E.I. DU PONT DE NEMOURS AND COMPANY v. MACDERMID PRINTING SOLUTIONS, L.L.C.
Filing
6
MEMORANDUM OPINION AND ORDER OF UNITED STATES MAGISTRATE JUDGE signed by MAG/JUDGE L. PATRICK AULD on 3/6/12, that the Motion to Quash Subpoena to Testify Served Upon Phillip Beighle (Docket Entry 1 ) is GRANTED IN PART and DENIED IN PART; in that D uPont can proceed with its deposition of Dr. Beighle limited to matters concerning MacDermid's internal manufacturing difficulties for purposes of refuting MacDermid's allegations that anti-competitive conduct on the part of DuPont caused M acDermid's failure to achieve success in the marketplace. FURTHER 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 Cou rt 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 3-7. If Dr. Beighle has not filed any such motion to seal by that date, the Clerk shall unseal Dr. Beighle's Docket Entries 4 , 4-2 and 4-3. (Law, Trina)
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
E.I. DU PONT DE NEMOURS AND
COMPANY,
Plaintiff,
v.
MACDERMID PRINTING SOLUTIONS,
L.L.C.,
Defendant.
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1:10MC39
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 Phillip Beighle (Docket
Entry 1).
For the reasons that follow, the instant Motion will
be granted in part and denied in part.1
The Court notes that DuPont’s Response Brief and all
attachments thereto (see Docket Entries 3, 3-2 - 3-7), as well as
MacDermid’s Reply Brief and all attachments thereto (see Docket
Entries 4, 4-2, 4-3), 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) (unpublished). 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 E.I. DuPont de Nemours & Co. v. MacDermid Printing
Solutions, LLC, C.A. No. 06-3383 (D.N.J.).)
In that action, which
underlies
DuPont
the
instant
motion
to
quash,
alleges
that
MacDermid infringed on certain claims of U.S. Patent Nos. 6,773,859
(the “‘859 Patent”) and 6,171,758 (the “‘758 Patent”). (See Docket
Entry 2 at 2.)
In response, MacDermid asserts, inter alia, that
the patents are invalid, that MacDermid does not infringe the
patents,
and
that
the
‘859
patent
is
unenforceable.
(Id.)
MacDermid has also asserted a number of counterclaims, including
antitrust violations and other business-related common law torts.
(Id.)
In connection with that matter, DuPont served a subpoena
seeking both testimony and documents from non-party Dr. Phillip
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.”
(Docket Entry 2 at 1.)
-2-
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
-3-
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).
-4-
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 ‘758 Patent gives him knowledge
directly relevant to DuPont’s claims and MacDermid’s counterclaims.
(See Docket Entry 3.)
The technology at issue in the
underlying matter involves flexography - a type of printing process
used on a variety of products such as food packaging, plastic bags,
labels, envelopes, and newspapers.
(See id. at 3.)
The ‘758
Patent relates to a process for achieving a low degree of thermal
distortion in the manufacture of the flexographic printing plates
that are employed by flexography.
(See id. at 3-4; see also Docket
Entry 3-2.)
Dr. Beighle worked for DuPont from 1970 to 2001.
Entry 5 at 1.)
(See Docket
At the latter end of that time period, from 1998
until his retirement from DuPont in 2001, Dr. Beighle worked at
DuPont’s
Parlin,
New
Jersey
manufacturing
facility
flexographic printing plate manufacturing group.
-5-
in
(See id.)
the
Five
years
after
retiring,
Dr.
Beighle
manufacturing engineering consultant.
joined
MacDermid
as
a
(See Docket Entry 2 at 2.)
Because of these roles, DuPont contends, in its Response Brief,
that Dr. Beighle has highly relevant information specifically
related to: 1) MacDermid’s infringement of the ‘758 Patent; and 2)
MacDermid’s allegations of harm resulting from DuPont’s allegedly
anti-competitive conduct.
(See Docket Entry 3 at 6-9.)
Infringement of the ‘758 Patent
With respect to the ‘758 Patent, Dr. Beighle contends that,
“[b]ecause of the New Jersey Court’s Markman Order, MacDermid’s
manufacturing process is simply irrelevant to DuPont’s infringement
claims.”
(Docket Entry 2 at 2.)
In that Order, the court for the
District of New Jersey construed “dimensional stability” as used in
the ‘758 Patent to include a special annealing process that “(1) is
in addition and subsequent to the heat treating steps associated
with manufacturing the polymeric film, (2) is not the process of
bonding
the
photosensitive
substrate . . . .”
at 11-12, 20.)
elastomer
layer
to
the
polymeric
(Docket Entry 2 at 4; see also Docket Entry 3-3
Essentially, the Markman Order construed the ‘758
Patent as involving a step entirely distinct from the manufacturing
of the plates.
Accordingly, MacDermid argues that, because Dr.
Beighle worked only in the actual manufacturing of the plates and
had no role in any separate annealing process, Dr. Beighle’s
-6-
knowledge and testimony is irrelevant to any alleged violation by
MacDermid of the ‘758 Patent.
DuPont, however, asserts that Dr. Beighle’s argument “misses
the point entirely.”
(Docket Entry 3 at 7.)
Specifically, DuPont
points to 35 U.S.C. § 271(a), which states that, “whoever without
authority
makes, uses,
offers
to
sell or
sells
any
patented
invention within the United States or imports into the United
States any
patented
invention
during
therefor, infringes the patent.”
the
term
of
the
patent
35 U.S.C. § 271(a) (emphasis
added). Accordingly, DuPont contends that, because the ‘758 Patent
discloses
flexographic
printing
plates
that
exhibit
thermal
distortion of less than 0.03% when processed and an email exchange
between Dr. Beighle and MacDermid employee Timothy Gotstick shows
Mr. Gotstick asserting that MacDermid has a product specification
on dimensional shrinkage in which they “aim for less than 0.025% in
x and y directions,” MacDermid is making a printing plate meeting
the claim limitations of the ‘758 Patent regardless of the District
of
New
Jersey
stability.”
court’s
construction
of
(Docket Entry 3 at 4, 6-7.)
the
term
“dimensional
Thus, DuPont concludes
Dr. Beighle has information (in the form of both the actual
manufacturing process of the plates and the specifications of the
manufactured plates) directly relevant to its claim - specifically
with respect to whether MacDermid manufactured flexographic plates
exhibiting a low degree of thermal distortion.
-7-
(See id. at 6-8.)
The Court finds merit in Dr. Beighle’s argument. To interpret
an infringement of the ‘758 Patent as broadly as DuPont asks under
35 U.S.C. § 271(a) would essentially render the District of New
Jersey court’s claim construction meaningless.
DuPont
would
have
this
Court
treat
In other words,
evidence
regarding
any
flexographic printing plate exhibiting thermal distortion of less
than 0.03% as relevant to the infringement analysis regardless of
the process used to achieve such levels of dimensional stability,
despite the fact that the District of New Jersey court’s Markman
Order appears to require not only a low level of dimensional
distortion, but also the achievement of such levels through a
distinct “special annealing process” (see Docket Entry 2-3 at 1221).
In the absence of any indication that Dr. Beighle had any
role in a special annealing process used to achieve the dimensional
stability exhibited by MacDermid’s plates, the Court concludes that
DuPont seeks to depose Dr. Beighle on subjects lacking sufficient
relevance to justify the burden of such non-party discovery.
MacDermid’s Allegations of Anticompetitive Conduct
With respect to MacDermid’s allegations of anticompetitive
conduct, DuPont asserts that “Dr. Beighle’s testimony will show
that
MacDermid’s
inability
to
‘make
competitive
inroads’
was
entirely due to MacDermid’s own production and sales deficiencies.”
(See Docket Entry 3 at 9.)
“DuPont
should
instead
seek
MacDermid, however, contends that
such
-8-
information
from
MacDermid
employees.
Dr. Beighle is only a manufacturing consultant to
MacDermid and other MacDermid employees, such as manufacturing,
sales
and
regarding
product
development
MacDermid’s
supply
employees,
of
products
possess
information
to
customers.”
its
(Docket Entry 4 at 7.)
The Court, in this regard, finds merit in DuPont’s arguments.
Dr. Beighle’s role as a manufacturing consultant is precisely why
his testimony would have special relevance to MacDermid’s alleged
inability
to
compete
with
DuPont.
(Docket
Entry
3
at
9.)
Presumably, Dr. Beighle was hired in his role as a consultant due
to
specialized
knowledge
and
significant
experience
with
the
manufacturing processes at issue. Therefore, Dr. Beighle’s insights
regarding any production deficiencies (which DuPont, through the
submission of various email exchanges, has shown Dr. Beighle likely
would possess (see Docket Entries 3-6, 3-7)), has probative value
as to the claims in question that sufficiently offsets the burden
a deposition imposes on Dr. Beighle, even taking into account his
non-party status.
Accordingly, DuPont’s deposition of Dr. Beighle
on the issue of MacDermid’s internal manufacturing difficulties may
proceed.
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
-9-
even MacDermid’s manufacturing processes.”
(Id. at 10.)
DuPont’s
Response Brief lacks any argument regarding the document requests.
(See Docket Entry 3.)
Accordingly, as the record lacks any
evidence regarding the relevancy of or DuPont’s need for the
documents, DuPont’s subpoena will be quashed in this respect.
Conclusion
The information sought by DuPont with respect to MacDermid’s
infringement of the ‘758 Patent appears neither relevant nor
reasonably likely to lead to the discovery of admissible evidence.
Furthermore, no grounds exist to find that the document requests
contained in the subpoena are either relevant to or needed for the
underlying action. However, Dr. Beighle’s knowledge of MacDermid’s
internal manufacturing difficulties is sufficiently relevant to the
question of whether MacDermid suffered harm due to alleged anticompetitive conduct on the part of DuPont to warrant the deposition
of Dr. Beighle on that subject.
IT IS THEREFORE ORDERED that the Motion to Quash Subpoena to
Testify Served Upon Phillip Beighle (Docket Entry 1) is GRANTED IN
PART and DENIED IN PART; in that DuPont can proceed with its
deposition of Dr. Beighle limited to matters concerning MacDermid’s
internal
manufacturing
difficulties
for
purposes
of
refuting
MacDermid’s allegations that anti-competitive conduct on the part
-10-
of DuPont caused MacDermid’s failure to achieve success in the
marketplace.
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 3-7.
If Dr. Beighle has not filed
any such motion to seal by that date, the Clerk shall unseal Dr.
Beighle’s Docket Entries 4, 4-2 and 4-3.
/s/ L. Patrick Auld
L. Patrick Auld
United States Magistrate Judge
Date:
March 6, 2012
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