United States District Court, Eastern District of New York
December 18, 2000
DR. PETER T. GORMAN, PLAINTIFF,
POLAR ELECTRO, INC., DEFENDANT.
The opinion of the court was delivered by: Spatt, District Judge.
MEMORANDUM OF DECISION AND ORDER
In this patent infringement lawsuit, plaintiff Dr. Peter T. Gorman
("Gorman" or "plaintiff") appeals from a December 14, 2000, discovery
order by United States Magistrate Judge William D. Wall denying Gorman's
request for an order pursuant to Federal Rule of Civil Procedure 26(c)
that would have prevented the defendant Polar Electro, Inc. ("Polar
Electro" or "defendant") from obtaining Gorman's undergraduate transcript
from Rutgers University pursuant to a subpoena.
In a letter application dated December 7, 2000, Gorman moved to quash a
subpoena issued by the District Court of New Jersey on non-party Rutgers
University for the production of Gorman's undergraduate transcript. In an
order dated December 8, 2000, Judge Wall held that the Court would
consider Gorman's motion to quash as one for a protective order pursuant
to Federal Rule of Civil Procedure 26(c), because motions to quash must
be made to the court "by which a subpoena was issued." Fed.R.Civ.P.
Judge Wall held a telephone conference regarding Gorman's application
on December 13, 2000, and following that conference, orally denied
Gorman's request for a protective order.
In a written decision issued on December 14, 2000, Judge Wall
summarized the arguments set forth by the parties in the December 13,
2000, telephone conference ("December 14, 2000, Order"). Gorman asserted
that he was entitled to the protective order on the ground that his
undergraduate transcripts are confidential and wholly unrelated to the
subject matter of the instant lawsuit. On the other hand, Polar Electro
contended that a protective order was inappropriate and that the
transcripts were discoverable because they are relevant to one of Polar
Electro's affirmative defenses, namely that Gorman is not the true owner
of the patents at suit. In particular, Polar Electro argued "that the
inventions at issue in the lawsuit are based on `highly sophisticated
technology' about which Gorman, a chiropractor, is unlikely to have
expertise" (see December 14, 2000, Order). However, during his
deposition, Gorman testified that he took some physics and engineering
courses while an undergraduate at Rutgers. Therefore, Polar Electro
claimed, Gorman's undergraduate transcripts contain information highly
relevant to their affirmative defense.
Judge Wall agreed with the defendant, finding that "[t]he information
in the transcript is directly related to testimony given by the plaintiff
at a deposition, and to an affirmative defense raised by the defendants."
Judge Wall noted that the plaintiff failed to demonstrate that "justice
requires" an order to protect Gorman from "annoyance, embarrassment,
oppression or undue burden or expense" (see December 14, 2000, Order
(quoting Fed.R.Civ.P. 26(c))). In addition, the Court reminded the
parties that all discoverable materials in this lawsuit are subject to a
protective order and, therefore, will not be part of a public record.
Judge Wall also stated that "[t]he plaintiff, in initiating this action,
put information about himself in issue, and the transcript is
discoverable" (see December 14, 2000, Order). Based on these findings,
the Court denied the plaintiffs motion for a protective order as well as
his application for a stay of the denial of the protective order pending
the outcome of the instant appeal.
Federal Rule of Civil Procedure 72(a) sets forth the district court's
standard for reviewing a magistrate judge's discovery order:
The district judge to whom the case is assigned shall
consider such objections and shall modify or set aside
any portion of the magistrate judge's order found to
be clearly erroneous or contrary to law.
Magistrate judges have broad discretion in resolving nondispositive
matters, and a party seeking to overturn a discovery order bears a heavy
burden. See Thomas E. Hoar, Inc. v. Sara Lee Corp., 900 F.2d 522, 525 (2d
Cir.), cert. denied; 498 U.S. 846, 111 S.Ct. 132, 112 L.Ed.2d 100
(1990); Reidy v. Runyon, 169 F.R.D. 486, 489 (E.D.N.Y. 1997). Because the
defendant's appeal of Judge Wall's December 14, 2000, order addresses a
nondispositive discovery issue, the Court will apply this deferential
standard of review.
Federal Rule of Civil Procedure 26(c) provides, in relevant part, that
the court may "make any order which justice requires to protect a party
or person from annoyance, embarrassment, oppression, or undue burden or
expense." Here, Judge Wall found that justice did not require such an
order to protect Gorman from the release of his undergraduate
transcripts, because the information in the transcripts is directly
related to the Polar Electro's affirmative defense. In reaching that
conclusion, Judge Wall relied upon the fact that Polar Electro claims
that Gorman is not the true owner of the patent because he does not
possess the expertise necessary to have created the patented inventions.
Noting that Gorman testified that he had taken undergraduate courses in
engineering and physics — courses which may have provided him with
requisite expertise — Judge Wall concluded that Gorman's
undergraduate transcripts therefore were directly relevant to Polar
Electro's affirmative defense. Judge Wall also stated that Gorman could
not be in any way embarrassed, harassed, annoyed, or oppressed by the
disclosure of his undergraduate transcript, because the transcript, like
all documents in this case, is subject to a protective order that will
"prevent the release of the transcript beyond the parameters of this
lawsuit" (see December 13, 2000, Order).
In sum, Judge Wall's December 13, 2000, Order is based on the facts of
this case and is neither clearly erroneous nor contrary to Federal Rule
of Civil Procedure 26(c). Accordingly, the Order is affirmed.
Having reviewed the parties' submissions and Judge Wall's written
December 14, 2000, written decision, it is hereby
ORDERED, that the plaintiff's motion to set aside Judge Wall's decision
denying the plaintiff's request for a protective order is DENIED, and it
ORDERED, that the oral and written decisions of Magistrate Judge Wall,
issued on December 13 and 14, 2000, respective, are affirmed.
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