Court Denies Motion to Compel Deposition Testimony on Overly Broad 30(b)(6) Topics and on "Contention" Topics

October 6, 2014

In this patent infringement action brought by Trustees of Boston University ("BU"), BU alleged that defendants infringed U.S. Patent No. 5,686,738 (the "'738 Patent"), which centers on light emitting diodes ("LEDs") and the technology behind them. BU moved for an order compelling defendant Epistar Corporation ("Epistar") to designate new Rule 30(b)(6) deponents on certain deposition topics.

As explained by the court, Rule 30(b)(6) requires the noticing party to describe the topics of examination with "reasonable particularity." Fed. R. Civ. P. 30(b)(6). If the noticing party does not describe the topics with sufficient particularity or if the topics are overly broad, the responding party is subject to an impossible task. McBride v. Medicalodges, Inc., 250 F.R.D. 581, 584 (D. Kansas 2008). To avoid liability, the noticed party must designate persons knowledgeable in the areas of inquiry listed in the notice. Id. Accordingly, if the noticed party cannot identify the outer limits of the topics noticed, compliant designation is not feasible. Id.; see also Newman v. Borders, Inc., 257 F.R.D. 1, 3 (D.D.C. 2009).

The court then found that various topics sought by BU were not proper. "Here, Topics 2, 3, 5, 6, 9, 20, and 22 are not described with sufficient particularity, and are vague and/or overly broad. For example, Topics 2, 3, 5 and 6 seek testimony regarding 'all facts related to' the relationship between Epistar and another entity. First, this Court has previously observed in this case that discovery requests seeking information 'related to' a particular topic are overly broad because they do not provide a basis upon which an individual or entity can reasonably determine what information may or may not be responsive."

The court also found fault with additional topics that called for detailed factual information pertaining to profit margins, costs and revenues. "Topic 20 seeks testimony without date limitation regarding '[a]ll financial information, documentation, records and/or memoranda concerning and/or related to the ACCUSED Instrumentalities.' Similarly, Topic 22 asks the designated witness to state, for each accused product, from 2006 to the present, the costs, expenses on an itemized basis, gross profit margin, operating profit margin, incremental profit margin, and revenues. It also asks the witness to identify all supporting documents. It is not reasonable to expect one or more witnesses to remember and testify about every one of these facts."

Finally, the court denied the motion to compel on a topic where the information could better be obtained through interrogatory responses. "Topic 29 would require Epistar to produce a witness or witnesses to testify about the factual basis for Epistar's contention that its products do not infringe. A party may properly resist a Rule 30(b)(6) deposition on the grounds that the information sought is more appropriately discoverable through contention interrogatories and/or expert discovery. SmithKline Beecham Corp., 2004 WL 739959, at *2. A Rule 30(b)(6) deposition is an overbroad, inefficient, and unreasonable means of discovering an opponent's factual and legal basis for its claims."

Trustees of Boston University v. Everlight Electronics Co., LTD., Case No. 12-cv-11935-PBS (D. Mass. Sept. 24, 2014)

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