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Shopify (USA), Inc. v. Express Mobile, Inc.

United States District Court, N.D. California

November 12, 2019

SHOPIFY (USA), INC.,, et al., Plaintiffs,
v.
EXPRESS MOBILE, INC., Defendant.

          ORDER GRANTING MOTION TO QUASH SUBPOENA RE: DKT. NO. 1

          THOMAS S. HIXSON, UNITED STATES MAGISTRATE JUDGE.

         I. INTRODUCTION

         The 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.

         II. BACKGROUND

         On 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.

         Bartels 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.

         Shopify 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 subpoena quashed.

         III. LEGAL STANDARD

         Federal 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).

         A party 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 ...

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