                            UNITED STATES DISTRICT COURT
                            FOR THE DISTRICT OF COLUMBIA




STERNE KESSLER GOLDSTEIN & FOX,
PLLC,
                Petitioner,
                                                     Miscellaneous Case No. 11-337 (BAH)
                       v.                            Judge Beryl A. Howell

EASTMAN KODAK COMPANY,

                       Respondent.


                                  MEMORANDUM OPINION

       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.




                                                 1
I.       BACKGROUND

         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.” 1 Eastman Kodak v. Apple, Inc., No. 6:10-cv-6022


1
  Kodak filed its Motion for Leave to File a Second Amended Answer on April 14, 2011. 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). A hearing on this motion in the Western District of New York was
scheduled for July 25, 2011. As of the date of this opinion, no decision on Kodak’s motion to add an inequitable
conduct defense has been issued. Regardless of the outcome of its motion, Kodak has stated that it seeks to depose
the petitioner. Resp’t Opp’n Mot. Quash, ECF No. 5, at 8 n.2. If Kodak does not obtain leave to add an inequitable
conduct defense, it will not depose the petitioner on issues relating to the petitioner’s alleged inequitable-conduct,
                                                          2
(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, 2 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).
2
  Pursuant to Federal Rule of Civil Procedure 45(a)(2), this subpoena was issued by the United States District Court
for the District of Columbia. FED. R. CIV. P. 45(a)(2)(B) (stating that a subpoena for attendance at a deposition must
issue “from the court for the district where the deposition is to be taken.”).
                                                          3
           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, 3

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. 4

           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


3
    Under Federal Rule of Civil Procedure 45(c), a motion to quash must be filed with the Court issuing the subpoena.
4
 Federal Rules of Civil Procedure 26(b) and (c) respectively authorize the Court to limit discovery and issue
protective orders. The petitioners seek to quash a deposition subpoena, which is provided for under Federal Rule of
Civil Procedure 45(c).
                                                           4
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.

II.    STANDARD OF REVIEW

       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 nonprivileged 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 seeking relief from subpoena

compliance bears the burden of demonstrating that a subpoena should be modified or quashed.

See Linder v. Dep’t of Defense, 133 F.3d 17, 24 (D.C. Cir. 1998); In re Micron Tech. Inc. Sec.

Litig., 264 F.R.D. 7, 9 (D.D.C. 2010).




                                                 5
III.   DISCUSSION

       The petitioner moves to quash Kodak’s subpoena on grounds that the deposition sought is

“neither appropriate nor necessary” and “[d]eposing an opposing party’s attorney is disfavored.”

Pet’r Mot. Quash, ECF No. 1, at 5. It urges the Court to apply the three-part test articulated by

the Eighth Circuit in Shelton v. American Motors Corp., 805 F.2d 1323 (8th Cir. 1986), which

limited the deposition of opposing counsel “to where the party seeking to take the deposition has

shown that (1) no other means exist to obtain the information other than to depose opposing

counsel; (2) the information sought is relevant and nonprivileged; and (3) the information is

crucial to the preparation of the case.” Id. at 1327 (internal citations omitted); see also

Guantanamera Cigar Co. v. Corporacion Habanos, S.A., 263 F.R.D. 1, 8 (D.D.C. 2009)

(recognizing that the Shelton standard shifts the burden of proof to the party seeking to depose

opposing counsel). The Court of Appeals for the D.C. Circuit has not adopted the Shelton test,

but other judges on this court have applied this test to bar requests to depose opposing counsel.

See Corp. for Pub. Broad. v. Am. Auto. Centennial Comm’n, No. 97-cv-1810, 1999 WL

1815561, at *1 (D.D.C. Feb. 2, 1999). The Court finds that Shelton does not apply to the instant

situation. Nevertheless, the Court concludes that Kodak’s subpoena should be quashed because

the discovery Kodak seeks may be obtained from other more appropriate sources, and any

benefit from deposing the petitioner is outweighed by the burdens it will impose. See FED. R.

CIV. P. 26(b)(2)(C).

       A. The Shelton Factors Do Not Apply In The Instant Case

       The petitioner argues that the Court should quash Kodak’s subpoena because the

respondent cannot demonstrate that deposing the petitioner is appropriate under the Shelton

three-part test. The Shelton test, however, is limited to circumstances in which the proposed

deponent is serving as the opposing party’s trial or litigation counsel, and does not apply here.
                                                  6
       In Shelton, the plaintiffs subpoenaed defendants’ in-house attorney, who was “assigned

specifically” to supervise the litigation and refused to answer questions concerning the existence

or nonexistence of certain documents that would be pertinent to the plaintiffs’ underlying

products liability case. 805 F.2d at 1325. While the district court concluded that the defendants’

attorney had no basis to withhold information, the Eighth Circuit reversed, holding that the

deposition of opposing counsel, who was not the trial counsel but intimately involved in the

litigation as in-house counsel, was inappropriate when the attorney’s testimony regarding the

existence of certain documents would “reflect her judgment as an attorney in identifying,

examining, and selecting from [the defendants’] voluminous files those documents on which she

[would] rely in preparing her client’s defense in this case.” Id. at 1328. The court reasoned that

requiring opposing counsel to testify regarding the existence of certain documents would be

tantamount to requiring her to “reveal her legal theories and opinions concerning that issue” and

would thus impermissibly reveal attorney work-product. Id. The Eighth Circuit expressly

declined to grant absolute immunity to “opposing trial counsel” from being deposed, but set forth

the three stringent requirements noted above that circumscribed the limited circumstances when

such a deposition should be allowed. Id. at 1327.

       Courts have declined to apply Shelton when the proposed deponent is (1) not trial and/or

litigation counsel, and (2) when such questioning would not expose litigation strategy in the

pending case. United States v. Philip Morris, Inc., 209 F.R.D. 13, 17 (D.D.C. 2002) (concluding

that the Shelton factors did not apply when the proposed deponent attorneys were not litigation

or trial counsel, the deponent attorneys were assigned non-litigation responsibilities, and the

proposed deposition would not cover litigation strategies related to the case). The Eighth Circuit

itself limited the applicability of Shelton, stating that “[t]he Shelton test was intend[ed] to protect

against the ills of deposing opposing counsel in a pending case which could potentially lead to
                                                   7
the disclosure of the attorney’s litigation strategy.” Padima, Inc. v. E.S. Originals, Inc., 281 F.3d

726, 730 (8th Cir. 2002).

        In this case, the petitioner served as Apple’s counsel in the USPTO’s now-completed

reexamination of the 074 patent, and the petitioner is neither serving as Apple’s trial counsel in

the underlying Kodak-Apple litigation, nor providing support to that litigation in any manner that

has been disclosed to the Court. Apple is represented by a different law firm in the Kodak-Apple

litigation, and thus, application of the Shelton test to the instant situation would be a stretch

beyond the recognized reach of that test. See also Philip Morris, 209 F.R.D. at 16 (To apply

Shelton “to any attempt to depose an attorney, without regard to the subject matter of the

deposition or the attorney’s role in the pending litigation . . . is not only a misinterpretation of the

holding in Shelton and the subsequent case law re-affirming that holding, but is contrary to the

language and philosophy of the Federal Rules of Civil Procedure.”).

        B. Deposition Of The Petitioner Is Not Appropriate Under The Federal Rules of
           Civil Procedure

        Although the Shelton test is inapplicable to the instant facts, the Court nonetheless finds

to be inappropriate the deposition sought here of former counsel concerning that counsel’s

representation of a party during reexamination of the same patent concurrently at issue in a

pending patent infringement action against the same party. Some of the same concerns that

animated the Shelton test regarding the risks to and burdens on the attorney-client privilege and

work-product doctrine are implicated when the proposed deponent is former counsel to a party in

pending litigation on matters that are plainly at issue in that litigation, even when the proposed

deponent is not currently opposing trial counsel.

        The Federal Rules of Civil Procedure do not expressly prohibit deposition of opposing

counsel. See FED. R. CIV. P. 30(a) (a party may take the deposition of “any person”). The


                                                   8
practice of deposing opposing counsel, however, is generally disfavored in federal courts.

Guantanamera Cigar Co., 263 F.R.D. at 8 (citing Hickman v. Taylor, 329 U.S. 495, 513 (1947));

see also Shelton, 805 F.2d at 1327 (stating that deposition of opposing counsel is “a negative

development in the area of litigation . . . that should be employed only in limited

circumstances.”); Corp. for Pub. Broad., 1999 WL 1815561, at *1-2 (granting protective order

and denying plaintiffs’ request to depose in-house counsel responsible for negotiating contract at

issue in the litigation).

        Courts confronted by demands for counsel depositions have noted a number of concerns

that such discovery poses. Allowing depositions of opposing counsel, even if these depositions

were limited to relevant and non-privileged information, may disrupt the effective operation of

the adversarial system by chilling the free and truthful exchange of information between

attorneys and their clients. See United States Fid. & Guar. Co. v. Braspetro Oil Servs. Co., No.

97-cv-6124, 2000 U.S. Dist. LEXIS 12669, at *9-10 (S.D.N.Y. Aug. 31, 2000) (“[d]epositions of

counsel, even if limited to relevant and non-privileged information, are likely to have a

disruptive effect on the attorney-client relationship and on the litigation of the case,” citing

Roznitsky, Schwartz Cobb & Scheinert, No. 98-cv-6643, 1999 U.S. Dist. LEXIS 4449, at *5

(S.D.N.Y. Apr. 6, 1999)). Undermining attorney-client communications due to the risk that

counsel may be compelled to testify at a deposition in a pending or future “scorched earth”

litigation is certainly not helpful to effective legal practice. See Hickman, 329 U.S. at 510-11

(“[I]t is essential that a lawyer work with a certain degree of privacy, free from unnecessary

intrusion by opposing parties and their counsel. Proper preparation of a client’s case demands

that he assemble information, sift what he considers to be the relevant from the irrelevant facts,

prepare his legal theories and plan his strategy without undue and needless interference. That is

the historical and the necessary way in which lawyers act within the framework of our system of
                                                  9
jurisprudence to promote justice and to protect their clients’ interests.”); Wilson v. Scruggs, No.

3:02-cv-525, 2003 WL 23521358, at *1 (S.D. Miss. Apr. 10, 2003) (“[D]epositions of opposing

counsel . . . disrupt the adversarial process and lower the standards of the profession . . . . Thus, a

party should not be permitted to take the deposition of another party’s attorney except in the

most unusual of circumstances.”) (internal citations omitted); Qad.inc v. ALN, Assoc., Inc., 132

F.R.D. 492, 494 (N.D. Ill. 1990) (declining to apply the Shelton test, but recognizing that “the

taking of a lawyer’s deposition poses the potential for invasion of client confidences and secrets .

. . and also for invasion of lawyer thought processes . . . .”). A second concern is that depositions

of opposing counsel present a “unique opportunity for harassment.” Marco Island Partners v.

Oak Dev. Corp., 117 F.R.D. 418, 420 (N.D. Ill. 1987); see also Shelton, 805 F.2d at 1330 (“The

harassing practice of deposing opposing counsel (unless that counsel’s testimony is crucial and

unique) appears to be an adversary trial tactic that does nothing for the administration of justice

but rather prolongs and increases the costs of litigation, demeans the profession, and constitutes

an abuse of the discovery process.”); Simmons Foods, Inc. v. Willis, 191 F.R.D. 625, 630 (D.

Kan. 2000) (“[E]xperience teaches that countenancing unbridled depositions of attorneys often

invites delay, disruption of the case, harassment, and unnecessary distractions into collateral

matters.”) (internal citations omitted). Closely related to this second concern is that the time

involved in preparing for and undergoing such depositions will disrupt counsels’ preparation of

parties’ cases and thus decrease the overall quality of representation. See In re Subpoena Issued

to Dennis Friedman, 350 F.3d 65, 70 (2d Cir. 2003) (“Courts have been especially concerned

about the burdens imposed on the adversary process when lawyers themselves have been the

subject of discovery requests, and have resisted the idea that lawyers should routinely be subject

to broad discovery.”); Shelton, 805 F.2d at 1327 (depositions of opposing counsel “not only

disrupts the adversarial system and lowers the standards of the profession, but it also adds to the
                                                  10
already burdensome time and costs of litigation.”); Jennings v. Family Mgmt., 201 F.R.D. 272,

276-77 (D.D.C. 2001) (“[C]ourts regard attorney depositions unfavorably because they may

interfere with the attorney’s case preparation and risk disqualification of counsel who may be

called as witness.”); Phillip Morris, 209 F.R.D. at 17 (stating that Shelton “addressed a troubling

and real-world discovery problem”); Evans v. Atwood, No. 96-cv-2746, 1999 WL 1032811, at *2

(D.D.C. Sept. 29, 1999) (“[The] presumption against attorney depositions is that depositions of

counsel, even if limited to relevant and non-privileged information, are likely to have a

disruptive effect on the attorney-client relationship and on the litigation of the case.”). A third

concern, which is not pertinent here, is that such depositions may lead to the disqualification of

counsel who may be called as witnesses. See Marco Island, 117 F.R.D. at 420; Jennings, 201

F.R.D. at 276-77. Finally, chief among the concerns cited by federal courts, is that counsel

depositions carry the substantial potential of spawning litigation over collateral issues related to

assertion of privilege, scope, and relevancy, that only end up imposing additional pretrial delays

and costs on both parties and burdens on the courts to resolve work-product and privilege

objections. See Shelton, 805 F.2d at 1327 (“It is not hard to imagine additional pretrial delays to

resolve work-product and attorney-client objections, as well as delays to resolve collateral issues

raised by the attorney’s testimony.”); M & R Amusements Corp. v. Blair, 142 F.R.D. 304, 305

(N.D. Ill. 1992) (“Deposing an opponent’s attorney is a drastic measure. It not only creates a

side-show and diverts attention from the merits of the case, its use also has a strong potential for

abuse. Thus, a motion to depose an opponent’s attorney is viewed with a jaundiced eye and is

infrequently proper.”); Walker v. United Parcel Servs., 87 F.R.D. 360, 362 (E.D. Pa. 1980)

(denying leave to depose defendant’s counsel and stating that the deposition would “occasion

significant [] delays” and “[f]urther controversies over privilege and work product claims would



                                                 11
inevitably require further imposition on the resources of the Court and provide the potential for

undue delay.”).

       While the petitioner is not currently counsel to a party in the Kodak-Apple litigation for

which the deposition is sought, the fact that the petitioner was involved in representing Apple

while that litigation was pending, and on the patent matter at issue both before the USPTO and in

that lawsuit, puts petitioner in a position somewhere in between the situation of opposing trial

counsel, which would trigger the heightened Shelton test, and former counsel on a matter

unrelated to the litigation, which would fall under the standard application of Federal Rules of

Civil Procedure 26 and 45. The particular situation of the petitioner is certainly a circumstance

that this Court must take into account in evaluating the factors under Rules 26 and 45(c) of the

Federal Rules of Civil Procedure. See Phillip Morris, 209 F.R.D. at 18 (the subject matter of the

deposition and the deponent’s role in the pending case are relevant to the court’s evaluation

whether the counsel deposition should be permitted); accord Nat’l Western Life Ins. Co. v.

Western Nat’l Life Ins. Co., No. 09-cv-711, 2010 U.S. Dist. LEXIS 132024, at *10 (W.D. Tex.

Dec. 13, 2010) (“[C]ourts have found that ‘the critical factor in determining whether the Shelton

test applies is not the status of the lawyer as trial counsel, but the extent of the lawyer’s

involvement in the pending litigation,’” quoting Murphy v. Adelphia Recovery Trust, No. 3:09-

mc-105, 2009 U.S. Dist. LEXIS 122027, at *3 (N.D. Tex. Nov. 3, 2009)).

       Federal Rule of Civil Procedure 26 requires the Court to limit discovery when the

discovery can be obtained from “some other source that is more convenient, less burdensome, or

less expensive,” FED. R. CIV. P. 26(b)(2)(C)(i), or when “the burden or expense of the proposed

discovery outweighs its likely benefit, considering the needs of the case . . . the importance of

the issues at stake in the action, and the importance of the discovery in resolving the issues.”

FED. R. CIV. P. 26(b)(2)(C)(iii). The Court must also quash a subpoena when the subpoena
                                                  12
“requires disclosure of privileged or other protected matter, if no exception or waiver applies.”

FED. R. CIV. P. 45(c)(3)(A)(iii). When attorney depositions are sought, courts should also

consider “all of the relevant facts and circumstances to determine whether the proposed

deposition would entail an inappropriate burden or hardship.” In re Friedman, 350 F.3d at 72.

These considerations 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.” Id.

           1. Kodak Has Not Demonstrated A Need To Depose The Petitioner

       Kodak contends that the deposition of the petitioner is necessary because this testimony

would be relevant to Kodak’s inequitable conduct defense, and courts have generally permitted

depositions of prior patent prosecution counsel in this situation. See, e.g., Paragon Podiatry

Lab. Inc. v. KLM Labs., Inc., 984 F.2d 1182, 1193 (Fed. Cir. 1993) (citing patent attorney’s

deposition in affirming district court’s decision that patent was invalid and therefore

unenforceable); Exmark Mfg. Co. v. Briggs & Stratton Power Prods. Grp., LLC, No. 8:10-cv-

187, 2011 WL 1467435, at *5-6 (D. Neb. Apr. 18, 2011) (depositions of patent prosecution

counsel was permissible when the mental impressions and knowledge of such counsel was

relevant to a claim of inequitable conduct.); Plymouth Indus., LLC v. Sioux Steel Co., No. 8:05-

cv-469, 2006 WL 695458, at *5 (D. Neb. Mar. 17, 2006) (granting the defendant's motion to

compel deposition of patent prosecution counsel); Genal Strap, Inc. v. Dar, No. 2004-cv-1691,

2006 WL 525794, at *2 (E.D.N.Y. Mar. 3, 2006) (“[C]ourts have permitted the deposition of

patent prosecution counsel who is also serving as trial counsel where the knowledge of counsel

was pertinent to a defense raised of inequitable conduct. Those courts have recognized that the

prosecuting attorney’s mental impressions are crucial to any claim of inequitable conduct in a
                                                 13
patent infringement action.”) (internal citations and quotations omitted); Alcon Labs. Inc. v.

Pharmacia Corp., 225 F. Supp. 2d 340, 344-45 (S.D.N.Y. 2002) (finding that mental

impressions of patent prosecution counsel are “crucial” to any claim of inequitable conduct);

Amicus Comms. v. Hewlett-Packard Co., Inc., No. 99-cv-0284, 1999 WL 33117227, at *2

(D.D.C. Dec. 3, 1999) (observing that “several courts have allowed the depositions of patent

prosecution counsel” when the attorney has played a role in the underlying facts). The instant

case has critical differences from the typical case where alleged inequitable conduct before the

USPTO is at issue.

         First, no inequitable conduct defense is currently pled in the Kodak-Apple litigation.

Although Kodak has sought leave to amend its pleadings to assert that defense, the district court

has yet to allow Kodak to do so. 5 Kodak cites Exmark Manufacturing Co. v. Briggs & Stratton

Power Products Group, LLC, No. 8:10-cv-187, 2011 WL 1467435 (D. Neb. Apr. 18, 2011), for

the contention that “discovery may proceed on inequitable conduct, even while a motion is

pending.” Resp’t Opp’n Mot. Quash, ECF No. 5, at 8. In Exmark, however, the motion

referenced by the court is a motion to dismiss, not a motion for leave to amend pleadings. The

Exmark court clearly stated that until the motion to dismiss was decided, “[t]he fact is, [the

defendant’s] inequitable conduct defense is properly before the court at this time.” Exmark, 2011

WL 1467435, at *5. In complete contrast, an inequitable conduct defense is not properly at issue

in the Apple-Kodak litigation. The Court will not sanction deposition of counsel in the


5
  The inequitable conduct defense has apparently become a common patent litigation strategy in recent years. As
recently noted by the Federal Circuit, “[a] charge of inequitable conduct conveniently expands discovery into
corporate practices before patent filing and disqualifies the prosecuting attorney from the patentee’s litigation team.
Moreover, inequitable conduct charges cast a dark cloud over the patent’s validity and paint the patentee as a bad
actor. Because the doctrine focuses on the moral turpitude of the patentee with ruinous consequences for the
reputation of his patent attorney, it discourages settlement and deflects attention from the merits of validity and
infringement issues. . . . Inequitable conduct has been overplayed, is appearing in nearly every patent suit, and is
cluttering up the patent system. . . . Left unfettered, the inequitable conduct doctrine has plagued not only the courts
but also the entire patent system.” Therasense, Inc. v. Becton, Dickinson and Co., No. 2008-1511, 2011 WL
2028255, at *7-9 (Fed. Cir. 2011) (internal quotations and citations omitted).
                                                           14
petitioner’s situation on the mere prospect of Kodak being granted leave to amend its pleadings.

See also ResQNet.com, Inc. v. Lansa, Inc., No. 01-cv-3578, 2004 WL 1627170, at *5 (S.D.N.Y.

July 21, 2004) (quashing subpoena to depose counsel for information relating to an inequitable

conduct defense because the defendant had not properly asserted inequitable conduct in its

pleadings). In this respect, the proposed discovery of the petitioner is not important – at least not

yet – to “the issues at stake in the action.” FED. R. CIV. P. 26(b)(2)(C)(iii).

       Second, even if an inequitable conduct defense were properly pled, deposition of the

petitioner is inappropriate. The cases in which courts have allowed deposition of patent

prosecution counsel have done so because inequitable conduct was asserted during the patent

holder’s original patent application process or during USPTO proceedings that were completed

before institution of the underlying litigation for which the deposition is sought. Here, an

“anonymous third-party” urged the USPTO to reexamine the 074 patent shortly after

commencement of the Kodak v. Apple litigation, and this reexamination proceeded concurrently

with the litigation for which the deposition is sought. Although Kodak is correct that the

petitioner’s representation of Apple was limited to the reexamination, and the petitioner is not

counsel of record in the Kodak-Apple matter, the procedural posture of the proposed deposition

implicates some of the same concerns underlying Shelton. For example, by virtue of the

petitioner’s role defending before the USPTO the same patent at issue in the concurrently

pending Kodak-Apple litigation, the petitioner was potentially privy to legal theories, thought

processes and strategies underlying Apple’s defense to the 074 patent in both fora. As discussed

in more detail below, petitioner’s role increases certain risks that the Federal Rules require courts

to examine when evaluating requests for discovery.




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           2. Any Benefit Of The Proposed Deposition Is Outweighed By The Risk of
              Encountering Privilege and Work-Product Issues

       A significant problem that Shelton sought to restrict was an effort to preview an

opponent’s litigation strategy simply by noticing the deposition of opposing counsel. Indeed,

“counsel’s tasks in preparing for trial would be much easier if he could dispense with

interrogatories, document requests, and depositions of lay persons, and simply depose opposing

counsel in an attempt to identify the information that opposing counsel has decided is relevant

and important to his legal theories and strategy.” Shelton, 805 F.2d at 1327. This is certainly a

concern here where the Kodak-Apple litigation was ongoing during the petitioner’s

representation of Apple on an integrally related matter. According to Kodak, the deposition of

the petitioner is intended to illuminate topics at issue in the Kodak-Apple litigation, but this is

also likely to implicate the petitioner’s communications with Apple, Apple’s patent prosecution

strategy, and discussions regarding the history and scope of the 074 patent. See Desert Orchid

Partners, L.L.C. v. Transaction Sys. Architects, Inc., 237 F.R.D. 215, 220 (D. Neb. 2006)

(quashing deposition subpoena issued to defendant’s former general counsel even though he was

“never litigation counsel” because “he was involved with the defense strategy and the litigation

of this case and similar actions against the defendants” and “[t]he plaintiffs have failed to show

that [he] has relevant, nonprivileged information.”). “Discovery was hardly intended to enable a

learned profession to perform its functions either without wits or on wits borrowed from the

adversary.” Hickman, 329 U.S. at 516. The risk that the proposed deposition would be used to

uncover aspects of Apple’s strategy through deposition of former counsel on a concurrently

pending and identical patent matter is a significant concern.

       Kodak argues that it is “entitled to examine [the petitioner’s] relationship with the 074

Patent inventors and this topic may lead to non-privileged, factual information relevant to


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Kodak’s defenses.” Resp’t Opp’n Mot. Quash, ECF No. 5, at 12. This is exactly the type of

fishing expedition that courts have attempted to prevent when seeking to deter deposition of

counsel. Kodak does not state what information it seeks to elicit from the petitioner, what

benefit that information would provide, or the defenses (other than the proposed inequitable

conduct defense) for which it seeks information. While Federal Rule of Civil Procedure 30 does

not explicitly prohibit deposition of an opposing party’s counsel, attorneys are not typical fact-

witnesses. Attorneys are under strict obligations to their client to preserve confidential

information, protect their clients’ interests, and prevent disclosure of privileged attorney-client

communications or other information obtained during the representation that could harm the

client. Deposing an opposing party’s former counsel on the same matter at issue in the pending

litigation, should not be done lightly. Simply claiming that an opposing party’s former counsel

has “non-privileged, factual information” without specifying precisely what information is

sought or the benefit of that information is insufficient to overcome the potential risks that the

Federal Rules were intended to protect against. See FED. R. CIV. P. 26(b)(2)(C)(iii) (requiring

the Court to limit discovery when “the burden or expense of the proposed discovery outweighs

its likely benefit”); FED. R. CIV. P. 45(c)(3)(A)(iii-iv) (requiring Court to quash a subpoena when

it would require disclosure of privileged or other protected matters, or would subject a person to

an undue burden).

           3. Kodak May Obtain the Information It Seeks From Other More Appropriate and
              Convenient Sources

       Kodak seeks information regarding the USPTO reexamination proceedings. There are

other more appropriate sources for that information rather than deposition of the petitioner. The

reexamination of the 074 patent “was done on the written record,” which includes a written

summary of Apple’s in-person interview conducted with the USPTO. Pet’r Mot. Quash, ECF


                                                 17
No. 1, at 4; see also 37 C.F.R. § 1.2 (“All business with the [USPTO] should be transacted in

writing. . . . The action of the Patent and Trademark Office will be based exclusively on the

written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or

understanding in relation to which there is disagreement or doubt.”). If Kodak seeks more

information regarding the interview, instead of deposing the petitioner, Kodak may depose the

patent examiner in addition to the inventor, whom Kodak has already deposed and was present at

the reexamination interview. See FED. R. CIV. P. 26(b)(2)(C)(i) (requiring Court to limit

discovery when there is “some other source that is more convenient, less burdensome, or less

expensive”). If deposed, much of the information sought from the petitioner, such as “client

communications, internal communications, and mental impressions,” would likely be protected

from disclosure by attorney-client privilege or the work-product doctrine. Pet’r Mot. Quash,

ECF No. 1, at 4; see also FED. R. CIV. P. 30(c)(2) (authorizing a deponent to object or not to

answer a deposition question in order to preserve privilege). Clearly a deposition of the

petitioner would require diligent efforts to avoid disclosure of attorney-client communications

and protected work-product material, a painstaking process that poses risks that other sources of

discovery do not. See FED. R. CIV. P. 45(c)(3)(A)(iii-iv) (requiring Court to quash a subpoena

when it would require disclosure of privileged or other protected matters, or would subject a

person to an undue burden).

       Kodak contends that it should be allowed to depose the petitioner regarding the “scope of

the 074 patent” and the patent’s prosecution history. Resp’t Opp’n Mot. Quash, ECF No. 5, at

11. Yet, Kodak has already deposed the inventor of the patent, who can speak directly on that

topic. In ResQNet.com, Inc. v. Lansa, Inc., No. 01-cv-3578, 2004 WL 1627170 (S.D.N.Y. July

21, 2004), the court not only denied deposition of the plaintiff’s counsel because the defendant

had not pled an inequitable conduct defense, but also rejected the defendant’s attempt to depose
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opposing party’s counsel regarding the disputed patents’ prosecution history and scope. The

defendant in that case had “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.” Id. at *5. Additionally, “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 [plaintiff’s] litigation counsel thinks about them.” Id. The

situation in this case is analogous, and the Court is not persuaded that the opposing party’s

former counsel should be deposed regarding this information when the information can be

obtained elsewhere.

IV.    CONCLUSION

       For the reasons discussed above, the petitioner’s motion to quash the respondent’s

subpoena is granted. Kodak’s May 11, 2011 deposition subpoena to the petitioner is hereby

quashed. An Order consistent with this Memorandum Opinion will be entered.



DATED: AUGUST 12, 2011                                         /s/ Beryl A. Howell
                                                               BERYL A. HOWELL
                                                               United States District Judge




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