expert is no longer observable by an expert of the
party seeking discovery or (2) although it is possible to
replicate expert discovery on a contested issue, the cost of
doing so is justifiably prohibitive.”
Fast Memory Erase LLC v.
Spansion, Inc., No. 3-08-CV-0977-M, 2009 U.S. Dist. LEXIS 117462,
at *9 (N.D. Tex. Dec. 16, 2009) (internal citations omitted).
III. Discussion
In its motion, Eidos sets forth in detail its argument that
it has good cause for seeking a protective order in this case.
Eidos argues that Dr. Rubloff has been retained in the underlying
patent action as a non-testifying expert; therefore, he is not
subject to a deposition pursuant to Rule 26(b)(4)(D).
Mot. at 10.
See Eidos’
Eidos contends that there are no “exceptional
circumstances” that would warrant an exception to the rule in
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this particular case.
In seeking to depose Dr. Rubloff, Eidos
claims that CPT is attempting to circumvent the immunity afforded
by the rule to “pursue issues for later arguments concerning
invalidity or non-infringement defenses.”
Id. at 13.
Indeed,
Eidos argues that Dr. Rubloff did not even apply claim
construction standards in coming to any conclusions stated in his
Declaration and instead assumed “that in the context of the
Reexamination, the claim will be given its broadest reasonable
interpretation.”
Id. at 4.
Eidos suggests that a deposition and
document production at this time “would be extremely prejudicial
. . . as CPT might attempt to use the undiscoverable consulting
opinions against Eidos to manufacture arguments regarding the
merits or defenses.”
Id. at 13.
In opposition, CPT argues that it has the “right to depose
Dr. Rubloff because Eidos put his declaration at issue in the
Patent Case” and that “Dr. Rubloff is no different than any other
declarant who would be subject to deposition.”
CPT Opp’n at 7.
Specifically, CPT claims that by identifying and attaching the
declaration that Dr. Rubloff made in the Reexamination Proceeding
as support for its claim construction position in the JCCS, and
then later to its opening claim construction brief, Eidos has
waived the protections of Rule 26(b)(4)(D).
Id. at 7-8.
Nowhere
in its opposition does CPT acknowledge that it also cited to Dr.
Rubloff’s Declaration in its claim construction brief.
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CPT
maintains that any issues that may arise from its subpoena are
premature because it has already agreed to limit the scope of Dr.
Rubloff’s deposition to claim construction issues.2
10-11.
CPT Opp’n at
Finally, CPT suggests with respect to any remaining
issues, the Court should transfer this action to the Eastern
District of Texas, where the underlying patent action is pending.
Id. at 13.
The Court finds that Eidos has established good cause for
seeking a protective order because as it contends, and as CPT
does not dispute, Dr. Rubloff is a non-testifying expert in the
patent suit.
The Court does not agree with CPT’s argument that
Eidos has waived immunity, and that Dr. Rubloff is therefore
subject to a deposition and document discovery.
Specifically,
the Court finds that while it is unclear whether Rule 26(b)(4)(D)
is even subject to waiver, the general trend in other districts
has been to find that it is not.3
For example, in Fast Memory
Erase, LLC v. Spansion, Inc., the court found that plaintiff had
2
Prior to the filing of the instant motion, the parties engaged
in extensive discussions regarding the scope of any potential
deposition of Dr. Rubloff. Though they were ultimately unable to
reach an agreement, the parties narrowed the scope of the deposition
and provisionally agreed that any questioning would be limited to
claim construction issues only. They were not able to agree as to the
extent of any privilege that Eidos could assert during the deposition
or the extent to which the deposition would be applicable to issues
other than claim construction. See Eidos’ Mot. at 14-15; CPT Opp’n.,
Ex. 2.
3
Many of the cases cited herein reference Rule 26(b)(4)(B),
which was later renumbered “(D)” and “(E).” See Fed. R. Civ. P. 26
(2010 Amendments).
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not waived the protections of the rule by relying on and
attaching selected portions of an expert report as background
materials to a claim construction brief.
117462, at *11-13.
2009 U.S. Dist. LEXIS
Though plaintiff, like Eidos, had attached
the materials to its preliminary contentions, the court held that
plaintiff had not actually relied on them for any proposed claim
construction.
The contentions were preliminary and meant to
provide notice to the accused party, and as such they were “not
evidence,” no matter how detailed.
Id. at 12.
Moreover, even
though plaintiff had used the same materials at a claim
construction hearing, they were used as demonstrative aids, and
thus had no probative value.
Id.
Several other courts that have confronted the issue have
held the same.
In Plymovent Corp. v. Air Tech. Solutions, the
court affirmed the decision of a magistrate judge finding that
even though plaintiff had submitted a video of an interview with
an expert and the expert’s report in support of a preliminary
injunction application, it had not waived non-testifying expert
immunity.
243 F.R.D. 139, 146 (D.N.J. 2007).
At the preliminary
injunction hearing, plaintiff decided to withdraw the expert
report and subsequently relayed to defendant that it did not
intend for the expert to testify.
Id. at 142.
Nevertheless,
defendant served plaintiff with a subpoena requesting several
types of documents prepared by the expert.
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Id.
The magistrate
judge ruled, and the district court affirmed, that there had been
no waiver because plaintiff’s expert had not testified at the
preliminary injunction hearing, and therefore, the court did not
give the expert report and interview “any weight” in ruling on
the preliminary injunction.
Id. at 144.
Under those
circumstances, the court affirmed the holding that there had been
no waiver, and absent any showing of exceptional circumstances,
the expert was immune from discovery.
Id. 146-147.
See also
Hansen Bev. Co. v. Innovation Ventures, LLC, No. 08-CV-1166-IEG,
2010 U.S. Dist. LEXIS 38635, at *6-8 (S.D. Cal. April 20, 2010)
(upholding order of a magistrate judge denying a request to
depose a non-testifying expert where defendant attached the
expert’s declaration to an opposition to a motion for preliminary
injunction because plaintiff had failed to make a showing of
exceptional circumstances to warrant discovery); Intervet, Inc.
v. Merial Ltd., No. 8:07CV194, 2007 U.S. Dist. LEXIS 44970, at
*4-5 (D. Neb. June 20, 2007) (holding that there had been no
waiver where plaintiff filed the non-testifying expert’s
declaration in a separate, but related, action in another
jurisdiction with the same parties).
The Court elects to follow
this line of cases in the instant matter, especially given the
limited extent of Eidos’ reliance on Dr. Rubloff’s Declaration in
its preliminary claim construction brief.
Notably, CPT does not cite to any cases to support its
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argument that Eidos has waived the protections of Rule
26(b)(4)(D).
While there is contrary authority that suggests
that the protections afforded by Rule 26(b)(4)(D) are subject to
waiver, the Court finds that these cases do not call for waiver
in the precise circumstances presented here.
For instance, in
Atari Corp. v. Sega of America, the court held that by
voluntarily providing a videotape of a non-testifying expert’s
interview to the opposing party during a settlement negotiation,
the producing party had waived the protections of Rule
26(b)(4)(B).
161 F.R.D. 417, 418-20 (N.D. Cal. 1994).
After it
disclosed the interview during settlement talks, defendant
repeatedly agreed that the videotape was a “product of discovery”
in the case.
Id. at 419-420.
Additionally, the expert in
question was the inventor of the patent and a former employee of
the plaintiff, who the defendant retained after the suit
commenced.
Id. at 419.
The court held that there had been
waiver, but limited the deposition to topics covered in the
interview, or to facts or opinions that the expert held prior to
being retained by defendant.
Id. at 420-422.
See also United
States v. Hooker Chemicals & Plastics Corp., 112 F.R.D. 333, 339
(W.D.N.Y. 1986) (noting that “when a party offers an affidavit of
an expert witness in opposition to, or in support of a motion for
summary judgment, it waives its right not to have the deposition
of said expert taken”); Hartford Fire Ins. Co. v. Pure Air, 154
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F.R.D. 202, 211-12 (N.D. Ind. 1993) (finding generally that the
rule is subject to waiver even while holding that in the case
presented defendant had not waived non-testifying expert immunity
by issuing a press release concerning conclusions reached by a
non-testifying expert).
Given the uncertain state of the law with respect to waiver
and Rule 26(b)(4)(D), the Court finds that to the extent that
Eidos has waived anything, it has only waived Dr. Rubloff’s
Declaration itself.
See Hartford Fire, 154 F.R.D. at 211
(finding that only the information disclosed was waived). As
Eidos argues in its motion, it believes that CPT intends to use
Dr. Rubloff’s deposition as an avenue to question him regarding
merits defenses rather than strictly for claim construction
purposes.
It would be improper for the Court to allow CPT to
reap the benefit of Eidos’ work with its own non-testifying
expert to that extent, especially where CPT is the party that has
primarily brought that expert’s work into the case at this stage.
See Eidos’ Reply at 13-14.
CPT could easily have retained its
own expert for the claim construction proceedings.
Indeed,
protecting the trial preparation work of each party is one of the
main justifications for the rule prohibiting depositions of
non-testifying experts.
227-28.
See, e.g., Westrick, 288 F.R.D. at
And, because Dr. Rubloff is not testifying at trial,
barring his deposition at this time will not prejudice CPT as it
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does not have to prepare for his eventual cross examination.
See
Hansen Bev. Co., 2010 U.S. Dist. LEXIS 38635, at *8-9 (“The Court
also agrees with the finding that Hansen will not be prejudiced
by the Court’s disallowance of [the non-testifying expert’s]
deposition . . . [because she] will not testify at trial, and
therefore there is no need to depose her in preparation for cross
examination.”).
Upon learning that CPT intended to depose Dr. Rubloff on
claim construction issues, Eidos offered to delete the citation
to his Declaration and delete the attachment from its opening
brief.
See Eidos’ Mot. at 6; Eidos’ Reply at 8-9, 15.
That CPT
refused to agree to that compromise suggests that its purpose in
seeking to depose Dr. Rubloff at this juncture has more to do
with probing him on invalidity and non-infringement issues than
with claim construction, as those issues are what his Declaration
largely concerns.
See Eidos’ Reply at 17-18.
Because the Court
finds that to the extent that there has been any waiver, it is
very limited, and because CPT has failed to make a showing of
exceptional circumstances, the Court grants Eidos’ motion and
orders that CPT cannot depose Dr. Rubloff at this time.
The
Court also finds that CPT’s document requests are overbroad, and
grants Eidos’ motion with respect to them.
See Plymovent Corp.,
243 F.R.D. at 146 (holding that because plaintiff had not waived
non-testifying expert immunity, defendant could not discover
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documents absent a showing of exceptional circumstances, which it
had failed to make).
CPT cannot circumvent non-testifying expert
immunity by attempting to expand the waiver argument
unreasonably, especially where it has made no effort to establish
exceptional circumstances to justify the discovery it seeks.
IV.
Conclusion
For the reasons explained herein, Eidos’ motion is GRANTED.
An appropriate order accompanies this Memorandum Opinion.
SO ORDERED.
Signed:
EMMET G. SULLIVAN
UNITED STATES DISTRICT JUDGE
JULY 25, 2013
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