United States District Court, N.D. California
ORDER GRANTING MOTION TO QUASH SUBPOENA RE: DKT. NO.
S. HIXSON, UNITED STATES MAGISTRATE JUDGE.
movant, Donald L. Bartels, filed this miscellaneous action
seeking to quash a Subpoena to Testify at a Deposition served
upon him in a patent infringement matter pending in the
United States District Court for the District of Delaware.
See Shopify (USA), Inc., et al v. Express Mobile,
Inc., Civil No. 19-439 (RGA). Bartels, an attorney, is a
non-party to the underlying litigation. He moves to quash the
subpoena on the grounds that he has no relevant information
or documents and that deposing him would impose an undue
burden. The Court finds this motion suitable for disposition
without oral argument and VACATES the
November 14, 2019 hearing. See Local Rule 7-1(b).
For the reasons set forth below, the Court
GRANTS the motion.
March 1, 2019, Plaintiffs Shopify Inc. and Shopify (USA),
Inc. (collectively “Shopify”) filed a complaint
for declaratory judgment of non-infringement against Express
Mobile, Inc. in the United States District Court for the
District of Delaware. The complaint relates to several United
States patents (the “patents-in-suit”), including
U.S. Patent No. 6, 546, 397 (the “'397
Patent”), of which Express Mobile is the owner. Decl.
of Laurie Edelstein (“Edelstein Decl.”) ¶ 2,
Ex. A (“Compl.”) ¶¶ 11-18, ECF No. 3;
Edelstein Decl. ¶ 3, Ex. B (“Answer”)
¶¶ 11- 18. Express Mobile answered and asserted
counterclaims for infringement of the patents-in-suit.
is a patent attorney, and from 1995 to 2005 was a partner at
Coudert Brothers LLP. Edelstein Decl. ¶ 7, Ex. F
(“Bartels Decl.”) ¶ 6. In 2001, Steven
Rempell, the inventor of the '397 patent, hired Coudert
Brothers to prosecute the application (application number
09/454, 061) which would eventually issue the patent.
See Edelstein Decl. ¶ 9, Ex. H at XMO000806.
The patent issued on April 8, 2003. On December 10, 2003,
Bartels filed a Change of Correspondence Address with the
Patent and Trademark Office (“PTO”) regarding the
'397 patent. Decl. of Whitney R. O'Byrne
(“O'Byrne Decl.”) ¶ 2, Ex. A, ECF No.
15-2. The filing listed Bartels' Coudert Brothers address
as addressee. Bartels left Coudert Brothers in 2005 and
became a partner at Nixon Peabody LLP, another law firm.
Bartels Decl. ¶ 7. The three-year maintenance fee for
the '397 patent was not timely paid when due on October
8, 2006, and on May 9, 2007, the PTO sent a notice of patent
expiration addressed to Bartels' Coudert Brothers
address. O'Byrne Decl. ¶ 3, Ex. B, ECF No. 15-3. On
March 31, 2008, Steven Vosen, a patent agent who worked with
Bartels at Coudert Brothers, filed a petition to revive the
'397 patent. O'Byrne Decl., Ex. C, ECF No. 15-4. As
part of the petition, Vosen certified that the delay in
payment of the maintenance fee was unintentional,
id., but not before apparently speaking to someone
at Bartels' new firm.
has subpoenaed Bartels and seeks testimony concerning the
reasons for the lapse of the maintenance fee and subsequent
revival of the '397 patent. See Edelstein Decl.
¶¶ 4, 6, Exhibits C, E. Bartels asserts that he has
no personal, relevant knowledge on the '397 patent or
reason for the maintenance fee lapse and moves to have the
Rule of Civil Procedure 45 governs discovery of non-parties
by subpoena. The scope of the discovery that can be requested
through a subpoena under Rule 45 is the same as the scope
under Rule 34, which in turn is the same as under Rule 26(b).
Fed.R.Civ.P. 45 Advisory Comm.'s Note (1970)
(“[T]he scope of discovery through a subpoena is the
same as that applicable to Rule 34 and other discovery
rules.”); Fed.R.Civ.P. 34(a) (“A party may serve
on any other party a request within the scope of Rule
26(b).”). Rule 26(b) 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).
responsible for issuing a subpoena must take reasonable steps
to avoid imposing undue burden or expense on a person subject
to the subpoena. Fed.R.Civ.P. 45(d)(1). The court is required
to enforce this duty, particularly when a subpoena has been
served upon a non-party to the litigation. Id.;
High Tech Medical Instrumentation, Inc. v. New Image
Indus., Inc., 161 F.R.D. 86, 88 (N.D. Cal. 1995). On
timely motion, a court must quash or modify a subpoena that:
(i) fails to allow a reasonable time to comply;
(ii) requires a person to comply beyond the geographical
limits specified in Rule 45(c);
(iii) requires disclosure of privileged or other protected
matter, if no exception ...