In patent cases non-parties are regularly called upon to produce documents or give deposition testimony--material or information that is often confidential to some degree. Most of the time this discovery goes off without too much trouble: a subpoena is issued, lawyers negotiate, and the discovery had. Typically the producing party takes advantage of the Protective Order in the action, designating the documents or deposition testimony as "Confidential" or "Attorneys Eyes Only" or with some similar language.
But what happens when there is a problem later in the case, especially when another party challenges the designation or violates the protective order? I am involved in a case right now in the District of Colorado which highlights a lurking danger for these non-parties.
In my case, the non-party witness is located in near Cleveland and has no contacts whatsoever with Colorado, the forum state. I served a subpoena and duces tecum for documents and a deposition, the subpoena issuing from the Northern District of Ohio. The materials sought included schematics, design files, software code, etc. for an electronic product.
The parties are competitors, with each other and also with the witness. The witness initially objected because the materials sought were confidential trade secrets, business plans, etc., but withdrew the objection and produced the material (and was deposed) as "Attorneys Eyes Only" by taking advantage of the Protective Order entered by the Colorado court. Like many Protective Orders, it specifically invited and allowed non-party witnesses to take advantage of its terms.
Fast forward 9 months and my opponent files a motion with the Colorado court to strip confidentiality from one of the documents produced by the non-party witness. Although the witness objected to the de-designation, it could not (or would not) appear in the Colorado court to fight it. I raised a jurisdictional question with the Colorado court, wondering whether the matter should be heard in Ohio (where the subpoena issued) rather than in Colorado, particularly where it was clear that the Colorado court did not have personal jurisdiction over the witness.
The magistrate judge was untroubled by my question and easily decided that he had jurisdiction, granting the motion to de-designate the document as unopposed. He might be right on jurisdiction--the relevant jurisdiction could be in rem over the document rather in personum over the witness. I admittedly didn't do any research on this issue because it wasn't really important to my clients.
But the result did trigger a mental practice alert for me. When representing the non-party witness I shouldn't rely on the forum court's Protective Order even if the terms are otherwise pretty good. Unless my client is prepared to settle later disputes over designations (or misuse of the document by the parties) in the forum state, it seems like:
- I should insist that the forum's Protective Order provide that disputes concerning non-parties be heard by the court issuing the subpoena rather than the forum state; or
- I should refuse to rely on the forum Protective Order and have a separate Protective Order entered by the court issuing the subpoena.
The issue could be even more significant to non-U.S. witnesses, but certainly to anyone who doesn't want to have to appear and fight in a distant court.
Comments