If you file a motion to compel discovery from a non-party, make sure to take reasonable steps to avoid imposing an undue burden, or else face the possibility of sanctions. This week, Magistrate Judge Cousins denied ASUS Computer International's motions to compel compliance with subpoenas for documents and testimony and granted in-part non-party Micron Technology, Inc.'s motion for costs associated with opposing ASUS' motions.
The underlying litigation is a patent infringement suit between ASUS and Round Rock Research. In 2009, Micron sold the patents in the underlying litigation to Round Rock. In 2013, ASUS served Micron with a subpoena for documents related to those patents and a subpoena for deposition testimony, which led to the deposition of a corporate witness for Micron. After engaging in meet and confer for months to resolve disputes regarding the adequacy of the production and testimony, ASUS filed motions to compel document production and additional deposition testimony.
In its motion to compel production of documents, ASUS made nine requests, all of which Magistrate Judge Cousins denied. Most of the requests were denied either because a) ASUS failed to articulate why the documents were necessary, b) failed to adequately show why Micron's production was inadequate, or c) the request was deemed to be unduly burdensome. For example, ASUS requested Micron produce additional licenses related to the patents-in-suit and additional inventor notebooks, which it claimed Micron was withholding. Micron responded that it had produced all relevant licenses and inventor notebooks. Magistrate Judge Cousins found ASUS failed to show any evidence supporting its speculation that Micron's license relevancy review was insufficient, or that it was withholding inventor notebooks. Additionally, ASUS moved to compel production of all documents identifying Micron products embodying or practicing any claim of the relevant patents, and all documents related to communications between Micron and JEDEC or other standard-setting organizations. Magistrate Judge Cousins found both of these requests unduly burdensome. ASUS did not identify those Micron products it claimed potentially practiced the Round Rock patents, instead expecting Micron to evaluate all of its products and determine which practiced the patents-in-suit. With regard to the JEDEC communications, ASUS decided to wait to evaluate the sufficiency of the communications already produced until it had deposed Micron's witness, a decision Magistrate Judge Cousins found to fall "far short" of the diligence required before burdening a non-party with a document request.
ASUS's motion to compel additional deposition testimony was also denied because it did not proffer any legal authority supporting its position that the witness was not adequately prepared and did not provide sufficient testimony. Additionally, Magistrate Judge Cousins found that even if the witness withheld testimony, ASUS failed to demonstrate that its need outweighed the burden of another deposition on Micron.
Magistrate Judge Cousins then found sanctions appropriate under Rule 45, which requires a party to take reasonable steps to avoid unduly burdening a subpoenaed non-party, and thus granted Micron's motion for costs for opposing ASUS' motion to compel production of documents. First, even though ASUS and Micron engaged in extensive meet and confer, ASUS raised some of its requests for the first time in its motion to compel. Second, Micron asserted that many of the requested documents should have been produced by Round Rock. But at oral argument, counsel for ASUS indicated that ASUS did not review documents produced by Round Rock before requesting documents from Micron. Magistrate Judge Cousins found ASUS was not entitled to documents from Micron it could receive from Round Rock, and that "this lack of diligence before burdening a non-party with discovery requests is not permissible under the Federal Rules." Thus, he granted Micron's motion with respect to costs associated with the motion to compel document production. However, he denied Micron's motion with respect to costs associated with ASUS' motion to compel further deposition because ASUS met and conferred in good faith in an attempt to resolve the dispute before filing the motion.
So what are the lessons learned? Before filing a motion to compel document production against a subpoenaed non-party, make sure to request documents from the party before moving to compel, and more importantly, perform diligence to ensure you don't already have what you're asking for.
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