Aquastar Pool Products Inc. v. Paramount Pool & Spa Systems

          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 ...