Dr. Greens, Inc. v. Spectrum Laboratories, LLC et al

Filing 12

MEMORANDUM AND ORDER granting in part and denying in part 1 Spectrum's Motion to Compel Dyna-Tek to Comply with Subpoena; granting in part and denying in part 6 Non-party Dyna-Tek's Motion to Quash or Modify Subpoena Duces Tecum. See Memorandum and Order for additional details. Signed by Magistrate Judge Gerald L. Rushfelt on 7/31/2012. (bw)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
DR. GREENS, INC.,
Plaintiff,
v.
SPECTRUM LABORATORIES, LLC,
Defendant.

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Case No. 12-MC-226-KHV-GLR

MEMORANDUM AND ORDER
The Court has the following motions under consideration: Spectrum’s Motion to Compel
Dyna-Tek to Comply with Subpoena (ECF No. 1) and Non-party Dyna-Tek’s Motion to Quash or
Modify Subpoena Duces Tecum (ECF No. 6). For the reasons that follow, the Court grants in part
and denies in part both motions.
I.

NATURE OF THE MATTER BEFORE THE COURT
Defendant Spectrum Laboratories LLC (Spectrum) commenced this miscellaneous action

by moving to compel non-party Dyna-Tek Industries, Inc. (Dyna-Tek) to comply with a subpoena
issued out of this Court. In accordance with Fed. R. Civ. P. 45, Spectrum served a subpoena duces
tecum to obtain formula information and communications that are purportedly relevant to a patent
infringement case (Case No. 11-CV-638-JAH) commenced in the Southern District of California by
Dyna-Tek’s customer – Dr. Greens, Inc. (Dr. Greens). The court in the underlying action denied a
motion for protective order filed by Dr. Greens to preclude Spectrum from obtaining supplier
information and the chemical formula for the alleged infringing product.1 It ordered that the
information be provided subject to an “Outside Attorneys Eyes Only” protective order.2 By agreement of the parties, the court entered a three-tiered order to protect the confidentiality of documents
1

See ECF No. 1-3 (Ex. C).

2

Id.

disclosed during the litigation.3
Spectrum filed its motion to compel on April 27, 2012. This Court extended the response
time to May 18, 2012. Dyna-Tek filed its motion to quash on May 18, 2012. Spectrum filed a
response to the motion to quash. Dyna-Tek timely filed a reply brief on June 15, 2012. The motions
are ready for ruling.
II.

ANALYSIS
Spectrum seeks to compel Dyna-Tek to produce documents responsive to six document

requests included in its subpoena duces tecum. Dyna-Tek asserted numerous general objections to
the subpoena and specific objections to the particular requests. In response to the motion to compel,
Dyna-Tek moved to quash the subpoena. Spectrum responded that the latter motion is untimely and
without merit.
A. Timeliness
The Court does not find the motion to quash untimely. Spectrum relies on the timeliness
requirement set out in Fed. R. Civ. P. 45(c)(3)(A). But Dyna-Tek primarily moves to quash the
subpoena under Rule 45(c)(3)(B). Unlike subparagraph (A), which mandates the quashing or modifying of a subpoena in certain circumstances on timely motion, subparagraph (B) invokes the
discretion of the Court to modify or quash a subpoena that requires certain disclosures or lengthy
travel by a non-party who is not an officer of a party. While both provisions require a motion to
prompt court action, only the mandatory provision expressly requires that the motion be timely filed.
To the extent Dyna-Tek relies on Rule 45(c)(3)(A), the Court may excuse a failure to meet

3

See ECF No. 1-5. Under the Protective Order, any party to the litigation may designate
documents as “Confidential”, “Confidential - For Counsel Only”, or “Confidential - Outside
Attorney Eyes Only”. See id. at 2.
2

the deadline when the delayed filing results from attempts to informally resolve the disputes about
a subpoena without judicial intervention.4 In this case Dyna-Tek engaged in several exchanges with
Spectrum in an effort to resolve the issues. The filing of the motion to compel confirmed an inability
to resolve the matters without resort to the court. Dyna-Tek filed its motion to quash within the time
for responding to the motion to compel. Under these circumstances, the Court finds the motion to
quash timely to the extent the timeliness requirement of Rule 45(c)(3)(A) applies.
Rule 45(c)(3)(B) has no specific timeliness requirement. Spectrum, moreover, has provided
no basis to graft such a requirement to that subparagraph. Nevertheless, a delay in pursuing a motion
under Rule 45(c)(3)(B) may be relevant to whether the Court should exercise its discretion to modify
or quash the subpoena. In this instance, however, the Court finds no reason to deny the motion to
quash or modify based on any delay for the same reasons that it finds the motion timely under Rule
45(c)(3)(A). The Court proceeds to the merits of the motions.
B. Requests for Documents
The subpoena commands Dyna-Tek to produce the following six categories of documents
identified in an attachment:5
1. All past or present formulas for any substance or mixture YOU
have directly or indirectly supplied to DR. GREENS.
2. ALL DOCUMENTS that relate to, refer to, reflect, constitute, or
evidence the names or amounts of any substance present in (or added

4

See Hartz Mountain Corp. v. Chanelle Pharm. Veterinary Prods. Mfg. Ltd., 235 F.R.D. 535,
536 (D. Me. 2006).
5

Both parties provide a copy of a subpoena issued in Oregon seeking the same categories of
documents from another non-party. See ECF No. 1-7 (attachment to Compl.); ECF No. 6-2
(attachment to Mot. Quash). Dyna-Tek also provides their objections to the subpoena, which sets
out the categories of documents. See ECF No. 6-3. As used in the subpoena, “YOU” refers to DynaTek.
3

to) each substance or mixture YOU have directly or indirectly
supplied to DR. GREENS, including, but not limited to, ingredient
lists, recipes, procedures, instructions, test results, bills of material,
quality control records, invoices, and purchase orders.
3. For each particular substance constituting, contained within, or
otherwise used to manufacture any substance or mixture YOU have
directly or indirectly supplied to DR. GREENS, a representative
purchase order or invoice documenting YOUR purchase of the
substance or mixture sufficient to show (i) a description of the substance or mixture; (ii) the date of the order; (iii) the quantity ordered;
(iv) the price paid; and (v) the name and address of the person or
entity from whom YOU received the substance.
4. ALL DOCUMENTS that relate to, refer to, reflect, constitute, or
evidence testing or chemical analysis of any substance or mixture
YOU directly or indirectly supplied to DR. GREENS.
5. All written communications (e.g., e-mails, letters, and notes)
between YOU and DR. GREENS.
6. To the extent such documents were not produced in response to
Request No. 5 above, all DOCUMENTS that record, describe, contain, refer to, or relate to any communications (e.g., e-mails, letters,
voice messages between YOU and DR. GREENS relating to (a)
SPECTRUM or Matt Stephens; (b) patent infringement allegations;
(c) the chemical composition of, or any substance within, a substance
or mixture provided by YOU to DR. GREENS; (d) U.S. Patent No.
7,192,776; (e) any actual or potential lawsuit between DR. GREENS
and SPECTRUM.
Dyna-Tek asserted numerous objections to the subpoena and requested production. In its
motion to quash, it continues to object on various grounds. “In general, the party resisting discovery
has the burden to show how requested discovery is objectionable.”6 That Dyna-Tek is a non-party

6

Robinson v. City of Ark. City, Kan., No. 10-1431-JAR-GLR, 2012 WL 603576, at *6 (D.
Kan. Feb. 24, 2012), review denied, 2012 WL 1674255 (D. Kan. May 14, 2012); accord P.S. ex rel.
Nelson v. The Farm, Inc., No. 07-2210-JWL-DJW, 2007 WL 4570872, at *2 (D. Kan. Dec. 27, 2007)
(recognizing that party moving to quash a subpoena has burden to support its objections).
4

to the underlying litigation does not alter who must carry the burden of persuasion.7 Dyna-Tek has
not adequately supported any objection to the requested discovery except for showing that produced
documents will include trade secrets or other confidential information.8
But that showing does not necessarily preclude the discovery of such information.9 “There
is no absolute privilege for trade secrets and similar confidential information.”10 If a subpoena
requires disclosure of “a trade secret or other confidential research, development, or commercial
information”, the federal courts have discretion to quash or modify the subpoena to protect a person
subject to or affected by it.11 Alternatively, the courts may order “production under specified
conditions if the serving party: (i) shows a substantial need for the . . . material that cannot be

7

With respect to an objection of based on irrelevancy, the burden switches to the party
seeking discovery, when the requested discovery does not appear relevant on its face. See Robinson,
2012 WL 603576, at *7 (discussing the changing burdens). The requested discovery in this case
appears facially relevant given the nature of the underlying action, the rulings in that action, and the
broad scope of relevancy in the discovery context under Fed. R. Civ. P. 26(b)(1). The burden thus
remains with Dyna-Tek to show that the discovery is not relevant under Rule 26(b)(1) or “is of such
marginal relevance that the potential harm occasioned by discovery would outweigh the ordinary
presumption in favor of broad disclosure.” Mackey v. IBP, Inc., 167 F.R.D. 186, 193 (D. Kan. 1996)
(citation omitted).
8

Spectrum does not dispute that requested production will include trade secrets. See Mem.
Supp. Mot. Compel at 9.
9

Cf. Naerebout v. IBP, Inc., No. 91-2254-L, 1992 WL 754399, at *13 (D. Kan. Aug. 19,
1992) (recognizing that a showing of confidentiality or trade secrets does not preclude discovery
under Fed. R. Civ. P. 34).
10

Centurion Indus., Inc. v. Warren Steurer & Assocs., 665 F.2d 323, 325 (10th Cir. 1981);
Speed Trac Techs., Inc. v. Estes Exp. Lines, Inc., No. 08-212-KHV, 2008 WL 2309011, at *4 (D.
Kan. June 3, 2008).
11

Fed. R. Civ. P. 45(c)(3)(B)(i). Similarly, on motion, for good cause shown, and “to protect
a party or person from annoyance, embarrassment, oppression, or undue burden or expense”, the
courts may require “that a trade secret or other confidential research, development, or commercial
information not be revealed or be revealed only in a specified way.” Fed. R. Civ. P. 37(c)(1)(G).
5

otherwise met without undue hardship; and (ii) ensures that the subpoenaed person will be
reasonably compensated.”12 Spectrum has made a sufficient showing under subparagraph (i). There
is no reason to believe that Spectrum will not reasonably compensate Dyna-Tek.13 As the court in
the underlying action has already found, production of trade secrets or other similar confidential
information can be adequately protected under an “Outside Attorneys Eyes Only” protective order.14
Given the existing protective order entered in the underlying action, this Court can adequately
protect the confidentiality of produced documents by extending that protective order to cover documents produced by Dyna-Tek, a non-party to the underlying action. The production is also contingent on Spectrum ensuring that Dyna-Tek is reasonably compensated for the costs of production.15
In addition, even though Dyna-Tek has not adequately supported any other asserted
objection, the Court may find a particular request for discovery overly broad or unduly burdensome
on its face when ‘it is couched in such broad language as to make arduous the task of deciding which
of numerous documents may conceivably fall within its scope.’”16 There is no need to substantiate
an asserted objection in such circumstances. To the extent Requests 2, 4, and 6 use the phrase

12

See Fed. R. Civ. P. 45(c)(3)(C).

13

What constitutes “reasonable compensation” is left to the discretion of the courts. 9A
Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 2463.1 (3d ed. 2008).
The compensation may be limited to the costs of production, if such costs reasonably compensate
the producing party. Klay v. All Defendants, 425 F.3d 977, 984-86 (11th Cir. 2005).
14

See also Transcor, Inc. v. Furney Charters, Inc., 212 F.R.D. 588, 593 (D. Kan. 2003)
(entering protective order to protect confidential documents sought by subpoena).
15

Given the protective order and the facts of this case, the Court finds that reasonable
compensation is limited to the costs of production.
16

Audiotext Commc’ns Network, Inc. v. U.S. Telecom, Inc., No. 94-2395-GTV, 1995 WL
625962, at *6 (D. Kan. Oct. 5, 1995); accord Cotracom Commodity Trading Co. v. Seaboard Corp.,
189 F.R.D. 655, 665-66 (D. Kan. 1999); Mackey v. IBP, Inc., 167 F.R.D. 186, 197 (D. Kan. 1996).
6

“relate to”, they are overly broad on their face.17 In each of these requests, that phrase modifies all
documents instead of a particular type of document. By doing so, they require Dyna-Tek to guess
whether a particular document falls within the scope of the request. They are objectionable to that
extent.18 Because Requests 2, 4, and 6 are objectionable only in part, the Court can eliminate the
objectionable portion by modifying the requests to omit the phrase “relate to.” Omitting that phrase
adequately limits Requests 2, 4, and 6 to an acceptable form.
Request 5 is also overly broad on its face. Although it does not use a specific objectionable
phrase like “relating to”, it is overly broad in that it seeks all written communications. Without some
limitation as to subject matter, such a request is overly broad. Because Request 5 lacks appropriate
limiting language, the Court modifies the subpoena to omit that request.
The Court overrules all objections asserted by Dyna-Tek, except as specifically mentioned
in this order. Because Requests 2, 4, and 6 are overly broad in part and Request 5 is overly broad
in its entirety, the Court has modified the subpoena as contemplated by Fed. R. Civ. P. 45(c)(3).
Because the subpoena requires Dyna-Tek to disclose trade secrets or other confidential information
set out in Rule 45(c)(3)(B)(i) and Spectrum has shown a substantial need for the material under Rule
45(c)(3)(C), the Court orders production under the protective order entered in the underlying action
and herein extended to cover non-party Dyna-Tek.19 Spectrum shall also reasonably compensate

17

To limit the subject matter of responsive documents, Request 6 also uses the similar phrase
“relating to” just prior to listing five limitations on the content of responsive documents. The
limiting language makes this second use of the omnibus phrase non-objectionable. In such context,
the phrase is equivalent to using the word “about”.
18

See Cotracom, 189 F.R.D. at 665-66; Robinson. 2012 WL 603576, at *8-9.

19

If Dyna-Tek desires additional protection, it may seek modification of that protective order
in the underlying action. It expresses concerns about disseminating its materials to litigation counsel
for Spectrum, David Cupar. From the information before this Court, however, it is not clear that he
7

Dyna-Tek for its production costs.
III.

CONCLUSION
For the reasons stated, the Court grants in part and denies in part Spectrum’s Motion to

Compel Dyna-Tek to Comply with Subpoena (ECF No. 1) and grants in part and denies in part Nonparty Dyna-Tek’s Motion to Quash or Modify Subpoena Duces Tecum (ECF No. 6). It grants the
latter motion only to modify the subpoena by omitting Request 5 in its entirety; by eliminating the
phrase “relates to” from Requests 2, 4, and 6; and order production under specified conditions as
contemplated by Fed. R. Civ. P. 45(c)(3)(C). It grants the motion to compel only to the extent
Spectrum seeks to compel production of documents to the subpoena as modified herein. The
motions are otherwise denied. When producing documents responsive to the requests in the
subpoena, Dyna-Tek may avail itself of the confidentiality protections afforded by the “Outside
Attorneys Eyes Only” protective order entered in the underlying action. That protective order is
hereby adopted and extended to cover Dyna-Tek.
IT IS SO ORDERED.
Dated in Kansas City, Kansas on this 31st day of July, 2012.

S/Gerald L. Rushfelt
Gerald L. Rushfelt
U.S. Magistrate Judge

will have access to the disclosed materials under the Outside Attorneys Eyes Only protective order.
The California court will have additional information about the underlying action.
8