                            UNITED STATES DISTRICT COURT
                            FOR THE DISTRICT OF COLUMBIA

                                                )
DELL INC,                                       )
                                                )
               Plaintiff,                       )
                                                )
       v.                                       )       Civil Action No. 16-2585 (RMC)
                                                )
FRANK A. DECOSTA., et al,                       )
                                                )
               Defendants.                      )
                                                )

                                  MEMORANDUM OPINION

               Audio MPEG, Inc., and others, sued Dell, Inc., in the Eastern District of Virginia,

complaining that Dell infringed certain patents. Audio MPEG, Inc. v. Dell, Inc., No. 16-cv-0082

(E.D. Va., filed Dec. 21, 2015) (“Virginia Action”). Dell has advanced various defenses and

counterclaims, most particularly alleging violations of the antitrust laws of the United States.

See Dell Mot. to Compel, Ex. B [Dkt. 1-2] (Dell Ans. in E.D. Va.) ¶ 29. In this Court, Dell seeks

to compel compliance with subpoenas seeking documents and testimony from Defendants Frank

A. DeCosta III and John C. Paul, attorneys with Finnegan, Henderson, Farabow, Garrett &

Dunner LLP (“Finnegan”), the firm that used to represent Audio MPEG on matters involving

patents and intellectual property. The subpoenas were served on July 20, 2016. After months of

discussions without the production of any documents or presentation of any testimony, Dell

moved to compel responses in the jurisdiction in which Messrs. DeCosta and Paul practice law.

The two attorneys, represented by their firm, hotly contest the propriety of the subpoenas as well

as their burden and lack of proportionality, and urge this Court to transfer the matter to Virginia,

where the underlying case is being litigated.




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               When the petition was filed, fact discovery in the Virginia Action was scheduled

to close on January 17, 2017. Dell suggests in its Reply that the parties have agreed to allow

third-party depositions to take place after this deadline. See Pl. Reply [Dkt. 9] at 2, n.4. The

Court has carefully studied the parties’ briefs. Believing that discovery disputes should be

resolved as quickly as possible, with the least time and expense for the parties, this Court acts

expeditiously to aid the litigation process.

                                 I. FACTUAL BACKGROUND

               Defendants DeCosta and Paul “are the longtime licensing counsel to Virginia

Plaintiffs Audio MPEG, Inc. and its parent company Societa Italiana per lo Sviluppo

dell’Elettronica S.p.A. (“Sisvel”) . . . .” Pl. Reply [Dkt 9] at 1. Both attorneys “represent[ed]

Audio MPEG in licensing negotiations with third parties, as well as other business activities.”

Id. Dell asserts:

               The facts and circumstances of these licensing negotiations are
               relevant to a number of claims and counterclaims in the Virginia
               Action, including appropriate damages calculations, Dell’s defense of
               patent exhaustion, and Dell’s counterclaims regarding
               anticompetitive provisions in certain licensing agreements.

Id. Dell points out that the Virginia Plaintiffs’ disclosures identified Defendant DeCosta as an

individual with discoverable information and Audio MPEG’s past president testified repeatedly

at deposition that Defendant Paul is a source of relevant information. Dell provides no

particulars on the subject matters that were referenced.

               Defendant attorneys do not dispute any of the above. Rather, they contend that

Dell’s subpoenas impose an undue burden and expense on Defendants, in violation of the

Federal Rules of Civil Procedure 26 and 45 “regarding relevance, proportionality, burden,

expense and the ability to obtain information from other sources” because the information sought



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is available from a more convenient source, namely, Audio MPEG. Def. Opp’n [Dkt. 5] at 15.

Defendants further argue that the subpoeanas risk disclosure of attorney-client privilege or other

protected matters, such as third party confidentiality. Id. at 18.

                                    II. LEGAL STANDARDS

               Rule 26 of the Federal Rules of Civil Procedure governs the scope of discovery:

               Parties may obtain discovery regarding any nonprivileged matter
               that is relevant to any party’s claim or defense and proportional to
               the needs of the case, considering the importance of the issues at
               stake in the action, the amount in controversy, the parties’ relative
               access to relevant information, the parties’ resources, the importance
               of the discovery in resolving the issues, and whether the burden or
               expense of the proposed discovery outweighs its likely benefit.

FRCP 26(b)(1). Rule 45 requires that a court must modify or quash a subpoena when, inter alia,

it “requires disclosure of privileged or other protected matter, if no exception or waiver applies”

or “subjects a person to undue burden.” FRCP 45(d)(3)(A)(iii)-(iv). A party issuing “a

subpoena must take reasonable steps to avoid imposing undue burden or expense on a person

subject to the subpoena.” FRCP 45(d)(1).

               Whether a subpoena imposes an “undue burden” depends on the specific facts of

the case and courts “‘must balance the interests served by demanding compliance with the

subpoena against the interests furthered by quashing it.’” In re Ex Parte Application of Kleimar

N.V., No. 16-MC-355, 2016 WL 6906712 at *3 (S.D.N.Y. Nov. 16, 2016) (quoting Anwar v.

Fairfield Greenwich Ltd., 297 F.R.D. 223, 226 (S.D.N.Y. 2013)). In balancing the interests

served by demanding compliance, courts should consider “‘relevance, the need of the party for

the documents, the breadth of the document request, the time period covered by it, the

particularity with which the documents are described and the burden imposed.’” American Elec.




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Power Co., Inc. v. United States, 191 F.R.D. 132, 136 (S.D. Ohio 1999) (quoting Concord Boat

Corp. v. Brunswick Corp., 169 F.R.D. 44, 53 (S.D.NY. 1996)).

                                         III. ANALYSIS

       A. The Subpoenas

               Dell’s requests for document production are, as Defendants assert, overbroad and

unduly burdensome. Dell asked Defendants for, inter alia, “[a]ll documents . . . that refer or

relate to any license, proposed license, settlement agreement, proposed settlement agreement, or

negotiations regarding any license or settlement agreement related to the Patents-in-Suit . . . in

which any or all of the Counter-Defendants have included or considered including a provision

regarding or referencing Dell.” Mot. to Compel, Ex. C [Dkt. 1-2] at 7 (Subpoena). Such open

document requests, served on prior counsel, would impose an undue and disproportionate burden

on Defendants to prepare a privilege log 1 of the thousands of documents that Defendants could

reasonably be expected to “possess” after a decade of Audio MPEG representation but most of

which would be protected by the attorney-client privilege or attorney work-product doctrine.

               The Court will limit Dell document requests, in each category, to: (1) documents

as they originated outside Finnegan; and (2) all communications between one or both Defendants

or anyone acting at their direction and any “Licensee.” “Licensee” shall have the meaning given

in paragraph 23 and “Communication” shall have the meaning given in paragraph 5 of

Attachment A to the Subpoena to each Defendant. See Subpoena at ¶¶ 5, 23.



1
  Rule 45 requires that a person withholding subpoenaed information under a claim that it is
privileged or subject to a protection must “describe the nature of the withheld documents,
communications, or tangible things in a manner that, without revealing information itself
privileged or protected will enable the parties to assess the claim.” FRCP 45(e)(2)(ii). “The rule
is obviously mandatory” and “[f]ailure to comply with it ‘is deemed to waive the underlying
privileged claim.’” GFL Advantage Fund, Ltd. V. Colkitt, 216 F.R.D. 189, 195 (D.D.C. 2003)
(quoting In re Grand Jury Subpoena, 274 F.3d 563, 567 (1st Cir. 2001)).
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       B. The Deposition Notices

               In contrast, Dell’s notices of deposition for each of the Defendants here does not

suffer from the same infirmities. Defendants can assert the attorney-client privilege or the

attorney work-product doctrine if either of them believes in good faith that it applies to the

answer to any question. All parties will be ordered to conduct themselves in a civil and

professional manner which should be customary to them all as officers of the Court. The fact of

Defendants’ prior roles as licensing counsel to Audio MPEG and Sisvil has no bearing on each

Defendant’s testimony concerning their correspondence or dealings with non-client outside

parties (which does not, of course, include internal strategy sessions and/or the lawyer’s mental

processes).

               Without providing a specific reason, Defendants suggest that if the Court fails to

agree that they should not be subject to depositions, Dell should be limited to “a lawyer” for two

hours. The Court believes such a limitation would unfairly and without good purpose limit

Dell’s ability to discover information held specifically by these Defendants according to their

former client. It will require each Defendant to sit for a deposition of the general duration

applicable to all fact witnesses in the Virginia Action or for seven (7 hours), whichever is longer.

                                       IV. CONCLUSION

               For the reasons stated, Dell’s motion to compel will be granted in part and denied

in part. A memorializing order accompanies this memorandum opinion.




Date: January 17, 2017
                                                                     /s/
                                                      ROSEMARY M. COLLYER
                                                      United States District Judge

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