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Tattle Tale Portable Alarm Systems, Inc v. Calfee

April 10, 2012


The opinion of the court was delivered by: Hon. Jose L. Linares


This matter comes before the Court on plaintiff TattleTale Portable Alarm Systems, Inc.'s ("TattleTale") motion to compel non-party Honeywell International ("Honeywell")to produce documents responsive to a subpoena. For the reasons set forth below, TattleTale's motion to compel is denied.


In the underlying legal malpractice action, currently pending in the Southern District of Ohio, TattleTale Portable Alarm Systems, Inc. v. Calfee, Halter & Griswold, et al., No. 06CVA-08-10216 (S.D. Ohio 2010), TattleTale alleges that its patent counsel failed to ensure payment of a maintenance fee, resulting in the loss of a valuable patent. (Mot. to Compel at 2, ECF 1-1.) Because TattleTale's patent expired, TattleTale has been unable to enforce the patent and has suffered damages. (Id.) To calculate the amount of damages it has suffered, TattleTale seeks sales information from Honeywell for products covered by the expired patent. (Id.)

TattleTale issued a subpoena duces tecum on August 25, 2011, addressed to "Honeywell International, 101 Columbus Road, Mailstop - M6/LM, Morristown, New Jersey 07962." (Id. at 2, Ex. A, ECF No. 1-2.) The subpoena requests production of "[a]ll documents showing revenue received related to the Lynx family of wireless security products from their inception to the present." (Id.) The subpoena also directs Honeywell to produce these documents at a law firm in Columbus Ohio. (Id.)

Honeywell responded to the subpoena on September 9, 2011, with formal objections. (Mot. to Compel at 2, Ex. B, ECF No. 1-2.) In response, TattleTale provided Honeywell with a draft confidentiality agreement and a "more narrowly tailored" document request. (Mot. to Compel at 3, Ex. C, ECF No 1-2.) Defendants claim that TattleTale's response actually "expanded the reach of its subpoena." (Opp'n at 7, ECF No. 5-1.)

On September 19, 2011, James McAward, a director for Honeywell, met with Brian Hess, the President and founder of TattleTale. (Opp'n at 8, McAward Decl. ¶ 4, ECF No. 5-1.) McAward and Hess discussed forming a business relationship, but Honeywell declined to provide TattleTale with specific information about Honeywell's sales of self-contained security systems because Honeywell and TattleTale did not have a non-disclosure agreement in place. (Opp'n at 8, McAward Decl. ¶ 5, ECF No. 5-1.)

The parties continued to discuss the document request. (Mot. to Compel at 3, ECF No. 1-1; Opp'n at 9-10, ECF No. 5-1.) TattleTale addressed the subpoena directly with McAward who expressed that the sales information was readily available and had been provided to satisfy these types of requests in the past. (Mot. to Compel at 7, Ex. E, ECF No. 1-2; Opp'n at 9, ECF No. 5-1.) Honeywell's counsel eventually agreed to provide the requested information provided that TattleTale provide assurances that it would not assert patent or other intellectual property claims against Honeywell relating to the products about which Honeywell produced information. (Mot. to Compel at 3, Ex. F, ECF No. 1-2; Opp'n at 9-10, ECF No. 5-1.) TattleTale was unwilling to waive its rights to bring suit against Honeywell for violating any patents. (Mot. to Compel at 4, Ex. G, ECF No. 1-2.)

On November 28, 2011, TattleTale filed the instant motion to compel. On December 12, 2011, Honeywell's counsel made one final attempt to discuss the subpoena. In a letter, counsel restated Honeywell's position that the documents requested were irrelevant to the claims in the underlying action, the protective order failed to include an attorney's-eyes-only provision, and that responding to the request would be burdensome. (Opp'n at 10-11, Ex. E, ECF No 5-2.)

After the motion was fully briefed, the Court ordered the parties to submit supplemental memoranda of law addressing the Court's jurisdiction to enforce the subpoena. (Order, Mar. 8, 2012, ECF No. 8.) In response, Honeywell submitted a letter brief arguing that the subpoena is facially defective for commanding Honeywell to produce documents outside of the issuing district. (Letter Br., Mar. 15, 2012, ECF No. 9.) Tattletale did not file a supplemental memorandum.


TattleTale argues that Honeywell should be compelled to produce the documents because the information is highly relevant to the damages calculation in the underlying legal malpractice action. (Mot. to Am. at 5, ECF No. 1-1.) TattleTale also contends that the information is not available from other sources. (Mot. to Am. at 5, ECF No. 1-1.) In addition, TattleTale claims that the subpoenas will not impose undue burden or expense on Honeywell and TattleTale has narrowly tailored the scope of the information originally sought. (Mot. to Am. at 6, ECF No. 1-1.) TattleTale also argues that the protective order in the underlying case could be extended to Honeywell, thus alleviating any confidentiality concerns. (Mot. to Am. at 7, ECF No. 1-1.) Finally, TattleTale asserts that Honeywell has no basis for its concern that complying with the subpoena will subject it to future intellectual property claims. (Mot. to Am. at 8, ECF No. 1-1.)

Honeywell opposes the motion for several reasons. First, Honeywell argues that the information TattleTale seeks is not relevant. (Opp'n at 11-13, ECF No. 5-1.) Second, Honeywell claims that it carefully guards its sales and revenue data and should not have to produce "sensitive business information" to a competitor. (Opp'n at 14, ECF No. 5-1.) Third, Honeywell claims that it would be significantly burdened if the Court enforced the subpoena. (Opp'n at 16, ECF No. 5-1.) Third, Honeywell claims that "it is unclear whether TattleTale properly served its subpoena" because it was addressed to Honeywell's "mailstop" address, with no affidavit of service. (Opp'n at 5, 17, ECF No. 5-1.) Fourth, Honeywell argues that Tattletale made no effort to minimize the burden upon Honeywell before issuing the subpoena because it calls for the "production of documents to a law firm in Ohio, several states away from where the requested documents reside." (Opp'n at 17, ECF No. 5-1.) In addition, Honeywell argues that it should be awarded attorney's fees because TattleTale failed to conduct a reasonable inquiry to ensure that the information sought was relevant. Honeywell argues that it should not have to incur fees to respond to a subpoena that should not have issued in the first place. (Opp'n at 20, ECF No. 5-1.)

TattleTale argues in its reply that the information it seeks is relevant to its calculation of damages in the underlying legal malpractice action. (Reply at 1, ECF No. 7.) TattleTale contends that, after the motion to compel was filed, it provided Honeywell with expert reports showing that ...

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