Published on:

Defendants’ Motion Seeking to Depose Opposing Counsel Denied Where Defendants Could Not Show That Information Was Unavailable from Another Source

After the plaintiff filed suit against the defendants for patent infringement, the defendants contended that they uncovered during discovery a series of e-mails demonstrating that in 2011, plaintiff engaged plaintiff’s attorney, Mr. Alan Fisch, to negotiate the sale of its patent portfolio to third parties. Defendants subsequently moved to compel the deposition of Mr. Fisch after they took the deposition of plaintiff’s Rule 30(b)(6) witness.

In analyzing the motion to compel, the district court first explained that to determine when it is proper to allow opposing counsel to be deposed, the Fifth Circuit applies a three factor test that the party seeking the deposition must meet: “(1) no other means exist to obtain the information than to depose opposing counsel; (2) the information sought is relevant and non-privileged; and (3) the information is crucial to the preparation of the case.” Nguyen v. Excel Corp., 197 F.3d 200, 208 (5th Cir. 1999).

Although the motion to compel was filed after discovery was closed, the defendants asked for a limited deposition of Mr. Fisch, arguing that the testimony sought is not privileged and has nothing to do with plaintiff’s litigation and trial strategies. The defendants also contended that the subject matter of the deposition is crucial to defendants’ efforts to defend against plaintiff’s claim and is not available from other sources.

The district court concluded that there was no justification for taking the deposition outside of the discovery period. “Defendants provide no adequate explanation for their subpoena and deposition request that allowed for a mere four business-days of notice for a deposition to be taken the day before the discovery deadline.”

The district court also determined that “the Rule 30(b)(6) testimony as quoted by Defendants, does not state that it would be necessary for Defendants to ask Mr. Fisch in order get information relating to Plaintiff’s 2011 efforts to sell its patent portfolio. Rather, the witness testified, in response to a question regarding knowledge of the ‘exchange of any monetary figures in those discussions,’ that if he needed to know that information, he would ‘probably’ talk to Mr. Fisch. The witness merely testified how he would seek out this information, not how Defendants must necessarily seek out this information.”

The district court also was not convinced that there were no other means to obtain the information than to depose Mr. Fisch. “Defendants fail to demonstrate that the potentially relevant information they seek–the exchange of monetary figures–could not be obtained through Mr. Kaler. Defendants merely seek Mr. Fisch’s deposition as he ‘is the only person who can confirm the truthfulness of Mr. Kaler’s testimony.’ The relevant legal standard for deposing opposing counsel is whether there are other means to obtain the information. Here, the potentially relevant information is the content of the conversation between Mr. Kaler and Mr. Fisch, which could be obtained through Mr. Kaler or contemporaneous e-mails.”

Finally, the district court concluded that defendants request for the personal recollection of counsel would render the rule against deposing counsel meaningless. “If parties could simply characterize the “information” sought from opposing counsel as the personal recollection related
to the information, inherently obtainable by no other means that by deposing opposing counsel, this would render the first Nguyen factor–‘no other means exist to obtain the information than to depose opposing counsel’–meaningless.”

Accordingly, the district court denied the motion to compel.

Imperium IP Holdings (Cayman) Ltd. v. Samsung Electronics Co., LTD,
Case No. 4:14-CV-371 (E.D. Tex. Jan. 2016)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or

Posted in:
Published on:

Comments are closed.