MACDERMID PRINTING SOLUTIONS, L.L.C. v. E.I. DU PONT DE NEMOURS AND COMPANY

Filing 6

MEMORANDUM OPINION AND ORDER OF UNITED STATES MAGISTRATE JUDGE signed by MAG/JUDGE L. PATRICK AULD on 03/06/2012. The Court concludes that the information sought from Dr. Beighle, a non-party to the underlying action, is either more readily available from another source or irrelevant. IT IS THEREFORE ORDERED that the Motion to Quash Subpoena to Testify Served Upon Patricia Beighle (Docket Entry 1 ) is GRANTED. IT IS FURTHER ORDERED that each party shall file an appropriate motion to seal addres sing the relevant considerations for filing their respective briefs and attachments thereto underseal with the Court by March 30, 2012. If DuPont has not filed any such motion to seal by that date, the Clerk shall unseal DuPont's Docket Entries 3 and 3-2 through 3-19. If Dr. Beighle has not filed any such motion to seal by that date, the Clerk shall unseal Dr. Beighle's Docket Entries 4 and 4-2 through 4-4.(Taylor, Abby)

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA

MACDERMID PRINTING SOLUTIONS,
L.L.C.,
Plaintiff,
v.
E.I. DU PONT DE NEMOURS AND
COMPANY,
Defendant.

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1:10MC38

MEMORANDUM OPINION AND ORDER
OF UNITED STATES MAGISTRATE JUDGE
The instant case comes before the Court on the Motion to Quash
Subpoena to Testify Served Upon Patricia Beighle (Docket Entry 1).
For the reasons that follow, the instant Motion will be granted.1

The Court notes that DuPont’s Response Brief and all
attachments thereto (see Docket Entries 3, 3-2 - 3-19), as well as
MacDermid’s Reply Brief and all attachments thereto (see Docket
Entries 4, 4-2 - 4-4), were filed with the Court under seal. As a
basis for said sealing, both briefs contain identical language
stating only that the relevant party “respectfully submits this
paper under seal as it divulges information and quotes from
documents designated as ‘Confidential’” under a Protective Order
entered in the underlying action. (Docket Entry 3 at 1 n.1; Docket
Entry 4 at 1 n.1.) This representation does not adequately address
the relevant standard for sealing documents with the Court,
including why less drastic options, such as redaction, would not
suffice. See, e.g., Volumetrics Med. Imaging, LLC v. Toshiba Am.
Med. Sys., No. 1:05CV955, 2011 WL 2413404, at *2-5 (M.D.N.C. June
10, 2011).
Accordingly, as part of this Order, the Court will
direct the parties to file the appropriate motions addressing the
issues outlined in Volumetrics or otherwise have their filings
unsealed by the Clerk of Court.
1

Background
MacDermid Printing Solutions, L.L.C. (“MacDermid”) and E.I. Du
Pont De Nemours and Company (“DuPont”) are currently embroiled in
a patent infringement action pending in the United States District
Court for the District of New Jersey.

(See Docket Entry 2 at 1;

see also MacDermid Printing Solutions, LLC v. E.I. du Pont de
Nemours and Co., Civil Action No. 07-4325 (D.N.J.).)

In that

action, which underlies the instant motion to quash, MacDermid
alleges that DuPont infringed on certain claims of U.S. Patent No.
RE39,835 (the “‘835 Patent”).
defenses

to

MacDermid’s

(See Docket Entry 2 at 2.)

allegations

include

invalidity, equitable estoppel, and laches.

DuPont’s

non-infringement,

(See id.)

DuPont has

also filed a counterclaim seeking a declaratory judgment that the
claims of the ‘835 Patent are invalid.

(Id.)

In connection with that matter, DuPont served a subpoena
seeking both testimony and documents on non-party Dr. Patricia
Beighle (“Dr. Beighle”) pursuant to Rule 45 of the Federal Rules of
Civil Procedure. (Docket Entry 2-2.) Dr. Beighle’s instant Motion
moves to quash that subpoena “on the grounds that it is overly
broad, unduly burdensome, seeks testimony not reasonably calculated
to lead to the discovery of admissible evidence, and constitutes an
unnecessary fishing expedition.”

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(Docket Entry 2 at 1.)

Legal Standard
Rule 45 of the Federal Rules of Civil Procedure governs
subpoenas issued to non-parties.

See Fed. R. Civ. P. 45.

The

scope of discovery under Rule 45 is the same as that under Rule 26,
see Kinetic Concepts, Inc. v. ConvaTec Inc., 268 F.R.D. 226, 240
(M.D.N.C. 2010) (citing Fed. R. Civ. P. 26 advisory committee’s
notes, 1991 Amendment, Subdivision (a)), which allows for the
discovery of “any nonprivileged matter that is relevant to any
party’s claim or defense,” Fed. R. Civ. P. 26(b)(1).

Under this

standard, “[r]elevant information need not be admissible at the
trial if the discovery appears reasonably calculated to lead to the
discovery of admissible evidence.”

Id.

A non-party in receipt of a subpoena may move to quash.
Fed. R. Civ. P. 45(c)(3).

See

In so doing, the non-party “‘may seek

from the court protection from discovery via the overlapping and
interrelated provisions of both Rules 26 and 45’” of the Federal
Rules of Civil Procedure.

Snoznik v. Jeld-Wen, Inc., 259 F.R.D.

217,

(quoting

222

(W.D.N.C.

2009)

Mannington

Mills,

Inc.

v.

Armstrong World Indus., Inc., 206 F.R.D. 525, 529 (D. Del. 2002)).
Rule 45 provides that the Court must quash a subpoena that:
(i) fails to allow a reasonable time to comply;
(ii) requires a person who is neither a party nor a
party’s officer to travel more than 100 miles from where
that person resides, is employed, or regularly transacts
business in person--except that, subject to Rule
45(c)(3)(B)(iii), the person may be commanded to attend
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a trial by traveling from any such place within the state
where the trial is held;
(iii) requires disclosure of privileged or other
protected matter, if no exception or waiver applies; or
(iv) subjects a person to undue burden.
Fed. R. Civ. P. 45(c)(3)(A).

It further provides that the Court

may quash a subpoena if it requires:
(i) disclosing a trade secret or other confidential
research, development, or commercial information;
(ii) disclosing an unretained expert’s opinion or
information that does not describe specific occurrences
in dispute and results from the expert’s study that was
not requested by a party; or
(iii) a person who is neither a party nor a party’s
officer to incur substantial expense to travel more than
100 miles to attend trial.
Fed. R. Civ. P. 45(c)(3)(B).
Under Rule 26(b)(2), the Court must limit the frequency or
extent of discovery if it determines that:
(i) the discovery sought is unreasonably cumulative or
duplicative, or can be obtained from some other source
that is more convenient, less burdensome, or less
expensive;
(ii) the party seeking discovery has had ample
opportunity to obtain the information by discovery in the
action; or
(iii) the burden or expense of the proposed discovery
outweighs its likely benefit, considering 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).
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In sum, when conducting an analysis under Rule 45, the Court
“is required to apply the balancing standards: relevance, need,
confidentiality and harm.

Even if the information sought is

relevant, discovery is not allowed where no need is shown, or where
compliance is unduly burdensome, or where the potential harm caused
by production outweighs the benefit.” Insulate Am. v. Masco Corp.,
227 F.R.D. 427, 432 (W.D.N.C. 2005) (citations omitted).
Discussion
DuPont contends that Dr. Beighle’s prior experience working
with technology relevant to the ‘835 Patent gives her knowledge
directly relevant to DuPont’s defenses. (See Docket Entry 3.) The
technology at issue in the underlying matter involves flexography a type of printing process used on a variety of packaging products
such as corrugated carton boxes, card boxes, and webs of plastic
films.

(See id. at 3.)

The ‘835 Patent deals with specific

methods for creating the flexographic plates that flexography
employs.

(See id.; see also Docket Entry 3-2.)

worked for DuPont from 1982 to 2001.

Dr.

Beighle

(See Docket Entry 5 at 1.)

From 1993 to 1999, Dr. Beighle worked in DuPont’s Parlin, New
Jersey manufacturing facility in the position of manufacturing
manager. (Id.)

Five years after retiring from DuPont in 2001, Dr.

Beighle joined MacDermid as a manufacturing consultant.
Docket Entry 2 at 2.)
its

Response

Brief,

(See

Because of these roles, DuPont contends, in
that

Dr.
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Beighle

has

highly

relevant

information specifically related to: 1) DuPont’s defense that the
‘835 Patent is invalid; and 2) DuPont’s contention that any lost
profits

damages

should

be

reduced

because

MacDermid

had

manufacturing problems and because several of MacDermid’s products
did not embody the ‘835 Patent.

(See Docket Entry 3 at 8-14.)

Validity of the ‘835 Patent
A party can prove the invalidity of a patent claim if it can
show, by clear and convincing evidence, that the invention claimed
was in public use or on sale in the United States more than a year
prior to the patent application’s filing date.

See 35 U.S.C.

§ 102(b); see also Linear Tech. Corp. v. Int’l Trade Comm’n, 566
F.3d 1049, 1066 (Fed. Cir. 2009).

In light of its assertion of

such an invalidity defense, DuPont argues that “Dr. Beighle has
information that would corroborate DuPont’s testimony and documents
concerning DuPont’s prior use and sale of digital plates that
invalidate certain claims of the ‘835 [P]atent now asserted against
DuPont.”

(Docket Entry 3 at 14.)

In Reply, Dr. Bieghle contends

that because the plates that are the subject of the allegedly
invalidating sale were manufactured in Germany, Dr. Beighle’s work
in the New Jersey plant is irrelevant.
4.)

(See Docket Entry 4 at 3-

The Declaration of Patricia J. Beighle (Docket Entry 5),

submitted in conjunction with Dr. Beighle’s Reply Brief, also
asserts generally that “[t]o the best of [her] knowledge” plates

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containing claims of the ‘835 Patent “were not manufactured for
commercial sale at the Parlin, New Jersey facility prior to” the
relevant time period.

(Id. ¶ 6.)

On the instant facts, the Court finds merit in Dr. Beighle’s
arguments.

The information requested “can be obtained from some

other source that is more convenient, less burdensome, or less
expensive.” Fed. R. Civ. P. 26(b)(2). DuPont, as the manufacturer
of the plates, is the best source of information regarding the
plates’ prior sale.
manufactured

at

a

That it appears the plates in question were
separate

manufacturing

facility

located

in

Germany (see Docket Entry 3-8 at 4) only strengthens this finding.
In sum, the availability of the relevant information from another,
better source makes the burden on Dr. Beighle unwarranted in this
case.
Evidence Regarding Lost Profits
In

order

to

recover

lost

profits,

MacDermid

“must

show

‘causation in fact,’ establishing that ‘but for’ the infringement,
[it] would have made additional profits.”
Trade, Inc.,

486

F.3d 1286,

Wechsler v. Macke Int’l

1293 (Fed.

quotation marks and citations omitted).

Cir.

2007)

(internal

DuPont asserts that the

testimony of Dr. Beighle will demonstrate that any lost profits
claimed by MacDermid should be reduced because certain products
manufactured by MacDermid do not actually embody the claims of the

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‘835 Patent and because MacDermid suffered from its own internal
manufacturing issues which would affect its profit calculations.
(See Docket Entry 3 at 9-14).
answers

that

any

analysis

In her Reply Brief, Dr. Beighle

regarding

lost

profits

is

wholly

irrelevant as “MacDermid has recently informed DuPont that it will
be calculating damages based on a reasonable royalty analysis
rather than a lost profits analysis.”

(Docket Entry 4 at 8.)

In

light of this development, no basis exists for DuPont to depose Dr.
Beighle on issues related to lost profits.
Document Request
DuPont’s subpoena on Dr. Beighle also contains 13 document
requests.

(See Docket Entry 2-2 at 9).

Dr. Beighle contends that

“[n]one of the document requests relate to the patent-at-issue or
even MacDermid’s manufacturing processes.”

(Docket Entry 2 at 9.)

DuPont’s Response Brief lacks any argument regarding the document
requests, save the following paragraph in a footnote:
Dr. Beighle’s assertions regarding DuPont’s document
requests are a red herring. DuPont has no intention of
“harassing” Dr. Beighle; the documents requested are
those
that
MacDermid has not
produced
because,
presumably, they are within the sole possession of Dr.
Beighle (if any). MacDermid has produced hundreds of
documents from Dr. Beighle’s files in response to over
one hundred document requests propounded by DuPont;
DuPont did not see fit to burden Dr. Beighle with these
hundred document requests, and simply limited the scope
to those only within Dr. Beighle’s possession.
(Docket Entry 3 at 11 n.5.)

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DuPont’s lone mention of the document request does not address
any issues regarding the relevancy of the documents or DuPont’s
need in the underlying action.

(See id.)

Accordingly, because no

grounds exist to find any relevancy or need of the documents,
DuPont’s subpoena will be quashed in this respect as well.
Conclusion
The Court concludes that the information sought from Dr.
Beighle, a non-party to the underlying action, is either more
readily available from another source or irrelevant.
IT IS THEREFORE ORDERED that the Motion to Quash Subpoena to
Testify Served Upon Patricia Beighle (Docket Entry 1) is GRANTED.
IT

IS

FURTHER

ORDERED

that

each

party

shall

file

an

appropriate motion to seal addressing the relevant considerations
for filing their respective briefs and attachments thereto under
seal with the Court by March 30, 2012.

If DuPont has not filed any

such motion to seal by that date, the Clerk shall unseal DuPont’s
Docket Entries 3 and 3-2 through 3-19.

If Dr. Beighle has not

filed any such motion to seal by that date, the Clerk shall unseal
Dr. Beighle’s Docket Entries 4 and 4-2 through 4-4.

/s/ L. Patrick Auld
L. Patrick Auld
United States Magistrate Judge

Date:

March 6, 2012
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