Pennwalt Corporation v. Durand-Wayland, Inc., Sunkist Growers, Inc., Non-Party

Sunkist Growers, Inc., a nonparty in the underlying action, appeals from a district court order that it pay $9,000 in attorney fees to Pennwalt Corporation for failure to comply with a subpoena duces tecum. We conclude that the sanction was not proper under Fed.R.Civ.P. 45, because Sunkist had objected to discovery of the subpoenaed material and the district court had not ordered it to comply. Nor had the district court held a hearing to consider Sunkist’s objections to the propriety and reasonableness of the fee award.

FACTS

In the underlying action, Pennwalt sued Durand-Wayland, Inc. in the Northern District of Georgia for patent infringement. Durand-Wayland counterclaimed, asserting ownership of the patent by assignment from Sunkist.

Sunkist formerly employed a co-inventor of the patent, George A. Mills, and contractually retained ownership of inventions developed during his employment. Durand-Wayland believed that Mills had developed a similar device as a Sunkist employee, giving Sunkist a claim to the patent. It obtained a quitclaim assignment of any interest Sunkist had in the patent, promising to reconvey to Sunkist any rights in the patent it acquired in the Georgia…