1 2 3 4 5 6 UNITED STATES DISTRICT COURT 7 NORTHERN DISTRICT OF CALIFORNIA 8 9 ILLUMINA, INC., Case No. 18-cv-01662-SI

10 Plaintiff,

ORDER RE SEVENTH AND EIGHTH

11 v. DISCOVERY DISPUTE LETTERS

12 NATERA, INC., Re: Dkt. No. 177 Defendant. 13

14 15 Having reviewed the parties’ discovery dispute letters, the Court hereby orders the 16 following: 17 18 1. Illumina’s 30(b)(6) Deponent and Privileged Document: The Court orders 19 Illumina to produce the entire document that refreshed its 30(b)(6) deponent’s recollection because 20 the witness was provided the document during deposition preparation and he directly drew upon it 21 during his testimony. See Dkt. No. 177-3 at 31. Illumina produced a redacted version of the 22 document, revealing only portions regarding patent invalidity. This was improper and failed to 23 comply with the Court’s previous order. Dkt. No. 173. 24 Illumina relies on two cases in support of its position that it need only produce certain parts 25 of the document in question. Those cases both involve deponents reviewing files while testifying. 26 In Valvoline Instant Oil Change Franchising v. RFG Oil, Inc., a witness brought a timeline into a 27 1 deposition, which he used to refresh his memory on two occasions. Valvoline Instant Oil Change 2 Franchising v. RFG Oil, Inc., No. 12cv2079-GPC(KSC), 2014 U.S. Dist. LEXIS 199539, at *13 3 (S.D. Cal. May 16, 2014). The court only required disclosure of those sections read during the 4 deposition. Id. at *19. Here, Illumina’s witness did not read portions of a document during his 5 deposition but reviewed the entire document beforehand. 6 Similarly, in S & A Painting Co. v. O.W.B. Corp., the court limited production to sections of 7 notes read during a deposition. S & A Painting Co. v. O.W.B. Corp., 103 F.R.D. 407, 408 (W.D. Pa. 8 1984). That is not the case here. Because “broad disclosure has been ordered when deponents 9 review entire files prior to testifying,” Illumina must produce the entire email its deponent reviewed 10 before his deposition. Id. at 409. 11 Illumina also argues the court in Adidas Am., Inc. v. TRB Acquisitions Liab. Co. applied a 12 “middle-ground approach” to compel production of documents relied on by a 30(b)(6) witness. 13 Adidas Am., Inc. v. TRB Acquisitions Liab. Co., 324 F.R.D. 389, 399 (D. Or. 2017). The “middle- 14 ground approach” involved application of the Sporck factors subject to rebuttable presumptions 15 when certain elements were met. Id. Because this Court has already reached the conclusion that 16 the Sporck factors support disclosure of the entire document, Illumina must produce the document 17 without its redactions. 18 19 2. Illumina’s Request to File Discovery Dispute Letters Under Seal: 20 On February 19, 2020, plaintiff filed an administrative motion to file under seal the 21 Discovery Letter Regarding the Redacted Schwillinski document. Dkt. No. 177. In the 22 administrative motion to seal, plaintiff moves to seal portions of the discovery letter because it 23 “cites, quotes, and discusses material and testimony designated ‘Outside Attorney’s Eyes Only 24 Information.’” Id. at 2. However, a party’s designation of material as “confidential” is not enough 25 to establish a basis for sealing. N.D. Cal. Civ. L.R. 79-5 (Civil Local Rule 79-5(d)(1)(A) provides 26 that “[r]eference to a stipulation or protective order that allows a party to designate certain 27 documents as confidential is not sufficient to establish that a document, or portions thereof, are 1 otherwise in need of protection from public viewing. The portions of Mr. Schwillinski’s deposition 2 || quoted from do not discuss sensitive material — rather the testimony generally discusses Illumina’s 3 || position that it does not infringe the ‘592 patent, which is hardly a secret. Dkt. No. 177-3 at 3-4. 4 Therefore, the Court DENIES the motion to seal. 5 6 IT IS SO ORDERED. 7 Dated: March 2, 2020 Sin Mla 9

SUSAN ILLSTON

10 United States District Judge 11 a 12

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