United States District Court, S.D. California
action pending in the District Court of New Jersey: Case No.
(1) GRANTING THIRD PARTIES ANTHONY INSOGNA AND DAVID
GAY'S MOTION TO QUASH SUBPOENAS; (2) GRANTING IN PART AND
DENYING IN PART DEFENDANTS' MOTION TO FILE DOCUMENTS
UNDER SEAL; AND (3) GRANTING THIRD PARTIES' MOTION TO
FILE DOCUMENTS UNDER SEAL. [ECF NOS. 1, 6, 14]
Honorable Allison H. Goddard United States Magistrate Judge.
MOTION TO QUASH SUBPOENAS (ECF No. 1)
the Court is Third Parties Anthony Insogna and David
Gay's (collectively, “Third Parties”) Motion
to Quash Subpoenas. ECF No. 1. The Third Parties ask the
Court to quash deposition subpoenas pursuant to Federal Rule
of Civil Procedure 45(d)(3) served on them by various
defendants in a case currently pending in the
District Court of New Jersey. Defendants oppose the motion.
ECF No. 9. The Court held a motion hearing on December 20,
2019. ECF No. 18. After consideration of the papers submitted
and the parties' oral arguments, for the reasons set
forth below, the Court GRANTS the motion.
case currently pending in the District Court of New Jersey,
Plaintiff Celgene Corporation (“Plaintiff”) filed
actions against Defendants, alleging patent infringement
arising from Defendants seeking FDA approval to market
generic versions of Plaintiff's drug product, Pomalyst.
ECF No. 1-2 at 2. There are five patents-in-suit, comprising
two families of related patents: (1) U.S. Patent Nos. 8, 198,
262, 8, 673, 939, and 8, 735, 428, which are methods of
treating multiple myeloma with pomalidomide; and (2) U.S.
Patent Nos. 8, 828, 427 and 9, 993, 467, which are directed
to capsule formulations of pomalidomide. ECF No. 7 at 6.
Defendants contest infringement and validity of the
patents-in-suit. Id. For example, based on
Plaintiff's arguments and claim amendments made during
prosecution of the '427 and '467 patents in response
to prior art rejections by the Examiner, Defendants contend
that Plaintiff is estopped from asserting infringement under
the doctrine of equivalents. Id. at 8. Defendants
also argue that the '427 and '467 patents are invalid
as obvious over the prior art. Id. at 10.
underlying case, Defendants noticed depositions of two
attorneys who were involved in the prosecution of the
patents-in-suit subject to litigation, Third Parties, who
have presently moved the Court to quash the deposition
subpoenas. See ECF No. 1-3 at 4, 9, 13, 18. Dr.
Gay's deposition was noticed for August 23, 2019; Mr.
Insogna's deposition was noticed for August 26, 2019.
years ago, Mr. Insogna was involved in the early prosecution
of the application that ultimately issued as asserted U.S.
Patent Nos. 8, 198, 262 and 8, 828, 427 for Plaintiff. ECF
No. 1-2 at 5, 7. He was also the prosecuting attorney for one
of Defendants' primary prior art references. ECF No. 7 at
6. He currently serves as litigation counsel for Plaintiff in
the underlying case. ECF No. 1-2 at 5. Dr. Gay served as a
prosecuting attorney for Plaintiff during the prosecution of
the application that ultimately issued as asserted U.S.
Patent No. 9, 993, 467 for Plaintiff. Id. at 5, 7.
He continues to represent Plaintiff in patent prosecution
matters. Id. at 5.
Parties contend that their depositions should be quashed
because Defendants seek testimony that is protected by
attorney-client privilege and the work product doctrine. ECF
No. 1-2 at 7. Third Parties also argue that their depositions
should be quashed because their testimony is not relevant to
any claim or defense, and thus imposes an undue burden.
Id. at 8. Additionally, Third Parties contend that
their deposition testimony would constitute unpermitted,
unretained expert opinion. Id. at 10.
contend that depositions of Third Parties are necessary to
glean information about the submissions made to the Patent
Office during prosecution, including the facts underlying the
arguments each made that are relevant to Plaintiff's
infringement theory under the doctrine of equivalents. ECF
No. 7 at 5. Defendants seek Third Parties' testimony
“on the meaning of certain arguments and amendments
made during prosecution and the facts underlying those
arguments and amendments.” Id. at 6. They also
seek testimony regarding the preparation of 2013 and 2018
declarations created by Plaintiff's Rule 30(b)(6)
witness, Mr. Tutino. Id. at 11. Additionally,
Defendants contend that Mr. Insogna is uniquely in possession
of knowledge relating to the underlying facts relating to
Plaintiff's validity arguments that the patents-in-suit
exhibit unexpected results. Id. at 5, 10. Further,
Defendants contend that Mr. Insogna prosecuted one of
Defendants' prior art patent applications, with claims to
pomalidomide capsule formulations (one of which is also
Plaintiff's), that Plaintiff attempts to discredit in the
underlying case. Id. at 5, 12.
to Federal Rule of Civil Procedure 45, “on timely
motion, the court for the district where compliance is
required must quash or modify a subpoena that . . . requires
disclosure of privileged or other protected matter . . . or
subjects a person to undue burden.” Fed.R.Civ.P.
determining whether a subpoena poses an undue burden, courts
must weigh “the burden imposed on the party subject to
the subpoena . . ., the relevance of the information sought
to the claims or defenses at issue, the breadth of the
discovery request, and the litigant's need for the
information.” Malibu Media, LLC v. Doe, No.
16cv444-GPC-BGS, 2016 WL 7098807, at *1 (S.D. Cal. Dec. 6,
2016) (quoting Liberty Media Holdings v. Does 1-62,
No. 11cv575-MMA-NLS, 2012 WL 628309, at *2 (S.D. Cal. Feb.
24, 2012); see Moon v. SCP Pool Corp., 232 F.R.D.
633, 637 (C.D. Cal. 2005) (though “irrelevance is not
among the litany of enumerated reasons for quashing a
subpoena found in Rule 45, courts have incorporated relevance
as a factor when determining motions to quash a
discovery is requested from non-parties, more stringent
restrictions should be enforced. The Ninth Circuit has a
long-standing policy of affording extra protection to
non-parties subject to discovery requests. See High Tech
Med. Instr., Inc. v. New Image Ind., Inc., 161
F.R.D. 86, 88 (N.D. Cal. 1995); see, e.g.,
Century Sur. Co. v. Master Design Drywall, Inc., No.
09cv280-LAB-AJB, 2010 WL 2231890, at *1 (S.D. Cal. June 2,
2010) (“Underlying the protections of Rule 45 is the
recognition that the word ‘non-party' serves as a
constant reminder of the reasons for the limitations that
characterize ‘third-party' discovery.”)
(citations and quotations omitted); Kim v. NuVasive,
Inc., No. 11cv1370-DMS-NLS, 2011 WL 3844106, *2 (S.D.
Cal. Aug. 29, 2011) (“Non-parties deserve extra
protection from the courts”). Thus, the subpoena should
be tailored to request only information reasonably necessary
to address specific issues in the case. See Mattel, Inc.
v. Walking Mountain Productions, 353 F.3d 792, 813 (9th
opposing counsel raises additional concerns as its
“increasing practice . . . [is] a negative development
in the area of litigation, and one that should be employed
only in limited circumstances.” Shelton v. Am.
Motors Corp., 805 F.2d 1323, 1327 (8th Cir. 1986).
Permitting depositions of opposing counsel “not only
disrupts the adversarial system and lowers the standards of
the profession, but it also adds to the already burdensome
time and costs of litigation.” Id. at 1327.
The Eighth Circuit has set out a three-part test for
determining when it is appropriate to depose opposing counsel
that is followed by courts in the Ninth
Circuit. Shelton, 805 F.2d at 1327.
Therefore, opposing counsel may be deposed if the party
seeking the deposition establishes:
(1) no other means exist to obtain the information than to
depose opposing counsel, ; (2) the information sought is
relevant and nonprivileged; and (3) the information is
crucial to the preparation of the case.
Id. at 1327 (internal citation omitted). Generally,
the burden of persuasion is on the party moving to quash the
subpoena. Luck v. Univ. of San Diego, No.
13cv3088-JLS-BGS, 2014 WL 7111950, at *2 (S.D. Cal. Oct. 3,
2014). Shelton, however, shifts the burden to the
party seeking the deposition. Erhart, 2017 WL
840648, at *3-*4 (citing Shelton, 805 F.2d at 1327).
Accordingly, Defendants must demonstrate that Third
Parties' deposition testimony is justified under
have declined to apply Shelton when the proposed
deponent is not trial or litigation counsel in the underlying
case. Pamida, Inc. v. E.S. Originals, Inc., 281 F.3d
726, 730-31 (8th Cir. 2002) (“the protection
Shelton provides to opposing counsel only applies
because opposing counsel is counsel in the instant case and
not because opposing counsel had represented the client in
the concluded case”); see, e.g., Sterne
Kessler Goldstein & Fox, PLLC v. Eastman Kodak Co.,
276 F.R.D. 376, 379 (D.D.C. 2011); United States v.
Philip Morris, Inc., 209 F.R.D. 13, 17 (D.D.C. 2002).
Here, Mr. Insogna currently serves as litigation counsel for
Plaintiff in the underlying case. ECF No. 1-2 at 5. However,
though Dr. Gay continues to represent Plaintiff in patent
prosecution matters, he is not Plaintiff's counsel in the
underlying case. Id. at 5, 7.
their oral argument, Defendants argued that the
Shelton test should not apply to Mr. Insogna
because, though he is litigation counsel for Plaintiff in the
underlying case, he has not been actively involved, citing
his absence during court proceedings and a lack of email
correspondence. Defendants cited three out-of-district cases
in support of their argument; however, these are not
persuasive to this Court. See WMH Tool Group, Inc. v.
Woodstock Int'l, Inc, No. 07cv3885, 2009 WL 89935,
at *6 (N.D. Ill. Jan. 14, 2009) (a trademark infringement
case from a district court in the Seventh Circuit that relies
on precedent in its district in declining to adopt
Shelton); Genal Strap, Inc. v. Dar, No.
cv2004-1691-SJ-MDG, 2006 WL 525794, at * 4 (E.D.N.Y. Mar. 3,
2006) (a case in a district court in the Second Circuit,
where the plaintiff invoked an inequitable conduct defense to
a patent infringement counterclaim, that does not address the
applicability of Shelton); Alcon Labs v.
Pharmacia Corp., 225 F.Supp.2d 340, 343 (S.D.N.Y 2002)
(a patent infringement case where the defendant invoked the
inequitable conduct defense, from a district court in the
Second Circuit, which expressly declined to address whether
Shelton was the correct standard, and in fact used
the Shelton standard in its analysis). Further, Mr.
Insogna and other members of the same law firm are trial
counsel for Plaintiff in the underlying case. The Court finds
instructive a case that applied the Shelton factors
to an attorney who was not trial counsel, but who belonged to
the same law firm as trial counsel, noting the burden on
litigation as well as the concern that his law partners may
have to discontinue representation should he be called as a
witness. Marco Island Partners v. Oak Dev. Corp.,
117 F.R.D. 418, 420 (N.D. Ill. 1987).
this Court will apply the Shelton factors to Mr.
Ignogna's deposition, and the traditional Rule 45 test to
Dr. Gay's deposition.
seek Mr. Insogna's deposition testimony as to the
submissions made to the Patent Office during prosecution,
including the facts Defendants claim are relevant to
Plaintiff's infringement theory under the doctrine of
equivalents. ECF No. 7 at 5. Specifically, they seek his
testimony regarding the meaning of certain arguments and
amendments made during prosecution, and the facts underlying
those arguments and amendments. Id. Defendants also
seek Mr. Insogna's testimony regarding the underlying
facts relating to Plaintiff's validity arguments that the
patents-in-suit exhibit unexpected results. Id.
Specifically, Defendants seek Mr. Insogna's testimony
regarding how Mr. Tutino's declarations were prepared and
where the data in his declaration came from. Id. at
10. To compel Mr. Insogna's deposition, Defendant must
show: (1) there are no other means to obtain the information;
(2) the information is relevant and non-privileged; and, (3)
the information is crucial to the preparation of the case.
See Shelton, 805 F.2d at 1327.
Other Means to Obtain the Information
Defendants must show the information they seek from Mr.
Insogna cannot be obtained through other means.
Shelton, 805 F.2d at 1327.
assert that the '427 and '467 patents are invalid as
obvious over the prior art, including prior art formulations
of pomalidomide. ECF No. 7 at 10. In response to
Defendants' invalidity argument, Plaintiff has asserted
that the formulations claimed by the '427 and '467
patents “unexpectedly yielded a stable
formation.” Id. Defendants argue that the
basis for these unexpected results is described in two
declarations by Anthony Tutino, the inventor, which set out
Plaintiff's formulation development efforts. Id.
Thus, Defendants seek information as to how Mr. Tutino's
declarations were prepared and the source of the data in his
contend that Mr. Tutino was not able to answer their
questions on these subjects fully during his deposition,
citing numerous “I don't know” responses.
Id. at 11. Defendants also contend that they tried
to get the information via another avenue, Plaintiff's
Rule 30(b)(6) witness, but that Plaintiff responded that the
proposed deposition topics regarding Mr. Tutino's
declarations “seek information not in
[Plaintiff]'s possession, custody, or
control.” ECF No. 7 at 10. Therefore, Defendants
argue that deposing Mr. Insogna (and Dr. Gay) is the only
means to glean information about the preparation of the
declarations and their factual underpinnings. Id.
information Defendants seek from Mr. Insogna can be obtained
through other means, including discovery methods that would
be more efficient than third-party depositions regarding
events that happened many years ago. Defendants acknowledged
at oral argument that they sought this information through
interrogatories and requests for productions to Plaintiff,
but do present evidence that they were unable to obtain
necessary information from these methods. There is a Special
Master appointed in the underlying case, and it does not
appear that Defendants made an effort to compel further
responses or documents using the Special Master in the
underlying litigation. Moreover, obtaining information from
many years ago through the testimony of a third-party witness
does not appear to be an efficient method to achieve
Defendants' stated goals.
the Court finds that Defendants have not met their burden of
showing that the information they seek from Mr. Insogna
cannot be obtained through other means.
Status of the Information as to Relevance and
Defendants must show the information they seek from Mr.
Insogna is both relevant and non-privileged.
Shelton, 805 F.2d at 1327.
have broad discretion to determine relevance for discovery
purposes. Doherty v. Comenity Capital Bank, No.
16cv1321-H-BGS, 2017 WL 1885677, at *2 (S.D. Cal. May 9,
2017) (citing Hallett v. Morgan, 296 F.3d 732, 751
(9th Cir. 2002)); see also Youngevity Int'l, Inc. v.
Smith, No. 16cv704-BTM-JLB, 2017 WL 2692928, at *10-*11
(S.D. Cal. June 22, 2017). When analyzing relevance, Rule
26(b) no longer limits discovery to information
“reasonably calculated to lead to the discovery of
admissible evidence.” In Re Bard IVC Filters Prods.
Liab. Litig., 317 F.R.D. 562, 563-64, 564 n.1 (D. Ariz.
2016) (discussing the 2015 amendments to the Federal Rules of
Civil Procedure and the advisory committee's explicit
removal of the phrase “reasonably calculated, ”
and listing cases that continue to use the outdated pre-2015
standard). The relevance standard is commonly recognized as
one that is necessarily broad in scope in order “to
encompass any matter that bears on, or that reasonably could
lead to other matter that could bear on, any issue that is or
may be ...