The opinion of the court was delivered by: Judge Frederick Kapala
Magistrate Judge P. Michael Mahoney
MEMORANDUM OPINION AND ORDER
This is a patent case where Plaintiff has alleged Defendant infringed on four of its patents regarding over-the-road vehicular air conditioning systems. The parties have been engaged in discovery for over two years. Since June 9, 2010, the court has taken under advisement three motions to compel documents and production of prepared Rule 30(b)(6) witnesses filed by Plaintiff and a motion for a protective order filed by Defendant. The court has reviewed the extensive materials submitted by the parties with regard to the various motions and will address each deposition topic or motion herein.
II. Plaintiff's Motion to Compel Production of Timeline Document
Plaintiff's motion to compel production of a timeline they assert was used by Kevin Alston in preparing for his Rule 30(b)(6) deposition is denied. This issue was before the court during a hearing on June 11, 2010, at which time Plaintiff's counsel cited to testimony and case law that it had not included in its initial motion. At issue in the hearing was whether Mr. Alston did, in fact, refer to or use the timeline document to refresh his memory before or during his deposition. Plaintiff's counsel stated in open court that "during the course of that deposition, Mr. Alston stated, quite clearly, I... I... we asked him a question regarding the sequence of events, and he said 'I don't know, I'd have to look back to my timeline.'" The court allowed the parties to supplement their briefs to include and discuss this information.
In its supplemental brief in support of its motion to compel, Plaintiff provided the following quote from Mr. Alston:
Q: What was that project?
A: Northrop Grumman ended up buying -- and again, I have to look at the sequence of events here. One came first, and then the other one. They ended up buying the rights to that particular technology, apparently, from Westinghouse. (Pl.'s Supp. Brief in Support of Mot., p. 4-5.) The court does not view Mr. Alston's comment as a clear statement that he was referring back to any timeline. Plaintiff argues that Reed v. Advocate Health Care, 2008 WL 162760 (N.D. Ill. Jan. 17, 2008) stands for the idea that the document in question does not have to actually refresh the witnesses' recollection. (Pl.'s Supp. Brief in Support of Mot., p. 3.) If the witness reviewed the document, the Plaintiff believes it is entitled to its production. The court disagrees with Plaintiff's view of the Reed decision. Not only did the court in Reed both presume and plainly state that the document, a law review article published by a third party, refreshed the witness's recollection, but many of the cases reviewed by the court also considered the issue of refreshed recollection. Reed at *2. Specifically, the court discussed James Julian, Inc. v. Raytheon Co., 93 F.R.D. 138, 144-46 (D. Del. 1982), wherein the court held that certain documents used to prepare a witness would have been protected by the work product privilege but for their use to refresh the witness's memory prior to testifying. Reed at *2; see also Nicholas Murlas Living Trust, et al. v. Mobil Oil Corporation, 1995 WL 124186 (N.D. Ill. 1995)(discovery reopened to allow deposing party to examine witnesses as to what documents were used to refresh recollection and were, therefore, discoverable).The timeline was actually prepared by Defendant's counsel through communications with the witness. Further, Mr. Alston stated in his deposition that the document did not in any way refresh his recollection, nor did it affect his testimony. (Def.'s Mem. in Opposition, p. 11.) Therefore, the court finds the document is work product and the privilege was not waived during the deposition.
III. Plaintiff's Motion to Compel Filed on June 28, 2010
Plaintiff's motion to compel Defendant to produce a prepared 30(b)(6) witness and the production of documents, filed on June 28, 2010, is granted in part. In the motion, Plaintiff is seeking further Rule 30(b)(6) testimony regarding topic numbers 42, 23, 32, 43, and 34. More generally, Plaintiff pointed to testimony from Marc Hoffman, Defendant's Chief Executive Officer, stating that he met with Defendant's attorney but did not meet with anyone at the company or review any documents in order to prepare for testimony. Mr. Hoffman was designated to speak to 41 topics, presumably because of the knowledge he held as CEO of the company. The court will address each topic to which Plaintiff alleges the witness was unable to testify to completely.
Topic 42 sought information on Defendant's knowledge of each of the patents in the suit and the circumstances in which Defendant first learned of each of the patents. The transcript of Mr. Hoffman's testimony on this subject reveals that he was speaking as to his own personal acquisition of knowledge as to when Glacier Bay learned of the patents through legal counsel. If Glacier Bay acquired knowledge of the patents other than how and when Mr. Hoffman acquired knowledge, Plaintiff is entitled to that information. Therefore, Defendant is ordered to certify that Mr. Hoffman's testimony, even though based on personal knowledge, also represents the complete testimony of the company as to this topic. If Defendant is unable to certify such a statement, Plaintiff is entitled to a continued Rule 30(b)(6) deposition on this topic and will be allowed an additional 1/2 -hour of testimony.
Topic 23 sought information on Defendant's efforts to design around a patent. Plaintiff argues Mr. Hoffman was unable to testify as to one specific patent. The transcripts reflect that Mr. Hoffman made a reasonable effort to answer the questions as repeatedly presented by Plaintiff's counsel. As with topic 42, the court orders Defendant to certify that Mr. Hoffman's testimony represents the complete testimony of Glacier Bay as to this topic.
Topic 32 was objected to by Defendant in a communication with Plaintiff on April 30, 2010, on the grounds that it sought expert opinion and information subject to privileges. Defendant did not designate a witness for this topic, and the parties never resolved this discovery matter. Defendant's witnesses were under no ...