KONINKLIJKE PHILIPS ELECTRONICS N.V. v. HUNT CONTROL SYSTEMS, INC.
MEMORANDUM OPINION & ORDER denying 122 Appeal Magistrate Judge Decision to District Court. Signed by Judge Esther Salas on 11/7/14. (jd, )
NOT FOR PUBLICATION
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
KONINKLIJKE PHILIPS ELECTRONICS
Civil Action No. 11-3684 (ES)(MAH)
OPINION & ORDER
HUNT CONTROL SYSTEMS, INC.,
AN ASSUMED TRADE NAME FOR
SALAS, DISTRICT JUDGE
Defendant Hunt Control Systems, Inc. (“Hunt”) appeals an Order and Opinion by
Magistrate Judge Clark. (D.E. No. 122). On April 16, 2014, Judge Clark granted Plaintiff
Koninklijke Philips N.V.’s (“Philips”) Motion for a Protective Order against Hunt’s notice of a
Rule 30(b)(6) deposition directed at Philips’s ability to search and produce electronically stored
information (ESI). (D.E. No. 117). For the reasons below, Hunt’s appeal is DENIED.
This case was originally assigned to Magistrate Judge Dickson, and was transferred to
Magistrate Judge Clark in August 2013. It was transferred to Magistrate Judge Hammer in April
2014. (D.E. No. 116).
As the Court writes for the parties involved, it will review the facts briefly. This is a
trademark action in which Philips asks the Court to reverse a decision by the U.S. Patent and
Trademark Office’s Trademark Trial and Appeal Board. The Board sustained Hunt’s opposition
and denied Philips’s registration of the tagline “Sense and Simplicity.” Hunt’s registered tagline
is “Simplicity.” (See D.E. No. 1).
For the past two years, the parties have engaged in discovery disputes regarding Philips’s
ability to search and produce ESI. Hunt first interviewed a Philips employee regarding Philips’s
ESI practices in March 2012. (D.E. No. 124 at 5). Nine months later, in December 2012, Hunt
noticed a 30(b)(6) deposition directed toward Philips’s information technology (IT) capabilities.
(Id.). In an order addressing several discovery disputes, Judge Dickson stayed the IT deposition,
and instead instructed Hunt to send Philips a letter with no more than eight questions regarding
Philips’s IT capabilities that Hunt alleges were not answered during the March 2012 interview.
(D.E. No. 53 at 4). Judge Dickson instructed Philips to respond to the eight questions in writing,
and granted Hunt permission to “re-apply [for the 30(b)(6) deposition] once the parties have met
and conferred in good faith.” (Id.).
Hunt reissued its notice of a 30(b)(6) IT deposition in November 2013, following the
completion of Philips’s initial document production. (D.E. No. 95 at 6). Philips objected in a
letter to Judge Clark, arguing that an IT deposition “is untimely and unnecessary.” (D.E. No. 80
at 3). Hunt responded, and submitted the declaration of Sean McNeill, an IT professional for The
Microsoft Consulting Company, who opined that Philips can easily run searches across its
company without custodian-based searching or disruption of service. (D.E. No. 84 at 16-17).
Philips countered with its own declarations from Phil Fedele (the Philips employee initially
interviewed by Hunt in March 2012) and Tom Matzen (Philips’s e-discovery consultant), who
disputed Mr. O’Neill’s assertions regarding the feasibility of a cross-company search. (D.E. No.
On January 27, 2014, Judge Clark ordered Philips to file a formal motion for a protective
order against Hunt’s 30(b)(6) IT deposition. (D.E. No. 88 at 1-2). After reviewing the parties’
briefs and accompanying declarations and exhibits, Judge Clark granted Philips’s motion for a
protective order. (D.E. No. 117). Hunt filed the present appeal. (D.E. No. 122).
A. Standard of Review
Generally, a district court may reverse a magistrate judge’s determination of a non-
dispositive issue only if it is “clearly erroneous or contrary to law.” 28 U.S.C. § 636(b)(1)(A); see
also Fed. R. Civ. P. 72(a); Cipollone v. Liggett Grp., Inc., 785 F.2d 1108, 1113 (3d Cir. 1986). A
finding is clearly erroneous “when although there is evidence to support it, the reviewing court on
the entire evidence is left with the definite and firm conviction that a mistake has been committed.”
United States v. U.S. Gypsum Co., 333 U.S. 364, 395 (1948).
When an appeal “seeks review of a matter within the purview of the Magistrate Judge, such
as a discovery dispute, an even more deferential standard, the ‘abuse of discretion’ standard, must
be applied.” Salamone v. Carter’s Retail Inc., No. 09–5856, 2012 WL 821494, at *4 (D.N.J. Mar.
9, 2012); see also 12 Charles Alan Wright, Arthur R. Miller & Richard L. Marcus, Federal Practice
and Procedure: Civil 2d § 3069 (2d ed. 1997) (“[M]any matters such as discovery scheduling or
disputes might better be characterized as suitable for an abuse-of-discretion analysis”). “The
deferential standard of review is particularly appropriate in a case where the magistrate judge
managed the case from the outset, and thus has a thorough knowledge of the proceedings.”
Robinson v. Horizon Blue Cross-Blue Shield of New Jersey, No. 12-2981, 2014 WL 3573339, at
*1 (D.N.J. July 21, 2014) (citing Cooper Hosp./Univ. Med. Ctr. v. Sullivan, 183 F.R.D. 119, 127
Because the present appeal concerns a discovery dispute, which is squarely within the
magistrate judge’s purview, the Court reviews for abuse of discretion.
Though the Court
recognizes that Judges Dickson and Clark shared management of the case, it is satisfied that Judge
Clark had thorough knowledge of the proceedings, and that an abuse-of-discretion analysis is
suitable. In any event, the Court finds that Judge Clark’s opinion would stand under either the
“clearly erroneous” or “abuse of discretion” standard.
B. The Magistrate’s April 16, 2014 Order Granting Philips’s Motion for a
Protective Order Did Not Constitute an Abuse of Discretion and Was Not
Clearly Erroneous or Contrary to the Law
Legal Standard for Protective Orders
Judge Clark’s Opinion and Order granting Philips’s motion for a protective order was not
contrary to law or an abuse of discretion. A court may enter a protective order limiting discovery,
including a deposition, for “good cause.” See Cipollone, 785 F.2d at 1121. Accordingly, the Court
may deny a discovery request if, after considering the following factors, the Court finds it likely
that the burden of the discovery would outweigh its benefits: (i) the unreasonably cumulative or
duplicative effect of the discovery, (ii) whether the party seeking discovery had ample opportunity
to obtain the information by other discovery, and (iii) the needs of the case, the amount in
controversy, the parties’ resources, the importance of the issues at stake in the action, and the
importance of the discovery in resolving the issues. Fed. R. Civ. P. 26(b)(2)(C); see also A&B
Ingredients, Inc. v. Hartford Fire Ins. Co., No. 8-6264, 2010 WL 335616, at *4 (D.N.J. Jan. 29,
2010). This rule aims “to guard against redundant or disproportionate discovery by giving the
court authority to reduce the amount of discovery that may be directed to matters that are otherwise
proper subjects of inquiry.” Leksi, Inc. v. Fed. Ins. Co., 129 F.R.D. 99, 105 (D.N.J. 1989).
Discovery and relevance are broad but not boundless. Id.
The Parties’ Positions
Hunt argues that the Court should reverse Judge Clark’s Order granting Philips’s Motion
for a Protective Order. (D.E. No. 122-1 at 11). Specifically, Hunt argues that Judge Clark
“mistakenly concluded that [Hunt] was seeking to ‘reopen the door to the collection of ESI
discovery.’” (D.E. No. 122-1 at 9). Hunt further argues that Judge Clark determined that Hunt
failed to demonstrate that Philip’s ESI production was insufficient without giving Hunt the
chance to make a record of insufficiency through a 30(b)(6) deposition. (Id. at 9-10). Finally,
Hunt argues that Judge Clark incorrectly conducted a “substantial burden” analysis by focusing
on the burden of discovery stemming from a 30(b)(6) deposition, rather than focusing on the
burden of the deposition itself. (Id. at 10).
Philips responds that the Court should uphold Judge Clark’s decision because there was
no abuse of discretion. (D.E. No. 124 at 2). Philips argues that Hunt failed to show that
Philips’s production of ESI was materially deficient, and further failed to show that an IT
deposition would yield any meaningful additional information. (Id. at 17-18). Philips also states
that Hunt’s notice of an IT deposition was unauthorized and untimely, given Judge Dickson’s
instruction that Hunt may “reapply” for the deposition. (Id. at 19-20). According to Philips,
Judge Dickson’s instruction to “reapply” did not constitute leave to issue an IT deposition notice
without first seeking the Court’s permission. (Id.). The Court will not address Philips’s
timeliness argument because it affirms on other grounds.
Judge Clark’s Opinion
Judge Clark’s findings support the conclusion that “good cause” existed to grant Philips’s
Motion for a Protective Order, and his Opinion and Order was not clearly erroneous or an abuse
First, the Court disagrees with Hunt that Judge Clark “mistakenly concluded that [Hunt]
was seeking to ‘reopen the door to the collection of ESI discovery.’” (D.E. No. 122-1 at 9).
Despite Hunt’s protestations, the record reflects that Hunt had two fulsome opportunities to
probe Philips’s ESI capabilities—during its initial interview of Mr. Fedele, and through the eight
follow-up questions issued to Philips. Though Hunt correctly notes that Judge Dickson gave
Hunt permission to reapply for an IT deposition, the “reapplication” effectively occurred through
briefing on Philips’s Motion for a Protective Order. Thus, while the Court does not disagree that
“Judge Dickson always made it abundantly clear that the ESI discovery door was always
‘open,’” Judge Dickson’s position did not preclude Judge Clark from finding (a year later) that
the door had closed. Judge Clark specifically found that “Philips has made adequate
representations to this Court that its approach to conducting and gathering ESI is reasonable.”
(D.E. No. 117 at 6). This finding weighs toward the duplicative nature of the discovery Hunt
seeks, and ultimately toward the conclusion that there was “good cause” for granting Philips’s
Second, the Court disagrees with Hunt that Judge Clark “declared the winner before the
race was even run” by determining that Hunt failed to demonstrate that Philips’s ESI production
was insufficient. Hunt asserts that Judge Clark’s Order “deprived Hunt of the ability to make a
record of Philips’s materially deficient ESI production,” but ignores the extensive record already
created on that issue. In addition to Hunt’s interview of Philips and the eight questions ordered
by Judge Dickson, the parties have submitted the declarations of Sean O’Neill, Phil Fedele, and
Thomas Matzen—all on the topic of Philips’s ESI capabilities. Again, Judge Clark’s finding
indicates the duplicative nature of the discovery sought, as well Hunt’s opportunity to obtain the
information by other discovery.
Third, while the Court agrees with Hunt that the proper “burden” inquiry must focus on
the burden of the deposition itself (rather than the burden posed by the mere possibility of
opening the door to more discovery), Philips has demonstrated the burden posed by the IT
deposition alone. For example, in its opposition to Hunt’s appeal, Philips states that “forcing
Philips to prepare for and attend an IT Deposition to explore the same information Hunt already
has learned multiple times from multiple sources . . . would be futile, wasteful, and hence
burdensome.” (D.E. No. 124 at 21). Though Judge Clark mentions the continued burden that
Philips might endure if the IT deposition opens the door to additional discovery (D.E. 114 at 7),
the Court does not find that he applied the “burden” analysis erroneously, and, in any event, the
Court is satisfied that the record reflects the unnecessary burden that Philips would incur from an
For the foregoing reasons, Hunt’s motion appealing the Opinion and Order of Judge
Clark is DENIED.
Esther Salas, U.S.D.J.
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