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In re Subpoena of Andre

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

December 9, 2019

In re Subpoena of Paul Andre
v.
RICOH USA, INC., Defendant. MIDWEST ATHLETICS AND SPORTS ALLIANCES LLC, Plaintiff,

          REDACTED ORDER RE MOTION TO QUASH, MOTION FOR PROTECTIVE ORDER, MOTION FOR SANCTIONS RE: DKT. NO. 1

          VIRGINIA K. DEMARCHI, UNITED STATES MAGISTRATE JUDGE.

         Paul Andre is counsel of record to Midwest Athletics and Sports Alliances LLC (“MASA”), the plaintiff in a patent infringement action pending against Ricoh USA, Inc. (“Ricoh”) in the Eastern District of Pennsylvania. Mr. Andre moves to quash a subpoena Ricoh served upon him and for a protective order with respect to Ricoh's efforts to obtain discovery from him. Mr. Andre also moves for sanctions against Ricoh. Dkt. No. 1. The Court held a hearing on the motion on December 3, 2019. Based on the parties' submissions and argument at the hearing, the Court grants in part and denies in part Mr. Andre's motion to quash and for a protective order, and orders further proceedings, as set forth below. The Court denies Mr. Andre's motion for sanctions.

         I. BACKGROUND

         On January 5, 2018, MASA filed a complaint against Ricoh asserting infringement of 19 patents. Dkt. No. 3, Ex. 2. The action is currently pending before the Honorable Timothy J. Savage in the Eastern District of Pennsylvania. See Midwest Athletics and Sports Alliances LLC v. Ricoh USA, Inc., No. 2:19-cv-00514-TJS. Mr. Andre is a partner with the law firm Kramer Levin Naftalis & Frankel LLP (“Kramer Levin”) and is lead trial counsel for MASA in the Pennsylvania action. Other lawyers from Kramer Levin also represent MASA in that action. Dkt. No. 1 at 3; Dkt. No. 9 at 1.

         The patents MASA asserts against Ricoh were purchased from Eastman Kodak Company (“Kodak”) pursuant to a Patent Purchase Agreement (“PPA”) signed by representatives of MASA and Kodak on June 29, 2017. Dkt. No. 1 at 3; Dkt. No. 9-2, Ex. 10. According to Mr. Andre, he and Kramer Levin began representing Kodak in February 2017 as outside counsel in connection with patent-related matters, including the eventual sale of patents to MASA. Dkt. No. 1 at 3; Dkt. No. 17, Ex. 1 (Cody dep. 35:20-36:11). (REDACTED)

         In parallel with Kramer Levin's representation of Kodak, in June 2017, Kramer Levin says that it represented Mr. Geoffrey Thomas, identified by MASA as its founder, for the limited purpose of forming MASA, but not with respect to the PPA. Dkt. No. 17 at 6 & Ex. 3 (Thomas dep. 167:12-18; 212:8-15). After Kodak and MASA signed the PPA, Kramer Levin contends that it represented both Kodak and MASA, although the nature and scope of that representation is not clearly described.[1] Dkt. No. 1 at 3.

         (REDACTED)

         Ricoh disputes Mr. Andre's characterization of his and Kramer Levin's roles with respect to Kodak, MASA, and the PPA. According to Ricoh, Kramer Levin and Kodak have only belatedly claimed that Mr. Andre represented Kodak in connection with the PPA. Ricoh believes that Mr. Andre masterminded an effort to monetize patents in Kodak's portfolio, including the patents asserted against Ricoh in the Pennsylvania action, on his own initiative, and not as outside counsel to Kodak. Ricoh points to evidence that (REDACTED)

         (REDACTED)

         On October 15, 2019, Ricoh served a subpoena for documents and deposition testimony on Mr. Andre. Dkt. No. 4, Ex. 1. The subpoena seeks production of the following categories of documents:

1. All communications with Kodak relating to the initial stages, diligence, selection of patents, negotiation of terms, exchanges of draft agreements, and ultimate acquisition of patents from Kodak by MASA.
2. All communications with MASA relating to initial stages, diligence, selection of patents, negotiation of terms, exchanges of draft agreements, and ultimate acquisition of patents from Kodak by MASA.
3. All Documents reviewed or considered during the initial stages, diligence, selection of patents, negotiation of terms, exchanges of draft agreements, and ultimate acquisition of patents from Kodak by MASA, including without limitation any evaluation and/or analysis or the patentability, validity, enforceability, infringement or valuation of the subject matter disclosed in any of the patents-in-suit or any ...

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