Fraunhofer-Gesellschaft Zur Forderung Der Angewandten Forschung E v. v. Sirius Xm Radio Inc.

Opinion

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA

MY-CHAU NGUYEN,

Petitioner,

v. No. 21-mc-014-CKK-MAU FRAUNHOFER-GESELLSCHAFT ZUR FORDERUNG DER ANGEWANDTEN FORSCHUNG E.V.,

Respondent.

MEMORANDUM OPINION

Respondent Fraunhofer Gesellschaft Zur Fodering der angewandten Forschung E.V.

(“Fraunhofer”) seeks sanctions against Petitioner My-Chau Nguyen for Nguyen’s initial refusal to

comply with a nonparty subpoena. ECF No. 14. 1 Specifically, Fraunhofer seeks a considerable

amount—$180,249.12 in attorneys’ fees and costs—for this discovery dispute. ECF No. 39 at 10.

Nguyen opposes Fraunhofer’s request and argues that this Court should not award any sanctions

because she promptly complied with the subpoena after the District Court held her in civil

contempt. ECF No. 42 at 10–13. Given her compliance, Nguyen also seeks to expunge that civil

contempt citation. Id. The Court GRANTS Nguyen’s uncontested Motion to Expunge (ECF No.

42), DENIES Fraunhofer’s Cross-Motion for Sanctions (ECF No. 14), and DENIES AS MOOT

Fraunhofer’s Motion to Transfer (ECF No. 14) and Motion to Expedite (ECF No. 46).

1 Citations are to the page numbers in the ECF headers. 1 BACKGROUND

This case arises out of a Federal Rule of Civil Procedure 45 subpoena that Fraunhofer

served on Nguyen in a patent infringement case pending in the U.S. District Court for the District

of Delaware. See Fraunhofer Gesellschaft Zur Fodering der angewandten Forschung E.V. v.

Sirius XM Radio, Inc., No. 17-cv-00184, ECF No. 291 (D. Del. Sept. 18, 2020) (“Underlying

Action”). The District Court’s December 7, 2021, Memorandum Opinion and Order details the

facts in the Underlying Action, so the Court recites only the facts relevant to this Opinion. See

ECF No. 30 at 2–4.

On May 26, 2017, Sirius XM Radio Inc. (“Sirius”), the defendant in the Underlying Action,

served its Rule 26 initial disclosures on Fraunhofer. ECF No. 14-2. Sirius identified Nguyen,

Sirius’ former Senior Vice President of Direct Sales and Marketing, as someone with relevant

knowledge of the case. Id. at 5. During discovery, Fraunhofer served a notice for Nguyen’s

deposition on Sirius. ECF No. 14-4 at 2. Sirius promptly supplemented its initial disclosures and

replaced the now-retired Nguyen with Denise Karkos, Sirius’ Chief Marketing Officer. ECF No.

14-5 at 4. Sirius also informed Fraunhofer that Nguyen retired from Sirius and would be

unavailable for a deposition. ECF No. 14-6 at 3.

In light of Sirius’ stated inability to produce Nguyen, Fraunhofer served a Rule 45

subpoena on her, noticing her deposition for November 4, 2020. ECF No. 14-7. For some time,

the Parties engaged in discussion, and Sirius—reserving all rights and objections—proposed that

Fraunhofer depose Nguyen on December 11, 2021. ECF No. 14-10 at 3. The Parties’ tentative

agreement to depose Nguyen was short-lived. On December 4, 2020, Sirius served Fraunhofer

with objections and ultimately refused to produce Nguyen. ECF Nos. 14-13–14-15. In response,

the Parties filed a joint motion in the Underlying Action for a teleconference to resolve multiple

2 discovery disputes. ECF No. 14-16. Prior to that teleconference, Fraunhofer submitted a letter

brief that argued that the Delaware District Court should compel Nguyen’s deposition. ECF Nos.

14-17 at 2. During the teleconference, the Delaware District Court denied Fraunhofer’s request to

compel Nguyen’s deposition because it did not have jurisdiction to enforce the subpoena served

on Nguyen in Washington, D.C. See ECF No. 14-19 at 14.

PROCEDURAL HISTORY

On February 19, 2021, Nguyen filed a Motion to Quash and a Motion for a Protective Order

in this Court. ECF No. 1. Fraunhofer then filed a Cross-Motion to Compel, or alternatively a

Motion to Transfer under Rule 45(f), and a Motion for Sanctions. ECF No. 14. The Court granted

Fraunhofer’s Cross-Motion to Compel and ordered Nguyen to appear for her deposition by January

7, 2022. ECF No. 30 at 10. The Court also held Nguyen in civil contempt under Rule 45(g) for

failing to obey the subpoena without adequate excuse. Id. at 8–9. With respect to Fraunhofer’s

request for sanctions, the Court held that request in abeyance and ordered Fraunhofer to submit

documentation substantiating its fees and costs. Id.

Nguyen sat for her deposition on January 5, 2022, ECF No. 42 at 11, but appealed the

Court’s contempt citation and intent to award sanctions to the D.C. Circuit, ECF No. 31. The D.C.

Circuit held that it lacked jurisdiction over the appeal because the Federal Circuit had exclusive

jurisdiction over a discovery dispute ancillary to a patent matter. ECF No. 36. Accordingly, the

District Court ordered the Parties to file supplemental briefs “addressing the appropriateness of

sanctions under the law of the Federal Circuit.” Min. Order (Mar. 28, 2023). The Parties agreed

that the Federal Circuit would apply the law of the D.C. Circuit to a review of the contempt citation

and sanctions award. See ECF Nos. 39 at 6–7; 42 at 9–10. The Parties disagreed, however, on

3 whether the Court should award additional sanctions for Nguyen’s initial noncompliance with the

subpoena.

On August 31, 2023, the District Court referred “the remainder of [Fraunhofer’s] [13]

Cross-Motion to Compel Compliance with [the] Subpoena” to this Court, which included

Fraunhofer’s Motion for Sanctions. ECF No. 44; see LCvR 72.2(a), (b). While the referral was

pending before this Court, Fraunhofer moved to expedite the Court’s ruling on sanctions. ECF

No. 46. Based on a review of the record, the issues remaining before this Court are: (1) whether

the District Court should apply D.C. Circuit or Federal Circuit Law to the issues of contempt and

sanctions; (2) whether the Court should expunge Nguyen’s contempt citation; and (3) whether the

Court should award Fraunhofer sanctions and, if so, the amount of any sanctions.

DISCUSSION

I. D.C. Circuit Law Governs the Issues of Contempt and Sanctions.

The D.C. Circuit confirmed that the Federal Circuit has jurisdiction over any appeal in this

matter. ECF No. 36. Nonetheless, “[w]hen reviewing non-patent law issues, such as the

imposition of sanctions or the standard for contempt, [the Federal Circuit] appl[ies] the law of the

regional circuit.” Codexis, Inc. v. EnzymeWorks, Inc., 759 F. App’x 962, 964 (Fed. Cir. 2019).

Moreover, the Parties agree that, if the Federal Circuit were to review any contempt citation or

sanctions award, the Federal Circuit would apply the law of the D.C. Circuit. See ECF Nos. 39 at

6–7; 42 at 9–10.

II. Nguyen’s Contempt Citation is Expunged.

A court can “hold in contempt a person who, having been served, fails without adequate

excuse to obey the subpoena or an order related to it.” Fed. R. Civ. P. 45(g). Civil contempt for

noncompliance has three elements: (1) a court order was in effect; (2) the order required certain

conduct; and (3) the party subject to contempt failed to comply with the court’s order. Commodity 4 Futures Trading Comm’n v. Wonsey, No. 21-mc-13, 2021 WL 5881974, at *1 (D.D.C. Dec. 9,

2021) (articulating the modern standard for contempt proceedings). Civil contempt, however, is

conditional. By complying with the underlying court order, a party may purge itself of the

contempt citation. See, e.g., Turner v. Rogers, 564 U.S. 431, 442 (2011) (“[O]nce a civil

contemnor complies with the underlying order, he is purged of the contempt and is free.”); NLRB

v. Blevins Popcorn Co., 659 F.2d 1173, 1184 (D.C. Cir. 1981) (“At the second stage the recalcitrant

party is put on notice that unless it obeys the court’s decree and purges itself of contempt it will be

fined or face other sanctions.”); Oil, Chem. & Atomic Workers Int’l Union, AFL-CIO v. NLRB,

547 F.2d 575, 581 (D.C. Cir. 1976) (“[T]he purpose of a motion for civil contempt . . . ‘is not to

punish intentional misconduct, but rather to enforce compliance with an order of the court and to

remedy any harm inflicted on one party by the other party’s failure to comply.’”) (quoting Doe v.

General Hospital, 434 F.2d 427, 431 (D.C. Cir. 1970)).

Here, the Court held Nguyen in contempt for refusal to comply with the subpoena because

there was no basis to quash it. ECF No. 30 at 8–9. Nguyen promptly complied with the Court’s

December 7, 2021, Order by sitting for her deposition on January 5, 2022. ECF No. 42-2. Because

Nguyen does not currently meet the elements of contempt, the Court must expunge her contempt

citation. Turner, 564 U.S. at 442; Wonsey, 2021 WL 5881974, at *1.

III. Fraunhofer is Not Entitled to Additional Sanctions.

As noted above, the Court already held Nguyen in civil contempt. Fraunhofer appears to

assume that it is entitled to additional sanctions because, in its view, the District Court permitted

an award of nearly $200,000 in fees under Rule 37. See, e.g., ECF No. 39 at 4 (arguing that the

District Court should “proceed to finalize” sanctions by awarding attorneys’ fees and costs).

Fraunhofer is wrong. In its Memorandum Opinion, the District Court ordered Nguyen to sit for

her deposition and “defer[ed] ruling on sanctions until Fraunhofer submit[ted] documentation on

5 fees and costs.” ECF No. 30 at 10 (emphasis added). That portion of the motion—both

Fraunhofer’s entitlement to sanctions and the amount, if any, of those sanctions—is what the

District Court referred to this Court. See id.; ECF No. 44.

A close examination of the District Court’s Order is necessary. The District Court clearly

found no basis to quash the subpoena and ordered Nguyen to sit for her deposition. ECF No. 30

at 4–8, 10. To enforce its Order, the District Court held Nguyen in civil contempt under Rule

45(g), presumably until she complied with the subpoena. Id. at 8–9. Then, the District Court

discussed what additional sanctions it could issue if Nguyen or her attorney further refused to

comply with the subpoena and the Court’s Order. Id. at 9. Relying on Athridge v. Aetna Cas. and

Sur. Co., the District Court explained that Rule 37 empowers the Court to issue sanctions against

“a nonparty deponent or his attorney or both of them who refuses to answer a question or questions

at a deposition whose answers have to thereafter be compelled.” 184 F.R.D. 200, 208 (D.D.C.

1998) (emphasis added) (citing Fed. R. Civ. P. 37(a)(4)(A), the previous version of current Rule

37(a)(5)(A)). 2 This is the only rule the District Court cited in its discussion of sanctions.

At the time of the District Court’s Order, of course, Nguyen had not yet appeared for her

deposition. Therefore, the District Court could not have sanctioned Nguyen for refusing to answer

questions at her deposition. Nor had Nguyen at that time refused to comply with the District

Court’s Order, requiring Fraunhofer to seek an order to compel. Because of this posture, the

District Court’s Order can only be interpreted as a warning to Nguyen to cooperate with the Order

at her deposition for fear of being further sanctioned. This makes sense because, as Athridge noted,

Rule 37 only permits compelling discovery from a nonparty and awarding attorneys’ fees if that

2 Rule 37(a)(4)(A) became Rule 37(a)(5)(A) after the 2007 amendments to the Federal Rules of Civil Procedure. See Fed. R. Civ. P. 37 advisory committee’s note to 2007 amendment (discussing the general restyling of the Civil Rules). 6 nonparty “deponent fails to answer a question asked under Rule 30 or 31.” See Fed. R. Civ. P.

37(a)(3)(B)(i), 37(a)(5)(A). To read Rule 37 otherwise would “impute to the draftsmen a desire

to deal indirectly in Rule 37 with a situation that Rule 45 deals with directly.” Athridge, 184

F.R.D. at 208. In other words, Rule 45 governs relief 3 for a nonparty’s noncompliance with a

subpoena whereas Rule 37 governs relief for a nonparty’s noncompliance during a deposition.

See, e.g., HT S.R.L. v. Velasco, No. 15-mc-664, 2015 WL 13759884, at *6 (D.D.C. Nov. 13, 2015)

(Rule 37 “does not govern attorneys’ fees and costs associated with motions to compel for lack of

compliance with a properly issued subpoena.”); In re Exxon Valdez, 142 F.R.D. 380, 385 (D.D.C.

1992) (“[M]otions to compel production from non-parties are governed by Rule 45.”); In re

Chodiev, No. 18-mc-13, 2020 WL 9439389, at *4 (D.D.C. Aug. 11, 2020) (collecting cases that

Rule 45 governs noncompliance with a subpoena).

The District Court’s warning clearly worked, because Nguyen promptly appeared for her

deposition and answered all questions without incident. 4 Notwithstanding this, Fraunhofer still

argues that Rule 37(a)(5)(A) “clearly mandates that sanctions are appropriate in the amount of”

3 See, e.g., Beverly v. Interior Elec. Inc. Nevada, No. 21-55645, 2023 WL 355692, at *1 (9th Cir. Jan. 23, 2023); NLRB v. Midwest Heating & Air Conditioning, Inc., 528 F. Supp. 2d 1172, 1181 (D. Kan. 2007); U.S. for the Use & Benefit of Am. Builders & Contractors Supply Co., Inc. v. Great Am. Ins. Co., No. 3:12-mc-36, 2012 WL 12910657, at *1 (M.D. Fla. June 26, 2012); Kona Spring Water Distributing, Ltd. v. World Triathlon Corp., No. 8:05-cv-119, 2006 WL 905517, at *2 (M.D. Fla. Apr. 7, 2006); Davis v. Speechworks Int’l, Inc., No. 03-cv-533S(F), 2005 WL 1206894, at *5 (W.D.N.Y. May 20, 2005); Peacock v. Merrill, No. 08-01-B-M2, 2008 WL 687195, at *4 (M.D. La. Mar. 10, 2008). 4 It is true that the District Court noted that it did not have any supporting documentation from Fraunhofer to determine the precise costs it had incurred in litigating the subpoena. ECF No. 30 at 9–10. This does not mean that the District Court determined sanctions were appropriate at that time. The District Court could have, but chose not to, find Fraunhofer entitled to attorneys’ fees and then merely refer to this Court the question of how much to award Fraunhofer. In any event, for the reasons stated above, the District Court’s discussion of Rule 37 clearly meant to serve as a discussion of potential additional sanctions if Nguyen had chosen to resist the District Court’s Order. 7 $180,249.12. ECF No. 39 at 7–8. In support of this argument, Fraunhofer cites two cases from

the Federal Circuit and the Court of Federal Claims. See Multiservice Joint Venture, LLC v. United

States, 374 Fed. Appx. 963, 964 (Fed. Cir. 2010); Chevron U.S.A., Inc. v. United States, 116 Fed.

Cl. 202, 232 (Fed. Cl. 2014). But the discovery issues in both cases did not involve a nonparty’s

noncompliance with a subpoena. In fact, in Multiservice Joint Venture, LLC, the Federal Circuit

affirmed sanctions under Rule 37 of the Court of Federal Claims, which mirrors Federal Civil Rule

37, for misconduct that occurred during a deposition. 374 Fed. Appx. at 964–65. As such, for the

reasons already stated above, Rule 37(a)(5)(A) clearly does not authorize sanctions in this scenario.

Nor does the Court discern any other basis for awarding attorneys’ fees. Rule 45 governs

relief for a nonparty’s noncompliance with a subpoena and, in any event, does not provide for

attorneys’ fees as a sanction. Indeed, Rule 45 only explicitly punishes a nonparty’s failure to

comply with civil contempt, and, significantly, “says nothing about whether the person resisting

the subpoena can be made to pay the expenses of moving to compel his production if the Court

ultimately overrules his resistance.” See, e.g., Athridge, 184 F.R.D. at 208 (subsequently awarding

attorneys’ fees under Rule 37(a)(3)(B)(i) only because the nonparty later attended a deposition and

refused to answer questions); In re Exxon Valdez, 142 F.R.D. at 385 (“The only sanction provision

in Rule 45 is the contempt provision . . . [t]hus, the Federal Rules provide no basis for awarding

sanctions in this case.”); see also Fed. R. Civ. P. 45(d)(1) (providing attorneys’ fees only where a

party or attorney responsible for issuing and serving a subpoena imposes an undue burden or

expense on the person subject to the subpoena); Westmoreland v. CBS, Inc., 770 F.2d 1168, 1173

(D.C. Cir. 1985) (“Rule 37(a)[(5)(A)] is not a general attorneys’ fee award[ ] for violations of the

Federal Rules of Civil Procedure.”)

8 Notwithstanding the plain language of Rule 45, this Circuit has found that “in some

circumstances a civil contempt sanction may be designed to compensate the complainant for losses

sustained.” Cobell v. Norton, 334 F.3d 1128, 1145 (D.C. Cir. 2003) (citation modified); Food

Lion, Inc. v. United Food & Com. Workers Int’l Union, AFL-CIO-CLC, 103 F.3d 1007, 1017 n.14

(D.C. Cir. 1997) (noting that under Rule 45 a district court may be authorized to include legal fees

specifically associated with the contempt). Courts in this District rarely impose additional

sanctions after the contemnor complied with the underlying order. See, e.g., Contempt Finding in

U.S. v. Stevens, 744 F. Supp. 2d 253, 255 (D.D.C. 2010) (“Because the purgation conditions were

fulfilled, the Court does not believe that sanctions based on this civil contempt finding are

necessary or appropriate in this instance.”), aff’d sub nom. In re Contempt Finding in U.S. v.

Stevens, 663 F.3d 1270 (D.C. Cir. 2011); Landmark Legal Found. v. EPA, 272 F. Supp. 2d 70, 76

(D.D.C. 2003) (“[A] court may order a civil contemnor to compensate the injured party for losses

caused by the violation of the court order . . . .” (emphasis added).

For these reasons, Fraunhofer is not entitled to an award of attorneys’ fees and costs. Even

assuming, however, that Fraunhofer is correct that Rule 37(a)(5)(A) authorizes an award of fees

against a nonparty deponent who complied with the Court’s Order and answered all questions at

her deposition, this Court finds that the circumstances here would make an award of attorneys’

fees and costs unjust under Rule 37(a)(5)(A)(iii). This was a straightforward discovery dispute

that both parties unnecessarily escalated. Setting aside the events that resulted in this matter

landing in this District, Nguyen exercised her rights as a nonparty under Rule 45 and used the

mechanism in that rule to seek to quash the subpoena. Nguyen lost her motion, was held in

contempt, and thereafter promptly complied with the subpoena. In this regard, Rule 45 operated

exactly as it should. This is not a scenario in which Fraunhofer is entitled to an exorbitant

9 attorneys’ fees award against a nonparty, and particularly not an award of nearly $200,000. 5

CONCLUSION

For the foregoing reasons, the Court GRANTS Nguyen’s Motion to Expunge (ECF No.

42), DENIES Fraunhofer’s Cross-Motion for Sanctions (ECF No. 14), and DENIES AS MOOT

Fraunhofer’s Motion to Expedite (ECF No. 46) and Motion to Transfer (ECF No. 14). The Court

will issue a separate order.

Date: July 31, 2026 ____________________________________ MOXILA A. UPADHYAYA UNITED STATES MAGISTRATE JUDGE

5 Fraunhofer went so far as to request fees for conduct unrelated to Nguyen’s contemptuous conduct. For example, Fraunhofer requested expenses for incorrectly compelling Nguyen’s deposition in the District of Delaware. See Fed. R. Civ. P. 37(a)(2). In addition, Fraunhofer requested the fees and costs for Nguyen’s deposition, which it would have incurred regardless of Nguyen’s initial resistance. 10