Mobile Medical International Corporation v. Advanced Mobile Hospital Systems, Inc. et al
Filing
135
MEMORANDUM OPINION AND ORDER granting in part and denying in part 118 Emergency Motion to Quash Deposition Subpoenas Directed to Downs Rachlin Martin PLLC and Lawrence Meier, Esq. Signed by Judge William K. Sessions III on 12/3/2013. (law)
UNITED STATES DISTRICT COURT
FOR THE
DISTRICT OF VERMONT
MOBILE MEDICAL INTERNATIONAL
CORPORATION,
Plaintiff,
v.
ADVANCED MOBILE HOSPITAL SYSTEMS,
INC., TRACTUS MEDICAL, INC., and
DOES 1-10,
Defendants.
:
:
:
:
:
:
:
:
:
:
:
:
Case No. 2:07-cv-231
MEMORANDUM OPINION and ORDER
Defendants (collectively “AMoHS”) have moved pursuant to
Rule 45(c)(3) of the Federal Rules of Civil Procedure to quash
deposition subpoenas directed to the law firm of Downs Rachlin
Martin PLLC (“DRM”) and attorney Lawrence Meier, Esq.
The
motion, ECF No. 118, is granted in part and denied in part, as
set forth in more detail below.
DRM represents AMoHS in this lawsuit seeking a declaration
that the patent claims of U.S. Patent Number 4,915,435 (“the ‘435
patent”) are invalid, and Meier is one of the lead attorneys in
that representation.
AMoHS contends that the attempts to depose
its counsel are an abuse of the discovery process and are not
reasonably calculated to lead to the discovery of admissible
evidence.1
1
Plaintiff also served demands for document production, concerning
which Defendants have served objections pursuant to Rule 45(c)(2)(B). No
motion to compel having been filed, this decision addresses only the motion to
quash the subpoenas compelling deposition attendance.
AMoHS has counterclaimed against Plaintiff Mobile Medical
International Corp. (“MMIC”) for “direct and indirect patent
infringement.”
Am. Countercl. Count I, ECF No. 88.
Among its
defenses to the Amended Counterclaim, MMIC alleges that the
patent is unenforceable because patentee and counsel were aware
of multiple materially relevant prior art references that they
did not cite during examination or reexamination of the ‘435
patent.
Answer 7-8, ECF No. 92.
“Inequitable conduct is an equitable defense to patent
infringement that, if proved, bars enforcement of a patent.”
Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285
(Fed. Cir. 2011) (en banc).
The defense of inequitable conduct
is an issue of substantive patent law.
See, e.g., Brigham &
Women’s Hosp. Inc. v. Teva Pharms. USA, Inc., 707 F. Supp. 2d
463, 469 (D. Del. 2010).
“‘Federal Circuit law applies when
deciding whether particular written or other materials are
discoverable in a patent case, if those materials relate to an
issue of substantive patent law.’” In re EchoStar Commc’ns Corp.,
448 F.3d 1294, 1298 (Fed. Cir. 2006) (quoting Advanced
Cardiovascular Sys. v. Medtronic, Inc., 265 F.3d 1294, 1307 (Fed.
Cir. 2001)); see also In re Spalding Sports Worldwide, Inc., 203
F.3d 800, 803-04 (Fed. Cir. 2000) (holding that a determination
of the applicability of attorney-client privilege to an invention
record implicates the substantive patent law of inequitable
2
conduct).
The Court therefore applies Federal Circuit law to the
issue of whether MMIC may depose the patent prosecution attorneys
with respect to its defense of inequitable conduct.
See, e.g.,
Brigham & Women’s, 707 F. Supp. 2d at 469 (applying the law of
the Federal Circuit to the issue of waiver of attorney-client
privilege); Bd. of Trustees of Leland Stanford Junior Univ. v.
Roche Molecular Sys., Inc., 237 F.R.D. 618, 623 (N.D. Cal. 2006)
(same).
The Court notes, however, that under the “flexible
approach to lawyer depositions” endorsed by the Second Circuit,
it would follow the same route in resolving the issue.
In re
Subpoena Issued to Dennis Friedman, 350 F.3d 65, 72 (2d Cir.
2003).2
The parties agree that the subpoenas seek testimony covered
by attorney-client privilege.
AMoHS argues broadly that the
subpoenas violate Rule 453 and that it has not waived attorney-
2
In this Circuit, a
judicial officer supervising discovery takes into consideration
all of the relevant facts and circumstances to determine whether
the proposed deposition would entail an inappropriate burden or
hardship. Such considerations may include the need to depose the
lawyer, the lawyer’s role in connection with the matter on which
discovery is sought and in relation to the pending litigation, the
risk of encountering privilege and work-product issues, and the
extent of discovery already conducted. . . . Under this approach,
the fact that the proposed deponent is a lawyer does not
automatically insulate him or her from a deposition . . ., but it
is a circumstance to be considered.
In re Subpoena Issued to Dennis Friedman, 350 F.3d at 72.
3
AMoHS’s arguments that the subpoenas issued in violation of Rule 45
and the Local Rules of Procedure lack merit. Neither the federal nor the
local rules bar an attorney admitted pro hac vice to this Court from signing
subpoenas issued from this Court. Although a subpoena that appears to require
disclosure of privileged material may be quashed pursuant to Rule 45(c)(3),
such a subpoena does not facially violate the rule. A person served with such
3
client privilege.
MMIC responds equally broadly that because it
has made an inequitable conduct claim it is entitled to depose
patent prosecution counsel.
The subpoena listed thirteen topics of inquiry, only three
of which appear to relate to a claim of inequitable conduct
before the United States Patent Office.
For the remaining
topics, numbered three through twelve, MMIC has not demonstrated
that they have any relevance to a defense of inequitable conduct,
and consequently no particular need for this information that it
cannot obtain through other means of discovery.
As MMIC has not
offered any other justification for invading the attorney-client
privilege between litigation counsel and its client, the motion
to quash is granted with respect to topics three through twelve.
Topic no. 1 seeks testimony concerning “[p]rosecution and
reexamination of . . . [the ‘435 patent], including any
communications regarding prior art, equipment required for
invasive surgery, requirements for invasive surgery, and the
scope of the claims of the ‘435 patent.”
Topic no. 2 seeks
testimony concerning “[r]equests during pendency of
reexaminations of the ‘435 patent made by [DRM] regarding prior
art to the ‘435 patent and diligence of [DRM] in collecting
relevant prior art.
Topic no. 13 seeks testimony concerning
a subpoena may choose to obey it or move to quash or modify it.
Civ. P. 45 (c)(3).
4
See Fed. R.
“[c]ollection, handling, disassembly, and production of the fax
produced as AMoHS 4646-48, 4334-37, 4388-40, and 4341-49 and any
missing pages of that fax.”
MMIC has demonstrated that these
areas of inquiry relate to its defense of inequitable conduct
before the United States Patent Office, and the motion to quash
is therefore denied as to these topics.
However during the
depositions AmoHS may make specific objections to specific
questions that it considers to be irrelevant to the claim of
inequitable conduct.
See, e.g., Alcon Labs., Inc. v. Pharmacia
Corp., 225 F. Supp. 2d 340, 344 (S.D.N.Y. 2002) (reserving
decision on disputed assertions of privilege until the privilege
is asserted at a deposition or on a privilege log).
The motion to quash is granted as to topics three through
twelve, and denied as to topics one, two and thirteen.
Dated at Burlington, in the District of Vermont, this 3rd
day of December, 2013.
/s/ William K. Sessions III
William K. Sessions III
District Court Judge
5
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?