Exmark Manufacturing Company Inc. v. Briggs & Stratton Power Product Group

Filing 274

ORDER - Briggs' Motion to Compel Production of Exmark's Patent Infringement Potentials List and Related Documents (Filing No. 255 ) is granted in part and denied in part as set forth in this Order. Pursuant to NECivR 72.2 any objection to this Order shall be filed with the Clerk of the Court within fourteen (14) days after being served with a copy of this Order. Failure to timely object may constitute a waiver of any objection. The brief in support of any objection shall be filed at the time of filing such objection. Failure to file a brief in support of any objection may be deemed an abandonment of the objection. Ordered by Magistrate Judge Thomas D. Thalken. (GJG)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA

EXMARK MANUFACTURING
COMPANY INC.,
8:10CV187
Plaintiff,
vs.

ORDER

BRIGGS & STRATTON POWER
PRODUCTS GROUP, LLC and
SCHILLER GROUNDS CARE, INC.,
Defendants.
This matter is before the court on the defendant’s, Briggs & Stratton Power
Products Group, LLC (Briggs), Motion to Compel Production of Exmark’s Patent
Infringement Potentials List and Related Documents (Filing No. 255). Briggs filed a
brief (Filing No. 256) and index of evidence (Filing No. 257) in support of the motion.
The plaintiff, Exmark Manufacturing Company Inc. (Exmark), filed a brief (Filing No.
265) in response. Briggs filed a brief (Filing No. 269) and index of evidence (Filing No.
270) in reply.1

BACKGROUND
This action pertains to the alleged infringement of United States Patent No.
5,987,863 (the ʼ863 patent), which covers a lawn mower having flow control baffles.
See Filing No. 14 - Amended Complaint p. 1-4. Exmark alleges the defendants are
knowingly and actively engaging in the manufacture and sale of similar mowers that are
covered by the ʼ863 patent. Id. In Briggs’ Answer, Briggs asserts a defense of laches.
See Filing No. 29 - Answer ¶ 23. Briggs contends it has been making and selling
mowers since 1999 that, under Exmark’s theories of infringement, have substantially the
same baffles, yet Exmark unreasonably waited until 2010 to file suit. See Filing No. 256
- Brief p. 4. In this motion, Briggs seeks to compel disclosure of a “Patent Infringements
Potentials list” (the list) and related documents which, according to Briggs, evidences
Exmark’s knowledge of Briggs’ accused mowers for purposes of establishing laches.
See Filing No. 255 - Motion; Filing No. 256 - Brief.
1

The defendant, Schiller Grounds Care, Inc., did not participate in this motion.

Exmark gave its former Chief Engineer and current Engineering Services
Manager, Rodney L. Benson (Benson), the responsibility of working with inside counsel
on patent matters, including the defense of Exmark’s patents. See Filing No. 191-1 Benson Decl. ¶ 2; Filing No. 191-3 Ex. 1 - Benson Depo. p. 11:7 - 13:12. As part of this
responsibility, Benson created and maintained a list of potential patent infringers in
order to obtain legal advice regarding patent infringement.

See Filing No. 191-1 -

Benson Decl. ¶ 3; Filing No. 257-2 Ex. 1 - Interrogatories p. 35-36.2 Benson created the
list in approximately 2001. See Filing No. 257-2 Ex. 1 - Interrogatories p. 31-32.
During this litigation, Briggs has sought to discover Exmark’s bases for opposing
Briggs’ laches defense.

See Filing No. 256 - Brief p. 6; Filing No. 257-2 Ex. 1 -

Interrogatories. Specifically, Briggs requested Exmark provide “a detailed description of
the factual and legal basis for Exmark’s denial of Briggs’ assertions underlying its
defense of laches” including a description of “when Exmark first knew or reasonably
should have known of any of Briggs’ conduct or devices that would allegedly fall within
the scope of any Asserted Claim[.]” See Filing No. 257-2 Ex. 1 - Interrogatories p. 2126. Exmark answered, in part,
[O]ne of its employees reported seeing a Ferris mower
having flow control baffling in the underside of the deck at
the GIE show in November of 2001 that might potentially
infringe the ’863 patent, but Exmark has no knowledge or
record of what mower that was, what the structure of the
baffles was, whether it was within the scope of the ’863
patent claims, and in what time period and quantities Ferris
sold that mower or other mowers having such a baffle
structure.
Id. at 33-34.

Exmark states it has disclosed all factual information relating to its

knowledge of Briggs’ infringement. See Filing No. 265 - Reply p. 7, 19-20. Briggs,
under the theory the list Benson created would contain a definitive answer, requested
detailed information about the list. Id. at 31-32. Exmark asserted the list was privileged
and answered, “Exmark uses this list to get legal advice on potential infringement of
Exmark’s intellectual property.” Id. Exmark stated the list was saved in a restricted
location, the R: drive, and only three people had access to the list, although on

2

The court’s citation to page numbers, for briefs and exhibits, coincides with the CM/ECF page numbers.
2

occasion, Benson shared the list with select Exmark employees. Id.; Filing No. 191-1 Benson Decl. ¶ 4. Exmark explained Benson disclosed the list because,
In order to perform his job and effectively assist counsel and
obtain legal advice, Mr. Benson sometimes shared the list
with select persons in order to facilitate effective reporting of
facts to Mr. Benson.
In particular, engineers and
management attending the GIE show had a need to know
the information already on the list in order to effectively
report facts about patent issues from the show.
See Filing No. 257-2 Ex. 1 - Interrogatories p. 35-36. In order to share the list with
select Exmark employees, Benson saved a copy of the list on the S: drive. Id. The
copy was set for automatic deletion after sixty days. Id. Approximately eleven Exmark
employees had access to the list. See Filing No. 257-3 Ex. 2 - Interrogatories p. 8-9;
see also Filing No. 257-5 Ex. 4 - Benson Depo. Periodically, Exmark engineers and
management emailed Benson about the list and potentially infringing products. See
Filing No. 257-4 Ex. 3; Filing No. 257-9 Ex. 8; Filing No. 257-10 Ex. 9 - Emails. Exmark
produced some of these emails, but withheld other emails under the basis of attorneyclient privilege. Id.; Filing No. 265 - Response.
During Benson’s deposition, Exmark’s counsel asserted the attorney-client
privilege and instructed Benson not to answer questions regarding the list’s contents,
including whether Briggs’ subsidiary Ferris was listed as a potential infringer. See Filing
No. 257-5 Ex. 4 - Benson Depo.; Filing No. 270-3 Ex. 2 - Benson Depo. Benson also
did not know or did not recall answers to numerous questions related to Briggs’ laches
defense. Id.
On December 23, 2014, Briggs filed the instant motion seeking to compel
disclosure of the list and related documents under two theories: 1) the list and related
documents are not privileged and 2) if a privilege exists, Exmark waived its privilege.
See Filing No. 255 - Motion;3 Filing No. 256 - Brief. The documents in question, as
identified in Exmark’s November 8, 2011, Privilege Log, are: 163, 164, 172, 173, 175,
205, and 206. See Filing No. 256 - Brief p. 11.4 Documents 163, 172, 173, and 175 are

3

Briggs represents the parties attempted to reach an agreement on this issue before Briggs filed its
motion. See Filing No. 255 - Motion; Filing No. 256 - Brief.
4
While Briggs seeks to compel disclosure of the list, the identified documents are emails and notes,
according to the documents’ descriptions. The list, itself, does not appear to be separately numbered in
Exmark’s Privilege Log. Although Exmark explains several of the documents are Benson’s notes and
3

described as correspondence regarding potential patent infringement. See Filing No.
257-11 Ex. 10 - Privilege Log. Documents 164, 205, and 206 are identified as Benson’s
confidential notes.5 Id.

ANALYSIS
A.

Privilege
In the absence of a relevant federal rule, statute, or constitutional provision,

federal common law governs questions of privilege in federal-question jurisdiction
proceedings. See Fed. R. Evid. 501; Hollins v. Powell, 773 F.2d 191, 196 (8th Cir.
1985).

“The attorney-client privilege is the oldest of the privileges for confidential

communications known to the common law.’” United States v. Yielding, 657 F.3d 688,
707 (8th Cir. 2011) (quoting Upjohn Co. v. United States, 449 U.S. 383, 389 (1981)).
The Supreme Court in Upjohn determined the communications of an employee of a
corporation with the corporation’s counsel made in order to secure legal advice
concerning matters within the scope of the employee’s corporate duties, consistent with
the underlying purposes of the attorney-client privilege, are protected from disclosure.
See Upjohn, 449 U.S. at 394-95.
The attorney-client privilege is applicable to an employee’s communication if it
meets the following five elements:
(1) the communication was made for the purpose of securing
legal advice; (2) the employee making the communication
did so at the direction of his corporate superior; (3) the
superior made the request so that the corporation could
secure legal advice; (4) the subject matter of the
communication is within the scope of the employee’s
corporate duties; and (5) the communication is not
disseminated beyond those persons who, because of the
corporate structure, need to know its contents.
In re Bieter Co., 16 F.3d 929, 936 (8th Cir. 1994) (citing Diversified Indus., Inc. v.
Meredith, 572 F.2d 596, 609 (8th Cir. 1978) (en banc)). “[W]hen a matter is committed
to a professional legal advisor, it is ‘prima facie committed for the sake of legal advice
and [is], therefore, within the privilege absent a clear showing to the contrary.’” In re
“[t]hese notes are the [list], or reflect its contents[,]” the court’s review of Benson’s notes reveals the notes
are summaries reflecting the contents of the list and are not the actual list itself.
5
Exmark produced redacted versions of documents 164 and 205. See Filing No. 257-12 Ex. 11; Filing
No. 270-2 Ex. 1.
4

Bieter Co., 16 F.3d at 938 (quoting Diversified, 572 F.2d at 610). The party asserting
a privilege to prevent disclosure of information bears the burden of establishing the
privilege.

See United States v. Hatcher, 323 F.3d 666, 675 (8th Cir. 2003);

Diversified, 572 F.2d at 609.
Briggs contests Exmark’s assertion of the first and fifth requirements of the
attorney-client privilege; therefore the court’s analysis will focus on those two
requirements. See Filing No. 256 - Brief p. 11-14; Filing No. 269 - Reply p. 7-13.

1.

Legal Advice

Briggs contends the list and related documents are notes and emails appearing
to contain factual information being exchanged between non-attorney Exmark
employees. See Filing No. 256 - Brief p. 11-12. Briggs argues Exmark cannot establish
the list and related documents are privileged documents or communications “made for
the purpose of securing legal advice.” Id.
Exmark argues the documents in dispute were clearly communicated to counsel
for the purpose of obtaining legal advice. See Filing No. 265 - Response p. 10, 12-14.
Exmark argues Benson repeatedly testified he prepared and maintained the list for the
purpose of seeking legal advice; therefore, the list meets the first element of the
attorney-client privilege. Id. (citing, e.g., Filing No. 191-5 Ex. 3 - Benson Depo. p.
174:2-4; 186:3-7).

Exmark argues two of the documents, 163 and 173, which are

emails, explicitly list Exmark’s attorney, Donald Trevarthen (Trevarthen), as the
recipient, which would qualify the emails as privileged. Id. at 13. Exmark contends the
remaining entries are Benson’s notes for communicating with Exmark’s attorney, and
the notes are the list, or reflect the list’s contents.

Id.

Exmark asserts it is well-

established that notes for communicating with counsel are privileged. Id. at 14.
In reply, Briggs contends Exmark’s designations of the seven documents are
erroneous. See Filing No. 269 - Reply p. 7. Briggs argues documents 163 and 173 are
email chains conveying factual information sent between non-attorney Exmark
employees. Id. Briggs argues the fact that these emails were potentially forwarded to
counsel does not invoke the attorney-client privilege as to the prior emails. Id. at 7-8.
Briggs also argues documents 172 and 175 are merely emails between non-attorney
Exmark employees and the mere fact the emails reflect factual information
5

communicated to counsel does not render the emails privileged. Id. at 9. Lastly, Briggs
asserts documents 164, 205, and 206, as shown in the unredacted portions of 164 and
205, are Benson’s summaries of comments, observations, and notes compiled by
engineers attending shows.

Id. at 9-10.

Briggs argues the summaries are for a

business purpose, and are not “communication[s] made for the purpose of securing
legal advice.” Id.

a.

Emails and Notes

The court finds the August 29, 2006, and April 17, 2007, emails from Benson to
Trevarthen, which are listed under documents 163 and 173, respectively, are protected
under the attorney-client privilege.

In applying the first requirement that the

communication be made for the purpose of seeking legal advice, in Diversified, the
Eighth Circuit noted that when a matter is committed to a legal advisor, it is “prima facie
committed for the sake of legal advice and [is], therefore, within the privilege absent a
clear showing to the contrary.” Diversified, 572 F.2d at 609-10. Here, there is no
evidence to the contrary. Additionally, evidence shows the communications were made
within the scope of Benson’s job responsibilities and at a superior’s direction to secure
legal advice. See Filing No. 191-1 - Benson Decl. ¶¶ 2-3; Filing No. 191-3 Ex. 1 Benson Depo. p. 11:7 - 13:12.
The court finds the August 25, 2006, email from Dave Converse to Benson and
the April 13, 2007, email from Todd Moore to Benson, which are listed under documents
163 and 173, respectively, are not protected by the attorney-client privilege. Here, there
is no presumption the communications were made for the purpose of seeking legal
advice. While the subsequent emails from Benson to Trevarthen are privileged, as
explained above, Exmark has not shown the prior emails are similarly privileged. First,
Exmark has not sufficiently explained why the emails exchanged between non-attorneys
qualify as “communication . . . made for the purpose of securing legal advice.” Second,
and significantly, Exmark produced similar emails exchanged between non-attorney
employees, which discuss the list and its contents. By producing similar emails, Exmark
implicitly acknowledged the August 25, 2006, and April 13, 2007, emails are not
privileged. There is no basis to differentiate the already disclosed emails from these
two emails.

The fact that the emails may mention Briggs or its subsidiary is not
6

sufficient reason to invoke the attorney-client privilege. Similarly, documents 172 and
175, also emails between non-attorney Exmark employees, are not privileged because
Exmark has not shown the “communication[s were] made for the purpose of securing
legal advice.”
Lastly, the court finds documents 164, 205, and 206, which are Benson’s
summaries sent to select Exmark employees, are not protected under the attorneyclient privilege.

Exmark has not shown the “communication[s were] made for the

purpose of securing legal advice.” The redacted portions of documents 164 and 205
appear to be summaries of fact, and not communications for legal advice. There is no
evidence the redacted portions were communicated with counsel.

Additionally, the

court cannot reconcile Exmark’s production of the redacted versions of 164 and 205
with the assertion the summaries are privileged.

See Filing No. 257-12 Ex. 11 -

Redacted Version of 164; Filing No. 270-2 Ex. 1 - Redacted Version of 205. Production
of redacted portions is inconsistent with attaching the privilege to the summaries. The
attorney-client privilege will not protect portions of those summaries solely because the
redacted portions potentially name Briggs.
Importantly, the court is compelling production only of the emails and notes
commenting or referencing the list, not the actual list itself. The seven documents
Briggs seeks are identified as emails or notes. See Filing No. 257-11 Ex. 10 - Privilege
Log. Exmark states documents 164, 172, 175, 205, and 206 “are the [list], or reflect its
contents[,]” but if the redacted versions of documents 164 and 205 and the documents’
descriptions in the Privilege Log are indicative of the documents’ contents, the
documents merely reflect the list’s contents in the form of summaries and emails, and
are not the actual list.

b.

The List

The court finds the list, not the notes or emails summarizing or commenting on
list, is a document “made for the purpose of securing legal advice.” See Filing No. 1911 - Benson Decl. ¶¶ 2-3; Filing No. 191-3 Ex. 1 - Benson Depo. p. 11:7 - 13:12.
Benson’s testimony indicates he created the list within the scope of Benson’s job
responsibilities, at a superior’s direction to secure legal advice, and communicated the
list to inside counsel. See id.; see also United States v. Defonte, 441 F.3d 92, 95
7

(2nd Cir. 2006) (“[A]n outline of what a client wishes to discuss with counsel-and which
is subsequently discussed with one’s counsel-would seem to fit squarely within our
understanding of the scope of the privilege.”). The court will address below whether the
list was disseminated beyond those who needed to know the list’s contents.

2.

Dissemination

Briggs contends Exmark is unable to demonstrate the individuals who received
the list needed to know its contents. See Filing No. 256 - Brief p. 12. Briggs asserts at
least eleven non-attorney employees had access to the list on the S: drive. Id. (citing
Filing No. 257-5 Ex. 4 - Benson Depo. (explaining placement of the list on the S: drive)).
Briggs argues Benson did not instruct individuals with access to the list that the list was
confidential or otherwise restricted. Id. at 12-13. Briggs argues if the list constitutes
communication to counsel, then the list would only need to be accessed by Benson and
counsel, but not viewed, circulated, and revised by at least eleven non-attorney Exmark
employees. Id. at 13.
Exmark argues the list was not widely disclosed to third parties, but instead only
disclosed to limited internal employees. See Filing No. 265 - Reply p. 15-19. Exmark
argues Benson expressed an intent to keep the list confidential by keeping the list in a
separate, secure location under the R: drive. Id. at 15. Exmark contends Benson only
disclosed the list to Exmark employees who needed to see the list and this court should
not second-guess Benson’s business judgment. Id. Exmark asserts Benson had to
disclose the list to certain engineers because the engineers were attending industry
shows and Benson relied on engineers at the shows to gather factual information
relevant to the list. Id. at 16. Exmark asserts the engineers could not report to Benson
without knowing the contents of the list. Id. at 16-17. Lastly, Exmark argues although
Benson saved the list to the S: drive, the list was promptly auto-deleted after sixty days
and no one who did not need the list was made aware the list was temporarily on the S:
drive. Id. at 18 (citing Filing No. 191-5 Ex. 3 - Benson Depo. p. 191:15-16).
Briggs reiterates the list was shared with other employees and Benson did not
label the list restricted or confidential. See Filing No. 269 - Reply p. 11-13. Briggs also
argues if the list, as described by Exmark, is simply notes for communicating with
counsel, then the engineers would not need the know the contents of the list. Id.
8

a.

Emails and Notes

No evidence exists the August 29, 2006, and April 17, 2007, emails, the two
emails the court finds satisfy the first four requirements of the attorney-client privilege,
were disseminated beyond those who needed to know the contents. Therefore, these
emails are protected under the attorney-client privilege.

b.

The List

All testimony and affidavits indicate the list was treated as confidential. The list
was on the R: drive, Benson testified the list was confidential, and he testified he
intended to keep it confidential. See, e.g., Filing No. 191-1 - Benson Decl. ¶ 4; Filing
No. 257-2 Ex. 1 - Interrogatories p. 31-32; Filing No. 191-5 Ex. 3 - Benson Depo. p.
191:3-7; see also In re Bieter Co., 16 F.3d at 939 (“This requirement exists as an
indication of the intent of the client and the attorney to keep the communication
confidential.”) (emphasis added).

Although the list was saved to the S: drive, the

location was only temporary, and evidence shows only those engineers who needed to
access the list were given the link to access the list on the S: drive. See, e.g., Filing No.
191-5 Ex. 3 - Benson Depo. p. 191:3-16. Thus, while the list was disseminated to
eleven Exmark employees, the list was shared with these employees because they had
the information necessary for Benson to update and compile the list, which was then
provided to counsel. Exmark sufficiently justified its objectively reasonable business
decision to disclose the list to select employees in order for Benson to compile an
updated list for counsel. There is no evidence the list was shared with third parties or
otherwise circulated outside of limited Exmark employees. Accordingly, the court finds
the fifth requirement is satisfied and the attorney-client privilege applies to the list.

B.

Waiver
Assuming the list is privileged, Briggs asserts Exmark waived any privilege by

selectively disclosing communications describing the list’s contents and allowing limited
testimony about the list. See Filing No. 256 - Brief p. 15-17. Exmark contends Briggs’
waiver argument fails because the documents and testimony provided were not
privileged, therefore, no waiver could occur. See Filing No. 265 - Response p. 20.
9

Exmark argues the factual emails from non-attorneys to Benson were not privileged
because the emails were not sent to an attorney and did not seek legal advice. Id. at
21.
Because the court finds the documents Exmark disclosed, and those the court
orders Exmark to disclose, are not privileged, Exmark has not waived its attorney-client
privilege to the list. See Blankenship v. USA Truck, Inc., 515 F. App’x 622, 623 (8th
Cir. 2013) (stating disclosure of non-privileged communications does not waive the
attorney-client privilege); Kovacs v. Hershey Co., No. 04-CV-01881-WYD, 2006 WL
3054167, at *3 (D. Colo. Oct. 25, 2006) (“Disclosure of non-privileged information
obviously does not waive the attorney-client privilege.”) (citation omitted).

C.

Underlying Fact Disclosure and Fed. R. Civ. P. 30(b)(6) Deponent
Briggs also contends, in accordance with Upjohn, Exmark may not refuse to

disclose underlying facts in privileged communications. See Filing No. 256 - Brief p. 1314. Briggs asserts it should be permitted discovery of those facts and a continuation of
certain depositions to discuss those facts. Id. Exmark argues it has reviewed all
privileged documents and disclosed all responsive facts to Briggs. See Filing No. 265 Response p. 19-20. Exmark argues it has not withheld any factual information. Id.
In reply, Briggs argues Exmark’s assurances ring hollow because Exmark’s Rule
30(b)(6) witness was unable to recall when Exmark knew about Briggs’ baffles. See
Filing No. 269 - Reply p. 13-17. Briggs asserts in its Rule 30(b)(6) deposition notice,
Briggs requested Exmark to designate a witness knowledgeable of all facts and
circumstances related to Briggs’ laches defense. Id. (citing Filing No. 270-4 Ex. 3 30(b)(6) Deposition Notice ¶¶ 17-21). Briggs argues Exmark failed to designate and
prepare a person knowledgeable in the matters identified in Briggs’ notice. Id. Exmark
designated Benson, yet Briggs argues he was unable to recall the majority of
information relevant to Briggs’ laches defense. Id. (citing Filing No. 270-5 Ex. 4 Exmark’s Response p. 16-19; Filing No. 270-3 Ex. 2 - Benson Depo. p. 28:7-32:12 (Q:
“When was the first time that you heard someone at Exmark express the view that they
believed Ferris infringed the ’863 patent?” A: “I don’t recall.”), 58:8-59:10 (Q: “Was
Exmark aware in 2004 when Briggs acquired Simplicity that the Ferris products were
infringing the ’863 patent?” A: “I don’t know.”), 76:9-16 (Q: “And you don’t recall any
10

concerns raised by anyone at Exmark as to whether Ferris infringes the ’863 patent?” A:
“I don’t recall.”)).6

Briggs contends Exmark’s failure to prepare its Rule 30(b)(6)

designee on the factual contents of the list, for example whether Briggs is on the list, is
a violation of Rule 30(b)(6) that warrants a continued deposition. Id.
Federal Rule of Civil Procedure 30(b)(6) provides, in pertinent part, “[t]he persons
designated must testify about information known or reasonably available to the
organization.” Fed. R. Civ. P. 30(b)(6) (emphasis added). “The testimony of a Rule
30(b)(6) witness represents the collective knowledge of the corporation, not of the
specific individual deponents.” QBE Ins. Corp. v. Jorda Enter., Inc., 277 F.R.D. 676,
688 (S.D. Fla. 2012).

“The duty to prepare a Rule 30(b)(6) witness goes beyond

matters personally known to the designee or to matters in which the designated witness
was personally involved.” QBE Ins., 277 F.R.D. at 689. “If the rule is to promote
effective discovery regarding corporations the spokesperson must be informed.”
Protective Nat’l Ins. Co. of Omaha v. Commonwealth Ins. Co., 137 F.R.D. 267, 278
(D. Neb. 1989). “[T]he corporation] must make a conscientious good-faith endeavor to
designate the persons having knowledge of the matters sought by [the interrogator] and
to prepare those persons in order that they can answer fully, completely, unevasively,
the questions posed by [the interrogator] as to the relevant subject matters.” Dravo
Corp. v. Liberty Mut. Ins. Co., 164 F.R.D. 70, 75 (D. Neb. 1995) (citations omitted).
After reviewing the provided portions of Benson’s deposition, the court finds
Exmark failed to fully satisfy its obligation to designate a knowledgeable witness to
testify about information relevant to Briggs’ laches defense.

Benson’s testimony

demonstrated a lack of knowledge and preparation for the deposition. See, e.g., Filing
No. 270-3 Ex. 2 - Benson Depo. p. 28:7-32:12 (Q: “When was the first time that you
heard someone at Exmark express the view that they believed Ferris infringed the ’863
patent?” A: “I don’t recall.”). Benson’s responses indicated that he did not properly
prepare for the deposition by reviewing the list and other related documents.
Additionally, a Rule 30(b)(6) witness “must provide responsive underlying factual
information even though such information was transmitted through a firm’s corporate
lawyers.” See Great Am. Ins. Co. of New York v. Vegas Const. Co., 251 F.R.D. 534,
6

Briggs cites additional deposition responses by Benson wherein he responded “I don’t know” or “I don’t
recall,” but, in the interest of brevity and length, the court will not cite to all instances, but instead
reference CM/ECF pages fifteen and sixteen in Briggs’ brief. See Filing No. 269 - Reply.
11

541 (D. Nev. 2008) (citation omitted); see also Upjohn, 449 U.S. at 395-96 (stating
facts communicated to counsel are not protected by the attorney-client privilege).
Therefore, the court finds Briggs shall have the opportunity to depose Benson or a
knowledgeable and prepared corporate representative to offer testimony concerning
Briggs’ laches defense. See Reilly v. Natwest Mkts. Grp. Inc., 181 F.3d 253, 268 (2d
Cir. 1999) (“To satisfy Rule 30(b)(6), the corporate deponent has an affirmative duty to
make available such number of persons as will be able to give complete,
knowledgeable and binding answers on its behalf.”) (citation omitted).

D.

Payment of Expenses
Federal Rule of Civil Procedure 37(a)(5)(C) provides “the court . . . may, after

giving an opportunity to be heard, apportion the reasonable expenses for the motion.”
The court finds, based on sufficient information in the parties’ briefs, Exmark failed to
designate a prepared and knowledgeable corporate representative for a properly
noticed Rule 30(b)(6) deposition and therefore will bear the responsibility for the
additional deposition.

Exmark shall pay fees of one attorney’s presence at the

deposition and the costs associated with the additional deposition.

IT IS ORDERED:
Briggs’ Motion to Compel Production of Exmark’s Patent Infringement Potentials
List and Related Documents (Filing No. 255) is granted in part and denied in part as set
forth in this Order.
ADMONITION
Pursuant to NECivR 72.2 any objection to this Order shall be filed with the Clerk
of the Court within fourteen (14) days after being served with a copy of this Order.
Failure to timely object may constitute a waiver of any objection. The brief in support of
any objection shall be filed at the time of filing such objection. Failure to file a brief in
support of any objection may be deemed an abandonment of the objection.
Dated this 2nd day of February, 2015.
BY THE COURT:
s/ Thomas D. Thalken
United States Magistrate Judge
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