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Personal Audio LLC v. Togi Entertainment, Inc.

United States District Court, N.D. California, San Francisco Division

March 31, 2014

TOGI ENTERTAINMENT, INC., and others, Defendants.


NATHANAEL M. COUSINS, Magistrate Judge.

Non-party Electronic Frontier Foundation moves to quash a deposition subpoena served by Personal Audio. The issues before the Court are whether the discovery that Personal Audio seeks is relevant to collateral estoppel and whether it could be obtained from a more convenient source. Because Personal Audio has not established that this discovery is relevant or could not be obtained from parties to the underlying patent case, the Court GRANTS EFF's motion to quash the subpoena.


Plaintiff Personal Audio sued several defendants in the Eastern District of Texas, claiming that defendants infringed Personal Audio's U.S. Patent 8, 112, 504 ("the 504 patent"). Dkt. No. 8 at 6. Non-party Electronic Frontier Foundation ("EFF") filed an Inter Partes Review ("IPR") in the United States Patent and Trademark Office challenging the validity of the 504 Patent. Id. at 8.

Personal Audio issued a deposition subpoena to EFF on December 20, 2013, and issued a slightly revised subpoena on January 17, 2014. Id. The subpoena includes topics aimed at determining "whether the EFF was acting under the control, direction or influence of any Defendants in the Texas case when it filed the IPR." Id. For example, one topic seeks testimony regarding "[a]ny communications between the EFF and Defendants" and another seeks "[i]dentification of the names of all Persons who donated or contributed [to EFF's IPR] and Identification of the amounts contributed by each Person." Dkt. No. 8-1 at 181-82. Other topics are aimed at gathering information on EFF's preparation of the IPR, including one topic seeking testimony regarding "[i]dentification of any Information Concerning any prior art" and another related to "[a]ny non-privileged communications regarding the prior art cited in any proceedings in the Patent and Trademark Office Concerning the 504 patent." Id.

EFF filed the instant motion to quash on January 29, 2014, and the court heard oral argument on March 5, 2014. Dkt. Nos. 1, 10. The Court granted the motion to quash at the hearing and now issues this order elaborating on the Court's reasoning.


Federal Rule of Civil Procedure 45 governs discovery of non-parties by subpoena. Rule 45 provides that a party may command a non-party to testify at a deposition and "produce designated documents, electronically stored information, or tangible things in that person's possession, custody, or control." Fed.R.Civ.P. 45(a)(1)(A)(iii). Rule 26 allows a party to obtain discovery concerning any nonprivileged matter that is relevant to any party's claim or defense. Fed.R.Civ.P. 26(b)(1). Information is relevant when it will be admissible at trial or when the evidence is "reasonably calculated to lead to the discovery of admissible evidence." Id. The Rule 26 relevancy standard also applies to third-party subpoenas. Beinin v. Ctr. for Study of Popular Culture, No. 06-cv-02298 JW (RS), 2007 WL 832962, at *2 (N.D. Cal. Mar. 16, 2007).

To determine whether a subpoena should be enforced, the Court is guided by both Rule 45, which protects a subpoenaed party from "undue burden, " and Rule 26, which provides that the court must limit discovery if "the discovery sought... can be obtained from some other source that is more convenient, less burdensome, or less expensive" or if "the burden or expense of the proposed discovery outweighs its likely benefit." Fed.R.Civ.P. 45(d)(1); Fed.R.Civ.P. 26(b)(2)(C)(i). A party or lawyer responsible for issuing and serving a subpoena therefore must take reasonable steps to avoid imposing undue burden or expense on a person subject to the subpoena. Fed.R.Civ.P. 45(c)(1). In turn, the court "must protect a person who is neither a party nor a party's officer from significant expense resulting from compliance." Fed.R.Civ.P. 45(d)(2)(B)(ii).

The court may modify or quash a subpoena that subjects a person to undue burden. Fed.R.Civ.P. 45(d)(3)(A)(iv). On a Rule 45 motion to quash a subpoena, the moving party has the burden of persuasion, but the party issuing the subpoena must demonstrate that the discovery sought is relevant. EON Corp. IP Holdings, LLC v. T-Mobile USA, Inc., No. 12-cv-80082 LHK (PSG), 2012 WL 1980361, at *1 (N.D. Cal. June 1, 2012).


EFF moves to quash on the bases that Personal Audio's subpoena seeks irrelevant information, asks for information protected by the First Amendment, requests information protected by the attorney-client privilege and work product doctrine, and improperly seeks unretained expert testimony. Dkt. No. 1. Because the Court finds that Personal Audio's motion to quash must be granted on relevance and burden grounds, the Court does not address EFF's other arguments regarding First Amendment protection, privilege, and expert testimony.

A. Personal Audio Fails To Show How Discovery Is Relevant To Prove Collateral Estoppel Under 35 U.S.C. ยง 315(e)(2).

Personal Audio argues that if defendants in the Texas action induced EFF to file the IPR petitions, defendants will be collaterally estopped from asserting their invalidity defenses in the district court. Dkt. No. 8 at 5-8. The Court finds that discovery related to collateral estoppel is premature and irrelevant at this ...

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