United States District Court, N.D. Illinois, Eastern Division
PAPST LICENSING GmbH & Co. KG, Plaintiff,
APPLE, INC., and Defendant PAPST LICENSING GmbH & Co. KG, Plaintiff,
LG ELECTRONICS U.S.A., INC. and LG ELECTRONICS MOBILECOMM U.S.A., INC., Defendants.
MEMORANDUM OPINION AND ORDER
Jeffrey Cole Magistrate Judge
Schnayer has moved to quash deposition subpoenas from Apple
and LG Electronics, which are currently defendants in a suit
brought by Papst Licensing in the Eastern District of Texas.
There, Papst charges the defendants with infringement of five
patents. Mr. Schnayer is an attorney who used to represent
Papst in various patent law matters. Although he is not
involved in the Texas case and hasn't been involved with
Papst for over three years, he doesn't think he should
have to sit for a deposition. The issue presented by this
case is a recurring one. Yet, “[a]s common as attempts
to depose opposing counsel are in all types of cases, they
are particularly frequent in patent litigation.”
Douglas R. Richmond, Depositions of Other Lawyers,
81 Tenn. L. Rev. 47, 73 (2013). With all deference, under the
circumstances, the motion must be denied.
Schnayer, Papst, and Apple
representing Papst nearly ten years ago, Mr. Schnayer sent a
letter to Apple's then CEO, Steve Jobs, and accused Apple
of infringing the U.S. Patents Nos. 6, 470, 399 (“399
patent), 6, 895, 449 (“449 patent”), and European
Patent No. 0 917 682 (“the '682 patent”).
[Dkt. #11-2]. For three years following that letter, Mr.
Schnayer went back and forth with Apple over the allegations,
and attempted to get Apple to license the patents. Apple
refused, and the communications ended in early 2010. It
wasn't until November 2015 that Apple heard from Papst
again, when it filed suit in the Texas federal court. During
discovery in the case, Apple provided a deposition witness on
the topic of the communication, and Papst has noticed the
deposition of Apple's in-house counsel, who was involved
in those discussions. Apple, quite naturally, is following
the same course and, in addition to deposing Papst's
30(b)(6) witness, wants to depose Mr. Schnayer, who was
Papst's in-house counsel during the communications. We
are told that there is no other source for the requested
information, as Mr. Schnayer was the main participant in the
Schnayer, Papst, and LG Electronics
acquired the family of patents asserted in the Texas lawsuit
in early 2006 from Labortechnik Tasler GmbH. At that time,
two of the patents asserted against LG had already been
granted. The other three patents asserted against LG were
filed in August 2006 and September 2010 - during Mr.
Schnayer's representation of Papst. So, Mr. Schnayer
served as Papst's counsel during the acquisition of the
asserted patents, communicating with Labortechnik Tasler GmbH
and third party patent broker, PATEV GmbH & Co. KG,
during Papst's licensing negotiations with third parties,
including LG Electronics, and during Papst's filing and
prosecution of the later-filed patent applications. As such,
Mr. Schnayer communicated with a number of third parties
during acquisition and licensing of the patents, asking him
the source for any discovery regarding those communications.
He was also involved in the prosecution of the patents. In
the Texas litigation, LG has alleged, amongst other defenses,
that the asserted patents are unenforceable due to the
failure to disclose material prior art to the U.S. Patent
& Trademark Office (“PTO”) during the
prosecution of those patents. So, again, Mr. Schnayer is the
source of information for what was known during the
prosecution. Significantly, another possible source for
information on acquisition, licensing, and prosecution,
George Papst, founder of the company, passed away in 2012.
Schnayer, Apple, LG Electronics, and the Subpoenas
served the subpoena on Mr. Schnayer and provided the
requisite witness fee at his residence in Glencoe, Illinois
on January 27, 2017, noticing the deposition for March 3,
2017 in Chicago, with a request that relevant documents be
produced some two weeks earlier on February 14. [Dkt.
##11-19, 11-20]. On February 7, 2017, Mr. Schnayer emailed
Apple's counsel stating that he had not represented Papst
in over three years, had never been involved in the Texas
litigation, and didn't have any idea what it was about.
He asked that the subpoena be withdrawn and demanded that
Apple provide him voluminous documents, including “all
the pleadings in the law suit, and copies of all transcript
[sic] that in any way concern my potential deposition”
and “any and all communications (as that term is
defined in the subpoena and its attachments) that in any way
concern the potential and/or actual taking of my
deposition.” He also asked for an extension of time to
object and to “file any motions relating to the
subpoena.” Id. Moreover, he stated: “I
am traveling overseas until this coming Sunday and I have not
had time to contact my attorney who is unavailable.”
Id. He demanded a response in two days. [Dkt.
responded on February 9, writing that it didn't agree
with many of Mr. Schnayer's demands. It pointed out that
the subpoena clearly said the litigation was about several
patents acquired by Papst from Labortechnik Tasler and
explained the relevance of the requested documents. More, of
course, could be learned by looking the case up on PACER.
Apple offered a one-week extension for producing responsive
documents subject to Mr. Schnayer's confirmation that he
would comply with the subpoena. Apple also offered to
postpone the deposition to a date in mid-March that would be
convenient for both sides. [Dkt. #11-22].
Schnayer emailed Apple back that same day, complaining that
“[i]t is unreasonable for you to put any restrictions
on your offer for an extension of time. I do not appreciate
your lack of cooperation.” He said he was still out of
the country and had not reached his attorney - although it
was he that demanded a response in two days. [Dkt. #11-23].
Apple then asked: “For purposes of considering your
extension request, when can you reasonably commit to
producing responsive documents?” [Dkt. #11-24]. Mr.
Schnayer responded the next morning - February 10 - by
serving objections to the subpoena accompanied by an email in
which he stated, “I plan to file a motion for a
protective order in due course if necessary.” [Dkt.
February 21 and 22, Apple's counsel emailed Mr. Schnayer
asking when he was available for a meeting to discuss his
objections. [Dkt. #11-26]. On February 23, Mr. Schnayer's
attorney emailed Apple and LG Electronics' counsel to
request a teleconference to discuss “whether we can
resolve this without intervention by the court.” [Dkt.
#11-27]. Apple provided its availability for a call and also
asked whether Mr. Schnayer would even agree to be deposed.
[Dkt. #11-27]. On February 24, Mr. Applegate, counsel for Mr.
Schnayer, responded that Mr. Schnayer's willingness to be
deposed “depend[s] on what agreements we may be able to
reach concerning the scheduling and scope of both the
deposition and the requested document production[.]”
February 27, Mr. Applegate conferred with counsel for Apple
and LG regarding the scope of the subpoena. In a follow up
email that day, Apple summarized the discussion and
reiterated that it would not pursue the document requests if
Mr. Schnayer confirmed that he had already provided to Papst
all relevant case files at the conclusion of his
representation of the company. [Dkt. #11-27]. Apple's
counsel also asked Mr. Applegate to provide dates for Mr.
Schnayer's deposition availability based on statements
during the call that Mr. Schnayer would be out of the country
again for a week in early March. [Dkt. #11-27]. On March 1,
Mr. Applegate wrote to tell the parties that “Mr.
Schnayer [wa]s agreeable to proceeding with the deposition
only if the scope of Mr. Schnayer's deposition is
strictly limited to the content of communications that he had
with representatives of third party companies concerning the
potential licensing of the '399 and/or '449
patents.” [Dkt. #11-27]. On March 2, LG
Electronic's counsel responded by raising concerns about
what it deemed the narrow scope of the subject matter
arguably allowed under Mr. Applegate's proposal and
explained why a broader set of topics was necessary. [Dkt.
March 3, Mr. Applegate offered March 17 for the deposition,
but once again wanted the subject matter restricted:
“the deposition will be limited to the topic of Mr.
Schnayer's knowledge of Papst's efforts to license to
others the '399 and '449 patents that is not subject
to work product or attorney-client privilege; i.e., the
content of communications that he had with representatives of
third party companies concerning the potential licensing of
the ‘399 and/or ‘449 patents[.]” [Dkt.
#11-28]. On March 6, LG Electronics' counsel proposed the
subject matter scope as follows: “the Tasler patents
and related applications-subject to limited background
information as to the relationship between Mr. Schnayer and
Papst Licensing; to agree that you, on Mr. Schnayer's
behalf, may raise privilege objections and instruct not to
answer on that basis-subject to later ...