Koninklijke Philips Electronics N.V. et al v. Zoll Medical Corporation

Filing 196

Ch. Magistrate Judge Leo T. Sorokin: ORDER entered re: 171 Motion for Protective Order. The Motion is DENIED. Within seven days, the parties shall confer and agree to a definite date for the relevant deposition. See attached Order. (Robinson, Amy)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
____________________________________
KONINKLIJKE PHILIPS
)
ELECTRONICS N.V., et al.,
)
)
Plaintiffs/Counterclaim-Defendants, )
)
v.
)
)
ZOLL MEDICAL CORPORATION,
)
)
Defendant/Counterclaim-Plaintiff. )
____________________________________)

Civil No. 10-11041-NMG

ORDER ON MOTION FOR PROTECTIVE ORDER
April 30, 2013
SOROKIN, C.M.J.
This is a complex patent dispute in which each party alleges that the other has infringed
multiple patents. Fact discovery is scheduled to end today, and deadlines for the exchange of
expert reports are approaching. The plaintiffs, Koninklijke Philips Electronics N.V. and Philips
Electronics North America Corporation (collectively, “Philips”), have moved for a protective
order prohibiting the defendant, ZOLL Medical Corporation (“ZOLL”), from deposing Deborah
DiSanzo. Doc. No. 171. Ms. DiSanzo is an Executive Vice President of Philips, and Chief
Executive Officer (“CEO”) of Philips Healthcare, an “operating group” of Philips’ subsidiary
companies with more than 37,000 employees worldwide. Doc. No. 172 at 4. On April 3, 2013,
Philips’ motion was referred to the undersigned for resolution. Doc. No. 173. ZOLL opposes the
motion.1 Doc. No. 190. For the reasons that follow, Philips’s motion is DENIED.

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Both parties have filed their briefs under seal, Doc. Nos. 176, 190, although Philips also
publicly filed a redacted version of its brief, Doc. No. 172.

ZOLL seeks to depose Ms. DiSanzo “regarding Philips’ early knowledge of the accused
ZOLL products, including their allegedly infringing features,” which bears on ZOLL’s laches
defense. Doc. No. 172 at 2. In addition to citing Ms. DiSanzo’s “leadership role in the
company” and “her extremely busy schedule,” id. at 1, Philips basis its effort to prevent the
deposition on its view that Ms. DiSanzo “has no unique knowledge” or “non-repetitive
information on this subject matter,” id. at 2. ZOLL disagrees, noting that, during the relevant
time period, Ms. DiSanzo held a position involving management of the relevant division of
Philips’ business, and had direct involvement in investigating potentially infringing products sold
by competitors including ZOLL. Doc. No. 190 at 1.
“[T]he Federal Rules of Civil Procedure are to be construed liberally in favor of
discovery.” Ameristar Jet Charter, Inc. v. Signal Composites, Inc., 244 F.3d 189, 192 (1st Cir.
2001). Discovery may be limited where “the discovery sought is unreasonably cumulative or
duplicative, or is obtainable from some other source that is more convenient, less burdensome, or
less expensive,” where “the party seeking discovery has had ample opportunity . . . to obtain the
information sought,” or where “the burden . . . of the proposed discovery outweighs its likely
benefit.” Fed. R. Civ. P. 26(b)(2)(C). A party seeking a protective order “to limit or eliminate
discovery sought” bears the burden of establishing “good cause” for the request, i.e., that “justice
requires [the Court] to protect a party or person from annoyance, embarrassment, oppression, or
undue burden or expense.” Ameristar Jet Charter, 244 F.3d at 192; Fed. R. Civ. P. 26(c)(1).
As Philips recognizes, “[h]ighly-placed executives are not immune from discovery.”
Consol. Rail Corp. v. Primary Indus. Corp., 1993 WL 364471, at *1 (S.D.N.Y. Sept. 10, 1993).
Courts, however, have acknowledged that precluding depositions of such executives may be
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appropriate where they lack specific and unique knowledge related to the suit. See id. (deferring
executive depositions until other witnesses were deposed, but contemplating that such
depositions could be conducted upon a showing that the executives had “some unique knowledge
pertinent to the issues in these cases”); Baine v. Gen. Motors Corp., 141 F.R.D. 332, 335-36
(M.D. Ala. 1991) (prohibiting deposition of vice president of GM because other witnesses with
apparent access to the same relevant information had not yet been deposed, nor had a corporate
designee, but noting the protective order would be vacated “should the alternative discovery
devices . . . prove inadequate”); Mulvey v. Chrysler Corp., 106 F.R.D. 364, 366 (D.R.I. 1985)
(conditionally precluding deposition of Chrysler Chairman Lee Iacocca, but permitting written
interrogatories and allowing a renewed request to depose him “if the answers are shown to be
insufficient”). But where the executive does have such knowledge, and where other avenues of
discovery have not or could not provide an adequate substitute, courts have denied protective
orders. See Travelers Rental Co. v. Ford Motor Co., 116 F.R.D. 140, 142 (D. Mass. 1987)
(permitting depositions of executives, including Ford president, “who approved and/or
administered” the actions at issue).
Here, ZOLL already has served interrogatories and conducted depositions of a corporate
designee and the individuals Philips designated as having knowledge of the questions relevant to
ZOLL’s laches defense. That discovery, however, has not yielded specific information regarding
the relevant time period – information which ZOLL asserts Ms. DiSanzo uniquely possesses due
to her position at that time and her direct involvement in relevant events. Doc. No. 190 at 6-7
(identifying specific documents, produced by Philips in discovery, suggesting Ms. DiSanzo’s
familiarity with the relevant issues). Under these circumstances, ZOLL has demonstrated a good
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faith basis for believing Ms. DiSanzo has specific, unique knowledge of an issue central to one of
ZOLL’s defenses. Philips has not demonstrated good cause to preclude the deposition, nor has it
shown that the burden of producing Ms. DiSanzo for a deposition outweighs the likely benefit
thereof.
Accordingly, Philips’s Motion for a Protective Order is DENIED. Within seven days of
this Order, the parties shall confer and agree to a definite date for Ms. DiSanzo’s deposition. To
the extent this requires a modification of other pretrial deadlines, the parties may file appropriate
motions to extend.
SO ORDERED.

/s/ Leo T. Sorokin
Leo T. Sorokin
Chief U.S. Magistrate Judge

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