DR Systems, Inc. v. Eastman Kodak Company, No. 3:2009cv01625 - Document 18 (S.D. Cal. 2009)
Court Description: ORDER granting 2 Motion for Protective Order. Signed by Magistrate Judge Barbara Lynn Major on 09/14/09. (All non-registered users served via U.S. Mail Service).(ag) (jrl).
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DR Systems, Inc. v. Eastman Kodak Company Doc. 18 1 2 3 4 5 6 7 UNITED STATES DISTRICT COURT 8 SOUTHERN DISTRICT OF CALIFORNIA 9 10 DR SYSTEMS, INC., 11 Plaintiff, v. 12 EASTMAN KODAK CO., 13 Defendant. 14 ) ) ) ) ) ) ) ) ) Case No. 09cv1625-H (BLM) ORDER GRANTING MOTIONS FOR PROTECTIVE ORDER AND TO QUASH THE SUBPOENA SERVED UPON DR. ELIOT SIEGEL [Doc. Nos. 1 and 2] 15 On May 19, 2009, Dr. Eliot L. Siegel filed the instant Motion to 16 Quash the Subpoena Duces Tecum served upon him by DR Systems, Inc. (“DR 17 Systems”) in the District of Maryland. 18 Company (“Kodak”) filed a companion motion seeking an order prohibiting 19 Dr. Siegel’s deposition. 20 motions [doc. no. 4] and, on June 16, 2009, Dr. Siegel and Kodak replied 21 [doc. no. 6]. 22 District of Maryland to this district and subsequently low-numbered to 23 the underlying case, DR Systems, Inc. v. Eastman Kodak Company, Case No. 24 3:08cv669-H (BLM). 25 submission pursuant to Civil Local Rule 7.1(d)(1). 26 briefing submitted, and for the reasons set forth below, the motions to 27 quash the subpoena and for a protective order are GRANTED. 28 /// Doc. No. 2. Doc. No. 1. Eastman Kodak DR Systems timely opposed the On July 24, 2009, the matter was transferred from the Doc. Nos. 13, 16. The Court took the matters under Having reviewed the 09cv1625-H (BLM) Dockets.Justia.com 1 Background 2 On April 14, 2008, DR Systems filed a Complaint for declaratory 3 judgment asking the Court to declare Kodak’s patent, U.S. Patent No. 4 5,414,811 (hereinafter “the ‘811 patent”),1 5 Systems did not infringe the ‘811 patent. 6 Doc. No. 1. 7 declarations of the ‘811 patent’s validity and DR Systems’ infringement. 8 Id., doc. no. 9. 9 Order requiring that all experts be identified by March 16, 2009. Id., 10 doc. no. 15. Doc. 11 No. 1, Ex. U (DR Systems’ Initial Expert Disclosures). 12 2009, DR Systems served a subpoena duces tecum on Dr. Seigel, a 13 University of Maryland Professor and Vice Chair of the Information 14 Systems Department of Diagnostic Radiology, and an expert witness in 15 previous litigation between Kodak and DR Systems. invalid and to find that DR Case No. 3:08cv669-H (BLM), On May 7, 2008, Kodak answered and counterclaimed for On June 20, 2008, the Court issued a Case Management Neither party identified Dr. Siegel as an expert. On April 22, Doc. No. 1. 16 DR Systems contends that its subpoena is proper because it is 17 seeking Dr. Siegel’s testimony as a fact witness, not an expert witness. 18 Doc. No. 4 at 2-3. 19 would “be narrowly focused to: 1) the identification of medical imaging 20 systems prior to November 1991 and 2) the explanation of such systems 21 and discussion of any documents contemporaneous to such systems.” 22 at 4. 23 information because he has worked in this field for more than twenty 24 years. 25 to its “obviousness analysis,” which, in turn, “is directly relevant to 26 the invalidity of Kodak’s patent.” 27 DR Systems states that the deposition testimony Id. DR Systems asserts that Dr. Siegel has personal knowledge of such Id. at 4-5. DR Systems contends that such testimony is relevant Id. at 5. Dr. Siegel responds that DR Systems improperly seeks information 28 1 The ‘811 patent concerns technology for displaying digital images. 2 Doc. No. 1. 09cv1625-H (BLM) 1 that is solely the subject of expert testimony. 2 points out that Dr. Siegel 3 Doc. No. 1 at 7. Kodak is not, and has never been, a Kodak employee. He has nothing to do with the patent-in-suit and has no knowledge of that patent. [He] is not, and has never been, an employee of DR Systems and there is no reason to believe he has knowledge of DR Systems’ accused products. Nor is there any reason to believe that [he] has knowledge of any prior art that might have been disclosed by DR’s invalidity contentions...[i]n short, [he] has nothing to do with this case. 4 5 6 7 8 Id. at 6. 9 development of the invention described in the ‘811 Patent” and that he 10 had not seen a copy of the patent prior to the execution of his 11 declaration. 12 Siegel explains that in order to testify on the identified subjects, he 13 would have to conduct research to familiarize himself with the terms of 14 the ‘811 patent and with any “prior art” that may have been available. 15 Id. 16 and locate any potentially responsive documents. 17 Siegel and Kodak contend that “the purpose of the subpoena ... is to 18 obtain testimony about ‘obviousness’ and ‘secondary considerations,’ 19 topics that are uniquely the subject of expert testimony.” 20 at 7. 21 party, he asks the Court to enter a protective order quashing the 22 subpoena duces tecum served upon him. Dr. Siegel confirms that he “was not involved in the Id., Ex. P (Declaration of Eliot L. Siegel, M.D.). He also asserts that it would take him “many hours” to search for Id. As such, Dr. Doc. No. 1 Because Dr. Siegel was not identified as an expert by either 23 24 Dr. Id. at 9, 21-22. Legal Standard The scope of discovery is defined by Federal Rule of Civil 25 Procedure 26(b). 26 regarding "any nonprivileged matter that is relevant to any party’s 27 claim or defense." 28 discovery purposes includes any information "reasonably calculated to Pursuant to that rule, litigants may obtain discovery Fed.R.Civ.P. 26(b)(1). 3 Relevant information for 09cv1625-H (BLM) 1 lead to the discovery of admissible evidence." Id. 2 District courts enjoy broad discretion both to determine relevancy 3 for discovery purposes, see Hallett v. Morgan, 296 F.3d 732, 751 (9th 4 Cir. 5 Fed.R.Civ.P. 26(b)(2). 6 discovery 7 “unreasonably cumulative or duplicative,” or is obtainable “from some 8 other 9 expensive.” 2002), and to method source limit if that discovery to prevent its abuse. See For example, a court may limit the scope of any it is determines more that convenient, Fed.R.Civ.P. 26(b)(2)(C). the less discovery sought burdensome, or is less Similarly, district courts are 10 directed to limit discovery where “the burden or expense of the proposed 11 discovery outweighs its likely benefit.” Id. 12 Under Rule 45, any party may serve a subpoena commanding a non- 13 party “to attend and testify” or to “produce designated documents.” 14 Fed.R.Civ.P. 45(a)(1)(A)(iii). 15 relevance requirements set forth in Rule 26(b). 16 If requested, a court may quash or modify the subpoena for a variety of 17 reasons, including 18 burden.” Fed.R.Civ.P. 45(c)(3)(A). 19 subpoena served on a non-party, but rather must move to quash or seek a 20 protective order. 21 Cal. 2005). The party who moves to quash a subpoena has the burden of 22 persuasion. Id. at 637. 23 that the Any such subpoena is subject to the subpoena Fed.R.Civ.P. 26(b)(1). “subjects a person to undue A party cannot simply object to a See Moon v. SCP Pool Corp., 232 F.R.D. 633, 636 (C.D. Courts have broad discretion to determine whether a subpoena is 24 unduly burdensome. 25 F.3d 774, 779 (9th Cir. 1994). 26 burdensome where it seeks to compel production of documents regarding 27 topics unrelated to or beyond the scope of the litigation. 28 Inc. v. Walking Mountain Prods., 353 F.3d 792, 813-14 (9th Cir. 2003) See Exxon Shipping Co. v. U.S. Dep’t of Interior, 34 For example, a subpoena is unduly 4 See Mattel, 09cv1625-H (BLM) 1 (holding subpoenas properly quashed where their overbreadth led the 2 court to conclude that subpoenas were “served for the purpose of 3 annoying and harassment and not really for the purpose of getting 4 information.”). 5 establishing that a subpoena is unduly burdensome. 6 Garner, 126 F.3d 1138, 1146 (9th Cir. 1997). Again, the moving party bears the burden of See F.D.I.C. v. 7 Finally, Federal Rule of Civil Procedure 45(c)(3)(B)(ii) authorizes 8 a court to modify or quash a subpoena if it requires disclosure of “an 9 unretained expert's opinion or information that does not describe 10 specific occurrences in dispute and results from the expert's study that 11 was not requested by a party.” 12 that the determination “should be informed by the degree to which the 13 expert is being called because of his knowledge of facts relevant to the 14 case rather than in order to give opinion testimony....” 15 45(c)(3)(B)(ii) advisory committee's note (citations and quotation marks 16 omitted). 17 18 The advisory committee note clarifies Fed.R.Civ.P. Discussion The outcome of these motions hinge on the distinction between 19 percipient and expert witness testimony. 20 Evidence do not explicitly define “expert testimony,” they provide that 21 it encompasses any helpful “scientific, technical, or other specialized 22 knowledge,” whether presented in the form of an opinion “or otherwise.” 23 Fed.R.Evid. 702. 24 witness prepares using an analysis based on specialized knowledge. 25 e.g., Hynix Semiconductor Inc. v. Rambus, Inc., 2009 WL 230039, *10-11 26 (N.D.Cal. 2009).2 While the Federal Rules of Generally, expert testimony is testimony that a See In contrast, percipient witness testimony is based on 27 28 2 Indeed, the purpose of the Rule 26(a)(2) disclosure requirement is to prevent surprise testimony by ensuring that opposing parties are aware of the nature of the expert opinions prior to trial. See Fed.R.Civ.P. 26(a)(2); Britz Fertilizers, Inc. v. Bayer Corp., 2009 WL 1748775, *3 (E.D. Cal. June 17, 2009). 5 09cv1625-H (BLM) 1 the first hand experience of the witness, i.e., the observations and 2 conduct of the witness. See Fed.R.Evid. 701; Britz Fertilizers, Inc. v. 3 Bayer Corp., 2009 WL 1748775, *3 (E.D. Cal. June 17, 2009). 4 Here, Dr. Siegel declares that he was not involved in the 5 development of the invention described in the ‘811 patent and has no 6 personal knowledge of the ‘811 patent. 7 does not provide any contradictory information, other than to state that 8 “it has been difficult to locate independent third persons who have 9 actual personal knowledge before November 1991 of working with digital Doc. No. 1, Ex. P. DR Systems 10 medical imaging devices. 11 this knowledge and documents.” 12 statement does not transform Dr. Siegel into a percipient witness 13 subject to subpoena. 14 School, 2007 WL 1306734, *2, 8 (D.N.M. Feb. 16, 2007) (quashing the 15 deposition 16 underlying facts of the case and was never employed by a party to the 17 dispute). 18 of an Moreover, Dr. Siegel is such a person with access to See Chavez v. unretained Dr. Doc. No. 4 at 5. Siegel expert declares Such a general Board of Educ. of Tularosa Mun. who that had he no knowledge would have to of the conduct 19 research and analysis before he could provide the requested testimony. 20 Doc. No. 1, Ex. P; see also, doc. no. 4, exs. D-F (email correspondence 21 confirming that Dr. Siegel would have to conduct research and that DR 22 Systems would pay for such work). Such preparation is characteristic of 23 expert testimony. 24 general rule of thumb, the court understands ‘expert testimony’ to be 25 testimony that a witness prepares, as opposed to testimony of what a 26 witness observes.”). 27 has relevant information, he possesses it via his expertise in the field 28 and “years observations. of Hynix Semiconductor, 2009 WL 230039, at *11 (“As a In fact, it appears that to the extent Dr. Siegel study and research,” rather than any percipient Doc. No. 1 at 12 and Ex. P; see Glaxosmithkline Consumer 6 09cv1625-H (BLM) 1 Healthcare, L.P. v. Merix Pharmaceutical Corp., 2007 WL 1051759, *3, 5 2 (D.Utah 3 deponent could testify about facts helpful to party’s theory of the case 4 that “came to his attention by his study independent of any party in the 5 case.”). 6 April 2, 2007) (denying motion to compel deposition when Additionally, DR Systems explains that the requested testimony is 7 relevant to obviousness and invalidity allegations. 8 The Court finds that such information is typical of that elicited from 9 experts in patent cases. Doc. No. 4 at 5. See Hynix Semiconductor 2009 WL 230039, at *10 10 (“[T]he Federal Circuit recently remarked that a ‘[non-expert]’ may not 11 testify 12 questions’”); Marine Polymer Technologies, Inc. v. HemCon, Inc., 2009 WL 13 801826, *5 (D.N.H. March 24, 2009) (“A witness's testimony about the 14 obviousness of an invention, in patent litigation, however, requires 15 ‘highly technical and specialized knowledge’ that is beyond the scope of 16 Rule 701.”). 17 Because to...‘obviousness, Dr. Siegal or had any no of the involvement underlying with the technical patents or 18 inventions at issue in this litigation, and his proposed testimony is 19 not based on percipient observations but developed over time using his 20 “technical” or “specialized knowledge” and buttressed with additional 21 investigation and research, it is “expert testimony” as defined by Rule 22 702. 23 11. 24 Dr. Siegel as he was not timely identified as an expert witness by 25 either party and DR Systems has not shown a “substantial need” for such 26 testimony. Fed.R.Evid. 702; see Hynix Semiconductor, 2009 WL 230039, at *10The Court will not allow DR Systems to solicit such testimony from Fed.R.Civ.P. 45(3)(C)(1). 27 To the extent that DR Systems is seeking true “factual” testimony 28 from Dr. Siegel, the Court declines to allow DR Systems to engage in a fishing expedition this late in the case. 7 See Rivera v. NIBCO, Inc., 09cv1625-H (BLM) 1 364 F.2d 1057, 1072 (9th Cir. 2004) (“District courts need not condone 2 the use of discovery to engage in ‘fishing expedition[s].’”). 3 justifying their subpoena, DR Systems explains that “it is possible that 4 Dr. Siegel may also have knowledge about the existence of a prior art 5 device of which DR Systems is not yet aware.” 6 Systems also states that it wants to “explore Dr. Siegel’s recollection” 7 of devices and systems available in the pre-November 1991 time frame. 8 Id. 9 it already has hired an expert to testify about “what the hypothetical 10 ‘persons of skill in the art’ knew or did not know” during the relevant 11 time frame. 12 Dr. Siegel might be able to provide would be duplicative and cumulative 13 of other discovery and the burden of obtaining such testimony will 14 likely outweigh its benefit. Doc. No. 4 at 5. In DR However, fact discovery has ended and DR Systems acknowledges that Id. at 11. 15 Therefore, any percipient, relevant testimony See Fed.R.Civ.P. 26(b)(2)(C). Conclusion 16 For the foregoing reasons, the Court GRANTS Dr. Siegel’s Motion to 17 Quash the subpoena served upon him and Kodak’s Motion for a Protective 18 Order. 19 IT IS SO ORDERED. 20 21 DATED: September 14, 2009 22 23 BARBARA L. MAJOR United States Magistrate Judge 24 25 26 27 28 8 09cv1625-H (BLM)
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