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Tailored Lighting, Inc. v. Osram Sylvania Products

February 13, 2009


The opinion of the court was delivered by: Marian W. Payson United States Magistrate Judge



By order dated January 19, 2005, the above-captioned matter has been referred to the undersigned for the supervision of pretrial discovery and the hearing and disposition of all non-dispositive motions, pursuant to 28 U.S.C. §§ 636(b)(A) and (B). (Docket # 16). Plaintiff Tailored Lighting, Inc. ("TLI") has filed suit against Osram Sylvania Products, Inc. ("Sylvania") alleging infringement of one of its patents. (Docket # 1). Specifically, TLI contends that Sylvania has infringed the patent for its "Daylight Lamp," an automotive lamp that "produce[s] light substantially equivalent to daylight in color temperature and color balance." (Docket # 1 at ¶ 10).


Currently before this Court is Sylvania's motion for a protective order precluding TLI from deposing John D. Mitchell, Jr., Esq., formerly the Chief Intellectual Property Counsel for Sylvania. (Docket # 123). Also before the Court is Sylvania's motion for leave to file an amended answer. (Docket # 131). Finally, TLI has moved to compel Sylvania's production of a "proper" witness pursuant to Rule 30(b)(6) of the Federal Rules of Civil Procedure. (Docket # 148). The following constitutes this Court's Decision and Order with respect to each of the pending motions.

I. Sylvania's Motion for a Protective Order

On March 11, 2008, TLI served a notice of deposition for John D. Mitchell, Jr. ("Mitchell"), who was one of Sylvania's in-house attorneys at the time the notice was served. TLI contends that Mitchell's deposition is justified because he verified the company's responses to interrogatories served by TLI upon Sylvania.*fn1 Sylvania opposes the deposition and moves for a protective order, arguing that Mitchell lacks firsthand knowledge of the issues TLI seeks to explore and that his deposition poses a substantial risk of invading the attorney-client and work-product privileges. (Docket # 124).

The threshold requirement of discoverability under the Federal Rules of Civil Procedure is whether the information sought is "relevant to any party's claim or defense."

Fed. R. Civ. P. 26(b)(1). To be discoverable, the information "need not be admissible at the trial if the discovery appears reasonably calculated to lead to the discovery of admissible evidence." Id. The relevance standard is thus commonly recognized as sufficiently broad in scope "to encompass any matter that bears on, or that reasonably could lead to other matter that could bear on, any issue that is or may be in the case." Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978) (citation omitted). See Daval Steel Products, a Div. of Francosteel Corp. v. M/V Fakredine, 951 F.2d 1357, 1367 (2d Cir. 1991) (parties entitled to discovery of any matter that appears "reasonably calculated to lead to the discovery of admissible evidence").

Despite the otherwise lenient standard for discovery, depositions of opposing counsel are generally "disfavored," although not prohibited. United States v. Yonkers Bd. of Educ., 946 F.2d 180, 185 (2d Cir. 1991). See also In re Friedman, 350 F.3d 65, 72 (2d Cir. 2003) ("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"); Alcon Labs., Inc. v. Pharmacia Corp., 225 F. Supp. 2d 340, 342 (S.D.N.Y. 2002) ("[t]h[e] presumption [disfavoring attorney depositions] is based on the recognition that even a deposition of counsel limited to relevant and non-privileged information risks disrupting the attorney-client relationship and impeding the litigation") (internal quotations omitted). In determining whether a deposition of an attorney is appropriate in a particular case, the court should be guided by consideration of the following factors: 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.

In re Friedman, 350 F.3d at 72. As the Second Circuit has counseled, "the 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." Id.

TLI urges the Court in this case to disregard the factors identified in Friedman on the grounds that in-house counsel should be treated less protectively than outside counsel when considering the appropriateness of an attorney's deposition. TLI has not cited any authority, however, nor has this Court found any, to suggest that the Friedman considerations do not apply to depositions of in-house counsel. See Upjohn Co. v. United States, 449 U.S. 383, 395 (1981) (communications with counsel are protected regardless of whether the attorney is outside counsel or corporate counsel). Although depositions of inside counsel may present certain issues not likely to arise during depositions of outside counsel -- namely, questions of whether counsel's advice properly constitutes legal advice or business advice, see ABB Kent-Taylor, Inc. v. Stallings & Co., 172 F.R.D. 53, 55 (W.D.N.Y. 1996) -- the Friedman factors nonetheless provide a proper framework for analysis. Differentiating between legal and business advice will necessarily be encompassed by the court's consideration of the need to depose the lawyer (the first Friedman factor) and the lawyer's role in connection with the matter on which discovery is sought (the second factor).

Turning to TLI's need to depose Mitchell, I begin by examining the reasons TLI has offered to justify the requested deposition. When it originally noticed Mitchell's deposition, TLI explained that its purpose for the deposition was to explore the bases of Mitchell's verification of Sylvania's interrogatory answers. Specifically, counsel for TLI argued, "we are entitled to question [Mitchell] on the veracity and sources of [Sylvania's] responses." (Docket # 124 at ¶ 17). Following a subsequent conference with the Court, during which counsel for TLI reaffirmed its desire to depose Mitchell concerning his verification, Sylvania provided a written list identifying, for each interrogatory, those individuals who assisted Mitchell in answering. (Docket # 124-3).

Despite that identification, during oral argument of this motion, TLI persisted in its contention that the deposition was justified in order to elicit testimony identifying the individuals with whom Mitchell had conferred to answer the specific interrogatories. When pressed on that point, counsel maintained that TLI seeks to examine Mitchell not just about the identification of sources, but also about the particular information Mitchell obtained from each source. In addition, for the first time during the several-month period that the parties had been discussing this dispute, TLI's counsel expressed a desire to examine Mitchell about unspecified comments he purportedly made to Sylvania's counsel concerning the merits of this case, which TLI believes may support an award of attorneys' fees and costs under applicable law. This alternative justification for Mitchell's deposition is entirely absent from TLI's papers submitted in opposition to the pending motion.

The timing of TLI's notice of deposition is relevant to my assessment of its need to depose Mitchell. It was served no more than twenty days before the discovery deadline, thus effectively precluding TLI from conducting any follow-up discovery based upon information it could have learned during the deposition. For that reason, TLI cannot argue, and has not argued, that it should be permitted to examine Mitchell as to his sources for Sylvania's responses so that it may thereafter depose or otherwise seek discovery from those sources.

Rather, its request appears limited to identifying the particular information provided by those sources to Mitchell. TLI maintains that with that information in hand it will be in a position to subpoena those sources as trial witnesses, if it chooses. Whether such a litigation strategy is wise or even likely to be utilized are questions beyond the proper purview of my judgment. For purposes of this motion, I cannot conclude that Mitchell's testimony, limited to the issue of identifying the information provided to him by those who assisted him in answering TLI's interrogatories, would not be relevant to TLI's claims and would not be reasonably calculated to lead to the discovery of admissible trial evidence.*fn2 Moreover, Mitchell appears to be the only witness who could testify to the myriad bases for Sylvania's interrogatory responses. Although his responses are not likely to be based on firsthand knowledge, that limitation alone should not preclude TLI from examining in the most effective way possible the sources of information upon which the answers are based. Even if TLI had time under the discovery schedule to conduct individual depositions of Mitchell's sources, which it does not, these depositions would number in excess of a dozen.*fn3

Turning to the next factor -- the lawyer's role in connection with the matter on which discovery is sought and in relation to the pending litigation -- two facts are principally important. First, Mitchell's firsthand knowledge of the events that gave rise to the litigation is likely limited by the fact that he was not hired by Sylvania until after this lawsuit was filed. That said, his role was central to the matter about which discovery is sought -- the bases for the company's answers to interrogatories. While that issue is a proper subject of discovery, see Thomas & Betts Corp. v. Panduit Corp., 1999 WL 1129607, *1 (N.D. Ill. 1999) (attorney's verification of interrogatory answers is "an invitation to be deposed"), the risk of encountering privileged information in the course of doing so -- the third Friedman factor -- cannot be discounted. For example, Mitchell's thought processes concerning whom and what documents to consult in investigating TLI's interrogatories likely falls within the ambit of the protection afforded under the work-product doctrine. So too would his deliberations about what information to include and what to exclude in the answers. Similarly, the possibility that he may have had privileged communications about the facts and information he assembled cannot be gainsaid. Given these risks, there is a strong need to carefully and cautiously circumscribe any permissible areas of testimony.

The final factor to be considered is the extent to which discovery has already been conducted, and I conclude that this factor does not favor one party over the other. On the one hand, as previously noted, TLI waited until the last possible day to timely serve its notice under the scheduling order. This timing belies any contention that the testimony sought is a critical step to conducting further discovery. On the other hand, the fact that TLI served its notice at the end of ...

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