The opinion of the court was delivered by: Judge Beryl A. Howell
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.
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."*fn1 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); 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,*fn2 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).
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,*fn3 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.*fn4
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 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.
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 non-privileged 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 ...