Tailored Lighting, Inc. v. Osram Sylvania Products, Inc.

255 F.R.D. 340, 2009 U.S. Dist. LEXIS 11424, 2009 WL 367584
CourtDistrict Court, W.D. New York
DecidedFebruary 13, 2009
DocketNo. 04-CV-6435T
StatusPublished
Cited by7 cases

This text of 255 F.R.D. 340 (Tailored Lighting, Inc. v. Osram Sylvania Products, Inc.) is published on Counsel Stack Legal Research, covering District Court, W.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Tailored Lighting, Inc. v. Osram Sylvania Products, Inc., 255 F.R.D. 340, 2009 U.S. Dist. LEXIS 11424, 2009 WL 367584 (W.D.N.Y. 2009).

Opinion

DECISION & ORDER

MARIAN W. PAYSON, United States Magistrate Judge.

PRELIMINARY STATEMENT

By order dated January 19, 2005, the above-captioned matter has been referred to the undersigned for the supervision of pretrial discovery and the hearing and disposition of all non-dispositive motions, pursuant to 28 U.S.C. §§ 636(b)(A) and (B). (Docket # 16). Plaintiff Tailored Lighting, Inc. (“TLI”) has filed suit against Osram Sylvania Products, Inc. (“Sylvania”) alleging infringement of one of its patents. (Docket # 1). Specifically, TLI contends that Sylvania has infringed the patent for its “Daylight Lamp,” an automotive lamp that “produce[s] light substantially equivalent to daylight in color temperature and color balance.” (Docket # 1 at 1110).

DISCUSSION

Currently before this Court is Sylvania’s motion for a protective order precluding TLI from deposing John D. Mitchell, Jr., Esq., formerly the Chief Intellectual Property Counsel for Sylvania. (Docket # 123). Also before the Court is Sylvania’s motion for leave to file an amended answer. (Docket # 131). Finally, TLI has moved to compel Sylvania’s production of a “proper” witness pursuant to Rule 30(b)(6) of the Federal Rules of Civil Procedure. (Docket # 148). The following constitutes this Court’s Decision and Order with respect to each of the pending motions.

I. Sylvania’s Motion for a Protective Order

On March 11, 2008, TLI served a notice of deposition for John D. Mitchell, Jr. (“Mitchell”), who was one of Sylvania’s in-house attorneys at the time the notice was served. TLI contends that Mitchell’s deposition is justified because he verified the company’s responses to interrogatories served by TLI upon Sylvania.1 Sylvania opposes the deposition and moves for a protective order, arguing that Mitchell lacks firsthand knowledge of the issues TLI seeks to explore and that his deposition poses a substantial risk of invading the attorney-client and work-product privileges. (Docket # 124).

The threshold requirement of discoverability under the Federal Rules of Civil Procedure is whether the information sought is “relevant to any party’s claim or defense.” Fed.R.Civ.P. 26(b)(1). To be discoverable, the information “need not be admissible at the trial if the discovery appears reasonably calculated to lead to the discovery of admissible evidence.” Id. The relevance standard is thus commonly recognized as sufficiently broad in scope “to encompass any matter that bears on, or that reasonably could lead to other matter that could bear on, any issue that is or may be in the case.” Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351, 98 S.Ct. 2380, 57 L.Ed.2d 253 (1978) (citation omitted). See Daval Steel Products, a Div. of Francosteel Corp. v. M/V Fakredine, 951 F.2d 1357, 1367 (2d Cir.1991) (parties entitled to discovery of any matter that appears “rea[344]*344sonably calculated to lead to the discovery of admissible evidence”).

Despite the otherwise lenient standard for discovery, depositions of opposing counsel are generally “disfavored,” although not prohibited. United States v. Yonkers Bd. of Educ., 946 F.2d 180, 185 (2d Cir.1991). See also In re Friedman, 350 F.3d 65, 72 (2d Cir.2003) (“the fact that the proposed deponent is a lawyer does not automatically insulate him or her from a deposition nor automatically require prior resort to alternative discovery devices, but it is a circumstance to be considered”); Alcon Labs., Inc. v. Pharmacia Corp., 225 F.Supp.2d 340, 342 (S.D.N.Y.2002) (“[t]h[e] presumption [disfavoring attorney depositions] is based on the recognition that even a deposition of counsel limited to relevant and nonprivileged information risks disrupting the attorney-client relationship and impeding the litigation”) (internal quotations omitted). In determining whether a deposition of an attorney is appropriate in a particular case, the court should be guided by consideration of the following factors:

the need to depose the lawyer, the lawyer’s role in connection with the matter on which discovery is sought and in relation to the pending litigation, the risk of encountering privilege and work-product issues, and the extent of discovery already conducted.

In re Friedman, 350 F.3d at 72. As the Second Circuit has counseled, “the standards set forth in Rule 26 require a flexible approach to lawyer depositions whereby the judicial officer supervising discovery takes into consideration all of the relevant facts and circumstances to determine whether the proposed deposition would entail an inappropriate burden or hardship.” Id.

TLI urges the Court in this case to disregard the factors identified in Friedman on the grounds that in-house counsel should be treated less protectively than outside counsel when considering the appropriateness of an attorney’s deposition. TLI has not cited any authority, however, nor has this Court found any, to suggest that the Friedman considerations do not apply to depositions of in-house counsel. See Upjohn Co. v. United States, 449 U.S. 383, 395, 101 S.Ct. 677, 66 L.Ed.2d 584 (1981) (communications with counsel are protected regardless of whether the attorney is outside counsel or corporate counsel). Although depositions of inside counsel may present certain issues not likely to arise during depositions of outside counsel — namely, questions of whether counsel’s advice properly constitutes legal advice or business advice, see ABB Kent-Taylor, Inc. v. Stallings & Co., 172 F.R.D. 53, 55 (W.D.N.Y.1996) — the Friedman factors nonetheless provide a proper framework for analysis. Differentiating between legal and business advice will necessarily be encompassed by the court’s consideration of the need to depose the lawyer (the first Friedman factor) and the lawyer’s role in connection with the matter on which discovery is sought (the second factor).

Turning to TLI’s need to depose Mitchell, I begin by examining the reasons TLI has offered to justify the requested deposition. When it originally noticed Mitchell’s deposition, TLI explained that its purpose for the deposition was to explore the bases of Mitchell’s verification of Sylvania’s interrogatory answers. Specifically, counsel for TLI argued, “we are entitled to question [Mitchell] on the veracity and sources of [Sylvania’s] responses.” (Docket # 124 at H 17). Following a subsequent conference with the Court, during which counsel for TLI reaffirmed its desire to depose Mitchell concerning his verification, Sylvania provided a written list identifying, for each interrogatory, those individuals who assisted Mitchell in answering. (Docket # 124-3).

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255 F.R.D. 340, 2009 U.S. Dist. LEXIS 11424, 2009 WL 367584, Counsel Stack Legal Research, https://law.counselstack.com/opinion/tailored-lighting-inc-v-osram-sylvania-products-inc-nywd-2009.