XY, LLC v. TRANS OVA GENETICS, L.C.

Filing 18

MEMORANDUM OPINION AND ORDER re: 1 MOTION to Quash SUBPOENA FOR DOCUMENTS AND DEPOSITION OF 30(B)(6) WITNESS AND ALTERNATIVELY FOR A PROTECTIVE ORDER and 9 MOTION to Transfer Case; it is hereby ORDERED that Plaintiff XY, LLCs Motion to Transfer Th ird Party Intrexon Corp.s Motion to Quash Subpoena for Documents and Deposition of 30(B)(6) Witness and Alternatively for a Protective Order [ECF No. 9] is GRANTED. It is further ORDERED that Intrexons Motion to Quash Subpoena for Documents and Deposition of 30(B)(6) Witness and Alternatively for a Protective Order [ECF No. 1] shall be transferred to the U.S. District Court for the District of Colorado. Signed by Judge Christopher R. Cooper on 9/10/2014. (tcr)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
XY, LLC,
Plaintiff,
Case No. 1:14-mc-00778 (CRC)

v.
TRANS OVA GENETICS, L.C.,
Defendant,
INTREXON CORPORATION,
Third Party Movant.

OPINION AND ORDER
Before the Court is Plaintiff XY, LLC’s Motion to Transfer Third Party Intrexon Corp.’s
Motion to Quash Subpoena for Documents and Deposition of 30(B)(6) Witness and Alternatively
for a Protective Order. Upon consideration of the motion, the opposition and reply thereto, and
after consultation with the U.S. District Court for the District of Colorado, where the underlying
litigation is pending, the Court will grant XY’s motion.
I.

Background

Plaintiff XY, LLC, and Defendant Trans Ova Genetics, L.C., are involved in a large and
complex patent infringement suit in the U.S. District Court for the District of Colorado (the
“Colorado Court”). XY, LLC v. Trans Ova Genetics L.C., No. 1:13-cv-00876 (D. Colo.). XY
contends in the suit that Trans Ova infringed upon its patents for separated sperm cells in livestock,
which are used to control the gender of livestock offspring. Intrexon’s Mot. to Quash 3. Trans Ova
counterclaims that XY has violated the antitrust laws by monopolizing the U.S. market “for

technology relating to the sorting of non-human, mammalian semen by sex.” Id. at 4. The
Colorado Court is currently considering motions for summary judgment.
XY has served a third-party subpoena on Intrexon Corp., a large Virginia corporation
headquartered in Maryland that has entered into an agreement to acquire Trans Ova. The subpoena
primarily seeks documents related to Hart-Scott-Rodino Act filings associated with the proposed
acquisition. Intrexon’s Mem. in Supp. of Mot. to Quash Ex. 1. The Colorado Court has extended
the discovery deadline in the case to enable XY to attempt to obtain the subpoenaed materials. XY,
LLC, ECF. No. 222. Intrexon has moved this Court to quash the subpoena, arguing that it does not
possess the requested documents and that, in any event, the subpoena calls for trade secrets and
other proprietary and privileged information.
XY has responded with a motion under Federal Rule of Civil Procedure 45(f) to transfer the
dispute to the District of Colorado, where the underlying litigation is pending. It argues that the
presumption in favor of litigating subpoenas in the compliance district should yield in this case due
to the greater familiarity of the Colorado Court with the complex issues involved in the case and
because handling the matter here, and potentially in other courts where the subpoenaed documents
might be found, would disrupt the Colorado Court’s management of the litigation at this advanced
stage. It also contends that Intrexon would not be substantially burdened by litigating the subpoena
in Colorado because, as Trans Ova’s prospective parent corporation, it is already involved in
settlement discussions in the case and has a direct financial stake in Trans Ova’s counterclaims.
II.

Analysis

In subpoena-related disputes, the federal district court where compliance is required “may
transfer a motion . . . to the issuing court . . . if the court finds exceptional circumstances.” Fed. R.
Civ. P. 45(f). According to the Advisory Committee Note to the 2013 amendments to Rule 45,
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“transfer may be warranted in order to avoid disrupting the issuing court’s management of the
underlying litigation . . . if such interests outweigh the interests of the nonparty served with the
subpoena in obtaining local resolution of the motion.” Fed. R. Civ. P. 45(f) advisory committee’s
note. Such is the case here. Intrexon is a large corporation that is in the process of acquiring Trans
Ova. XY’s Mem. in Supp. of Mot. to Transfer 1; Id. Ex. 4 (Intrexon press release announcing
definitive agreement to purchase Trans Ova for $110 million in cash, stock and other payments).
While not a party to the Colorado litigation, Intrexon has a direct economic interest in Trans Ova’s
counterclaims. XY’s Reply Ex. 8 at 54. It also has been involved in the formulation of Trans
Ova’s settlement position. Id. at 2. Intrexon’s size and ongoing involvement in the underlying
litigation make the burden of litigating this dispute in the District of Colorado minimal. Given the
minimal burden, Intrexon’s interest in obtaining local resolution of the motion to quash is
outweighed by the interests of the Colorado Court in maintaining oversight of all aspects of this
complex litigation, especially since the court has already supervised substantial discovery and
begun preparations for trial.
While Intrexon argues that XY has not established the “exceptional circumstances” required
by Rule 45(f), Intrexon’s Opp’n to Mot. to Transfer 1, substantial caselaw, including cases applying
the 2013 amendments to Rule 45, supports XY’s motion. In Wultz v. Bank of China, Ltd., a fellow
Court in this district granted a motion to transfer a subpoena-related dispute because the judge in
the issuing court, who had coordinated complex discovery, was “in a better position to rule on the
intervenors’ motion to quash or modify the subpoena due to her familiarity with the full scope of
issues involved as well as any implications the resolution of the motion will have on the underlying
litigation.” 88 Fed. R. Serv. 1304, at *7 (D.D.C. 2014). Similarly, in Patriot Nat. Ins. Grp. v.
Oriska Ins. Co., the party opposing transfer argued, as Intrexon does here, “that the documents
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sought pursuant to the subpoena duces tecum are irrelevant to the underlying dispute, and that the
court need only make a cursory review of the face of plaintiffs’ complaint and the subpoena to
recognize the alleged irrelevance.” 973 F. Supp. 2d 173, 175 (N.D.N.Y. 2013). The compliance
court rejected this reasoning, finding that “the relevance argument advanced emphasizes the need
for the court where the underlying matter lies to decide the matter.” Id. at 176. Finally, in In re
Subpoena to Kia Motors Am., Inc., the compliance court granted a motion to transfer under similar
circumstances to those here, concluding that doing so “would not significantly burden [the local
party]”—which was a national corporation rather than an individual resident of the local
jurisdiction—and thus the presumption in favor of local resolution carried less force. No. SACV
14-315 JLS (RNBx), 2014 WL 2118897, at *1 (C.D. Cal. Mar. 6, 2014).
As suggested in the Advisory Committee Note to the 2013 amendments to Rule 45(f), the
Court in reaching its decision has consulted with the magistrate judge handling discovery in the
Colorado litigation, who concurs that, given the complexity and posture of the underlying case, the
interests of judicial efficiency would be served by transferring this dispute to the District of
Colorado. Fed. R. Civ. P. 45(f) advisory committee’s note (“Judges in compliance districts may
find it helpful to consult with the judge in the issuing court presiding over the underlying case while
addressing subpoena-related motions.”).

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III.

Conclusion

For the foregoing reasons, it is hereby
ORDERED that Plaintiff XY, LLC’s Motion to Transfer Third Party Intrexon Corp.’s
Motion to Quash Subpoena for Documents and Deposition of 30(B)(6) Witness and Alternatively
for a Protective Order [ECF No. 9] is GRANTED. It is further
ORDERED that Intrexon’s Motion to Quash Subpoena for Documents and Deposition of
30(B)(6) Witness and Alternatively for a Protective Order [ECF No. 1] shall be transferred to the
U.S. District Court for the District of Colorado.
SO ORDERED.

CHRISTOPHER R. COOPER
United States District Judge

Date:

September 10, 2014

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