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District Court Refuses to Recognize “Apex” Doctrine for Documents Created by Inventor and Global Leader of Company

The defendant filed a motion to compel, seeking a wide array of discovery against Plaintiffs Dyson, Inc. and Dyson Limited (collectively, “Plaintiffs”) to produce emails belonging to James Dyson (“Dyson”). Plaintiffs asserted that Dyson is Plaintiffs’ “global leader” and one of the named inventors on the patents-in-suit.

Although plaintiffs agreed to produce Dyson’s emails that are relevant to the issue of “inventorship,” they refused to produce documents relating to other issues, such as claim construction or infringement. The plaintiffs refused to produce any such emails because the “apex doctrine” requires that the defendants show that they could not obtain such evidence from other sources before obtaining them from high-ranking corporate officials, such as Dyson.

The district court disagreed with plaintiff’s formulation of the apex doctrine. “Plaintiffs contention that Defendants bear the burden of proving that their discovery is appropriate misstates and inverts the burden of proof in this case. “The burden under the apex principle is supplied by the general rule to a party that seeks to avoid discovery in general” bears the burden of ‘showing that good cause exists to prevent’ the discovery. Powertech Tech., Inc. v. Tessera, Inc., 2013 WL 3884254, at *1 (N.D. Cal. July 26, 2013) (internal quotations omitted). This makes sense, as the logical underpinnings of the apex doctrine seeks to prevent a high-ranking corporate executive from being run through the wringer of civil discovery, when they do not have personal knowledge of the relevant facts; in other words, to protect apex employees ‘from annoyance, embarrassment, oppression, or undue burden or expense . . . .’ Fed. R. Civ. P. 26(c)(1).”

The district court did not believe that the plaintiff had carried their burden to demonstrate that good cause exists to limit discovery in order to protect Dyson from oppression, undue burden, or expense. “First, there is some doubt whether the apex doctrine even applies to document production, as all of the cases this Court reviewed on the issue were concerned with preventing depositions of high ranking corporate officials. Even assuming that the doctrine applies, the burden on Dyson for having to produce relevant emails is low, and Plaintiffs have not articulated any reason why this email production would constitute an undue burden.”

In addition, the district court concluded that “there is no doubt that Dyson’s possesses relevant information to issues that are still the proper subject of discovery. Dyson is the named inventor on the patents in this case, and several notebooks produced in this case contain Dyson’s drawings, which suggest that he had a hands-on role in the development of the products in this suit. Moreover, Plaintiffs have already agreed to produce Dyson’s emails that are relevant to the issue of inventorship, thereby implicitly conceding that Dyson’s emails do, in fact, contain relevant information on some of the remaining issues in this case.”

The district court also did not believe that Dyson would not be harassed by participating in discovery. “This is not a case where one party is engaging in vexatious discovery tactics by seeking the deposition of an executive far removed from the facts of the case. Dyson is the owner and “global leader” of the Plaintiffs, and Plaintiffs have chosen to file suit in this district to protect their rights under United States patents on which Dyson is the named inventor. Also, judging by some of the discovery already produced by Dyson in this case, he appears to have taken a hands-on role in designing and reducing to practice the products at issue. It is not oppressive, harassing, annoying, embarrassing, nor unduly burdensome to require him to produce his emails. In fact, this Court believes that such documents would be of great value to Defendants in properly defending this case at trial and in any future dispositive motions. Therefore, the Plaintiffs are ordered to produce Dyson’s emails relevant to the issues discussed below.”

Dyson, Inc. v. Sharkninja Operating LLC, Case No. 1:14-cv-0779 (N.D. Ill. April 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

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