Genus Lifesciences Inc. v. Lannett Company, Inc. ( 2019 )

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 GENUS LIFESCIENCES INC., Case No. 18-cv-07603-WHO 8 Plaintiff, ORDER GRANTING MOTION TO QUASH SUBPOENA; DENYING AS 9 v. MOOT MOTION TELEPHONIC APPEARANCE AND FOR 10 LANNETT COMPANY, INC., et al., PERMISSION FOR ELECTRONIC CASE FILING Defendants. 11 Re: Dkt. Nos. 87, 89, 90 12 13 INTRODUCTION 14 Non-party Michael Singer moves to quash a subpoena issued by plaintiff Genus 15 Lifesciences Inc. (“Genus”) to produce documents relating to Singer’s former employment with 16 defendant Lannett Company Inc. (“Lannett”). Singer requests that the subpoena be quashed 17 because it would result in a significant expense, could subject him to sanctions from Lannett for 18 producing privileged or confidential information, and is unduly burdensome because the requested 19 documents are also in Lannett’s possession. Genus has not requested the documents from Lannett. 20 I agree with Singer, particularly regarding the burden Genus seeks to impose on him before 21 seeking the same documents from a party to the litigation, and GRANT his motion to quash. His 22 subsequent motions for telephonic appearance and permission for electronic case filing are 23 DENIED as moot. 24 BACKGROUND 25 I. PROCEDURAL BACKGROUND 26 Genus sued defendants, competitors in the market of cocaine hydrochloride nasal spray, for 27 falsely advertising, marketing and promoting their product and unfairly competing with it in ways 1 that violate the law. See First Amended Complaint [Dkt. No. 54]. On September 12, 2019, Genus 2 served a document subpoena on non-party Michael Singer, a former salesperson for defendant 3 Lannett who specialized in marketing and selling Lannett’s products. See Declaration of Jason N. 4 Haycock in Support of Plaintiff Genus Lifesciences Inc.’s Response to Michael Singer’s Motion 5 to Quash Subpoena or for Protective Order (“Haycock Decl.”) [Dkt. No. 93] ¶ 3 & Ex. 1 (copy of 6 document subpoena served on Michael Singer). 7 After back and forth between the parties, as detailed below, Singer filed this motion to 8 quash subpoena and/or for a protective order. See Notice of Motion and Motion to Quash 9 Subpoena and for Protective Order and Memorandum of Points and Authorities in Support of 10 Motion for Protective Order (“Mot.”) [Dkt. No. 87]. Although his motion was not noticed for a 11 hearing date, Singer requests telephonic appearance. Dkt. No. 89. Because Singer is proceeding 12 pro se, he also seeks permission for electronic case filing. See Dkt. No. 90. 13 Genus responded to Singer’s motion on October 29, 2019. See Plaintiff Genus 14 Lifesciences, Inc.’s Brief in Response to Michael Singer’s Motion to Quash or for Protective 15 Order (“Oppo.”) [Dkt. No. 92]. Lannett has not filed a response to this motion. 16 II. FACTUAL BACKGROUND 17 Genus’s document subpoena requests three categories of documents: (i) agreements Singer 18 has, or had in the past, with Lannett, including employment agreement(s); (ii) promotional 19 literature, advertisements, and training materials related to cocaine hydrochloride; and (iii) 20 communications with Lannett, doctors, pharmacists, surgery centers, or other customers related to 21 cocaine hydrochloride. Haycock Decl., Ex. 1. 22 On September 24, 2019, Singer acknowledged receipt of the subpoena and proposed a plan 23 to respond. See Haycock Decl., Ex. 2 (copy of letter from Singer to Genus); Affidavit of Michael 24 Singer Regarding Motion for Protective Order [Dkt. No. 88], Ex. 1 (same). Singer proposed that 25 he would review his files, make a list of documents in his possession, and then submit the list to 26 Genus and Lannett. Id. He requested that Genus and Lannett review the list to determine which 27 documents should be produced under the Protective Order. Id. He requested $0.45 per copy and 1 On September 28, 2019, Genus responded, providing Singer with more time to comply 2 with the document subpoena, agreeing to compensate him up to $500 in photocopying costs and 3 $1,000 for his time, and offering to designate all produced documents as “Highly Confidential” 4 under the Protective Order so as to avoid any issue about confidentiality. See Haycock Decl., Ex. 5 3. 6 On September 30, 2019, Singer told Genus he was afraid that Lannett would sue him if he 7 produced the documents in his possession, and reiterated his initial proposal to provide a list of 8 documents to Genus and Lannett so that they could determine what should be produced. Id., Ex. 9 4. Singer also expressed concerns about Genus’s reimbursement caps, stating that “If you cap it, 10 then I will work to the time of the caps and then stop.” Id. 11 On October 2, 2019, Lannett informed Genus and Singer that the documents in Singer’s 12 possession “may implicate Lannett’s attorney-client (or other) privilege.” Haycock Decl., ¶ 7 & 13 Ex. 5. Lannett demanded that it review the documents prior to production “to ensure that 14 privileged documents are not produced.” Id. Lannett suggested that Genus instruct Singer “to 15 provide all potentially responsive documents to Lannett’s counsel,” and then Lannett would 16 “review those documents and produce any responsive, non-privileged documents to Genus within 17 10 business days.” Id. 18 On October 3, 2019, Singer responded to both parties, reiterating his proposal to send a list 19 of documents to the parties for review and again demanding full compensation for his time. 20 Haycock Decl., ¶ 8 & Ex. 6. He stated that if the parties could not agree to his proposal, then he 21 would file a motion for protective order “to protect himself.” Id. 22 On October 9, 2019, Genus agreed to Singer’s compensation terms and proposed the 23 following three-step process for resolution: “(1) Mr. Singer would review his files for hard-copy 24 and digital records (up to 4 hours); (2) he would prepare a list of documents and send the list to 25 Genus and Lannett (up to 1.5 hours); and (3) then submit the documents electronically to counsel 26 for Lannett. Lannett’s counsel would review the materials and produce all non-privileged 27 documents within ten days.” Oppo. 4-5; Haycock Decl. ¶ 9 & Ex. 7. Genus states that it set the 1 letter. Oppo. 5; see Haycock Decl., Ex. 2 (stating that Singer believes it will take him 4 hours to 2 review all documents and 1.5 hours to list the responsive documents). With this proposed 3 resolution, Genus agreed to reimburse Singer up to $500 for photocopying costs and increased its 4 offer to compensate Singer at his request for $250 per hour for estimated 5.5 hours to locate and 5 send a list of documents to Genus and Lannett. Oppo. 5; see Haycock Decl., Ex. 7. 6 On October 10, 2019, Singer acknowledged and agreed that at least “we are all now on the 7 same page as to how to handle the documents and to keep myself protected as we all finally 8 agree.” Haycock Decl., ¶ 11 & Ex. 8. But he contended that he already spent 5 hours in dealing 9 with this back and forth and under Genus’s solution would only spend another half hour going 10 through his documents and compiling a list. Id. 11 Later the same day, Lannett objected to Genus’s solution on two grounds. Haycock Decl., 12 ¶ 12 & Ex. 9. First, it argued that Singer should not provide Genus with even the list of 13 documents because “the list may itself” disclose privileged or highly confidential information. Id. 14 Second, despite its earlier agreement to produce non-privileged documents to Genus ten days after 15 receipt from Singer, Lannett asserted that it does not know the nature and volume of the 16 documents and therefore will provide non-privileged responsive documents to Genus “as quickly 17 as practicable.” Id. 18 The next day, on October 11, 2019, Singer responded that “there is no agreement [on] how 19 to handle the documents” and stated that he is “unwilling to play this back and forth game with the 20 parties.” Haycock Decl., ¶ 13 & Ex. 10. He requested that Genus withdraw the subpoena by 4:00 21 p.m. that same day or else he would file a motion for protective order. Id. On October 15, 2019, 22 Singer filed his motion to quash subpoena or for protective order. See Mot. 23 LEGAL STANDARD 24 Federal Rule of Civil Procedure 45 governs discovery from nonparties by subpoena. 25 Pursuant to Rule 45(a)(1)(D), a party may serve a subpoena commanding a nonparty to produce 26 materials. “The scope of discovery through a Rule 45 subpoena is the same as the scope of 27 discovery permitted under Rule 26(b).” Sullivan v. Personalized Media Commc’ns, LLC, No. 16- 1 discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense and 2 proportional to the needs of the case, considering the importance of the issues at stake in the 3 action, the amount in controversy, the parties’ relative access to relevant information, the parties’ 4 resources, the importance of the discovery in resolving the issues, and whether the burden or 5 expense of the proposed discovery outweighs its likely benefit.” Fed. R. Civ. P. 26(b)(1). The 6 court must limit discovery if it determines that “the discovery sought is unreasonably cumulative 7 or duplicative, or can be obtained from some other source that is more convenient, less 8 burdensome, or less expensive.” Fed. R. Civ. P. 26(b)(2)(c)(i). 9 Under Rule 45, the serving party may move the court for an order compelling production 10 or inspection. Fed. R. Civ. P. 45(d)(2)(B)(i). Also, a court “must quash or modify a subpoena 11 that: (i) fails to allow a reasonable time to comply; (ii) requires a person to comply beyond the 12 geographical limits specified in Rule 45(c); (iii) requires disclosure of privileged or other 13 protected matter, if no exception or waiver applies; or (iv) subjects a person to undue burden.” 14 Fed. R. Civ. P. 45(d)(3)(A). The court also “must protect a person who is neither a party nor a 15 party’s officer from significant expense resulting from compliance” with the subpoena. Fed. R. 16 Civ. P. 45(d)(2)(B)(ii). “On a Rule 45 motion to quash a subpoena, the moving party has the 17 burden of persuasion, but the party issuing the subpoena must demonstrate that the discovery 18 sought is relevant.” Pers. Audio LLC v. Togi Entm’t, Inc., No. 14-MC-80025 RS (NC), 2014 WL 19 1318921, at *2 (N.D. Cal. Mar. 31, 2014). 20 DISCUSSION 21 Singer’s motion raises three issues: (i) Singer wants to avoid “significant expense;” (ii) he 22 does not want to expose himself to liability to Lannett for producing privileged or confidential 23 information; (iii) and he does not want to incur undue burden if the documents in his possession 24 are equally obtainable from Lannett. See Mot. 4-9. Genus argues that each of these issues “can be 25 resolved by merely enforcing the agreement between Mr. Singer and Genus prior to Lannett’s 26 objection.” Oppo. 6. In particular, Genus requests that I allow Singer to produce a list of 27 responsive documents to Genus and Lannett, allow him to produce the documents to Lannett, who 1 days. Oppo. 9. In the alternative, it requests that I allow Singer to produce the documents to 2 Lannett, who will then produce all non-privileged documents to Genus along with a privilege log 3 within ten days. Id. 4 Under Rule 45, a court “must quash or modify a subpoena that . . . subjects a person to 5 undue burden.” Fed. R. Civ. P. 45(d)(3)(A). “In general, there is a preference for parties to obtain 6 discovery from one another before burdening non-parties with discovery requests.” Soto v. 7 Castlerock Farming & Transp., Inc., 282 F.R.D. 492, 505 (E.D. Cal. 2012) (collecting cases). 8 When the requesting party has “not shown [that it] attempted to obtain documents from the 9 [opposing party] in an action prior to seeking the documents from a non-party, a subpoena duces 10 tecum places an undue burden on a non-party.” Id. Further, “when an opposing party and a non- 11 party both possess documents, the documents should be sought from the party to the case.” Soto, 12 282 F.R.D. at 505. 13 Singer seeks to quash the document subpoena because he argues that the documents in his 14 possession are more readily available from his former-employer Lannett, who is party to this 15 litigation. Mot. 4-6. The document subpoena requests that Singer produce any agreements he has 16 had with Lannett, all of Lannett’s promotional literature or other materials relating to C-Topical or 17 cocaine hydrochloride, and communications with Lannett and other parties relating to cocaine 18 hydrochloride. Haycock Decl., Ex. 1. These documents should be in the possession of Lannett, a 19 party to this litigation. 20 In an affidavit accompanying his motion, Singer states that he has no documents that are 21 not already in the custody or control of Lannett because he provided all that he has to Lannett 22 before he left his employment. See Affidavit of Michael Singer Regarding Motion for Protective 23 Order [Dkt. No. 88], ¶ 6 (“I, at the time I left the employ of Lannett had prepared and submitted to 24 the current CEO and incoming CEO a package of documents, approximately five hundred pages 25 of documents.”). Singer also argues that it would require substantial time and effort for him to 26 assemble all the documents in his possession because he would have to ascertain if they are 27 protected under the Stipulated Protective Order to avoid sanctions. Mot. 5. He described this as a 1 Lannett might sue him for releasing protected company material. Id. 2 Genus argues that its proposed solution addresses Singer’s concern because the list of 3 documents Singer will give to Genus will help it determine what documents it can then obtain 4 from Lannett. Oppo. 9. But Lannett objects to releasing a list of documents to Genus, and more 5 importantly, points out that Genus’s suggestion is in reverse order. It should first attempt to obtain 6 the documents from Lannett and then, if need be, send a more tailored subpoena to Singer. 7 Genus asserts that “one of the factors driving third party discovery in this case is that 8 Lannett has previously failed to produce documents that Genus has independently discovered 9 during its investigation.” Oppo. 9. To support this, it cites its opposition brief in an earlier motion 10 to dismiss in this case in which it generally argued that Lannett did not respond to its requests for 11 documents. That may or may not be true, but Genus does not establish that it asked Lannett for 12 the same documents it requests from Singer. 13 Because of Genus’s failure to attempt to obtain the requested documents from Lannett 14 prior to seeking them from Singer, its subpoena is an undue burden on Singer. See, e.g., Ow v. 15 United States, No. 17-CV-00733-SK, 2018 WL 6267839, at *1 (N.D. Cal. June 12, 2018) 16 (granting in part motion to quash subpoena for documents that plaintiffs could have obtained 17 directly from defendant). Singer’s motion to quash the subpoena is GRANTED.1 18 CONCLUSION 19 Singer’s motion to quash is GRANTED because the documents requested in Genus’s 20 subpoena can be obtained from the opposing party Lannett in a way that would be more 21 22 23 24 25 26 1 Given that Genus has not first attempted to receive these documents from Lannett, I need not 27 address Singer’s other two arguments that the document request creates a significant expense or 1 convenient and less burdensome. 2 IT IS SO ORDERED. 3 Dated: December 30, 2019 4 . 5 liam H. Orrick 6 United States District Judge 7 8 9 10 11 a 12 13 © 15 16 = 17 Zz 18 19 20 21 22 23 24 25 26 27 28