United States District Court, D. New Jersey
OPINION & ORDER
L. WALDOR UNITED STATES MAGISTRATE JUDGE
matter comes before the court upon a motion by Movant, Mondis
Technology Ltd. (“Mondis”), for a protective
order and to quash subpoena Defendants, LG Electronics, Inc.
and LG Electronics U.S.A., Inc. (“LG”), served
upon Mondis' trial-counsel Jeffery Plies (“Mr.
Plies”). The Court heard oral argument on this matter
on August 4, 2017 and, for the reasons set forth below, the
Court denies the motion.
21, 2014, Plaintiff, Mondis, filed its Complaint in the
underlying litigation against Defendants, LG, in the Eastern
District of Texas for patent infringement on five patents,
including U.S. Patent No. 7, 475, 180 (the “180
patent”). (See Docket No. 2:17-cv-2531, Quash
Brief, ECF No. 1 (henceforth “Quash Brief”), at
1; see also Docket No. 2:17-cv-2531, Opp. Brief, ECF
No. 5 (henceforth “Opp. Brief”), at 3). However,
on January 28, 2015, LG moved to transfer the case to the
District of New Jersey and in June of that year the case was
transferred. (See Docket No. 2:15-cv-4431, Motion to
Change Venue, ECF No. 24).
12, 2014 and November 3, 2014, LG filed separate petitions
for ex parte reexamination at the Patent Office
(“PTO”) against the originally asserted patents,
which resulted in the cancellation of the asserted claims of
all but the ‘180 patent. (Quash Brief, at 1; Opp.
Brief, at 3).
response to LG's petitions for ex parte
reexaminations, Mondis' attorney, Scott Warren, filed an
office action response on May 11, 2015, which relied on a
Declaration from Mondis Director Michael Spiro. (Opp. Brief,
at 3). The office action response stated:
“[s]ignificantly, the ‘180 patent has been
licensed to all of the world's major manufacturers of
display units” (Id.) The original statement in
the declaration of Mr. Spiro says: “[a]ll of the
world's major display makers have now taken licenses for
the Patents.” (Quash Brief, at 2). LG alleges that
Mondis' statements to the PTO were demonstrably false as
Mondis had acknowledged in the underlying litigation that
several manufacturers of display units had not licensed the
asserted patents. (Opp. Brief, at 3). LG brought this to
Mondis' attention on July 24, 2015. (Id.) In an
attempt to fix this misrepresentation made by Mr. Spiro,
Mondis submitted a supplemental declaration stating that
“all of the world's major computer monitor makers -
i.e., those with more than 5% global market
share” had taken a license. (Id. at 4.) This
declaration was submitted as part of an Information
Disclosure Statement (IDS) that consisted of more than 1, 500
October 31, 2016, LG filed an Amended Answer alleging as both
an affirmative defense and a counterclaim that Mondis had
committed inequitable conduct at the PTO during reexamination
of the ‘180 patent. (Opp. Brief, at 4) The District of
New Jersey recognized that additional discovery would be
needed on the new inequitable conduct allegations.
(Id.). As a result, LG sent letters to Dechert LLP,
the law firm representing Mondis, listing 24 Dechert
attorneys and patent agents it intended to subpoena and
depose. (Quash Brief, at 3). LG alleges that in requesting
that Mondis identify the role of the 24 attorneys/agents of
record, it was their hope to minimize any potential
interference for Mondis and its attorneys and to avoid being
overly burdensome. (Opp. Brief, at 4). Mondis responded to
those letters by stating that “proper procedure would
be to proceed with [Mr. Spiro's] deposition first and
then evaluate whether any relevant non-privileged information
remained that would warrant the depositions of Dechert
attorneys.” (Quash Brief, at 3). LG refused Mondis'
proposal and Mondis identified four past and present Dechert
attorneys who performed work on the reexamination involved in
LG's inequitable conduct claim. (Id.) Mondis
stated its position that deposing Mr. Plies, the presently
co-lead trial counsel for Mondis, who has represented Mondis
regarding the ‘180 patent for the past eight years,
would be improper. (Id.)
February 2-3, 2017, LG served deposition subpoenas on the
four Dechert attorneys: Vincent Gallo, Derek Brader, Scott
Warren and Jeffery Plies. (Id.) On February 7 and
10, 2017, Mondis and LG met and conferred regarding the
subpoenas. (Id.) Mondis identified the PTO
submissions that Derek Brader worked on; confirming that he
did not have any knowledge relevant to the new allegations.
LG withdrew that subpoena. (Opp. Brief, at 5). With respect
to Mr. Warren, Mondis permitted LG to question him to the
extent he could answer any non-privileged questions. (Quash
Brief, at 4). During the meet and confer Mondis reiterated
that it was improper for LG to depose Mr. Plies, the co-lead
trial counsel for Mondis on the case at hand. (Id.).
date, LG has taken the depositions of Mr. Spiro, Mr. Warren,
and Mr. Gallo. (Docket No. 2:15-cv-4431, ECF No. 201, at 6).
The issue stands as to whether or not LG should be allowed to
depose Mr. Plies. Mondis moved to quash the subpoena served
on Mr. Plies in the Eastern District of Texas on February 16,
2017. That action was moved to the District of New Jersey and
eventually both matters were consolidated under the current
Docket Number 15-cv-4431.
Rule 26, “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.” Fed.R.Civ.P. 26(b)(1); see also In re Ex
Parte Global Energy Horizons Corp., 647 F. App'x 83,
86 (3d Cir. 2016) (courts only allow “discovery [that]
appears reasonably calculated to lead to the discovery of
admissible evidence”). The movant bears the burden of
persuasion in a motion to quash a subpoena and for a
protective order. Jones v. Hirschfeld, 219 F.R.D.
71, 74-75 (S.D.N.Y 2003); see also Sea Tow Intern., Inc.
v. Pontin, 246 F.R.D. 421, 424 (E.D.N.Y. 2007); see
also Memory Bowl v. North Pointe Ins. Co., 280 F.R.D.
181, 185 (D.N.J. 2012) (stating that the party seeking a
protective order usually bears the burden of persuasion). If
the subpoena falls outside the scope of permissible
discovery, “requires disclosure of privileged or other
protected matter, ” or “subjects a person to
undue burden, ” the Court has the authority to quash or
modify it upon a timely motion by the party served.
inequitable conduct claim is based on Mr. Spiro's
allegedly false statements in his declaration and the related
office action response filed with the PTO. (Opp. Brief, at
1-2). Mr. Plies as the attorney who assisted Mr. Spiro in
drafting the statement necessarily has some relevant
knowledge under Rule 26, but there is an added layer of
analysis given that LG is seeking to take the deposition of
an attorney. Although there is no prohibition against
deposing adverse counsel regarding relevant and
non-privileged material, courts take great care when
receiving these requests. Younes v. 7-Eleven, Inc.,
No. 13-3500, 2015 WL 12843884, at *2 (D.N.J. Mar. 11, 2015);
see also In re Matter of Subpoenas Served on
Collins, No. 14-934, 2014 WL 12586370, at *3 (W.D. Tex.
Nov. 7, 2014) (stating that federal courts generally dislike
the practice of deposing a party's attorney).
District, like many others, uses the Shelton factors
when considering whether an attorney should be deposed. There
are three factors that must be satisfied when determining
whether to depose opposing counsel: “(1) no other means
exist to obtain the information, (2) the information sought
is relevant and non-privileged, and (3) the information
sought is crucial to the preparation of the case.”
Stepanski v. Sun Microsystems, Inc., No. 10-2700,
2011 WL 8990579, at *15 (D.N.J. Dec. 9, 2011), report and
recommendation adopted, No. 10-2700, 2012 WL 3945911
(D.N.J. Sept. 10, 2012) (citing Shelton v. Am. Motors
Corp., 805 F.2d 1323, 1327 (8th Cir. 1986)).