Cisco Systems, Inc. et al v. Dexon Computer, Inc. et al

Filing 7

ORDER TRANSFERRING CASE TO the United States District Court for the Northern District of California, San Francisco Division.Signed by Judge Dustin M. Howell. (cc3)

Case 1:23-mc-00679-RP Document 7 Filed 07/20/23 Page 1 of 5

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF TEXAS
AUSTIN DIVISION
CISCO SYSTEMS, INC.a Delaware
Corporation
and
CISCO
TECHNOLOGY, INC., a California
Corporation,
Plaintiffs
v.
DEXON COMPUTER, INC.,
Minnesota Corporation,
Defendant

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No. A-23-MC-679-RP

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TRANSFER ORDER
Before the Court is Petitioner Sterling Computers Corporation’s Motion to
Quash, or in the Alternative, Modify Subpoena Duces Tecum to True Pedigree, LLC,
Dkt. 1; and all related briefing. The court that originated the subpoena is located in
the Northern District of California where the underlying suit is pending. Dkt. 1-1.
See Cisco Systems, Inc. et al. v. Dexon Computer, Inc., No. 3:20-CV-4926-CRB (N.D.
Ca.).
In this case, Sterling Computers moves to quash a non-party subpoena
propounded by Dexon Computer, Inc., the Defendant in the California action. In
California, Plaintiff Cisco alleges claims of trademark infringement, trademark
counterfeiting, false designation of origin, unfair business practices under
California law, and unjust enrichment. Dexon issued the subpoena not to Sterling,
but to True Pedigree, LLC, a company located in Austin, Texas, that offers brand
protection and anti-counterfeiting solutions, and is utilized by Sterling Computers.

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The subpoena requests information related to Cisco partners, authorized
sellers, and/or licensed sellers “purchasing and/or selling Secondary Market
Products” and “purchasing and/or selling counterfeit Cisco products.” Dkt. 1-1.
Sterling is a “channel partner” with Cisco and asserts that Dexon is its direct
competitor.
Sterling asserts it was informed by True Pedigree on June 8, 2023, that it
had received a subpoena from Dexon, and in response, it would produce all
documents related to audits of Cisco’s channel partners.

Dkt. 1 at 7. Sterling

Computers moves to quash asserting that the subpoena seeks trade secrets and
confidential information regarding its business practices, and the information is not
relevant to the California suit.
Federal Rule of Civil Procedure 45 governs the undersigned’s analysis in
deciding disputes regarding out-of-district subpoenas. Paws Up Ranch, LLC v.
Green, No. 2:12-cv-01547-GMN-NJK, 2013 WL 6184940, at *1 (D. Nev. Nov. 22,
2013). Generally speaking, Rule 45 requires that disputes related to non-party
subpoenas be resolved locally, to avoid imposing undue travel or expense burdens
on non-parties who are challenging a subpoena. See, e.g., Fed. R. Civ. P.
45(d)(2)(B)(i) (directing that motions to compel be filed in “the district in which
compliance is required”). Effective December 1, 2013, however, a significant change
was made to Rule 45 through the addition of a new subsection, which states:
(f) Transferring a Subpoena-Related Motion. When the court where
compliance is required did not issue the subpoena, it may transfer a motion
under this rule to the issuing court if the person subject to the subpoena
consents or if the court finds exceptional circumstances. Then, if the attorney
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for a person subject to a subpoena is authorized to practice in the court where
the motion was made, the attorney may file papers and appear on the motion
as an officer of the issuing court. To enforce its order, the issuing court may
transfer the order to the court where the motion was made.
Fed. R. Civ. P. 45(f).

The Advisory Committee’s comments to the amendment

indicate that “[t]o protect local nonparties, local resolution of disputes about
subpoenas is assured by the limitations of [Rule 45] … that motions be made in the
court in which compliance is required under Rule 45.” Fed. R. Civ. P. 45, Advisory
Committee Notes to 2013 Amendments, Subdivision (f). The Notes state further,
however, that “transfer to the court where the action is pending is sometimes
warranted,” either where the non-party consents, or where there are “exceptional
circumstances.” Id. On this issue, the Note states that, “transfer may be warranted
in order to avoid disrupting the issuing court’s management of the underlying
litigation, as when the court has already ruled on issues presented in the motion, or
the same issues are likely to arise in discovery in many districts.” Id. In making the
decision to transfer, the Committee instructs that “the prime concern should be
avoiding burdens on local non-parties.” Id. The Court finds this case presents an
exceptional circumstance making transfer preferable.
The case underlying the subpoena in issue originated in the Northern
District of California, San Francisco Division. Dkt. 1-1. It is a complicated
trademark, trademark infringement, trademark counterfeiting, false designation of
origin, unfair business practices under California law, and unjust enrichment case
involving large market participants. Moreover, the movant in this case, while not a
party to that case, is also not located in Austin, Texas, as Sterling Computers
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Corporation, is located in Sioux City, South Dakota. Dkt. 1-2. The only connection
the underlying litigation has to Austin, Texas, is that True Pedigree, LLC, upon
which the subpoena was served in care of its Delaware agent of service, was
commanded to comply in Austin, Texas. True Pedigree does not move to quash nor
seemingly object to compliance with the subpoena. Thus transferring the motion
would not burden the only local party in interest.
The Court finds that the interest of the issuing court in deciding the
discovery dispute outweighs the parties’ interest in deciding the issue in Austin,
Texas. While True Pedigree, LLC, is located in Austin, no other party in interest,
and the parties actually disputing the terms of the subpoena are not. Additionally,
there is a Protective Order in place in the Northern District of California that would
govern the production of the discovery in issue. The issuing court is in the best
position to determine whether Sterling’s claims of trade secret and confidentiality
are adequately addressed by the Protective Order and the value of the discovery in
issue to the underlying case. Accordingly, transfer of Petitioner Sterling Computer
Corporation’s Motion to Quash, or in the Alternative, Modify Subpoena Duces
Tecum to True Pedigree, LLC, Dkt. 1, is proper.
IT IS THEREFORE ORDERED that Petitioner Sterling Computer
Corporation’s Motion to Quash, or in the Alternative, Modify Subpoena Duces
Tecum to True Pedigree, LLC, Dkt. 1, is HEREBY TRANSFERRED to the United
States District Court for the Northern District of California, San Francisco Division.
IT IS LASTLY ORDERED that this matter is CLOSED.

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SIGNED July 20, 2023.

DUSTIN M. HOWELL
UNITED STATES MAGISTRATE JUDGE

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