United States District Court, D. Arizona
ORDER
DOMINIC W. LANZA UNITED STATES DISTRICT JUDGE
Aquastar
Pool Products, Inc. (“Aquastar”) has filed a
motion to compel Paramount Pool & Spa Systems
(“Paramount”) to comply with a subpoena duces
tecum. (Doc. 1.) The Court heard oral argument on January 15,
2019. As explained below, the Court will grant Aquastar's
motion to compel but require Aquastar to provide reasonable
compensation to Paramount for its production expenses.
BACKGROUND
Aquastar
and Color Match Pool Fittings, Inc. (“Color
Match”) are competitors in the pool equipment industry.
Aquastar has sued Color Match in federal court in California,
asserting patent infringement claims, and Color Match has
asserted patent-related counterclaims. (Docs. 1-3, 1-4.)
In
September 2018, Aquastar issued a subpoena to Paramount, an
Arizona-based non-party. (Doc. 1-5.) Request Number Three of
the subpoena sought the following: “All documents
including emails mentioning any of these terms since 2013:
‘Aquastar'; ‘Aqua Star';
‘Olaf'; ‘Mjelde'; ‘Full
Circle'; ‘Eclipse'; or ‘Blue
Square.'” (Doc. 1-5 at 5.) The parties subsequently
agreed to limit Request Number Three to the mailboxes of two
particular Paramount employees, Lewis Ghiz and Lou
Priouseschi. (Doc. 10-1 ¶ 4.)
On
October 4, 2018, Paramount's counsel wrote a letter to
Aquastar's counsel objecting to the subpoena because it
failed to allow sufficient time to respond, was unduly
burdensome, and sought unneeded and/or privileged material.
(Doc. 1-7 at 2.) The letter further stated that Paramount
would “not be producing documents in response to the
subpoena” but was “willing to confer on all of
the above issues at a time that is convenient for all
parties.” (Id.)
During
the following weeks, the parties attempted to meet and
confer. As part of this process, Aquastar provided a copy of
the protective order that had been issued in the underlying
case. (Doc. 1-10). On November 2, 2018, after the
meet-and-confer discussions fizzled, Aquastar filed the
presently-pending motion to compel as to Request Number
Three. (Doc. 1.)[1] Paramount then filed a timely response
(Doc. 8) and Aquastar filed a timely reply (Doc. 10).
On
January 15, 2019, the Court held oral argument.
ANALYSIS
I.
Timeliness
Aquastar's
threshold argument is that Paramount forfeited its right to
object to the subpoena by waiting one day too long to write
an objection letter. (Doc. 1 at 5-6.) Aquastar argues that,
under Federal Rule of Civil Procedure 45(d)(2)(B), any
objections were due within 14 days of when the subpoena was
served (i.e., by October 3, 2018), yet Paramount
didn't send its letter until October 4, 2018.
(Id.) In response, Paramount argues the October 4
letter simply memorialized a series of oral communications
between counsel that began well before the 14-day deadline
elapsed. (Doc. 8 at 6-7.)
Aquastar's
forfeiture argument lacks merit. Paramount's counsel was
in contact with Aquastar's counsel before the 14-day
deadline elapsed. A finding of forfeiture is not required in
these circumstances. See, e.g., Concord Boat
Corp. v. Brunswick Corp., 169 F.R.D. 44, 48 (S.D.N.Y.
1996) (courts may decline to find forfeiture under Rule 45
where “counsel for witness and counsel for subpoenaing
party were in contact concerning the witness' compliance
prior to the time the witness challenged legal basis for the
subpoena”); In re Goodyear Tire & Rubber Co.
Sec. Litig., 1991 WL 172930, *1 (N.D. Ohio 1991)
(“[T]he parties' . . . course of conduct [is]
relevant to the Court's determination of the question of
waiver. . . . [A] strict interpretation of the Rule would
discourage informal dispute resolution among parties who
cause the issuance of subpoenas duces tecum and those to whom
the subpoenas are issued.”).
II.
Undue Burden/Relevance
The
parties dispute whether the materials sought in Request
Number Three are relevant to the underlying patent
litigation. Aquastar contends the materials are relevant to
various issues, including its defense to Color Match's
counterclaims, its damage claims, and the merits of its
infringement claims. (Doc. 1 at 9-10). Aquastar's counsel
further specified, during the motion hearing on January 15,
that the materials may bear upon the issue of
“willfulness” in the underlying litigation (which
can affect damages). Paramount, meanwhile, argues Request
Number Three is overbroad because some of the search terms
are the names of Aquastar's competitors and, thus,
“the subject matter of those emails goes far afield
from the issues in the Patent Litigation.” (Doc. 8 at
2.)[2]
Paramount further argues that a heightened showing of
relevance is required here, because this case involves a
non-party subpoena, and Aquastar hasn't met that burden
...