Sloan Valve Company v. Zurn Industries, Inc. et al

Filing 426

WRITTEN Opinion entered by the Honorable Amy J. St. Eve on 11/13/2012: The Court grants Plaintiff Sloan Valve Company's motion for a protective order 402 barring Zurn from conducting a deposition on Sloan's final infringement contentions or pursuant to the Rule 30(b)(6) deposition notice dated January 27, 2012, Exhibit A of Sloan's motion. [For further details see minute order.] Mailed notice(kef, )

Order Form (01/2005)

United States District Court, Northern District of Illinois
Name of Assigned Judge
or Magistrate Judge

Amy J. St. Eve

CASE NUMBER

Sitting Judge if Other
than Assigned Judge

10 C 204

11/13/2012

DATE
Sloan Valve Co vs. Zurn Industries

CASE
TITLE
DOCKET ENTRY TEXT

The Court grants Plaintiff Sloan Valve Company's motion for a protective order [402] barring Zurn from
conducting a deposition on Sloan’s final infringement contentions or pursuant to the Rule 30(b)(6) deposition
notice dated January 27, 2012, Exhibit A of Sloan’s motion.
O[ For further details see text below.]

Notices mailed by Judicial staff.

STATEMENT
Before the Court is Plaintiff Sloan Valve Company’s (“Sloan”) motion for a protective order. (R.
402, Mot.) Sloan moves this Court to enter a protective order pursuant to Federal Rule of Civil Procedure
(“Rule”) 26(c) barring Defendants, Zurn Industries, Inc. and Zurn Industries, LLC (collectively, “Zurn”),
from conducting a Rule 30(b)(6) deposition regarding Sloan’s infringement contentions.1 (Id.) For the
following reasons, the Court grants Sloan’s motion for a protective order.

Courtroom Deputy
Initials:

KF

1

Sloan’s motion seeks a protective order (1) barring Zurn from conducting a fact
deposition on Sloan’s infringement contentions and (2) barring Zurn from exceeding deposition
time limits. On October 18, 2012, the Court denied the latter request as moot. (R. 404, Min.
Ent.) The Court, therefore, does not address the arguments regarding deposition time limits in
this Order. Additionally, during the status hearing on October 18, 2012, Zurn informed the
Court that it seeks to depose a non-testifying expert, though Sloan’s motion specifically
addresses whether Zurn can depose a Sloan attorney. (Reply, Ex. G, 10/18/2012 St. Hrg. Trnspt.
at 11-12.) For completeness, the Court addresses the propriety of deposing either Sloan’s trial
counsel or a non-testifying expert regarding Sloan’s infringement contentions. Additionally,
since Zurn issued its Rule 30(b)(6) notice, Sloan has amended its infringement contentions
multiple times. (See Mot. at 2-5.) The Court assumes that Zurn will depose Sloan’s corporate
representative on the final version of the infringement contentions. The version of the
infringement contentions at issue, however, does not change the analysis.
10C204 Sloan Valve Co vs. Zurn Industries

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BACKGROUND
In January 2010, Sloan sued Zurn for infringement of U.S. Patent No. 7,607,635 (“the ‘635 Patent”).2 (R.
1, Compl.) On November 22, 2011, Sloan served upon Zurn its Updated Final Infringement Contentions. (Mot.
at 2.) On January 27, 2012, Zurn served on Sloan Defendants’ Notice of Deposition of Plaintiff Pursuant to
F.R.C.P. 30(b)(6) (“the 30(b)(6) notice”), requesting a corporate witness to testify on numerous topics related to
Sloan’s final infringement contentions. (Id.) On March 19, 2012 Sloan served upon Zurn Supplemental Updated
Final Infringement Contentions to address concerns Zurn had expressed during a March 6, 2012 meet and confer
telephone conference. (Id. at 4.) On October 12, 2012, Sloan served upon Zurn its Amended Final Infringement
Contentions. (Id. at 5.) Sloan seeks a protective order to bar Zurn from conducting Rule 30(b)(6) fact
depositions on its final infringement contentions. (Mot. at 1-7.)
LEGAL STANDARD
The Federal Rules of Civil Procedure provide that a “court may, for good cause, issue an order to protect a
party or person from annoyance, embarrassment, oppression, or undue burden or expense.” Fed. R. Civ. P.
26(c)(1). The moving party bears the burden of showing good cause for a protective order. See Central States,
Se. & Sw. Areas Pension Fund v. Nat’l Lumber Co., No. 10 C 2881, 2012 WL 2863478, at *2, (N.D. Ill. July 11,
2012) (citing Jepson, Inc. v. Makita Elec. Works, Ltd., 30 F.3d 854, 858 (7th Cir. 1994). Under Rule 26(c)(1)
the Court may forbid the disclosure or discovery sought by a party or forbid inquiry into certain matters. See Fed.
R. Civ. P. 26(c)(1)(A) & (D). “Rule 26(c) confers broad discretion on the trial court to decide when a protective
order is appropriate and what degree of protection is required.” Gordon v. Countryside Nursing & Rehab. Ctr.,
LLC, No. 11 C 2433, 2012 WL 2905607, at *2 (N.D. Ill. July 16, 2012)
ANALYSIS
As a threshold matter, despite filing a Response (R. 405) and a Sur-Reply (R. 418), Zurn has largely failed
to address the specific issue raised in Sloan’s motion and Reply, namely whether the Court should bar Zurn from
taking a Rule 30(b)(6) deposition regarding Sloan’s infringement contentions. Rather than address the deposition
issue, Zurn repeatedly argues that the Court should require Sloan to “produce all documents and data, including
any documents and data prepared by non-testifying experts, responsive to Zurn’s discovery requests.” (Resp. at
3, 7-10; Sur-Reply at. 2.) Indeed, Zurn repeatedly requests that the Court enter an order compelling Sloan to
produce documents and data relating to testing done on Zurn’s own device. (See e.g., Resp. at 11-12; Sur-Reply
at 2.) Such a request is proper in a motion to compel, not in response to this motion for a protective order. The
Court, therefore, disregards these arguments and finds that Zurn has waived any argument regarding whether it
may depose one of Sloan’s trial attorneys regarding its infringement contentions and whether there are any
“exceptional circumstances” necessitating a deposition of Sloan’s non-testifying expert, as Zurn has addressed
neither contention. See Bonte v. U.S. Bank, N.A., 624 F.3d 461, 466 (7th Cir. 2010) (“Failure to respond to an
argument . . . results in waiver.”); United States v. Foster, 652 F.3d 776, 792 (7th Cir. 2011) (“As we have said
numerous times, undeveloped arguments are deemed waived[.]”); Fed. R. Civ. P. 26(b)(4)(D)(ii).

2

A description of the ‘635 Patent and factual background regarding the infringement
dispute can be found in the Court’s October 26, 2012 Memorandum Opinion and Order
regarding Zurn’s motion for partial summary judgment. (R. 412, Opinion.) A detailed
description of the procedural posture of this case can be found in the Court’s April 12, 2012
Order regarding Sloan’s motion to strike and to compel discovery. (R. 285, Order.)
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Even if Zurn had not waived these arguments, the Court would not require Sloan to produce a Rule
30(b)(6) witness to testify about the infringement contentions. First, Zurn has not shown that it needs to obtain
information specifically from an attorney. Second, Zurn cannot show any exceptional circumstances justifying
discovery of the “facts known or opinions held by” Sloan’s consulting experts who conducted the tests at issue.
See Fed. R. Civ. P. 26(b)(4)(D)(ii).
I.

Zurn May Not Depose a Sloan Attorney or Other Corporate Representative About Sloans’
Attorneys’ Mental Impressions or Legal Theories

Although Rule 30(a) permits a party to take a deposition of “any person,” some courts have found that
“‘[t]he deposition by one party of the other side’s attorney in the litigation . . . is disfavored and should be
permitted only if there is no other reasonable means to obtain relevant and significant information that the
attorney possesses.” Fields v. City of Chi., No. 10 C 1168, 2012 WL 4892392, at *3 (N.D. Ill. Oct. 15, 2012)
(citing S.E.C. v. Buntrock, 217 F.R.D. 441, 445 (N.D. Ill. 2003) (collecting cases); see also Shelton v. Am. Motors
Corp., 805 F.2d 1323 (8th Cir. 1986) (outlining the test for when deposition of opposing counsel is appropriate).
The Seventh Circuit has not decided whether these stringent requirements apply to depositions of opposing
counsel, however, the Court finds this test instructive here because Zurn cannot meet these requirements.
First, Zurn’s Rule 30(b)(6) notice improperly seeks testimony implicating the mental impressions and
legal theories of the trial counsel who drafted them. (Mot., Ex. A); see also In re Sulfuric Acid Antitrust Litig.,
No. 03 C 4576, 2005 WL 1994105, at *1 n. 2 (N.D. Ill. Aug. 19, 2005) (“[T]he topics are improper under Rule
30(b)(6) in that they seek to elicit their contentions and legal theories”); Buntrock, 2004 WL 1470278, at *2
(upholding magistrate judge’s finding that 30(b)(6) notice impermissibly sought to delve into theories of counsel).
Zurn, for example, seeks “[d]escription and explanation” of statements in the infringement contentions, which
Sloan’s counsel strategically drafted. (Mot., Ex. A ¶ 2; see also Resp. at 10 (stating that Zurn is entitled to this
discovery “because it reflects Sloan’s understanding of how the accused device operates.”). Zurn cannot seek this
privileged information via a Rule 30(b)(6) deposition or any other discovery mechanism.
If Zurn instead seeks only “information regarding what, if any, pre- and post-litigation testing the accused
device(s) were subject to, and the data obtained from those tests,” as alleged in its Response, such documents may
be protected by the work product privilege.3 (Resp. at 5-6.) Moreover, even if this information is not privileged,

3

Sloan has asserted the work-product privilege over the tests conducted by its consulting
experts. (Mot. at 7; Reply at 7-8.) Zurn, without any legal citation, argues that the “underlying
test data” is not “subject to work product immunity for at least the reasons set forth in the
Court’s Order of April 12, 2012.” (Id. at 9.) Zurn cites to the April 12, 2012 Order also for the
proposition that “Sloan’s complaint and contentions effectively waived whatever work product
or privilege immunity might arguable have protected the results of Sloan’s testing and analysis.”
(Id. at 10.) Zurn also argues that the Court’s April 12, 2012 Order requiring Zurn to produce
testing data and a 30(b)(6) witness is “law of the case” and requires the Court to deny Sloan’s
motion for a protective order. (Sur-Reply. at 2; see also Resp. at 10-11 (describing Zurn’s
request as seeking “directly parallel discovery”).) The Court’s April 12, 2012 Order, which
related to Zurn’s tests of valves within Zurn’s control that Zurn put “at issue,” is not
determinative of whether data and results from Sloans tests of Zurn’s device are privileged.
(Order at 5-9.) The Court need not resolve this issue, however, because (1) Sloan has agreed to
produce non-privileged pre-complaint testing data and documents and to log the privileged
materials in a privilege log and (2) as discussed in this Order, the remaining information Zurn
seeks with its 30(b)(6) notice is protected under Rule 26(b)(4)(D). (Reply, Ex. G. 10/18/2012 St.
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Zurn has not offered any evidence to establish that there is “no other reasonable means” of obtaining it. Fields,
2012 WL 4892392 at *3. Additionally, Zurn has offered no argument to counter Sloan’s claim that deposing its
trial counsel would be unduly burdensome. (Mot. at 6-7.)
II.

Zurn May Not Depose Sloan’s Consulting Expert or Other Corporate Representative About the
Work of Sloan’s Consulting Expert

Despite Sloan’s initial contention that Zurn’s 30(b)(6) notice seeks testimony from Sloan’s counsel, Zurn
clarified in open court that it seeks to depose a non-testifying expert. (Reply, Ex. G, 10/18/2012 St. Hrg. Trnspt.
at 11-12.) The Court agrees with Sloan that “investigations done by non-testifying experts are protected from
deposition discovery by Rule 26(b)(4)(D).” (Reply at 2); see e.g., Morningware, Inc. v. Hearthware Home
Prods., Inc., No. 09 C 4348, 2012 WL 3721350, at *6 (N.D. Ill. Aug. 27, 2012) (“Consulting experts do not offer
testimonial evidence during a litigation proceeding, and parties are therefore not entitled to discovery from
consulting experts.”). Under Rule 26(b)(4)(D)(ii), a party may depose a non-testifying expert “on showing
exceptional circumstances under which it is impracticable for the party to obtain facts or opinions on the same
subject by other means.” Zurn has not made any such showing.
Here, Zurn seeks testimony regarding testing Sloan conducted on Zurn’s own product. (Mot., Ex. A.)
Zurn does not need the results of Sloan’s tests to gain an understanding of how the product works. In its April 12,
2012 Order, the Court required Zurn to disclose testing data and information relating to the worn valves Zurn
fabricated using the Zurn machine, which Zurn had put “at issue” and were only in Zurn’s possession. (Order at
6-7.) Contrastingly, the testing information Zurn seeks relates to tests of its own device, which Zurn can test and
analyze at any time.
Additionally, Zurn will be able to review Sloan’s expert disclosures, which are due on November 30, 2012
and will likely contain certain testing results. Indeed, under Rule 26(a)(2)(B)(ii), Sloan’s expert reports must
contain “the facts or data considered by the witness in forming [his opinions].” In fact, Zurn acknowledges that
“Sloan’s forthcoming expert report will undoubtedly include some information relating to Sloan’s theory of
infringement,” but wants to also discover “Sloan’s understanding and analysis of the accused device at the time
each of its revised Infringement Contentions were served.” (Resp. at 5.) Seeking the “understanding and
analysisof Sloan, meaning its attorneys, is improper, as previously discussed. Seeking the “understanding and
analysis” by consultants hired by Sloan to test the accused device is improper under Rule 26(a)(4)(D).
Unlike the work product doctrine, Rule 26(a)(4)(D) does not only prohibit discovery of mental
impressions, it also protects “facts known or opinions held” by a consulting expert as well. Fed. R. Civ. P.
26(a)(4)(D). Even the methodology employed by a consulting expert is off-limits. See e.g., Sara Lee Corp. v.
Kraft Foods Inc., 273 F.R.D. 416, 420 (N.D. Ill. 2011) (finding that materials relating to the methodology of a
consulting expert which might shed light on an expert’s report were not discoverable). Moreover, how Sloan, its
consultants, and its attorneys came to the conclusions reflected in the infringement contentions is not relevant to
any party’s claim or defense. See Fed. R. Civ. P. 26(b)(1) (“Parties may obtain discovery regarding any
nonprivileged matter that is relevant to any party’s claim or defense”). Zurn has received Sloan’s contentions,
will receive Sloan’s expert reports, can depose Sloan’s testifying experts, and has access to the device at issue to

Hrg. Trnspt at 7-8.) Notably, despite Zurn’s attempts to cite the April 12, 2012 Order as
dispositive to this motion, the issue of whether Rule 26(b)(4)(D) protects certain data or testing
results from discovery was not before the Court at that time whereas Sloan bases many of its
arguments for a protective order on Rule 26(b)(4)(D)’s protections. (See Order; see also R. 234,
Zurn’s Mot. to Strike.)
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conduct its own tests. The Court will not additionally allow Zurn to depose a non-testifying expert on the tests
Sloan conducted on Zurn’s own product in anticipation of litigation and to formulate its theory of infringement.
CONCLUSION
For the foregoing reasons, the Court grants Sloan’s motion for a protective order barring Zurn from
conducting a deposition on Sloan’s final infringement contentions or pursuant to the Rule 30(b)(6) deposition
notice dated January 27, 2012, Exhibit A of Sloan’s motion.

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