1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 In re: Case No.: 3:19-cv-1589-LAB-AHG 12 SUBPOENA ON THIRD PARTIES ORDER:

ANTHONY INSOGNA AND __

13

DAVID GAY (1) GRANTING THIRD PARTIES

14 ANTHONY INSOGNA AND

DAVID GAY’S MOTION TO

15

QUASH SUBPOENAS;

16 (2) GRANTING IN PART AND 17

DENYING IN PART

18 DEFENDANTS’ MOTION TO

FILE DOCUMENTS UNDER

19 SEAL; and 20 (3) GRANTING THIRD PARTIES’ 21 MOTION TO FILE 22 DOCUMENTS UNDER SEAL. 23 ___________________________________ [ECF Nos. 1, 6, 14 ]

CELGENE CORPORATION,

24 Underlying action pending in the District Plaintiff, 25 Court of New Jersey: v. 26 Case No. 17-cv-3387-ES-MAH HETERO LABS LIMITED, et al., 27 Defendants. 28 1 1. MOTION TO QUASH SUBPOENAS (ECF No. 1) 2 Before the Court is Third Parties Anthony Insogna and David Gay’s (collectively, 3 “Third Parties”) Motion to Quash Subpoenas. ECF No. 1. The Third Parties ask the Court 4 to quash deposition subpoenas pursuant to Federal Rule of Civil Procedure 45(d)(3) served 5 on them by various defendants1 in a case currently pending in the District Court of New 6 Jersey. Defendants oppose the motion. ECF No. 9. The Court held a motion hearing on 7 December 20, 2019. ECF No. 18. After consideration of the papers submitted and the 8 parties’ oral arguments, for the reasons set forth below, the Court GRANTS the motion. 9 I. BACKGROUND 10 In a case currently pending in the District Court of New Jersey,2 Plaintiff Celgene 11 Corporation (“Plaintiff”) filed actions against Defendants, alleging patent infringement 12 arising from Defendants seeking FDA approval to market generic versions of Plaintiff’s 13 drug product, Pomalyst. ECF No. 1-2 at 2. There are five patents-in-suit, comprising two 14 families of related patents: (1) U.S. Patent Nos. 8,198,262, 8,673,939, and 8,735,428, 15 which are methods of treating multiple myeloma with pomalidomide; and (2) U.S. Patent 16 Nos. 8,828,427 and 9,993,467, which are directed to capsule formulations of 17 pomalidomide. ECF No. 7 at 6. Defendants contest infringement and validity of the 18 patents-in-suit. Id. For example, based on Plaintiff’s arguments and claim amendments 19 made during prosecution of the ’427 and ’467 patents in response to prior art rejections by 20 the Examiner, Defendants contend that Plaintiff is estopped from asserting infringement 21 under the doctrine of equivalents. Id. at 8. Defendants also argue that the ’427 and ’467 22 patents are invalid as obvious over the prior art. Id. at 10. 23

24 25 1 The defendants who served the subpoenas were Apotex Inc., Apotex Corp., Mylan Pharmaceuticals, Inc., Mylan Inc., Mylan N.V., and Teva Pharmaceuticals USA Inc. 26 (collectively, “Defendants”). ECF No. 1-3 at 4, 13. 27 2 Celgene Corp. v. Hetero Labs., et al., No. 17-3387 (ES)(MAH) (D. N.J.), hereinafter 28 referred to as the “underlying case.” 1 In the underlying case, Defendants noticed depositions of two attorneys who were 2 involved in the prosecution of the patents-in-suit subject to litigation, Third Parties, who 3 have presently moved the Court to quash the deposition subpoenas. See ECF No. 1-3 at 4, 4 9, 13, 18. Dr. Gay’s deposition was noticed for August 23, 2019; Mr. Insogna’s deposition 5 was noticed for August 26, 2019. Id. 6 Five years ago, Mr. Insogna was involved in the early prosecution of the application 7 that ultimately issued as asserted U.S. Patent Nos. 8,198,262 and 8,828,427 for Plaintiff. 8 ECF No. 1-2 at 5, 7. He was also the prosecuting attorney for one of Defendants’ primary 9 prior art references. ECF No. 7 at 6. He currently serves as litigation counsel for Plaintiff 10 in the underlying case. ECF No. 1-2 at 5. Dr. Gay served as a prosecuting attorney for 11 Plaintiff during the prosecution of the application that ultimately issued as asserted U.S. 12 Patent No. 9,993,467 for Plaintiff. Id. at 5, 7. He continues to represent Plaintiff in patent 13 prosecution matters. Id. at 5. 14 Third Parties contend that their depositions should be quashed because Defendants 15 seek testimony that is protected by attorney-client privilege and the work product doctrine. 16 ECF No. 1-2 at 7. Third Parties also argue that their depositions should be quashed because 17 their testimony is not relevant to any claim or defense, and thus imposes an undue burden. 18 Id. at 8. Additionally, Third Parties contend that their deposition testimony would 19 constitute unpermitted, unretained expert opinion. Id. at 10. 20 Defendants contend that depositions of Third Parties are necessary to glean 21 information about the submissions made to the Patent Office during prosecution, including 22 the facts underlying the arguments each made that are relevant to Plaintiff’s infringement 23 theory under the doctrine of equivalents. ECF No. 7 at 5. Defendants seek Third Parties’ 24 testimony “on the meaning of certain arguments and amendments made during prosecution 25 and the facts underlying those arguments and amendments.” Id. at 6. They also seek 26 testimony regarding the preparation of 2013 and 2018 declarations created by Plaintiff’s 27 Rule 30(b)(6) witness, Mr. Tutino. Id. at 11. Additionally, Defendants contend that Mr. 28 Insogna is uniquely in possession of knowledge relating to the underlying facts relating to 1 Plaintiff’s validity arguments that the patents-in-suit exhibit unexpected results. Id. at 5, 2 10. Further, Defendants contend that Mr. Insogna prosecuted one of Defendants’ prior art 3 patent applications, with claims to pomalidomide capsule formulations (one of which is 4 also Plaintiff’s), that Plaintiff attempts to discredit in the underlying case. Id. at 5, 12. 5 II. LEGAL STANDARD3 6 Pursuant to Federal Rule of Civil Procedure 45, “on timely motion, the court for the 7 district where compliance is required must quash or modify a subpoena that . . . requires 8 disclosure of privileged or other protected matter . . . or subjects a person to undue burden.” 9 FED. R. CIV. P. 45(d)(3)(A)(iii)–(iv). 10 In determining whether a subpoena poses an undue burden, courts must weigh “the 11 burden imposed on the party subject to the subpoena . . ., the relevance of the information 12 sought to the claims or defenses at issue, the breadth of the discovery request, and the 13 litigant’s need for the information.” Malibu Media, LLC v. Doe, No. 16cv444-GPC-BGS, 14 2016 WL 7098807, at *1 (S.D. Cal. Dec. 6, 2016) (quoting Liberty Media Holdings v. Does 15 1–62, No. 11cv575-MMA-NLS, 2012 WL 628309, at *2 (S.D. Cal. Feb. 24, 2012); see 16 Moon v. SCP Pool Corp., 232 F.R.D. 633, 637 (C.D. Cal. 2005) (though “irrelevance is not 17 among the litany of enumerated reasons for quashing a subpoena found in Rule 45, courts 18 have incorporated relevance as a factor when determining motions to quash a subpoena”). 19 Where discovery is requested from non-parties, more stringent restrictions should be 20 enforced. The Ninth Circuit has a long-standing policy of affording extra protection to non- 21 parties subject to discovery requests. See High Tech Med. Instr., Inc. v. New Image Ind., 22

23 3 The Federal Circuit has held that a motion to quash a subpoena generally does not involve 24 issues unique to patent law, and therefore regional law governs such motions. Trustwal 25 Sys. Corp. v. Hydro-Air Eng’g, Inc., 813 F.2d 1207, 1209 (Fed. Cir. 1987); see Utah Med. Prods., Inc. v. Graphic Controls Corp., 350 F.3d 1376, 1381 (Fed. Cir. 2003) (“The Federal 26 Circuit applies its own law with respect to issues of substantive patent law and certain 27 procedural issues pertaining to patent law, but applies the law of the regional circuits on non-patent issues”). The Court will therefore apply Ninth Circuit precedent in deciding the 28 1 Inc., 161 F.R.D. 86, 88 (N.D. Cal. 1995); see, e.g., Century Sur. Co. v. Master Design 2 Drywall, Inc., No. 09cv280-LAB-AJB, 2010 WL 2231890, at *1 (S.D. Cal. June 2, 2010) 3 (“Underlying the protections of Rule 45 is the recognition that the word ‘non-party’ serves 4 as a constant reminder of the reasons for the limitations that characterize ‘third-party’ 5 discovery.”) (citations and quotations omitted); Kim v. NuVasive, Inc., No. 11cv1370- 6 DMS-NLS, 2011 WL 3844106, *2 (S.D. Cal. Aug. 29, 2011) (“Non-parties deserve extra 7 protection from the courts”). Thus, the subpoena should be tailored to request only 8 information reasonably necessary to address specific issues in the case. See Mattel, Inc. v. 9 Walking Mountain Productions, 353 F.3d 792, 813 (9th Cir. 2003). 10 Deposing opposing counsel raises additional concerns as its “increasing practice . . 11 . [is] a negative development in the area of litigation, and one that should be employed only 12 in limited circumstances.” Shelton v. Am. Motors Corp., 805 F.2d 1323, 1327 (8th Cir. 13 1986). Permitting depositions of opposing counsel “not only disrupts the adversarial 14 system and lowers the standards of the profession, but it also adds to the already 15 burdensome time and costs of litigation.” Id. at 1327. The Eighth Circuit has set out a three- 16 part test for determining when it is appropriate to depose opposing counsel that is followed 17 by courts in the Ninth Circuit.4 Shelton, 805 F.2d at 1327. Therefore, opposing counsel 18 19 20 4 Although the Ninth Circuit has not issued a published decision addressing whether 21 Shelton provides the proper framework for determining when an attorney deposition is proper, “courts in this district and elsewhere in the Ninth Circuit recognize Shelton as the 22 leading case on attorney depositions and follow the three-factor test laid out in the case.” 23 Stevens v. CoreLogic, Inc., No. 14cv1158-BAS-JLB, 2015 WL 8492501, at *2 (S.D. Cal. Dec. 10. 2015); Erhart v. Bofi Fed. Bank, No. 15cv2287-BAS-NLS, 2017 WL 840648, at 24 *3 (S.D. Cal. Mar. 2, 2017) (noting that “several other circuits and this district” have 25 adopted the Shelton test); see, e.g., Walters v. Target Corp., No. 16cv1678-L-MDD, 2018 U.S. Dist. LEXIS 170409, at *2–3 (S.D. Cal. Oct. 2, 2018); Textron Fin. Corp. v. Gallegos, 26 No. 15cv1678-LAB-DHB, 2016 WL 4169128, at *2 (S.D. Cal. Aug. 5, 2016); Townsend 27 v. Imperial Cty., No. 12cv2739-WQH-PCL, 2014 WL 2090689, at *2 (S.D. Cal. May 19, 2014); Chao v. Aurora Loan Servs., LLC, No. C 10-3118 SBA (LB), 2012 WL 5988617, 28 1 may be deposed if the party seeking the deposition establishes: 2 (1) no other means exist to obtain the information than to depose opposing counsel, []; (2) the information sought is relevant and nonprivileged; and 3 (3) the information is crucial to the preparation of the case. 4 Id. at 1327 (internal citation omitted). Generally, the burden of persuasion is on the party 5 moving to quash the subpoena. Luck v. Univ. of San Diego, No. 13cv3088-JLS-BGS, 2014 6 WL 7111950, at *2 (S.D. Cal. Oct. 3, 2014). Shelton, however, shifts the burden to the 7 party seeking the deposition. Erhart, 2017 WL 840648, at *3–*4 (citing Shelton, 805 F.2d 8 at 1327). Accordingly, Defendants must demonstrate that Third Parties’ deposition 9 testimony is justified under Shelton. 10

III. DISCUSSION

11 Courts have declined to apply Shelton when the proposed deponent is not trial or 12 litigation counsel in the underlying case. Pamida, Inc. v. E.S. Originals, Inc., 281 F.3d 726, 13 730–31 (8th Cir. 2002) (“the protection Shelton provides to opposing counsel only applies 14 because opposing counsel is counsel in the instant case and not because opposing counsel 15 had represented the client in the concluded case”); see, e.g., Sterne Kessler Goldstein & 16 Fox, PLLC v. Eastman Kodak Co., 276 F.R.D. 376, 379 (D.D.C. 2011); United States v. 17 Philip Morris, Inc., 209 F.R.D. 13, 17 (D.D.C. 2002). Here, Mr. Insogna currently serves 18 as litigation counsel for Plaintiff in the underlying case. ECF No. 1-2 at 5. However, though 19 Dr. Gay continues to represent Plaintiff in patent prosecution matters, he is not Plaintiff’s 20 counsel in the underlying case. Id. at 5, 7. 21 In their oral argument, Defendants argued that the Shelton test should not apply to 22 Mr. Insogna because, though he is litigation counsel for Plaintiff in the underlying case, he 23 has not been actively involved, citing his absence during court proceedings and a lack of 24 email correspondence. Defendants cited three out-of-district cases in support of their 25 argument; however, these are not persuasive to this Court. See WMH Tool Group, Inc. v. 26 Woodstock Int’l, Inc, No. 07cv3885, 2009 WL 89935, at *6 (N.D. Ill. Jan. 14, 2009) (a 27 trademark infringement case from a district court in the Seventh Circuit that relies on 28 1 precedent in its district in declining to adopt Shelton); Genal Strap, Inc. v. Dar, No. cv2004- 2 1691-SJ-MDG, 2006 WL 525794, at * 4 (E.D.N.Y. Mar. 3, 2006) (a case in a district court 3 in the Second Circuit, where the plaintiff invoked an inequitable conduct defense to a patent 4 infringement counterclaim, that does not address the applicability of Shelton); Alcon Labs 5 v. Pharmacia Corp., 225 F. Supp. 2d 340, 343 (S.D.N.Y 2002) (a patent infringement case 6 where the defendant invoked the inequitable conduct defense, from a district court in the 7 Second Circuit, which expressly declined to address whether Shelton was the correct 8 standard, and in fact used the Shelton standard in its analysis). Further, Mr. Insogna and 9 other members of the same law firm are trial counsel for Plaintiff in the underlying case. 10 The Court finds instructive a case that applied the Shelton factors to an attorney who was 11 not trial counsel, but who belonged to the same law firm as trial counsel, noting the burden 12 on litigation as well as the concern that his law partners may have to discontinue 13 representation should he be called as a witness. Marco Island Partners v. Oak Dev. Corp., 14 117 F.R.D. 418, 420 (N.D. Ill. 1987). 15 Therefore, this Court will apply the Shelton factors to Mr. Ignogna’s deposition, and 16 the traditional Rule 45 test to Dr. Gay’s deposition. 17 A. Mr. Insogna 18 Defendants seek Mr. Insogna’s deposition testimony as to the submissions made to 19 the Patent Office during prosecution, including the facts Defendants claim are relevant to 20 Plaintiff’s infringement theory under the doctrine of equivalents. ECF No. 7 at 5. 21 Specifically, they seek his testimony regarding the meaning of certain arguments and 22 amendments made during prosecution, and the facts underlying those arguments and 23 amendments. Id. Defendants also seek Mr. Insogna’s testimony regarding the underlying 24 facts relating to Plaintiff’s validity arguments that the patents-in-suit exhibit unexpected 25 results. Id. Specifically, Defendants seek Mr. Insogna’s testimony regarding how Mr. 26 Tutino’s declarations were prepared and where the data in his declaration came from. Id. 27 at 10. To compel Mr. Insogna’s deposition, Defendant must show: (1) there are no other 28 means to obtain the information; (2) the information is relevant and non-privileged; and, 1 (3) the information is crucial to the preparation of the case. See Shelton, 805 F.2d at 1327. 2 1. Other Means to Obtain the Information 3 First, Defendants must show the information they seek from Mr. Insogna cannot be 4 obtained through other means. Shelton, 805 F.2d at 1327. 5 Defendants assert that the ’427 and ’467 patents are invalid as obvious over the prior 6 art, including prior art formulations of pomalidomide. ECF No. 7 at 10. In response to 7 Defendants’ invalidity argument, Plaintiff has asserted that the formulations claimed by 8 the ’427 and ’467 patents “unexpectedly yielded a stable formation.” Id. Defendants argue 9 that the basis for these unexpected results is described in two declarations by Anthony 10 Tutino, the inventor, which set out Plaintiff’s formulation development efforts. Id. Thus, 11 Defendants seek information as to how Mr. Tutino’s declarations were prepared and the 12 source of the data in his declaration. Id. 13 Defendants contend that Mr. Tutino was not able to answer their questions on these 14 subjects fully during his deposition, citing numerous “I don’t know” responses. Id. at 11. 15 Defendants also contend that they tried to get the information via another avenue, 16 Plaintiff’s Rule 30(b)(6) witness, but that Plaintiff responded that the proposed deposition 17 topics regarding Mr. Tutino’s declarations “seek[] information not in [Plaintiff]’s 18 possession, custody, or control.”5 ECF No. 7 at 10. Therefore, Defendants argue that 19 deposing Mr. Insogna (and Dr. Gay) is the only means to glean information about the 20 preparation of the declarations and their factual underpinnings. Id. 21 The information Defendants seek from Mr. Insogna can be obtained through other 22 means, including discovery methods that would be more efficient than third-party 23 depositions regarding events that happened many years ago. Defendants acknowledged at 24 oral argument that they sought this information through interrogatories and requests for 25

26 27 5 Plaintiffs also objected to that request with a plethora of other boilerplate objections, such as attorney-client privilege, work product, immunity, relevance, undue burden, vagueness, 28 1 productions to Plaintiff, but do present evidence that they were unable to obtain necessary 2 information from these methods. There is a Special Master appointed in the underlying 3 case, and it does not appear that Defendants made an effort to compel further responses or 4 documents using the Special Master in the underlying litigation. Moreover, obtaining 5 information from many years ago through the testimony of a third-party witness does not 6 appear to be an efficient method to achieve Defendants’ stated goals. 7 Therefore, the Court finds that Defendants have not met their burden of showing that 8 the information they seek from Mr. Insogna cannot be obtained through other means. 9 2. Status of the Information as to Relevance and Privilege 10 Second, Defendants must show the information they seek from Mr. Insogna is both 11 relevant and non-privileged. Shelton, 805 F.2d at 1327. 12 i. Relevance 13 Courts have broad discretion to determine relevance for discovery purposes. Doherty 14 v. Comenity Capital Bank, No. 16cv1321-H-BGS, 2017 WL 1885677, at *2 (S.D. Cal. May 15 9, 2017) (citing Hallett v. Morgan, 296 F.3d 732, 751 (9th Cir. 2002)); see also Youngevity 16 Int’l, Inc. v. Smith, No. 16cv704-BTM-JLB, 2017 WL 2692928, at *10–*11 (S.D. Cal. 17 June 22, 2017). When analyzing relevance, Rule 26(b) no longer limits discovery to 18 information “reasonably calculated to lead to the discovery of admissible evidence.” In Re 19 Bard IVC Filters Prods. Liab. Litig., 317 F.R.D. 562, 563–64, 564 n.1 (D. Ariz. 2016) 20 (discussing the 2015 amendments to the Federal Rules of Civil Procedure and the advisory 21 committee’s explicit removal of the phrase “reasonably calculated,” and listing cases that 22 continue to use the outdated pre-2015 standard). The relevance standard is commonly 23 recognized as one that is necessarily broad in scope in order “to encompass any matter that 24 bears on, or that reasonably could lead to other matter that could bear on, any issue that is 25 or may be in the case.” Doherty, 2017 WL 1885677, at *2 (internal quotation omitted). 26 Regardless of its broad nature, however, relevance is not without “ultimate and necessary 27 boundaries.” Id. Thus, courts often link the elements of a cause of action with the discovery 28 sought. 1 In the underlying case, Defendants contest Plaintiff’s doctrine of equivalents 2 infringement theory, as well as the validity of its formulation patents. 3 a. Defendants have not Demonstrated the Relevance of Mr. 4 Insogna’s testimony to Defendants’ Prosecution History Estoppel Defense or Prior Art Estoppel Defense to 5 Plaintiff’s Doctrine of Equivalents Infringement Theory 6 The doctrine of equivalents is sometimes applied in patent cases “to enable the 7 claims of a patent to cover products not within the literal scope of the claim if the product 8 only differs insubstantially from the claim language.” Biovail Corp. Int’l v. Andrx 9 Pharmaceuticals, Inc., 158 F. Supp. 2d 1318, 1329 (S.D. Fla. 2000) (citing Davis Chem. 10 Co. v. Warner Jenkenson Co., 62 F.3d 1512 (Fed. Cir. 1996)). One way to show an 11 insubstantial difference is that “two [drugs] do the same work in substantially the same 12 way, and accomplish substantially the same result.” Warner-Jenkinson Co. v. Hilton Davis 13 Chem. Co., 520 U.S. 17, 35 (1997). “If equivalence appears, infringement will be found 14 unless (1) arguments or amendments made by applicant during prosecution (prosecution 15 history estoppel) estop the patentee from asserting a range of equivalence broad enough to 16 encompass the accused product or process; or (2) the equivalent device is within the public 17 domain, i.e., found in the prior art[.]” Perkin-Elmer Corp. v. Computervision Corp., 732 18 F.2d 888, 900 (Fed. Cir. 1984) (citing Carman Indus. v. Wahl, 724 F.2d 932, 942 (Fed. Cir. 19 1983)). 20 First, actions taken by a patentee during the prosecution history act as legal limits on 21 the application of the doctrine of equivalents. “‘The doctrine of prosecution history 22 estoppel limits the doctrine of equivalents when an applicant makes a narrowing 23 amendment for purposes of patentability, or clearly and unmistakably surrenders subject 24 matter by arguments made to an examiner.’” Am. Calcar, Inc. v. Am. Honda Motor Co., 25 No. 06cv2433-DMS-CAB, 2008 WL 8990989, at *10 (S.D. Cal. Apr. 4, 2008) (quoting 26 Aquatex Indus., Inc. v. Techniche Solutions, 419 F.3d at 1374, 1382 (Fed. Cir. 2005)); see 27 also Voda v. Cordis Corp., 536 F. 3d 1311, 1324–25 (Fed. Cir. 2008) (explaining that 28 1 prosecution history estoppel operates by “barring an equivalents argument for subject 2 matter relinquished when a patent claim is narrowed during prosecution.”); Desper Prods. 3 Inc. v. QSounds Labs. Inc., 157 F.3d 1325, 1338 (Fed. Cir. 1998) (explaining that 4 unequivocal assertions or arguments made during the prosecution of a patent create an 5 estoppel which bars application of the doctrine of equivalents). Thus, prosecution history 6 estoppel works to “exclude[e] the range of equivalents subject matter surrendered during 7 prosecution of the application for patent. This estoppel may arise from matter surrendered 8 as a result of amendments to overcome patentability rejections, or as a result of argument 9 to secure allowance of a claim.” Biovail, 158 F. Supp. 2d at 1329 (citing Sextant Avionique 10 S.A. v. Analog Devides, Inc., 172 F.3d 817, 826 (Fed. Cir. 1990)). For estoppel to apply, 11 “such assertions in favor of patentability must evince a clear and unmistakable surrender 12 of subject matter.” Pharmacia & Upjohn Company v. Mylan Pharmaceuticals, Inc., 170 13 F.3d 1373, 1377 (Fed. Cir. 1999) (internal quotation omitted). 14 Second, the doctrine of equivalents is limited by prior art estoppel, which mandates 15 “that the asserted range of equivalents [] not encompass the prior art at the very point at 16 which the claims distinguish from that art[,] . . . which prevents the doctrine of equivalents 17 from expanding the scope of claims to protect subject matter in, or obvious in light of, the 18 prior art.” Biovail, 158 F. Supp. 2d at 1329 (citing Athletic Alternatives, Inc. v. Prince Mfg. 19 Inc., 73 F.3d 1573, 1582 (Fed. Cir. 1996)). 20 Here, Defendants have failed to demonstrate that Mr. Insogna’s testimony as to the 21 “meaning of certain arguments and amendments made during prosecution,” (see ECF No. 22 7 at 7), is relevant to Defendants’ prosecution estoppel defense or prior art estoppel defense 23 to Plaintiff’s doctrine of equivalents infringement theory. As Defendants further explained 24 during oral argument, they seek Mr. Insogna’s reasons for the amendments and the scope 25 of his disclaimers. The prosecution history of each of the disputed patents is publicly- 26 available in its entirety. The same is true for the ’791 publication identified in Defendants’ 27 Opposition. “The prosecution histories speak for themselves, and the relevant inquiry in 28 1 terms of prior art and claim construction is how one of ordinary skill in the art would 2 interpret and understand those prosecution histories, not what [the party]’s litigation 3 counsel thinks about them.” ResQNet.com, Inc. v. Lansa, Inc., No. 01Civ3578(RWS), 2004 4 WL 1627170, at *5 (S.D.N.Y. July 23, 2004) (citing Vitronics Corp. v. Conceptronic, Inc., 5 90 F.3d 1576, 1585 (Fed. Cir. 1996)). Defendants have not adequately demonstrated how 6 Mr. Insogna’s testimony is necessary or relevant beyond the prosecution history. 7 b. Defendants have Failed to Demonstrate that Mr. 8 Insogna’s testimony is Relevant to Defendants’ Validity Arguments 9 “An alleged infringer may assert the invalidity of the patent--that is, he may attempt 10 to prove that the patent never should have issued in the first place. [] A defendant may 11 argue, for instance, that the claimed invention was obvious at the time and thus that one of 12 the conditions of patentability was lacking.” Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 13 91, 96 (2011) (internal citation omitted). The “same factual questions underlying the PTO’s 14 15 16 6 Of note, Defendants have cited a case that explains that a prosecuting attorney’s testimony 17 could be relevant as expert testimony as to what a “person with skills in the art” would understand, if a meaning of a claim term is not immediately apparent. Bayer Healthcare, 18 LLC v. Zoetis Inc., No. 12-C-630, 2016 WL 4179087, at *10 (N.D. Ill. 2016) (noting that 19 “dictionaries, treatises, expert testimony, and inventor testimony” could be helpful, explaining that “given the overarching interpretive principle—what the claim term means 20 to an ordinary-skilled artisan—it should come as no surprise that explanations of how an 21 expert would interpret a claim are sometimes worth considering,” and also warning courts to be “wary of evidence that is clearly at odds with the claim construction mandated by the 22 claims themselves, the written description, and the prosecution history, in other words, with 23 the written record of the patent.”) (internal quotations omitted); see also Biovail, 158 F. Supp. 2d at 1323 (a second case that Defendants cited, which noted that “the Court 24 principally looks to the claims made in the patent, the specifications, and the prosecution 25 history. Only if these are ambiguous, does the Court look to extrinsic evidence, such as expert affidavits or declarations.”) (citing Vitronics, 90 F.3d at 1582). However, in 26 response to Third Parties’ contention that Defendants were indeed seeking such expert 27 opinion, (see ECF No. 1 at 10–11), Defendants argued that they are not seeking expert testimony from Mr. Insogna or Dr. Gay and are instead seeking factual percipient 28 1 original examination of a patent application will also bear on an invalidity defense in an 2 infringement action.” Id. 3 Obviousness is a legal question based on underlying factual determinations. Eisai 4 Co. Ltd. v. Dr. Reddy’s Lab., Ltd., 533 F.3d 1353, 1356 (Fed. Cir. 2008). “The factual 5 determinations underpinning the legal conclusion of obviousness include 1) the scope and 6 content of the prior art, 2) the level of ordinary skill in the art, 3) the differences between 7 the claimed invention and the prior art, and 4) evidence of secondary factors.” Seirus 8 Innovative Accessories, Inc. v. Gordini U.S.A. Inc., 849 F. Supp. 2d 963, 970 (S.D. Cal. 9 2012) (quoting Eisai, 533 F.3d at 1356). Secondary factors include “commercial success, 10 long felt but unsolved needs, failure of others, etc.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 11 398, 406 (2007). 12 Here, Defendants have failed to show how Mr. Insogna’s testimony “on the scope 13 of the D’Mato prior art,” (see ECF No. 7 at 11), is relevant to Defendants’ assertion that 14 Plaintiff’s patent is invalid as obvious over the prior art. A person of ordinary skill 15 interprets the prior art “using common sense and appropriate perspective.” Unigene Labs., 16 Inc. v. Apotex, Inc., 655 F.3d 1352, 1361 (Fed. Cir. 2011) (citing KSR Int'l, 550 U.S. at 17 421). An attorney’s opinion or information on the scope would be irrelevant. Prosecution 18 history of the patents is publicly-available in its entirety, Mr. Insogna’s prosecution of the 19 D’Amato prior art speaks for itself. Thus, Defendants have failed to show how Mr. 20 Insogna’s testimony on this subject would be relevant. 21 ii. Privilege 22 The attorney-client privilege protects confidential communications between a client 23 and an attorney from disclosure 24 (1) [w]here legal advice of any kind is sought (2) from a professional legal adviser in his capacity as such, (3) the communications relating to that 25 purpose, (4) made in confidence (5) by the client, (6) are at his instance 26 permanently protected (7) from disclosure by himself or by the legal adviser, (8) unless the protection be waived. 27

28 United States v. Graf, 610 F.3d 1148, 1156 (9th Cir. 2010). “When determining whether a 1 document seeks legal advice, courts have examined the nature, content, and context in 2 which the document was prepared.” LightGuard Systems, Inc. v. Spot Devices, Inc., 281 3 F.R.D. 593, 593 (D. Nev. 2012); see also Citizens Dev. Corp. v. Cty. of San Diego, No. 4 12cv334-GPC-KSC, 2019 WL 172469, at *9 (S.D. Cal. Jan. 11, 2019). Also, whether the 5 attorney-client privilege applies should be determined on a case-by-case basis. See Upjohn 6 Co. v. United States, 449 U.S. 383, 386 (1981). 7 While the attorney-client privilege “protects the confidentiality of communications 8 between attorney and client made for the purpose of obtaining legal advice[,]” the work 9 product privilege “‘protects the attorney’s thought processes and legal recommendations.’” 10 Genentech, Inc. v. U.S. Int’l Trade Comm’n, 122 F.3d 1409, 1415 (Fed. Cir. 1997) (quoting 11 Zenith Radio Corp. v. United States, 764 F.2d 1577, 1580 (Fed. Cir. 1985)). Specifically, 12 the work-product privilege protects from disclosure “documents and tangible things that 13 are prepared in anticipation of litigation or for trial by or for another party or its 14 representative (including the other party’s attorney, consultant, surety, indemnitor, insurer, 15 or agent).” FED. R. CIV. P. 26(b)(3)(A). The phrase “in anticipation of litigation” has both 16 temporal and motivational components. Equal Rights Center v. Post Properties, Inc., 247 17 F.R.D. 208, 208 (D.D.C. 2008). First, at the time the document was prepared, the attorney 18 must have had a subjective belief that litigation was a real possibility, and that belief must 19 have been objectively reasonable. Id. Second, the party claiming the privilege must 20 demonstrate that in light of the nature of the document and the factual situation in the 21 particular case, the document can fairly be said to have been prepared or obtained because 22 of the prospect of litigation. Id.; see also Citizens Dev. Corp, 2019 WL 172469, at *9. 23 Additionally, there are two kinds of work product: ordinary work product and opinion work 24 product. 25 Ordinary work product includes raw factual information. Opinion work product includes counsel’s mental impressions, conclusions, opinions or legal 26 theories. Ordinary work product is not discoverable unless the party seeking 27 discovery has a substantial need for the materials and the party cannot obtain the substantial equivalent of the materials by other means. [] In contrast, 28 1 opinion work product enjoys almost absolute immunity and can be discovered only in very rare and extraordinary circumstances, such as when the material 2 demonstrates that an attorney engaged in illegal conduct or fraud. 3 O'Connor v. Boeing N. Am., Inc., 216 F.R.D. 640, 642 (C.D. Cal. 2003) (quoting Baker v. 4 GMC, 209 F.3d 1051, 1054 (8th Cir. 2000)). 5 Here, Defendants seek Mr. Insogna’s testimony regarding the “meaning of certain 6 arguments and amendments made during prosecution.” ECF No. 7 at 6. These mental 7 impressions are clearly opinion work product. “[F]acts are discoverable if relevant. The 8 document prepared by the lawyer stating the facts is not discoverable absent a showing 9 required by Federal Rule of Civil Procedure 26(b)(3). Mental impressions of the lawyer 10 regarding the facts enjoy nearly absolute immunity.” Pastrana v. Local 9509, Communs. 11 Workers of Am., No. 6cv1779-W-AJB, 2007 WL 2900477, at *4 (S.D. Cal. Sept. 28, 2007) 12 (citing In Re Murphy, 560 F.2d 326, 336 (8th Cir. 1977)). Likewise in this case, the facts 13 (i.e., the prosecution history) are publicly available; however, Mr. Insogna’s mental 14 impressions about those facts are privileged. 15 During oral argument, Defendants contended that the attorneys’ actions during the 16 prosecution process were not “in anticipation of litigation,” as the work product doctrine 17 requires. Defendants did not address Third Parties’ response that, if not work product, his 18 testimony still would be privileged. The Court recognizes that some courts have found that 19 the work product doctrine does not blanketly apply to patent prosecution work “because 20 patent prosecution is not an adversarial, litigation-type proceeding, but a wholly ex parte 21 proceeding before the PTO.” Cave Consulting Grp., Inc. v. OptumInsight, Inc., No. 22 15cv3424-JCS, 2016 WL 7475820, at *10 (N.D. Cal. Dec. 29, 2016). However, after the 23 Supreme Court noted that the preparation and prosecution of patent applications constitutes 24 the practice of law, courts have since “looked to the Sperry case as a basis for the theory 25 that patent prosecution is subject to the attorney-client privilege.” Sterne, Kessler, 26 Goldstein, & Fox PLLC v. Edwards Lifesciences Corp., No. 13-48-ABJ/JMF, 2013 U.S. 27 Dist. LEXIS 202612, *9 (D.D.C. Apr. 16, 2013) (citing Sperry v. Florida, 373 U.S. 379, 28 1 383 (1963)). Further, even if long in the past, “[w]here materials prepared during patent 2 prosecution were created with an eye towards litigation, [] they can fall within the scope of 3 the work product doctrine.” Cave Consulting Grp., 2016 WL 7475820, at *10 (noting that 4 the “deluge of infringement litigation that commenced” showed that the application was 5 conducted with an eye towards litigation) (internal quotation omitted); cf. In re Method of 6 Processing Ethanol Byproducts & Related Subsystems ’858 Patent Litig, No. 10ml2181- 7 LJM-DML, 2014 WL 2938183, at *9 (S.D. Ind. June 20, 2014) (noting that other courts 8 “have implicitly assumed that requests to discover the mental impressions of patent 9 prosecution counsel [] by deposition of the patent lawyer seek work product,” but 10 permitting such discovery because the need for the information, in an inequitable conduct 11 case, was crucial). 12 Here, Defendants seek information as to how the inventor’s declarations were 13 prepared, the source of data in his declaration, Mr. Insogna’s reasons for the amendments 14 and the scope of his disclaimers, and the meaning of certain arguments and amendments 15 made during prosecution. ECF No. 7 at 6, 10–11. During oral argument, Defendants 16 stressed that they seek only factual underpinnings; but “even the most technical 17 communications between inventor and attorney may be privileged if they are ‘prepared to 18 provide the patent attorney with the information necessary to assess the invention’s 19 patentability, prepare and file a patent application, … and prosecute the patent application 20 through the Patent Office.’” In Re Gabapentin Patent Litig., 214 F.R.D. 178, 182 (D.N.J. 21 2003) (quoting Knogo Corp v. United States, No. 194-79, 1980 U.S. Ct. Cl. LEXIS 1262, 22 at *10 (1980)) (ellipsis in original); see In Re Spalding Sports Worldwide, 203 F.3d 800, 23 806 (Fed. Cir. 2000) (holding that invention record was privileged in its entirety because it 24 “was prepared and submitted primarily for the purpose of obtaining legal advice on 25 patentability and legal services in preparing a patent application”); see also Sterne Kessler, 26 276 F.R.D. 276, 384–85 (“Simply claiming that an opposing party’s former counsel has 27 ‘non-privileged, factual information’ without stating precisely what information is sought 28 or the benefit of that information is insufficient to overcome the potential risks that the 1 Federal Rules were intended to protect against”). Here, the Court finds that the evidence 2 suggests that the testimony sought from Mr. Insogna is privileged. 3 3. Importance of the Information to Preparation of the Case 4 Third, Defendants must establish that Mr. Insogna’s deposition testimony is crucial 5 to the preparation of their case. Shelton, 805 F.2d at 1327. The Court’s finding that 6 Defendants have failed to demonstrate that his testimony is relevant serves to confirm that 7 the testimony is also not crucial to preparation of the case. 8 4. Conclusion regarding Mr. Insogna 9 The Court finds that Defendants have not established the three Shelton factors with 10 regard to Mr. Insogna’s testimony. Thus, the Court GRANTS the motion to quash the 11 subpoena as to Mr. Insogna. 12 B. Dr. Gay 13 Defendants seek Dr. Gay’s deposition testimony as to the submissions made to the 14 Patent Office during prosecution, including the facts Defendants claim are relevant to 15 Plaintiff’s infringement theory under the doctrine of equivalents. ECF No. 7 at 5. 16 Specifically, they seek his testimony regarding the meaning of certain arguments and 17 amendments made during prosecution, and the facts underlying those arguments and 18 amendments. Id. 19 Though neither the Federal Rules of Civil Procedure nor the Federal Rules of 20 Evidence prohibit the taking of attorney depositions, the practice is nonetheless 21 discouraged. Stevens, 2015 WL 8492501, at *2. Since the Court has deemed that the 22 Shelton test does not apply to Dr. Gay, the Court will examine whether the deposition 23 subpoena of Dr. Gay (1) “requires disclosure of privileged or other protected matter” or (2) 24 “subjects a person to undue burden.” FED. R. CIV. P. 45(d)(3)(A)(iii)–(iv). The Court will 25 address these in turn. 26 1. Privilege 27 As discussed at length above regarding Mr. Insogna’s testimony, the “meaning of 28 certain arguments and amendments [Dr. Gay] made during prosecution,” (see ECF No. 7 1 at 6), are privileged mental impressions. See, e.g., In Re Spalding Sports Worldwide, 203 2 F.3d at 806; Pastrana, 2007 WL 2900477, at *4; In re Gabapentin Patent Litig., 214 F.R.D. 3 at 182; O’Connor, 216 F.R.D. at 642. 4 2. Undue Burden 5 Even if the Court found that Dr. Gay’s testimony was not privileged, his subpoena 6 should still be quashed because it poses an undue burden. In determining whether a 7 subpoena poses an undue burden on Dr. Gay, this Court will weigh (1) the burden imposed 8 on the party subject to the subpoena, (2) the relevance of the information sought to the 9 claims or defenses at issue, (3) the breadth of the discovery request, and (4) the Defendants’ 10 need for the information. See Malibu Media, 2016 WL 7098807, at *1; Moon, 232 F.R.D. 11 at 637. 12 As with Mr. Insogna’s testimony, Defendant have failed to explain how Dr. Gay’s 13 testimony is relevant. For example, the prosecution history of each of the disputed patents 14 is publicly-available in its entirety. The same is true for the ’791 publication identified in 15 Defendants’ Opposition. “The prosecution histories speak for themselves, and the relevant 16 inquiry in terms of prior art and claim construction is how one of ordinary skill in the art 17 would interpret and understand those prosecution histories, not what [the party]’s litigation 18 counsel thinks about them.” ResQNet.com, 2004 WL 1627170, at *5. 19 Defendants have also not established enough need to outweigh the burden on Dr. 20 Gay.7 Deposing Dr. Gay will undoubtedly increase “the already burdensome time and costs 21 of litigation” by creating “additional pretrial delays to resolve work-product and attorney- 22 client objections.” Shelton, 805 F.2d at 1327; see, e.g., Sterne Kessler, 276 F.R.D. at 384– 23 85 (“counsel depositions carry the substantial potential of spawning litigation over 24 collateral issues related to assertion of privilege, scope, and relevancy, that only end up 25

26 27 7 The Court also finds that, had it analyzed Mr. Insogna’s subpoena under the same framework, the subpoena would impose an undue burden on Mr. Insogna for the same 28 1 imposing additional pretrial delays and costs on both parties and burdens on the courts to 2 resolve work-product and privilege objections”); Marco Island Partners, 117 F.R.D. at 420 3 (noting the burden of delay and cost of deposing opposing counsel, as well as the potential 4 of being forced to discontinue representation due to conflict of interest if the attorney was 5 called as a witness). Defendants do not address these concerns. 6 When attorney depositions are sought, courts should also consider “all of the 7 relevant facts and circumstances to determine whether the proposed deposition would 8 entail an inappropriate burden or hardship.” Sterne Kessler, 276 F.R.D. at 384–85 (internal 9 quotation omitted). For example: 10 Deposing a party’s former counsel on the same matter at issue in the pending litigation should not be done lightly. Simply claiming that an opposing party’s 11 former counsel has ‘non-privileged, factual information’ without specifying 12 precisely what information is sought or the benefit of that information is insufficient to overcome the potential risks that the Federal Rules were 13 intended to protect against. 14 Id. Further, “[a]llowing depositions of opposing counsel, even if these depositions were 15 limited to relevant and non-privileged information, may disrupt the effective operation of 16 the adversarial system[.]” Id. at 380–81. 17 The Court’s second concern is heightened given the litigation history of the 18 underlying case: “deposition[s] [of opposing counsel] present a unique opportunity for 19 harassment.” Marco Island Partners, 117 F.R.D. at 420 (stating that a deposition of an 20 attorney who was not litigation counsel in the instant case, but whose firm represented the 21 party, would “disrupt[] the opposing attorney’s preparation for trial, and could ultimately 22 lead to disqualification of opposing counsel if the attorney is called as a trial witness”); see 23 also Sterne Kessler, 276 F.R.D. at 381–82 (stating the court’s concern that “depositions [of 24 opposing counsel] may lead to the disqualification of counsel who may be called as 25 witnesses”). Here, Defendants have not overcome the burdens weighing against deposing 26 Dr. Gay. 27 3. Conclusion regarding Dr. Gay 28 1 testifying would impose an undue burden. Thus, the Court GRANTS the motion to quash 2 the subpoena as to Dr. Gay. 3 C. Additional Considerations 4 The Federal Circuit has noted that 80% of patent infringement cases include 5 allegations of inequitable conduct. Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 6 1276, 1289 (Fed. Cir. 2011). “To prevail on the defense of inequitable conduct, the accused 7 infringer must prove that the applicant misrepresented or omitted material information with 8 the specific intent to deceive the PTO. The accused infringer must prove both elements— 9 intent and materiality—by clear and convincing evidence.” Id. at 1287. Understandably, in 10 cases where inequitable conduct is alleged, courts are more willing to permit depositions 11 of opposing counsel, since their intent and mental state during the patent prosecution are 12 directly at issue. See V. Mane Fils, S.A. v. Int’l Flavors & Fragrances Inc., No. 06- 13 2304(FLW), 2008 WL 3887621, at *3 (D.N.J. Aug. 20, 2008) (permitting deposition of 14 patent prosecution counsel because “mental impressions of the prosecuting patent attorney 15 are not only relevant, but possibly crucial, to an inequitable conduct defense in subsequent 16 litigation over that patent”). 17 Here, however, Defendants do not allege an inequitable conduct defense. Yet, the 18 cases Defendants cite for the proposition that courts “routinely” depose opposing counsel 19 overwhelmingly include those where an inequitable conduct defense is at issue. See, e.g., 20 ECF No. 7 at 7, 17 (citing V. Mane Fils, S.A. v. Int’l Flavors & Fragrances Inc., an 21 inequitable conduct case, for the proposition that “[d]epositions of an opposing party’s 22 patent prosecution counsel are routine in patent litigation”); ECF No. 7 at 7 (citing Vita- 23 Mix Corp. v. Basic Holdings, Inc., an inequitable conduct case, for the proposition that 24 “depositions of attorneys in patent infringement and invalidity suits are not unusual”); ECF 25 No. 7 at 9 (citing Genal Strap, Inc. v. Dar, an inequitable conduct case, for the proposition 26 that “information about such patent prosecution actions, as well as the underlying facts, are 27 discoverable and appropriately sought by deposing patent prosecution counsel”); ECF No. 28 7 at 13 (citing LG Philips LCD Co. v. Tatung Co., an inequitable conduct case, for the 1 proposition that Defendants should be permitted to resolve inconsistent statements or 2 discrepancies by deposing patent prosecution counsel); cf. ECF No. 7 at 16 (citing Miyano 3 Mach. USA, Inc. v. MiyanoHitec Mach., Inc., a case involving allegations that the plaintiff 4 perpetrated a fraud on the PTO, for the proposition that “factual basis for representations 5 in a declaration are not privileged and must be disclosed”8). 6 At oral argument, Defendant responded by listing five out-of-district cases cited in 7 their brief where courts purportedly ordered the depositions of prosecution attorneys, 8 where there was no inequitable conduct alleged, because there were relevant factual issues. 9 After reviewing those cases, the Court is not persuaded. See Oak Indus. v. Zenith Elecs., 10 687 F. Supp. 369, 374–75 (N.D. Ill. 1988) (a district court case from the Seventh Circuit, 11 which did not involve claims of inequitable conduct, but also did not involve the doctrine 12 of equivalents, prosecuting history estoppel, or validity defenses9); Biovail, 158 F. Supp. 13 2d at 1323 (a district court case from the Eleventh Circuit, which did not involve claims of 14 inequitable conduct, and also which did not involve disputes regarding a prosecuting 15 attorney’s depositions or testimony10); LG Philips LCD Co. v. Tatung Co., 04-343-JJF, 16

17 8 However, there, the court applied Shelton and granted the motion to quash the subpoena 18 because, though the representations were “relevant [to the fraud claim] and not privileged,” 19 the court held that “[t]his does not mean, however, that the information must come directly from [the attorney]” and instructed the defendants to seek said information through 20 additional written discovery requests. Miyano Mach. USA, Inc. v. MiyanoHitec Mach., Inc., 21 257 F.R.D. 456, 464–65 (N.D. Ill. June 6, 2008). 22 9 There, the court, expressly declining to create a general rule, held that the prosecuting attorney could be questioned about the original patent application because there was no 23 evidence suggesting that the particular patent application was likely to result in litigation, 24 but did not permit questioning regarding his work on the patent reexamination. Oak Indus., 687 F. Supp. at 374–75. 25 10 There, the court merely listed in one sentence of its Findings of Fact that the prosecuting 26 attorney had testified in his deposition that he did not remember why he made a certain 27 statement to the PTO. Biovail, 158 F. Supp. 2d at 1323. However, later in the court’s Conclusions of Law, it clarified that “the Court principally looks to the claims made in the 28 1 2007 WL 2908177, at *2 (D. Del. Oct. 1, 2007) (a district court case from the Third Circuit, 2 which involved claims of inequitable conduct, that compelled patent prosecution counsel 3 to testify, but limited her testimony to statements she made about prior art); Big Baboon 4 Corp. v. Dell, Inc., No. CV09-1198-SVW(SSx), 2010 WL 11459352, at *1, *8 (C.D. Cal. 5 July 22, 2010) (a district court case from the Ninth Circuit, which did not involve claims 6 of inequitable conduct, and did not rule on the ability to take depositions of patent 7 prosecution counsel, but rather ruled on privilege objections made during those 8 depositions11); Bayer Healthcare, 2016 WL 4179087, at *10 (a district court case from the 9 Seventh Circuit, which did not involve claims of inequitable conduct, and also which did 10 not involve disputes regarding a prosecuting attorney’s depositions or testimony12). 11 D. Summary 12 For the reasons set forth above, the Court GRANTS Third Parties’ motion to quash 13 the subpoenas of both Mr. Insogna and Dr. Gay (ECF No. 1). 14 / / 15 / / 16 / / 17 / / 18 19 20 the Court look to extrinsic evidence, such as expert affidavits or declarations.” Id. at 1329 21 (internal citation omitted). 22 11 There, the court permitted questioning of third-party patent prosecution counsel, who were not affiliated with the parties in the underlying case, regarding the meaning of the 23 words used in the patent-in-suit, but permitted them to assert privilege should the 24 “prosecutor’s understanding or knowledge of that term [be] the result of confidential communications with his client.” Big Baboon, 2010 WL 11459352, at *8. 25 12 There, in deciding a motion for summary judgment, the court merely considered 26 evidence from depositions of the prosecuting attorney and inventors as relevant expert 27 testimony as to what a “person with skills in the art” would understand, but rejected it as unpersuasive because it was could not override the prosecution history and written record 28 1 2. DEFENDANTS’ MOTION TO FILE DOCUMENTS UNDER SEAL (ECF No. 6) 2

3 Before the Court is Defendants’ Motion for an Order to File Under Seal Exhibits to 4 Defendants’ Opposition to Movants’ Motion to Quash Subpoenas. ECF No. 6. Though 5 Defendants propose that their memorandum of points and authorities in support of its 6 opposition to the motion to quash (“Opposition”), declaration of Lauren Schweitzer 7 (“Schweitzer Declaration”), and all 19 exhibits be lodged and sealed (ECF No. 7 at NEF), 8 Defendants contend that only six exhibits attached to their Opposition are designated 9 “highly confidential” pursuant to a protective order in the underlying case and thus should 10 be sealed. ECF No. 6 at 3–4. 11 Since the public filing of documents would affect Plaintiff, the Court required 12 supplemental briefing from Plaintiff in support of Defendants’ motion to seal. ECF No. 8. 13 Plaintiff filed a declaration in support of sealing (1) redacted portions of Defendants’ 14 Opposition, (2) the entirety of Exhibit 1 to the Schweitzer Declaration, and (3) redacted 15 portions of Exhibits 7 and 8 to the Schweitzer Declaration. ECF No. 12 at 2. Plaintiff 16 maintains that the redacted portions include “highly confidential information about 17 [Plaintiff]’s products, research and development, and/or highly confidential business 18 information of [Plaintiff], the disclosure of which would cause serious competitive harm 19 to [Plaintiff].” Id. 20 Courts have historically recognized a “general right to inspect and copy public 21 records and documents, including judicial records and documents.” Nixon v. Warner 22 Commc’ns, Inc., 435 U.S. 589, 597 (1978). “Unless a particular court record is one 23 ‘traditionally kept secret,’ a ‘strong presumption in favor of access’ is the starting point.” 24 Kamakana v. City & County of Honolulu, 447 F.3d 1172, 1178 (9th Cir. 2006) (quoting 25 Foltz v. State Farm. Mut. Auto. Ins. Co., 331 F.3d 1122, 1135 (9th Cir. 2003)). In order to 26 overcome this strong presumption, a party seeking to seal a judicial record must articulate 27 justifications for sealing that outweigh the public policies favoring disclosure. See 28 Kamakana, 447 F.3d at 1178; see also Mezzadri v. Medical Depot, Inc., No. 14-cv-2330, 1 2015 WL 12564223, at *3 (S.D. Cal. Dec. 18, 2015). 2 A party requesting that the court seal materials attached to a non-dispositive motion 3 must make a particularized showing of good cause. Kamakana, 447 F.3d at 1180. As to the 4 entire Opposition, entire Schweitzer Declaration, and all 19 exhibits, neither Defendant nor 5 Plaintiff have given any reason why the documents require sealing other than that the 6 documents were designated as “highly confidential” under the protective order when they 7 were produced. ECF No. 6 at 3–4. This reason is itself not sufficient to constitute good 8 cause. See San Diego Comic Convention v. Dan Farr Prods., No. 14cv1865-AJB-JMA, 9 2018 WL 1744536, at *3 (S.D. Cal. Apr. 10, 2018) (“Indeed, some district courts have 10 declined to seal documents when the sole basis for the request is a protective order that 11 covers them”); Cortina v. Wal-Mart Stores, Inc., No. 13cv02054-BAS-DHB, 2016 WL 12 4556455, at *1 (S.D. Cal. Sept. 1, 2016) (“[P]arty’s designation of documents as 13 ‘confidential’ pursuant to such [protective] order, is not itself sufficient to show good 14 cause”); Durham v. Halibrand Performance Corp., No. 14cv1151-DMS-JLB, 2014 WL 15 12520130, at *1 (S.D. Cal. Dec. 12, 2014) (“That a document is designated confidential 16 pursuant to a protective order is of little weight when it comes to sealing documents which 17 are filed with the Court”). Thus, the Court DENIES IN PART Defendants’ motion insofar 18 as it seeks to seal the entire Opposition, entire Declaration, and all 19 exhibits. 19 The Court addresses motions to seal in its Chambers Rules, which states in relevant 20 part: 21 There is a presumptive right of public access to court records based upon common law and the First Amendment. The Court will scrutinize any request 22 to file information under seal, and a request will only be granted if a specific 23 showing is made that justifies sealing. Generic and vague references to “competitive harm” will almost always be insufficient to justify sealing. 24

25 Chmb.R. at 2. Further, the Court reminded the parties of its requirements in its order for 26 supplemental briefing. ECF No. 8 at 2 (“Additionally, Plaintiff shall be mindful of the 27 Court’s Chambers Rules, which detail that “a request [to file information under seal] will 28 only be granted if ….”). Insofar as Plaintiff alleges generic “undue prejudice and 1 competitive harm,” (ECF No. 12-1 at ¶7), the Court is not persuaded to seal such 2 documents. 3 Plaintiff does include specific reasons why portions of Exhibits 7 and 8 should be 4 sealed: those exhibits include Plaintiff’s product development and testing process, which 5 could provide competitors with insights into Plaintiff’s business that they would not 6 otherwise have. ECF No. 12-1 at 3. Further, those paragraphs describe unexpected results 7 relating to formulations of Plaintiff’s patents, which are responsive to validity contentions. 8 Id. at 3. Plaintiff also includes specific reasons why Exhibit 1 and portions of Defendants’ 9 Opposition should be sealed: those documents contain Mr. Tutino’s deposition testimony, 10 which includes highly confidential information relating to Plaintiff’s patent prosecution 11 procedures, product testing and research, and product development. Id. at 2. Therefore, the 12 Court GRANTS IN PART Defendants’ motion, insofar as it seeks to seal Exhibit 1 to the 13 Schweitzer Declaration, the redacted portions of Exhibit 7 to the Schweitzer Declaration, 14 the redacted portions of Exhibit 8 to the Schweitzer Declaration, and the redacted portions 15 of Defendants’ Opposition. 16 Pursuant to the Court’s instructions, (ECF No. 8), Defendants have already publicly 17 filed on the docket the necessary redacted version of the papers (ECF Nos. 9, 10) and 18 electronically lodged the unredacted version of the papers under seal (ECF No. 7). Thus, 19 the Clerk’s Office is directed to file the lodged documents at ECF No. 7 under seal. 20 3. THIRD PARTIES’ MOTION TO FILE DOCUMENTS UNDER SEAL 21 (ECF No. 14) 22 Before the Court is Third Parties’ Motion for an Order to File Under Seal Portions 23 of Movants’ Reply and Exhibits in Support of Third Parties’ Motion to Quash. ECF No. 14. 24 Specifically, Third Parties request an order permitting them to file the following documents 25 under seal: (1) Page 6, line 7 through page 7, line 4 (including footnote 5) of the Reply in 26 Support of Third Parties Anthony Insogna and David Gay’s Motion to Quash (“Reply”); 27 (2) Page 7, lines 11-15 of the Reply; and (3) Exhibits 1 and 2 to the Declaration of Steven 28 1 N. Geise (“Geise Declaration”). Id. at 2. Third Parties contend that those documents were 2 designated “highly confidential” pursuant to a protective order in the underlying case and 3 thus should be sealed. Id. Further, “[t]hose materials include and describe highly 4 confidential information relating to [Plaintiff]’s product research and development, 5 [Plaintiff]’s patent prosecution procedures, and confidential details of third-party 6 agreements. Id. at 3. Since the public filing of documents would affect Plaintiff, it filed a 7 declaration in support of Third Parties’ motion to seal. ECF No. 14-1. There, Plaintiff 8 explained that Exhibit 1 to the Geise Declaration is comprised of selected excerpts from 9 the deposition transcript of Celgene employee and Celgene Rule 30(b)(6) witness Anthony 10 Tutino; Exhibit 2 to the Geise Declaration is comprised of selected excerpts from the 11 transcript of the October 11, 2019 hearing in the underlying case; and portions of the Reply 12 describe and quote from the deposition transcript of Mr. Tutino and the transcript of the 13 October 11 hearing. ECF No. 14-1 at 2 14 As with Defendants’ motion to seal, Plaintiff’s and Third Parties’ reliance on the 15 fact that the information was deemed “confidential” pursuant to the protective order, (see 16 ECF No. 14-1) is unpersuasive. See, e.g., Durham, 2014 WL 12520130, at *1. 17 Additionally, as with Defendants’ motion to seal, Plaintiff’s and Third Parties’ generic 18 references to the potential for “undue prejudice and competitive harm” are likewise 19 unavailing. See Chmb.R. at 2. 20 Plaintiff also articulated, however, specific reasons why these documents should be 21 sealed. See Kamakana, 447 F.3d at 1178 (explaining a party seeking to seal a judicial record 22 must articulate justifications for sealing that outweigh the public policies favoring 23 disclosure). Exhibit 2 and portions of the Reply contain information relating to confidential 24 third-party agreements, ECF No. 12-1 at 3. Exhibit 1 and portions of the Reply include 25 information relating to Plaintiff’s product research and development, as well as Plaintiff’s 26 patent procedures. Id. at 2. Public access to these would provide competitors with insights 27 into Plaintiff’s business that they would not otherwise have. Id. at 2–3. 28 Good cause appearing, the Court GRANTS Third Parties’ motion, insofar as it seeks 1 || to seal: (1) Page 6, line 7 through page 7, line 4 (including footnote 5) of the Reply; (2) 2 || Page 7, lines 11-15 of the Reply; and (3) Exhibits 1 and 2 to the Geise Declaration. 3 Third Parties have already publicly filed on the docket the necessary redacted 4 || version of the papers (ECF No. 13), and electronically lodged the unredacted version of 5 papers under seal (ECF No. 15). Thus, the Clerk’s Office is directed to file the lodged 6 ||documents at ECF No. 15 under seal. ’ 4. CONCLUSION 8 For the reasons set forth below, the Court orders as follows: 1. The Court GRANTS Third Parties’ Motion to Quash Subpoenas 10 (ECF No. 1); 2. The Court GRANTS IN PART and DENIES IN PART Defendants’ Motion 12 to File Documents Under Seal (ECF No. 6). The Clerk’s Office shall file the lodged documents at ECF No. 7 under seal; and 4 3. The Court GRANTS Third Parties’ Motion to File Documents Under Seal (ECF No. 14). The Clerk’s Office shall file the lodged documents at ECF ‘6 No. 15 under seal. 17 8 IT IS SO ORDERED. " Dated: January 3, 2020 20 AWioevdH. Kovolarsl 71 Honorable Allison H. Goddard United States Magistrate Judge 22 23 24 25 26 27 28