Sterne Kessler Goldstein & Fox, P.L.L.C. v. Eastman Kodak Company

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
STERNE KESSLER GOLDSTEIN & FOX,
PLLC,
Petitioner,
Miscellaneous Case No. 11-337 (BAH)
v. Judge Beryl A. Howell
EASTMAN KODAK COMPANY,
Respondent.
MEMORANDUM OPINION
Before the Court is petitioner Sterne, Kessler, Goldstein & Fox P.L.L.C.’s (hereinafter
“the petitioner”) motion to quash a deposition subpoena served upon it by Eastman Kodak
Company (hereinafter “Kodak” or “the respondent”). Kodak seeks to depose the petitioner in
connection with a patent infringement action proceeding in the Western District of New York
brought by Kodak against Apple, Inc. (hereinafter “Apple”). The petitioner previously provided
representation to Apple before the U.S. Patent and Trademark Office (hereinafter “USPTO”)
during reexamination of Apple’s U.S. Patent No. 5,634,074 (hereinafter “074 patent”), one of the
patents at issue in the New York litigation. The petitioner now moves to quash the Kodak
subpoena on grounds that the deposition will “necessarily touch on information protected by
attorney-client privilege and the work-product doctrine” and “[t]his potential intrusion into
protected information can and should be avoided.” Pet’r Mot. Quash, ECF No. 1, at 1. The Court
concludes that deposition of the petitioner is not warranted and therefore grants the petitioner’s
motion to quash the respondent’s subpoena.
1
I. BACKGROUND
On January 14, 2010, Kodak filed a Complaint in the Western District of New York
alleging that Apple had infringed three of its patents (hereinafter the “Kodak-Apple litigation”).
Eastman Kodak v. Apple, Inc., No. 6:10-cv-6022 (W.D.N.Y. filed Jan. 14, 2010). Apple
counterclaimed, alleging, inter alia, that Kodak infringed on Apple’s 074 patent. Pet’r Mot.
Quash, ECF No. 1, at 1; Eastman Kodak v. Apple, Inc., No. 6:10-cv-6022 (W.D.N.Y. filed Jan.
14, 2010), Amended Answer, ECF No. 21 (Apr. 15, 2010), ¶¶ 51-57.
Several months after initiation of the Kodak-Apple litigation, on April 28, 2010, “an
anonymous third-party” requested the USPTO to conduct an ex parte reexamination of the 074
patent. Pet’r Mot. Quash, ECF No. 1, at 1. The USPTO granted this request, and Apple retained
the petitioner to represent it during the reexamination process. Id. The USPTO ultimately
determined that all claims of the 074 patent were patentable, and issued a reexamination
certificate on May 31, 2011. Id. at 2. The petitioner states that the “entire prosecution for the
reexamination of the 074 patent is contained in the written prosecution file,” or the “file
wrapper,” which includes “summaries, submitted by the Examiner and Apple, of the in-person
interview that [the petitioner] conducted on January 5, 2011.” Id.Before the USPTO had concluded its reexamination of the 074 patent, on April 14, 2011,
Kodak sought leave to file a Second Amended Answer in the Kodak-Apple litigation in order to
add an inequitable conduct defense based “on a continued course of conduct related to the
recently concluded 074 patent reexamination.” 1 Eastman Kodak v. Apple, Inc., No. 6:10-cv-6022
1
Kodak filed its Motion for Leave to File a Second Amended Answer on April 14, 2011. Eastman Kodak v. Apple,
Inc., No. 6:10-cv-6022 (W.D.N.Y. filed Jan. 14, 2010), Kodak’s Mot. Leave File Second Amended Answer and
Counterclaims, ECF No. 49 (Apr. 14, 2011). A hearing on this motion in the Western District of New York was
scheduled for July 25, 2011. As of the date of this opinion, no decision on Kodak’s motion to add an inequitable
conduct defense has been issued. Regardless of the outcome of its motion, Kodak has stated that it seeks to depose
the petitioner. Resp’t Opp’n Mot. Quash, ECF No. 5, at 8 n.2. If Kodak does not obtain leave to add an inequitable
conduct defense, it will not depose the petitioner on issues relating to the petitioner’s alleged inequitable-conduct,
2
(W.D.N.Y. filed Jan. 14, 2010), Kodak’s Mot. Leave File Second Amended Answer and
Counterclaims, ECF No. 49 (Apr. 14, 2011); Pet’r Mot. Quash, ECF No. 1, Ex. 6. This proposed
new defense to Apple’s counterclaim contends that the “074 patent is unenforceable due to
inequitable conduct committed by Apple, an inventor of the 074 patent, and/or its attorneys
during reexamination of the 074 patent.” Eastman Kodak v. Apple, Inc., No. 6:10-cv-6022
(W.D.N.Y.), Kodak’s Mot. Leave File Second Amended Answer and Counterclaims, ECF No.
49, Ex. 1, Proposed Second Am. Compl., Eighth Affirmative Defense. Specifically, Kodak
alleges that during the USPTO’s reexamination of the 074 patent, Apple and its attorneys failed to
disclose to the Patent Office both the existence of the Kodak-Apple litigation and “the prior art
references Kodak identified in its initial invalidity contention” in the same lawsuit. Id. ¶ 94.
On May 12, 2011, Kodak served the petitioner, which is not Apple’s counsel in the
Kodak-Apple litigation, with a subpoena for production of documents and a deposition, 2 seeking
information, inter alia, on (1) the petitioner’s analysis of the issues involved in the reexamination
of the 074 patent (Topics 5, 19); (2) the prosecution of the 074 patent, including its reexamination
(Topics 1, 6-10); (3) the petitioner’s communications with Apple, other attorneys who prosecuted
the 074 patent, and the USPTO (Topics 2-4, 11); (4) the petitioner’s knowledge of the Kodak-
Apple litigation and other litigation concerning the 074 patent (Topics 12-17); and (5) the
petitioner’s understanding of reexamination practice before the USPTO (Topics 20-23). Pet’r
Mot. Quash, ECF No. 1, Ex. 1, Kodak’s Notice of Subpoena Ad Testificandum and Subpoena
Duces Tecum to the Petitioner, Schedule A: Topics of Deposition.
but still intends to depose the petitioner on issues concerning “claim construction/claim scope.” Pet’r Mot. Quash,
Ex. 2, Email from B. Weed to B. Pickard (May 27, 2011).
2
Pursuant to Federal Rule of Civil Procedure 45(a)(2), this subpoena was issued by the United States District Court
for the District of Columbia. FED. R. CIV. P. 45(a)(2)(B) (stating that a subpoena for attendance at a deposition must
issue “from the court for the district where the deposition is to be taken.”).
3
The petitioner objected to the respondent’s subpoena concerning the documentary
portions of the subpoena and also advised the respondent that it believed the deposition subpoena
was not proper because “any questions concerning [the petitioner’s representation of Apple in
the USPTO reexamination of the 074 patent] will necessarily touch on matters that
are protected from disclosure by the attorney-client privilege and the attorney-work product
doctrine.” Pet’r Mot. Quash, Ex. 7, Letter from B. Pickard to B. Weed dated May 25, 2011, at 2.
On June 10, 2011, the petitioner filed a motion to quash the deposition subpoena in this Court, 3
pursuant to Federal Rule of Civil Procedures 26(b) and (c), which requires the Court to limit
discovery when it is unreasonably cumulative, or can be obtained from other more convenient,
less burdensome, or less expensive sources. 4
The instant motion became ripe when the petitioner filed its Reply brief on July 5, 2011,
which was five days after discovery closed in the Kodak-Apple litigation. Due to the June 30,
2011 discovery cut-off date, the respondent urged the Court to resolve this motion on an
“expedited basis.” Resp’t Opp’n Mot. Quash, ECF No. 5, at 5. Yet, at the same time, the
respondent granted the petitioner a seven-day extension to file the instant motion, and then filed
its opposition a full fourteen days after the motion was filed, on June 24, 2011, pushing the
petitioner’s reply due date to after the close of discovery. On July 26, 2011, the Court directed
the parties to submit a joint report addressing “whether the petitioner’s pending motion to quash
is moot given that, to the Court’s knowledge, discovery in the underlying litigation closed on
June 30, 2011.” Minute Order dated July 26, 2011 (Howell, J.). The parties responded, on
August 3, 2011, stating that they believe the motion to quash is not moot because (1) it was
3
Under Federal Rule of Civil Procedure 45(c), a motion to quash must be filed with the Court issuing the subpoena.
4
Federal Rules of Civil Procedure 26(b) and (c) respectively authorize the Court to limit discovery and issue
protective orders. The petitioners seek to quash a deposition subpoena, which is provided for under Federal Rule of
Civil Procedure 45(c).
4
served and was returnable prior to the discovery cut-off date, and (2) it was “expected” that the
district court in the underlying case will “extend the discovery period for discovery relevant to
newly added issues if any amendment is allowed to Kodak’s Answer and Counterclaims.”
Joint Report Regarding Status of Motion, ECF No. 9, at 2.
Having considered the briefs submitted in support and in opposition to this motion, the
Court concludes that deposition of the petitioner is not warranted and therefore grants the
petitioner’s motion to quash.
II. STANDARD OF REVIEW
Under the Federal Rules of Civil Procedure, a party is entitled to discover any
information that appears “reasonably calculated to lead to the discovery of admissible evidence.”
FED. R. CIV. P. 26(b)(1). Parties may obtain discovery, including through oral depositions,
“regarding any nonprivileged matter, that is relevant to any party’s claim or defense.” Id.Limiting discovery and quashing subpoenas “goes against courts’ general preference for a broad
scope of discovery.” North Carolina Right to Life, Inc. v. Leake, 231 F.R.D. 49, 51 (D.D.C.
2005) (internal citations omitted). The Court must limit discovery, however, if (1) the discovery
sought is unreasonably cumulative or duplicative, or obtainable from a less expensive or more
convenient source; (2) the party seeking the discovery has had ample opportunity to obtain the
sought information by earlier discovery; or (3) the burden or expense of the discovery outweighs
its benefit. FED. R. CIV. P. 26(b)(2)(C). The individual or entity seeking relief from subpoena
compliance bears the burden of demonstrating that a subpoena should be modified or quashed.
See Linder v. Dep’t of Defense, 133 F.3d 17, 24 (D.C. Cir. 1998); In re Micron Tech. Inc. Sec.
Litig., 264 F.R.D. 7, 9 (D.D.C. 2010).
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III. DISCUSSION
The petitioner moves to quash Kodak’s subpoena on grounds that the deposition sought is
“neither appropriate nor necessary” and “[d]eposing an opposing party’s attorney is disfavored.”
Pet’r Mot. Quash, ECF No. 1, at 5. It urges the Court to apply the three-part test articulated by
the Eighth Circuit in Shelton v. American Motors Corp., 805 F.2d 1323 (8th Cir. 1986), which
limited the deposition of opposing counsel “to where the party seeking to take the deposition has
shown that (1) no other means exist to obtain the information other than to depose opposing
counsel; (2) the information sought is relevant and nonprivileged; and (3) the information is
crucial to the preparation of the case.” Id. at 1327 (internal citations omitted); see also
Guantanamera Cigar Co. v. Corporacion Habanos, S.A., 263 F.R.D. 1, 8 (D.D.C. 2009)
(recognizing that the Shelton standard shifts the burden of proof to the party seeking to depose
opposing counsel). The Court of Appeals for the D.C. Circuit has not adopted the Shelton test,
but other judges on this court have applied this test to bar requests to depose opposing counsel.
See Corp. for Pub. Broad. v. Am. Auto. Centennial Comm’n, No. 97-cv-1810, 1999 WL
1815561, at *1 (D.D.C. Feb. 2, 1999). The Court finds that Shelton does not apply to the instant
situation. Nevertheless, the Court concludes that Kodak’s subpoena should be quashed because
the discovery Kodak seeks may be obtained from other more appropriate sources, and any
benefit from deposing the petitioner is outweighed by the burdens it will impose. See FED. R.
CIV. P. 26(b)(2)(C).
A. The Shelton Factors Do Not Apply In The Instant Case
The petitioner argues that the Court should quash Kodak’s subpoena because the
respondent cannot demonstrate that deposing the petitioner is appropriate under the Shelton
three-part test. The Shelton test, however, is limited to circumstances in which the proposed
deponent is serving as the opposing party’s trial or litigation counsel, and does not apply here.
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In Shelton, the plaintiffs subpoenaed defendants’ in-house attorney, who was “assigned
specifically” to supervise the litigation and refused to answer questions concerning the existence
or nonexistence of certain documents that would be pertinent to the plaintiffs’ underlying
products liability case. 805 F.2d at 1325. While the district court concluded that the defendants’
attorney had no basis to withhold information, the Eighth Circuit reversed, holding that the
deposition of opposing counsel, who was not the trial counsel but intimately involved in the
litigation as in-house counsel, was inappropriate when the attorney’s testimony regarding the
existence of certain documents would “reflect her judgment as an attorney in identifying,
examining, and selecting from [the defendants’] voluminous files those documents on which she
[would] rely in preparing her client’s defense in this case.” Id. at 1328. The court reasoned that
requiring opposing counsel to testify regarding the existence of certain documents would be
tantamount to requiring her to “reveal her legal theories and opinions concerning that issue” and
would thus impermissibly reveal attorney work-product. Id. The Eighth Circuit expressly
declined to grant absolute immunity to “opposing trial counsel” from being deposed, but set forth
the three stringent requirements noted above that circumscribed the limited circumstances when
such a deposition should be allowed. Id. at 1327.
Courts have declined to apply Shelton when the proposed deponent is (1) not trial and/or
litigation counsel, and (2) when such questioning would not expose litigation strategy in the
pending case. United States v. Philip Morris, Inc., 209 F.R.D. 13, 17 (D.D.C. 2002) (concluding
that the Shelton factors did not apply when the proposed deponent attorneys were not litigation
or trial counsel, the deponent attorneys were assigned non-litigation responsibilities, and the
proposed deposition would not cover litigation strategies related to the case). The Eighth Circuit
itself limited the applicability of Shelton, stating that “[t]he Shelton test was intend[ed] to protect
against the ills of deposing opposing counsel in a pending case which could potentially lead to
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the disclosure of the attorney’s litigation strategy.” Padima, Inc. v. E.S. Originals, Inc., 281 F.3d
726, 730 (8th Cir. 2002).
In this case, the petitioner served as Apple’s counsel in the USPTO’s now-completed
reexamination of the 074 patent, and the petitioner is neither serving as Apple’s trial counsel in
the underlying Kodak-Apple litigation, nor providing support to that litigation in any manner that
has been disclosed to the Court. Apple is represented by a different law firm in the Kodak-Apple
litigation, and thus, application of the Shelton test to the instant situation would be a stretch
beyond the recognized reach of that test. See also Philip Morris, 209 F.R.D. at 16 (To apply
Shelton “to any attempt to depose an attorney, without regard to the subject matter of the
deposition or the attorney’s role in the pending litigation . . . is not only a misinterpretation of the
holding in Shelton and the subsequent case law re-affirming that holding, but is contrary to the
language and philosophy of the Federal Rules of Civil Procedure.”).
B. Deposition Of The Petitioner Is Not Appropriate Under The Federal Rules of
Civil Procedure
Although the Shelton test is inapplicable to the instant facts, the Court nonetheless finds
to be inappropriate the deposition sought here of former counsel concerning that counsel’s
representation of a party during reexamination of the same patent concurrently at issue in a
pending patent infringement action against the same party. Some of the same concerns that
animated the Shelton test regarding the risks to and burdens on the attorney-client privilege and
work-product doctrine are implicated when the proposed deponent is former counsel to a party in
pending litigation on matters that are plainly at issue in that litigation, even when the proposed
deponent is not currently opposing trial counsel.
The Federal Rules of Civil Procedure do not expressly prohibit deposition of opposing
counsel. See FED. R. CIV. P. 30(a) (a party may take the deposition of “any person”). The
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practice of deposing opposing counsel, however, is generally disfavored in federal courts.
Guantanamera Cigar Co., 263 F.R.D. at 8 (citing Hickman v. Taylor, 329 U.S. 495, 513 (1947));
see also Shelton, 805 F.2d at 1327 (stating that deposition of opposing counsel is “a negative
development in the area of litigation . . . that should be employed only in limited
circumstances.”); Corp. for Pub. Broad., 1999 WL 1815561, at *1-2 (granting protective order
and denying plaintiffs’ request to depose in-house counsel responsible for negotiating contract at
issue in the litigation).
Courts confronted by demands for counsel depositions have noted a number of concerns
that such discovery poses. Allowing depositions of opposing counsel, even if these depositions
were limited to relevant and non-privileged information, may disrupt the effective operation of
the adversarial system by chilling the free and truthful exchange of information between
attorneys and their clients. See United States Fid. & Guar. Co. v. Braspetro Oil Servs. Co., No.
97-cv-6124, 2000 U.S. Dist. LEXIS 12669, at *9-10 (S.D.N.Y. Aug. 31, 2000) (“[d]epositions of
counsel, even if limited to relevant and non-privileged information, are likely to have a
disruptive effect on the attorney-client relationship and on the litigation of the case,” citing
Roznitsky, Schwartz Cobb & Scheinert, No. 98-cv-6643, 1999 U.S. Dist. LEXIS 4449, at *5
(S.D.N.Y. Apr. 6, 1999)). Undermining attorney-client communications due to the risk that
counsel may be compelled to testify at a deposition in a pending or future “scorched earth”
litigation is certainly not helpful to effective legal practice. See Hickman, 329 U.S. at 510-11(“[I]t is essential that a lawyer work with a certain degree of privacy, free from unnecessary
intrusion by opposing parties and their counsel. Proper preparation of a client’s case demands
that he assemble information, sift what he considers to be the relevant from the irrelevant facts,
prepare his legal theories and plan his strategy without undue and needless interference. That is
the historical and the necessary way in which lawyers act within the framework of our system of
9
jurisprudence to promote justice and to protect their clients’ interests.”); Wilson v. Scruggs, No.
3:02-cv-525, 2003 WL 23521358, at *1 (S.D. Miss. Apr. 10, 2003) (“[D]epositions of opposing
counsel . . . disrupt the adversarial process and lower the standards of the profession . . . . Thus, a
party should not be permitted to take the deposition of another party’s attorney except in the
most unusual of circumstances.”) (internal citations omitted); Qad.inc v. ALN, Assoc., Inc., 132
F.R.D. 492, 494 (N.D. Ill. 1990) (declining to apply the Shelton test, but recognizing that “the
taking of a lawyer’s deposition poses the potential for invasion of client confidences and secrets .
. . and also for invasion of lawyer thought processes . . . .”). A second concern is that depositions
of opposing counsel present a “unique opportunity for harassment.” Marco Island Partners v.
Oak Dev. Corp., 117 F.R.D. 418, 420 (N.D. Ill. 1987); see also Shelton, 805 F.2d at 1330 (“The
harassing practice of deposing opposing counsel (unless that counsel’s testimony is crucial and
unique) appears to be an adversary trial tactic that does nothing for the administration of justice
but rather prolongs and increases the costs of litigation, demeans the profession, and constitutes
an abuse of the discovery process.”); Simmons Foods, Inc. v. Willis, 191 F.R.D. 625, 630 (D.
Kan. 2000) (“[E]xperience teaches that countenancing unbridled depositions of attorneys often
invites delay, disruption of the case, harassment, and unnecessary distractions into collateral
matters.”) (internal citations omitted). Closely related to this second concern is that the time
involved in preparing for and undergoing such depositions will disrupt counsels’ preparation of
parties’ cases and thus decrease the overall quality of representation. See In re Subpoena Issued
to Dennis Friedman, 350 F.3d 65, 70 (2d Cir. 2003) (“Courts have been especially concerned
about the burdens imposed on the adversary process when lawyers themselves have been the
subject of discovery requests, and have resisted the idea that lawyers should routinely be subject
to broad discovery.”); Shelton, 805 F.2d at 1327 (depositions of opposing counsel “not only
disrupts the adversarial system and lowers the standards of the profession, but it also adds to the
10
already burdensome time and costs of litigation.”); Jennings v. Family Mgmt., 201 F.R.D. 272,
276-77 (D.D.C. 2001) (“[C]ourts regard attorney depositions unfavorably because they may
interfere with the attorney’s case preparation and risk disqualification of counsel who may be
called as witness.”); Phillip Morris, 209 F.R.D. at 17 (stating that Shelton “addressed a troubling
and real-world discovery problem”); Evans v. Atwood, No. 96-cv-2746, 1999 WL 1032811, at *2
(D.D.C. Sept. 29, 1999) (“[The] presumption against attorney depositions is that depositions of
counsel, even if limited to relevant and non-privileged information, are likely to have a
disruptive effect on the attorney-client relationship and on the litigation of the case.”). A third
concern, which is not pertinent here, is that such depositions may lead to the disqualification of
counsel who may be called as witnesses. See Marco Island, 117 F.R.D. at 420; Jennings, 201
F.R.D. at 276-77. Finally, chief among the concerns cited by federal courts, is that counsel
depositions carry the substantial potential of spawning litigation over collateral issues related to
assertion of privilege, scope, and relevancy, that only end up imposing additional pretrial delays
and costs on both parties and burdens on the courts to resolve work-product and privilege
objections. See Shelton, 805 F.2d at 1327 (“It is not hard to imagine additional pretrial delays to
resolve work-product and attorney-client objections, as well as delays to resolve collateral issues
raised by the attorney’s testimony.”); M & R Amusements Corp. v. Blair, 142 F.R.D. 304, 305
(N.D. Ill. 1992) (“Deposing an opponent’s attorney is a drastic measure. It not only creates a
side-show and diverts attention from the merits of the case, its use also has a strong potential for
abuse. Thus, a motion to depose an opponent’s attorney is viewed with a jaundiced eye and is
infrequently proper.”); Walker v. United Parcel Servs., 87 F.R.D. 360, 362 (E.D. Pa. 1980)
(denying leave to depose defendant’s counsel and stating that the deposition would “occasion
significant [] delays” and “[f]urther controversies over privilege and work product claims would
11
inevitably require further imposition on the resources of the Court and provide the potential for
undue delay.”).
While the petitioner is not currently counsel to a party in the Kodak-Apple litigation for
which the deposition is sought, the fact that the petitioner was involved in representing Apple
while that litigation was pending, and on the patent matter at issue both before the USPTO and in
that lawsuit, puts petitioner in a position somewhere in between the situation of opposing trial
counsel, which would trigger the heightened Shelton test, and former counsel on a matter
unrelated to the litigation, which would fall under the standard application of Federal Rules of
Civil Procedure 26 and 45. The particular situation of the petitioner is certainly a circumstance
that this Court must take into account in evaluating the factors under Rules 26 and 45(c) of the
Federal Rules of Civil Procedure. See Phillip Morris, 209 F.R.D. at 18 (the subject matter of the
deposition and the deponent’s role in the pending case are relevant to the court’s evaluation
whether the counsel deposition should be permitted); accord Nat’l Western Life Ins. Co. v.
Western Nat’l Life Ins. Co., No. 09-cv-711, 2010 U.S. Dist. LEXIS 132024, at *10 (W.D. Tex.
Dec. 13, 2010) (“[C]ourts have found that ‘the critical factor in determining whether the Shelton
test applies is not the status of the lawyer as trial counsel, but the extent of the lawyer’s
involvement in the pending litigation,’” quoting Murphy v. Adelphia Recovery Trust, No. 3:09-
mc-105, 2009 U.S. Dist. LEXIS 122027, at *3 (N.D. Tex. Nov. 3, 2009)).
Federal Rule of Civil Procedure 26 requires the Court to limit discovery when the
discovery can be obtained from “some other source that is more convenient, less burdensome, or
less expensive,” FED. R. CIV. P. 26(b)(2)(C)(i), or when “the burden or expense of the proposed
discovery outweighs its likely benefit, considering the needs of the case . . . 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)(iii). The Court must also quash a subpoena when the subpoena
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“requires disclosure of privileged or other protected matter, if no exception or waiver applies.”
FED. R. CIV. P. 45(c)(3)(A)(iii). When attorney depositions are sought, courts should also
consider “all of the relevant facts and circumstances to determine whether the proposed
deposition would entail an inappropriate burden or hardship.” In re Friedman, 350 F.3d at 72.
These considerations 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.” Id.
1. Kodak Has Not Demonstrated A Need To Depose The Petitioner
Kodak contends that the deposition of the petitioner is necessary because this testimony
would be relevant to Kodak’s inequitable conduct defense, and courts have generally permitted
depositions of prior patent prosecution counsel in this situation. See, e.g., Paragon Podiatry
Lab. Inc. v. KLM Labs., Inc., 984 F.2d 1182, 1193 (Fed. Cir. 1993) (citing patent attorney’s
deposition in affirming district court’s decision that patent was invalid and therefore
unenforceable); Exmark Mfg. Co. v. Briggs & Stratton Power Prods. Grp., LLC, No. 8:10-cv-
187, 2011 WL 1467435, at *5-6 (D. Neb. Apr. 18, 2011) (depositions of patent prosecution
counsel was permissible when the mental impressions and knowledge of such counsel was
relevant to a claim of inequitable conduct.); Plymouth Indus., LLC v. Sioux Steel Co., No. 8:05-
cv-469, 2006 WL 695458, at *5 (D. Neb. Mar. 17, 2006) (granting the defendant's motion to
compel deposition of patent prosecution counsel); Genal Strap, Inc. v. Dar, No. 2004-cv-1691,
2006 WL 525794, at *2 (E.D.N.Y. Mar. 3, 2006) (“[C]ourts have permitted the deposition of
patent prosecution counsel who is also serving as trial counsel where the knowledge of counsel
was pertinent to a defense raised of inequitable conduct. Those courts have recognized that the
prosecuting attorney’s mental impressions are crucial to any claim of inequitable conduct in a
13
patent infringement action.”) (internal citations and quotations omitted); Alcon Labs. Inc. v.
Pharmacia Corp., 225 F. Supp. 2d 340, 344-45 (S.D.N.Y. 2002) (finding that mental
impressions of patent prosecution counsel are “crucial” to any claim of inequitable conduct);
Amicus Comms. v. Hewlett-Packard Co., Inc., No. 99-cv-0284, 1999 WL 33117227, at *2
(D.D.C. Dec. 3, 1999) (observing that “several courts have allowed the depositions of patent
prosecution counsel” when the attorney has played a role in the underlying facts). The instant
case has critical differences from the typical case where alleged inequitable conduct before the
USPTO is at issue.
First, no inequitable conduct defense is currently pled in the Kodak-Apple litigation.
Although Kodak has sought leave to amend its pleadings to assert that defense, the district court
has yet to allow Kodak to do so. 5 Kodak cites Exmark Manufacturing Co. v. Briggs & Stratton
Power Products Group, LLC, No. 8:10-cv-187, 2011 WL 1467435 (D. Neb. Apr. 18, 2011), for
the contention that “discovery may proceed on inequitable conduct, even while a motion is
pending.” Resp’t Opp’n Mot. Quash, ECF No. 5, at 8. In Exmark, however, the motion
referenced by the court is a motion to dismiss, not a motion for leave to amend pleadings. The
Exmark court clearly stated that until the motion to dismiss was decided, “[t]he fact is, [the
defendant’s] inequitable conduct defense is properly before the court at this time.” Exmark, 2011
WL 1467435, at *5. In complete contrast, an inequitable conduct defense is not properly at issue
in the Apple-Kodak litigation. The Court will not sanction deposition of counsel in the
5
The inequitable conduct defense has apparently become a common patent litigation strategy in recent years. As
recently noted by the Federal Circuit, “[a] charge of inequitable conduct conveniently expands discovery into
corporate practices before patent filing and disqualifies the prosecuting attorney from the patentee’s litigation team.
Moreover, inequitable conduct charges cast a dark cloud over the patent’s validity and paint the patentee as a bad
actor. Because the doctrine focuses on the moral turpitude of the patentee with ruinous consequences for the
reputation of his patent attorney, it discourages settlement and deflects attention from the merits of validity and
infringement issues. . . . Inequitable conduct has been overplayed, is appearing in nearly every patent suit, and is
cluttering up the patent system. . . . Left unfettered, the inequitable conduct doctrine has plagued not only the courts
but also the entire patent system.” Therasense, Inc. v. Becton, Dickinson and Co., No. 2008-1511, 2011 WL
2028255, at *7-9 (Fed. Cir. 2011) (internal quotations and citations omitted).
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petitioner’s situation on the mere prospect of Kodak being granted leave to amend its pleadings.
See also ResQNet.com, Inc. v. Lansa, Inc., No. 01-cv-3578, 2004 WL 1627170, at *5 (S.D.N.Y.
July 21, 2004) (quashing subpoena to depose counsel for information relating to an inequitable
conduct defense because the defendant had not properly asserted inequitable conduct in its
pleadings). In this respect, the proposed discovery of the petitioner is not important – at least not
yet – to “the issues at stake in the action.” FED. R. CIV. P. 26(b)(2)(C)(iii).
Second, even if an inequitable conduct defense were properly pled, deposition of the
petitioner is inappropriate. The cases in which courts have allowed deposition of patent
prosecution counsel have done so because inequitable conduct was asserted during the patent
holder’s original patent application process or during USPTO proceedings that were completed
before institution of the underlying litigation for which the deposition is sought. Here, an
“anonymous third-party” urged the USPTO to reexamine the 074 patent shortly after
commencement of the Kodak v. Apple litigation, and this reexamination proceeded concurrently
with the litigation for which the deposition is sought. Although Kodak is correct that the
petitioner’s representation of Apple was limited to the reexamination, and the petitioner is not
counsel of record in the Kodak-Apple matter, the procedural posture of the proposed deposition
implicates some of the same concerns underlying Shelton. For example, by virtue of the
petitioner’s role defending before the USPTO the same patent at issue in the concurrently
pending Kodak-Apple litigation, the petitioner was potentially privy to legal theories, thought
processes and strategies underlying Apple’s defense to the 074 patent in both fora. As discussed
in more detail below, petitioner’s role increases certain risks that the Federal Rules require courts
to examine when evaluating requests for discovery.
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2. Any Benefit Of The Proposed Deposition Is Outweighed By The Risk of
Encountering Privilege and Work-Product Issues
A significant problem that Shelton sought to restrict was an effort to preview an
opponent’s litigation strategy simply by noticing the deposition of opposing counsel. Indeed,
“counsel’s tasks in preparing for trial would be much easier if he could dispense with
interrogatories, document requests, and depositions of lay persons, and simply depose opposing
counsel in an attempt to identify the information that opposing counsel has decided is relevant
and important to his legal theories and strategy.” Shelton, 805 F.2d at 1327. This is certainly a
concern here where the Kodak-Apple litigation was ongoing during the petitioner’s
representation of Apple on an integrally related matter. According to Kodak, the deposition of
the petitioner is intended to illuminate topics at issue in the Kodak-Apple litigation, but this is
also likely to implicate the petitioner’s communications with Apple, Apple’s patent prosecution
strategy, and discussions regarding the history and scope of the 074 patent. See Desert Orchid
Partners, L.L.C. v. Transaction Sys. Architects, Inc., 237 F.R.D. 215, 220 (D. Neb. 2006)
(quashing deposition subpoena issued to defendant’s former general counsel even though he was
“never litigation counsel” because “he was involved with the defense strategy and the litigation
of this case and similar actions against the defendants” and “[t]he plaintiffs have failed to show
that [he] has relevant, nonprivileged information.”). “Discovery was hardly intended to enable a
learned profession to perform its functions either without wits or on wits borrowed from the
adversary.” Hickman, 329 U.S. at 516. The risk that the proposed deposition would be used to
uncover aspects of Apple’s strategy through deposition of former counsel on a concurrently
pending and identical patent matter is a significant concern.
Kodak argues that it is “entitled to examine [the petitioner’s] relationship with the 074
Patent inventors and this topic may lead to non-privileged, factual information relevant to
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Kodak’s defenses.” Resp’t Opp’n Mot. Quash, ECF No. 5, at 12. This is exactly the type of
fishing expedition that courts have attempted to prevent when seeking to deter deposition of
counsel. Kodak does not state what information it seeks to elicit from the petitioner, what
benefit that information would provide, or the defenses (other than the proposed inequitable
conduct defense) for which it seeks information. While Federal Rule of Civil Procedure 30 does
not explicitly prohibit deposition of an opposing party’s counsel, attorneys are not typical fact-
witnesses. Attorneys are under strict obligations to their client to preserve confidential
information, protect their clients’ interests, and prevent disclosure of privileged attorney-client
communications or other information obtained during the representation that could harm the
client. Deposing an opposing party’s former counsel on the same matter at issue in the pending
litigation, should not be done lightly. Simply claiming that an opposing party’s former counsel
has “non-privileged, factual information” without specifying precisely what information is
sought or the benefit of that information is insufficient to overcome the potential risks that the
Federal Rules were intended to protect against. See FED. R. CIV. P. 26(b)(2)(C)(iii) (requiring
the Court to limit discovery when “the burden or expense of the proposed discovery outweighs
its likely benefit”); FED. R. CIV. P. 45(c)(3)(A)(iii-iv) (requiring Court to quash a subpoena when
it would require disclosure of privileged or other protected matters, or would subject a person to
an undue burden).
3. Kodak May Obtain the Information It Seeks From Other More Appropriate and
Convenient Sources
Kodak seeks information regarding the USPTO reexamination proceedings. There are
other more appropriate sources for that information rather than deposition of the petitioner. The
reexamination of the 074 patent “was done on the written record,” which includes a written
summary of Apple’s in-person interview conducted with the USPTO. Pet’r Mot. Quash, ECF
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No. 1, at 4; see also 37 C.F.R. § 1.2 (“All business with the [USPTO] should be transacted in
writing. . . . The action of the Patent and Trademark Office will be based exclusively on the
written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or
understanding in relation to which there is disagreement or doubt.”). If Kodak seeks more
information regarding the interview, instead of deposing the petitioner, Kodak may depose the
patent examiner in addition to the inventor, whom Kodak has already deposed and was present at
the reexamination interview. See FED. R. CIV. P. 26(b)(2)(C)(i) (requiring Court to limit
discovery when there is “some other source that is more convenient, less burdensome, or less
expensive”). If deposed, much of the information sought from the petitioner, such as “client
communications, internal communications, and mental impressions,” would likely be protected
from disclosure by attorney-client privilege or the work-product doctrine. Pet’r Mot. Quash,
ECF No. 1, at 4; see also FED. R. CIV. P. 30(c)(2) (authorizing a deponent to object or not to
answer a deposition question in order to preserve privilege). Clearly a deposition of the
petitioner would require diligent efforts to avoid disclosure of attorney-client communications
and protected work-product material, a painstaking process that poses risks that other sources of
discovery do not. See FED. R. CIV. P. 45(c)(3)(A)(iii-iv) (requiring Court to quash a subpoena
when it would require disclosure of privileged or other protected matters, or would subject a
person to an undue burden).
Kodak contends that it should be allowed to depose the petitioner regarding the “scope of
the 074 patent” and the patent’s prosecution history. Resp’t Opp’n Mot. Quash, ECF No. 5, at
11. Yet, Kodak has already deposed the inventor of the patent, who can speak directly on that
topic. In ResQNet.com, Inc. v. Lansa, Inc., No. 01-cv-3578, 2004 WL 1627170 (S.D.N.Y. July
21, 2004), the court not only denied deposition of the plaintiff’s counsel because the defendant
had not pled an inequitable conduct defense, but also rejected the defendant’s attempt to depose
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opposing party’s counsel regarding the disputed patents’ prosecution history and scope. The
defendant in that case had “already deposed the inventors of the patents alleged to be relevant,
and those depositions included detailed questions about the patent prosecution histories, the cited
prior art, the patents in suit, and numerous related issues.” Id. at *5. Additionally, “the
prosecution histories speak for themselves, and the relevant inquiry in terms of prior art and
claim construction is how one of ordinary skill in the art would interpret and understand those
prosecution histories, not what [plaintiff’s] litigation counsel thinks about them.” Id. The
situation in this case is analogous, and the Court is not persuaded that the opposing party’s
former counsel should be deposed regarding this information when the information can be
obtained elsewhere.
IV. CONCLUSION
For the reasons discussed above, the petitioner’s motion to quash the respondent’s
subpoena is granted. Kodak’s May 11, 2011 deposition subpoena to the petitioner is hereby
quashed. An Order consistent with this Memorandum Opinion will be entered.
DATED: AUGUST 12, 2011 /s/ Beryl A. Howell
BERYL A. HOWELL
United States District Judge
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