The opinion of the court was delivered by: Byron G. Cudmore, U.S. Magistrate Judge
Pending before the Court is Defendant's Motion to Compel Answers to Deposition Questions Asked of Burl Shuler (d/e 326) (Motion to Compel). Both Plaintiff GSI Group, Inc. (GSI) and Defendant Sukup Manufacturing Co. (Sukup) build and sell large capacity tower grain dryers. Among other things, the instant case involves patent infringement claims brought by GSI against Sukup relating to the grain dryers. The instant motion arises out of Sukup's August 16, 2007 deposition of Burl Shuler, GSI's Vice President of Sales & Administration, World Wide Grain Division. As set forth in detail below, the Motion to Compel is allowed, in part, and denied, in part.
On December 19, 2006, after discovery had closed on the patent issues, GSI filed with the United States Patent Office a Reissue Patent Application for Patent No. 6,076,276, one of the patents at issue in the instant lawsuit. The Reissue Application proposed canceling claims 9 and 15 of Patent No. 6,076,276.*fn1 Based on the reissue application, Sukup sought leave to take four additional depositions after the close of discovery. Motion to Take Depositions from McKinzie, Shuler, Nolte, Maginot (d/e 164) (Motion to Take Depositions). Specifically, Sukup sought leave "to depose four (4) individuals referenced in GSI's application for reissue." Id., ¶ 16. The Motion to Take Deposition asserted "Sukup should be allowed to conduct discovery regarding the application for reissue of one of the patents at the crux of the case." Id., ¶ 21. Shuler, who had been previously deposed in connection with the instant matter, is the individual who signed the Reissue Application Declaration on behalf of GSI. Id., Ex. A, p. 19-20. GSI filed a Memorandum in Opposition to the Motion to Take Deposition from McKenzie, Shuler, Nolte, Maginot (Consenting in Part and Opposing in Part) (d/e 178). GSI expressly "consented to Sukup's deposing Messers. Shuler, McKenzie and Maginot, as long as their depositions are limited to the subject matter involving the reissue of the '276 patent." Id. at 2. GSI noted that "[t]o the knowledge of GSI's undersigned counsel, Sukup has not objected to the depositions of Messers. Shuler, McKenzie and Maginot being limited to the subject matter of the reissue application" and further that Sukup's motion "states that 'Sukup should be allowed to conduct discovery regarding the application for reissue of one of the patents at the crux of the case.'" Id. Sukup then filed a reply, noting that "[i]n GSI's Memorandum, GSI consented to the depositions of Messrs. Shuler, McKenzie and Maginot concerning the subject matter involving the reissue application for the '276 Patent." Reply to Response to Motion to Take Deposition from McKenzie, Shuler, Nolte, Maginot (d/e 185), p. 1.
In a Text Order, dated February 21, 2007, this Court held as follows: Before the Court is Defendant Sukup Manufacturing Co.'s Motion for Leave to Notice and Take Four Depositions 164, Plaintiff's response 178 consenting in part and opposing in part Defendant's Motion, and Defendant's Reply 185 as ordered by the Court. Based upon Plaintiff's consent, the depositions of Burl Shuler, Terry McKenzie, and Paul Maginot are ALLOWED. Nelson Nolte is an attorney who prepared and filed Plaintiff's reissue application concerning the '276 patent (d/e 178 at paragraph 4). The reissue application was filed 12/19/2006 only one day after fact discovery closed. Defendant avers that certain aspects of the reissue application take positions opposite to those taken by Plaintiff in this litigation (d/e 164 at paragraphs 7-10). Over Plaintiff's objection, the deposition of Nelson Nolte is also ALLOWED. The Court agrees with Defendant that the Court cannot rule in a vacuum, prior to the deposition, that every question to be asked will seek to elicit privileged information. This Court reserves the decision on any disputed assertions of privilege until the privilege has been asserted at the deposition when the issue is then ripe for consideration. Wherefore, Defendant's Motion 164 is ALLOWED IN FULL.
Text Order, dated February 21, 2007. On August 16, 2007, Sukup deposed Shuler pursuant to this order. According to Sukup, counsel for GSI improperly instructed Shuler not to answer many questions during this deposition. The Motion to Compel seeks an order (1) compelling GSI to produce Shuler for another deposition, (2) compelling Shuler "to answer all questions," (3) declaring that privilege does not exist with respect to the identities of GSI's counsel and the GSI personnel who have authorized counsel to act on GSI's behalf, (4) declaring that privilege has been waived with respect to several identified issues, and (5) directing counsel to refrain from instructing Shuler not to answer based on the fact that Shuler would be speculating. Motion to Compel, p. 3.
As an initial matter, the Court notes that, in response to this Court's direction to provide a detailed reply, Sukup filed a chart listing the portions of transcript to which its motion is addressed, divided by category. See Reply to Response to Motion to Compel Answers to Deposition Questions Asked of Burl Shuler (d/e 352) (Sukup's Reply), Ex. A ("the Chart"). The Court will address Sukup's challenges by category as set forth on this Chart and will reference the challenges by the question numbers 1 through 187 as assigned on the Chart. The Court will first address the challenges that fall into only one category and will then address the questions which implicate multiple categories. The Court further notes that, under Fed. R. Civ. P. 30(c)(2), "A person may instruct a deponent not to answer only when necessary to preserve a privilege, to enforce a limitation ordered by the court, or to present a motion under Rule 30(d)(3)."*fn2
A. Scope of the Shuler Deposition
Clearly, the four additional depositions authorized in this Court's Text Order, dated February 21, 2007 are limited in scope. Sukup's Motion to Take Depositions expressly sought additional discovery regarding the application for reissue of Patent No. 6,076,276. Motion to Take Depositions, ¶ 21. GSI expressly consented to three of the additional depositions, including one of Shuler, as long as the depositions were limited to the subject matter involving the reissue of Patent No. 6,076,276. The Court allowed the Motion to Take Depositions as it related to Shuler based on GSI's consent. Given this history, it is clear that the supplemental Shuler deposition should be limited in scope to the issue of the application for reissue of Patent No. 6,076,276, and this was the Court's intent in allowing the Motion to Take Depositions. Sukup's claim that there was no limitation placed on the scope of the deposition fails.
Thus, under Fed. R. Civ. P. 30(c)(2), counsel for GSI could properly instruct Shuler not to answer questions during the deposition that fell outside its limited scope. Sukup asserts in the alternative that all of the challenged questions fell within the deposition's limited scope. It is clear to the Court that the scope of the deposition is not limited to the face of the reissue application itself but rather extends to all matters arising out of the application for reissue of Patent No. 6,076,276. With this in mind, the Court turns to Sukup's specific challenges as set forth in the Chart.
Categories I, II, and III as defined on the Chart involve challenges relating to the scope of the Shuler deposition. The Court notes that no questions are designated solely as Category III, thus the Court will address Category III infra in subsection C. Sukup defines Category I as questions relating to the decision to withdraw claims 9 and 15 including the timing of GSI's knowledge of the invalidity of the patent and actions taken by it in relation thereto. As a general statement, this category clearly relates to the reissue application issue. Fifty-six of Sukup's challenges are characterized as relating solely to Category I. The Court has reviewed the portions of transcripts associated with these challenges and finds as follows.*fn3
Questions 28-39, 42-48, and 50-55 relate to a Declaration that Shuler executed on January 9, 2006, in connection with the instant case. See Sealed Document, Attachments (d/e 328), Part 4, p. 9. Questions 28-39, 42-48, and 50-55, while addressing the Declaration, clearly arise because of the reissue application, and they are relevant to the issue of the asserted invalidity of claims 9 and 15. Thus, these questions fall within the scope of the supplemental deposition, and the Motion to Compel is allowed with respect to these questions. Questions 58 through 61 relate to representations made in connection with GSI's Opposition to Defendant's Motion for Partial Summary Judgment of Invalidity of Claims 9 and 15. See Sealed Document, Attachments (d/e 328), Part 4, p. 34. These questions are also within the scope of the supplemental declaration because they clearly arise as a result of the reissue application and they are relevant to the issue of the asserted invalidity of claims 9 and 15, and the Motion to Compel is allowed in this respect as well.
Questions 145 through 151 relate to the Kan-Sun tower dryer.*fn4
These questions relate to the reissue application and are relevant to the issue of the asserted invalidity of claims 9 and 15. The Motion to Compel is allowed in this respect. Questions 167 through175 relate to actions taken or not taken by GSI in connection with the reissue application relating to a 2005 press release and Sukup customers to whom GSI sent cease and desist letters. These questions are clearly related to the reissue application issue, and the Motion to Compel is allowed in this respect as well. Questions 183 through 187 also deal with the 2005 press release and arise as a result of the reissue application. The Motion to Compel is allowed in this respect.
Additionally, it is clear from their face that the following questions fall within the scope of the supplemental deposition: 40, 41, 49, and 56. The Motion to Compel is allowed with respect to these questions. Sukup, however, has failed to establish that the following questions fall within the scope of the supplemental deposition, and their relevancy to the reissue application is not clear on their face: 26, 27, and 57. Thus, counsel's direction to the ...