Opinion
M8-85.
April 19, 2007
MEMORADNDUM OPINION ORDER
All defendants (referred to collectively as "Bel Fuse") and non-party Martin Raskin ("Raskin") move to quash the deposition subpoena of Raskin or, in the alternative, to limit the scope of the subpoena.
Background
In 1999, a company called Stewart Connector Systems Inc. ("Stewart") asked Murata Manufacturing Co., Ltd. ("Murata") for a license on the patent-in-suit, Murata's "Modular Jack" — a device mounted on circuit boards. Raskin represented Stewart in the licencing negotiations. Stewart subsequently backed out of the discussions and continued to sell its MagJack, a product that allegedly infringes the patent-in-suit. As a result of the alleged infringement, Murata brought suit, and Raskin represented Stewart in the litigation. During the pendency of the litigation Stewart declared bankruptcy. Bel Fuse bought part of the Stewart business, including the MagJack.
Murata then brought suit for patent infringement against Bel Fuse in the United States District Court for the Northern District of Illinois before Judge Joan Gottschall, No. 03 Civ. 2934. Continuing the tradition, Bel hired Raskin as litigation counsel. Murata's complaint alleges that Bel Fuse willfully infringed Murata's patented "Modular Jack" through defendants' manufacture and distribution of the "belMag" and "MagJack." Murata also alleges that Bel Fuse induced others to infringe the patent-in-suit.
To rebut these allegations, Bel Fuse has asserted an advise-of-counsel defense based upon an opinion prepared by Raskin, dated January 29, 2001 ("Opinion"). In addition to the Opinion, Mr. Raskin prepared three additional opinions-of-counsel on the topic of infringement.
On March 20, 2007, a month before the close of fact discovery, Murata served three additional subpoenas/notices of deposition, including the one currently at issue. Bel Fuse informed Murata that Bel Fuse and Raskin would agree to the deposition if the scope of the questioning was limited to topics concerning the January 29, 2001 Opinion. Murata would not agree to such a limitation, stating that Rule 26(b)(1) sufficiently limits the scope of questioning.
Discussion
In In re Subpoena Issued to Dennis Friedmand, 350 F.3d 65 (2d Cir. 2003), the Second Circuit listed factors for courts to consider when determining whether to allow depositions of opposing counsel, including
the need to depose the lawyer, the lawyer's role in connection with the matter on which discovery is sought and in relation to the pending litigation, the risk of encountering privilege and work-product issues, and the extent of discovery already conducted.Id. at 72.
Defendants and Mr. Raskin ("Movants") argue that each of theFriedman factors tips in favor of quashing the subpoena.
According to Movants, although the subpoena does not specify the topics for Raskin's deposition, during a conference call Murata informed Movants of possible topics. These include: (i) prior licensing discussions between Murata and Stewart, (ii) unrelated patent applications assigned to Bel Fuse, and (iii) the Opinion authored by Raskin.
Movants argue there is no need to depose Raskin on these subjects because information on (i) and (ii) can be obtained from other sources, and information on (iii) can be obtained from the Opinion itself. However, Raskin can certainly offer unique information given his primary role in the subject of each topic: Raskin solely represented Bel Fuse in the previous licensing discussions with Murata and Stewart, Raskin represented Bel Fuse in its previous patent applications, and Raskin is litigation counsel in the current suit. It is routine in patent cases that the patentees are entitled to depose opposing opinion counsel on the subject bases for their opinions. See e.g., Novartis v. EON Labs, 206 F.R.D. 396, 399 (D. Del. 2002) ("It is critical for a patentee to have full opportunity to probe, not only the state of mind of the infringer, but also the mind of the infringer's lawyer upon which the infringer so firmly relied.").
Movants argue that deposing Raskin would jeopardize attorney-client privilege because much of the information sought from Raskin is privileged, except for the Opinion itself, for which privilege has been waived. The Court is not persuaded that this risk looms so large as to completely prevent a party from obtaining relevant information. If Raskin is asked to disclose allegedly privileged information at his deposition, Raskin's attorney can simply object on the basis of attorney-client privilege.
Movants assert that Murata waited until right before the close of fact discovery to subpoena Raskin in order to burden him while he is preparing for trial. As the Court pointed out at oral argument, and as Raskin's counsel reluctantly acknowledged, at least some of Raskin's preparation for the deposition will overlap with Raskin's trial preparation. Moreover, Judge Gottschall has not even set a firm trial date in the case. Therefore, it is unlikely Raskin has begun to prepare for trial.
Bel Fuse should not be able to avoid inquiry into a relevant subject by choosing for trial the same attorney who provided the advice — of counsel Opinion on which the party relies. "Attorneys with discoverable facts, not protected by attorney-client privilege or work product, are not exempt from being a source for discovery by virtue of their license to practice law or their employment by a party to represent them in litigation." United Phosphorous v. Midland Fumigant, 164 F.R.D. 245, 248 (D. Kan. 1995).
Conclusion
The motion to quash is denied in its entirety. Rule 26(b)(1) sufficiently limits the scope of inquiry.
SO ORDERED.