United States District Court, S.D. New York
July 21, 2004.
RESQNET.COM, INC., Plaintiff,
LANSA, INC., Defendant.
The opinion of the court was delivered by: ROBERT SWEET, Senior District Judge
The third party witness Jeffrey I. Kaplan ("Kaplan"), who is
also counsel to plaintiff ResQNet.com, Inc. ("ResQNet"), has
moved under Rules 26 and 45, Fed.R. Civ. P., to quash the
subpoena served upon him by defendant Lansa, Inc. ("Lansa"), or
in the alternative, for a protective order. For the reasons set
forth below, the motion is granted, and the subpoena quashed.
This action was commenced on April 27, 2001. Discovery with
respect to claim construction issues proceeded and a Markman
hearing was held on June 12, 2002. The opinion of the court
construing the claims was rendered in September of 2002, see
ResQNet.com v. Lansa, Inc., No. 01 Civ. 3578 (RWS), 2002 WL
31002811 (S.D.N.Y. Sept. 5, 2002) (the "September Opinion") and
the Court of Appeals for the Federal Circuit affirmed the
September Opinion in part and reversed in part on October 16,
2003. See ResQNet.com v. Lansa, Inc., 346 F.3d 1374 (Fed.
Cir. 2003). Discovery resumed and was scheduled to close on June
On or about June 10, 2004, Lansa served a deposition subpoena
on Kaplan, trial counsel for ResQNet. Lansa subsequently
identified four topics as subjects for the deposition: (1) the
prosecution of five patents alleged to be related, two of which
are the subject of this action, (2) communications with the U.S.
Patent & Trademark Office, (3) prior art, and (4) draft patent
applications. Thereafter, on June 22, 2004, Kaplan filed the
instant motion. After further briefing, the motion was marked
fully submitted on July 7, 2004.
The Standard to Be Applied
Lansa has asserted that Federal Circuit law, rather than the
law of this Circuit, applies with respect to the quashing of a
subpoena in a patent case. However, on procedural issues not
unique to patent law, such as whether litigation counsel has
information such that he should be deposed, the Federal Circuit
defers to the law of the regional circuit. See Utah Med.
Prods., Inc. v. Graphic Control Corp., 350 F.3d 1376, 1381 (Fed.
Cir. 2003) ("The Federal Circuit applies its own law with respect
to issues of substantive patent law and certain procedural issues
pertaining to patent law, but applies the law of the regional
circuits on non-patent issues."); Amana Refrigeration, Inc. v.
Quadlux, Inc., 172 F.3d 852, 856 (Fed. Cir. 1999) ("Although
under our courtesy rule we are generally guided by the law of the
regional circuit to which district court appeals normally lie,
unless the issue pertains to or is unique to patent law, we have
applied our own law to both substantive and procedural issues
intimately involved in the substance of enforcement of the patent
right.") (internal quotation marks and citations omitted).
Although the Federal Circuit has applied its own law to discovery disputes in certain
contexts, see, e.g., In re Spalding Sports Worldwide, Inc.,
203 F.3d 800, 803 (Fed. Cir. 2000), it has also recognized that,
in general, "[a]n order quashing a subpoena is not unique to
patent law" and should be evaluated under the law of the regional
circuit. Truswal Sys. Corp. v. Hydro-Air Eng'g, Inc.,
813 F.2d 1207, 1209 (Fed. Cir. 1987). Lansa has not demonstrated that the
instant motion presents issues unique to patent law and, indeed,
has relied heavily on a case from this Circuit, Alcon Labs.,
Inc. v. Pharmacia Corp., 225 F. Supp.2d 340 (S.D.N.Y. 2002).
Accordingly, the law of this Circuit will apply here.
The Federal Rules of Civil Procedure provide that parties may
obtain discovery, including by oral depositions, "regarding any
matter, not privileged, that is relevant to the claim or defense
of any party" and that "[r]elevant information need not be
admissible." Fed.R.Civ.P. 26(b)(1). However, a district court
The frequency or extent of the use of discovery
methods otherwise permitted under [the federal] rules
. . . if it determines that: (i) the discovery sought
is unreasonably cumulative or duplicative, or is
obtainable from some other source that is more
convenient, less burdensome, or less expensive; (ii)
the party seeking discovery has had ample opportunity
by discovery in the action to obtain the information
sought; or (iii) the burden or expense of the
proposed discovery outweighs its likely benefit,
taking into account the needs of the case, the amount
in controversy, the parties' resources, the
importance of the issues at stake in the litigation,
and the importance of the proposed discovery in
resolving the issues. Fed.R.Civ.P. 26(b)(2). "The burden of persuasion
in a motion to quash a subpoena and for a protective
order is borne by the movant." Jones v. Hirschfeld,
219 F.R.D. 71, 74-75 (S.D.N.Y. 2003) (citing Dove v.
Atl. Capital Corp., 963 F.2d 15, 19 (2d Cir. 1992)).
In this Circuit, "depositions of opposing counsel are
disfavored." United States v. Yonkers Bd. of Educ.,
946 F.2d 180
, 185 (2d Cir. 1991). The rationale behind the presumption
against such discovery is that "`even a deposition of counsel
limited to relevant and nonprivileged information risks
disrupting the attorney-client relationship and impeding the
litigation.'" Alcon Labs., 225 F. Supp.2d at 344 (quoting
Madanes v. Madanes, 199 F.R.D. 135, 151 (S.D.N.Y. 2001)).
Depositions of opposing counsel are not, however, categorically
prohibited. "Rather, `the request to depose a party's attorney
must be weighed by balancing, generally speaking, the necessity
for such discovery in the circumstances of the case against its
potential to oppress the adverse party and to burden the
adversary process itself.'" Madanes, 199 F.R.D. at 151 (quoting
Johnston Dev. Group, Inc. v. Carpenters Local Union No. 1578,
130 F.R.D. 348, 352 (D.N.J. 1990)).
In determining whether a deposition of opposing counsel is
appropriate this Court is guided by dicta contained in a recent
opinion of the Second Circuit Court of Appeals, In re Subpoena Issued to Dennis Friedman, 350 F.3d 65 (2d Cir. 2003).*fn1
In Friedman, the Court of Appeals observed that it has never
adopted the doctrine set out in Shelton v. Am. Motors Corp.,
805 F.2d 1323 (8th Cir. 1986), which requires that a party
"seeking to depose `opposing trial counsel' must show that `no
other means exist to obtain the information [sought] than to
depose opposing counsel.'" Friedman, 350 F.3d at 68 (quoting
Shelton, 805 F.2d at 1327). Describing the Shelton rule as
"rigid," id. at 67, the Second Circuit instead directed that
[T]he standards set forth in Rule 26 require a
flexible approach to lawyer depositions whereby the
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 nor automatically
require prior resort to alternative discovery
devices, but it is a circumstance to be considered.
Friedman, 350 F.3d at 72. The considerations identified by the
Second Circuit in Friedman are the factors that will be applied
in deciding the instant motion. Discussion
Lansa seeks to depose Kaplan concerning the prosecution of the
patents-in-suit because he is the only person who is listed as
having prosecuted those patents for ResQNet. Specifically, Lansa
seeks to determine when and under what circumstances relevant
prior art become known to Kaplan, and argues that the factual
information sought from Kaplan and "the role he played during the
prosecution history of the patents-in-suit are directly at issue
[in] this case." (Lansa Opp. Mem. at 7.)
It is not anomalous for a party to seek to depose the attorney
who prosecuted the patent at issue in a litigation. See United
Phosphorus, Ltd. v. Midland Fumigant, Inc., 164 F.R.D. 245, 249
(D. Kan. 1995) ("When a party employs counsel to represent it in
a case where an attorney has played a role in the underlying
facts, both the attorney and the party have every reason to
expect that the attorney's deposition may be requested.").
According to Lansa, attorneys that prosecute patents are
routinely deposed when the patent is litigated, especially when
questions of inequitable conduct arise. See, e.g., Alcon
Labs., 225 F. Supp.2d at 344-45; Environ Prods. Inc. v. Total
Containment, Inc., 41 U.S.P.Q.2d 1302, 1306 (E.D. Pa. 1996);
see also Amicus Communications L.P. v. Hewlett-Packard Co.,
Inc., No. 99 Civ. 284 (HHK) (DAR), 1999 WL 33117227, at *2
(D.D.C. Dec. 3, 1999) (noting "that several courts have allowed
the depositions of patent prosecution counsel"). The fact that the attorney who prosecuted the patent has been
selected to serve as litigation counsel does not, in and of
itself, protect that attorney from being deposed. See, e.g.,
Alcon Labs., 225 F. Supp.2d at 344 ("Moreover, [the patent
holder's] choice of White as trial counsel, with the knowledge
that he was the lead prosecuting attorney for the patent, cannot
shield his deposition."). Nonetheless, even if the depositions of
attorneys who have prosecuted patents may be, as Lansa suggests,
routine, Lansa has not established that Kaplan's deposition in
this action is either appropriate or necessary.
No Defense of Inequitable Conduct Has Been Asserted
Lansa argues that Kaplan's deposition is necessary in light of
Lansa's affirmative defense of inequitable conduct. The defense
of inequitable conduct, giving rise to an inquiry as to the
mental impressions of counsel prosecuting the patent, see
Alcon Labs., 225 F. Supp.2d at 344, has not been explicitly
asserted in this action. However, Lansa argues that it has pled
inequitable conduct because it has indicated that the patents are
unenforceable due to patent misuse. Lansa further argues that it
pled, as a separate affirmative defense, that it reserves the
right to assert and rely upon any other affirmative defenses as
they appear during discovery or as they otherwise become known. Patent misuse and inequitable conduct are different defenses.
Misuse is a defense based upon the idea that a patent properly
procured has been broadened in scope impermissibly so as to be
used to impose an unreasonable restraint in competition through,
for example, an improper licensing or tying arrangement. See
Virginia Panel Corp. v. MAC Panel Co., 133 F.3d 860, 868 (Fed.
Cir. 1997). Misuse renders the patent unenforceable during the
period of misuse only, and may be cured so that the patent is
again enforceable. See Senza-Gel Corporation v. Seiffart,
803 F.2d 661, 668 n. 10 (Fed. Cir. 1986). Inequitable conduct, on the
other hand, renders the patent unenforceable permanently, and
involves concealing facts or being dishonest in the procurement
of the patent. See Glaverbel Societe Anonyme v. Northlake
Marketing & Supply, Inc., 45 F.3d 1550, 1556 (Fed. Cir. 1995).
Further, inequitable conduct, like fraud but unlike misuse,
must be pled with particularity and is subject to the heightened
pleading requirements of Fed.R.Civ.Proc. 9(b). See Ferguson
Beauregard/Logic Controls v. Mega Systems, LLC, 350 F.3d 1327,
1344 (Fed. Cir. 2003) (noting, in dicta, that "inequitable
conduct, while a broader concept than fraud, must be pled with
particularity"); Agere Sys. Guardian Corp. v. Proxim, Inc.,
190 F. Supp.2d 726, 733-34 (D. Del. 2000) ("Although the Federal
Circuit has not ruled on whether Rule 8(a) or Rule 9(b) applies
to allegations of inequitable conduct, a majority of federal
courts have found that allegations of inequitable conduct (i.e.
fraud before the Patent Office) in patent cases, like other allegations
of fraud, are subject to the requirements of Rule 9(b)."); cf.
Rentrop v. Spectranetics Corp., No. 04 Civ. 101 (PKC), 2004 WL
1243608, at *1-2 (collecting cases requiring that inequitable
conduct claims be pled with specificity but observing that
Rule 9(b), Fed.R. Civ. P., may not apply to all allegations of
inequitable conduct). Lansa has not made any allegations
concerning specific prior art concealed adequate to establish an
affirmative defense of inequitable conduct, nor may will an
affirmative defense of inequitable conduct be inferred here from
the fact that Lansa has reserved the right to assert additional,
unspecified affirmative defenses.
Lansa, therefore, is not entitled to depose Kaplan on issues
that have not been pled.*fn2
Lansa Has Not Established a Sufficient Need to Depose Kaplan
on Other Grounds
Lansa has indicated that it wishes to depose Kaplan concerning
the prosecution of five U.S. patents. However, Lansa has 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. 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 ResQNet's litigation counsel thinks about
them. See Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1585 (Fed. Cir. 1996). As Lansa has not specified
particular subjects not already covered by the prior discovery
and has not indicated why the information has not been or cannot
be obtained through means other than Kaplan's testimony, it has
not established the need for Kaplan's deposition with regard to
the prosecution history of the various patents.
Lansa has also asserted that the purpose of Kaplan's deposition
would be to elicit facts concerning the communications between
Kaplan, as counsel for the patent applicants, and the U.S. Patent
and Trademark Office "or other third parties." (Lansa Opp. Mem.
at 4 n. 2.) Lansa has had access to the file wrapper since the
beginning of this matter in April of 2001, however, and has
identified no specific topic or new information as to which
Kaplan's testimony would be necessary.
With respect to the issue of prior art, Lansa will have the
opportunity to depose an expert witness on prior art as well as
ResQNet's witnesses. Any request to depose Kaplan about dates
upon which prior art become known could only be directed to an
inequitable conduct defense, a defense which has not been pled in
this case. To the extent that Lansa is seeking information
concerning prior art that is not related to inequitable conduct,
it has not shown that such information could not be obtained from
a variety of expert and fact witnesses, without resorting to the
deposition of Kaplan. Further, any of Kaplan's conclusions
regarding the effect of a particular prior art reference on the
validity of ResQNet's patents would appear to be protected as
Finally, it has been suggested that Lansa wishes to depose
Kaplan concerning draft patent applications and amendments,
petitions, and other such papers that are in the patent file.
Lansa has not indicated why Kaplan's deposition as to these
topics would be useful or how it would address the privilege
issues possibly associated with such draft applications. In any
event, to whatever extent draft patent applications were reviewed
and revised, they are properly the subject to the testimony of
the inventors, all of whom have agreed to be deposed.
Lansa Has Not Met the Friedman Standard
As set forth above, the first factor identified by the Second
Circuit in Friedman weighs in favor of Kaplan, as Lansa has
established no specific need to depose Kaplan. The second factor under the standard set forth in Friedman is
the lawyer's role in connection with the matter on which
discovery is sought and in relation to the pending litigation.
See Friedman, 350 F.3d at 72. Kaplan's role was to prosecute
the patents in the U.S. Patent and Trademark Office, and thus,
Kaplan was admittedly connected to the subject matter in issue
here. However, courts considering the issue of whether a patent
attorney prosecuting the application and also serving as
litigation counsel may be deposed have strictly limited such
depositions to cases where "the prosecuting attorney's mental
impressions are crucial" such as situations where an inequitable
conduct or fraud claim on the Patent Office has been made.
Alcon Labs., 225 F. Supp.2d at 344; see also Environ
Prods., 41 U.S.P.Q.2d at 1306. In such cases, the defense of
inequitable conduct makes the attorney's mental impressions
during the patent prosecution proceedings directly at issue in
the litigation. See, e.g., Environ Products, 41 U.S.P.Q. at
1306. In the present case, as indicated above, no inequitable
conduct defense was pled, rendering Kaplan's importance as a fact
witness relatively minimal.
The third factor identified in Friedman is the risk of
encountering privilege and attorney work-product issues. See
Friedman, 350 F.3d at 72. Lansa has specifically indicated that
it is not seeking privileged information from Kaplan.
Nonetheless, given the topical areas Lansa has identified for the
deposition, the risk that privilege and attorney work-product
issues might arise were Kaplan's deposition to go forward is not negligible.
Accordingly, this factor does not weigh in favor of either Kaplan
The extent to which discovery has already been conducted, the
fourth Friedman factor, weighs against Lansa because virtually
all of the discovery has been conducted and completed, and the
claim construction issues have already been decided.
Taken together, the various factors identified by the Second
Circuit in Friedman counsel against permitting the deposition
of Kaplan to proceed.
The motion to quash the subpoena is granted.
It is so ordered.