Magistrate Judge Bowbeer recently granted Plaintiff Polaris Industries Inc.’s motion for a protective order preventing testimony on a Rule 30(b)(6) topic relating to disputed prior art.

THE RULE 30(B)(6) TOPIC AT ISSUE 

The topic in question asked Polaris to prepare a witness to testify on behalf of the corporation regarding “[a]ny evidence or facts which Polaris contends supports an argument that any document or evidence cited in Defendants’ Prior Art Statement is not prior art to the ‘220 patent.” Polaris objected but the parties did not discuss the topic prior to the deposition. At the deposition, Polaris refused to allow the witness to provide corporate testimony on the issue. The parties could not reach a resolution and Polaris filed a motion for a protective order.

PARTIES SHOULD MEET AND CONFER REGARDING OBJECTIONS PRIOR TO THE DEPOSITION 

As a preliminary matter, the parties disagreed about how Polaris’ objection to the Rule 30(b)(6) topic should have been addressed before the corporate deposition. The Court did not find that either side waived its right to seek relief, but stated that the “better practice” would have been to meet and confer before the deposition. 

CORPORATE WITNESSES NEED NOT TESTIFY REGARDING LEGAL ARGUMENTS 

Defendants’ primary argument was that the Rule 30(b)(6) topic was necessary due to alleged deficiencies in Polaris’ prior art statement. The Court pointed out that the sufficiency of the parties’ prior art statements were not at issue. However, even if Polaris’ statement was deficient, the Court found that the Rule 30(b)(6) topic at issue was not the appropriate mechanism for seeking supplementation.  Even though the topic asked for “evidence or facts,” the Court found that it was “inextricably linked to Plaintiff’s contentions and legal analysis about what constitutes ‘prior art.’” The Court also explained that the required preparation for a corporate witness to testify on the topic as written would be “burdensome” and “essentially have amounted to a spoon-feeding and then disgorgement of attorney and/or expert analysis.”

MOTIONS TO COMPEL AND WRITTEN DISCOVERY ARE TOOLS TO ADDRESS DEFICIENT DISCLOSURES 

The Court identified four proper tools to address what Defendants perceived as a deficient prior art statement: (1) a motion to compel a more complete prior art statement, (2) contention interrogatories, (3) requests for admission, and (4) document requests. The Court further explained that the proper course of action is to first raise the issue with the other side and then, only if necessary, file a motion to compel or serve supplemental discovery requests. 

PARTIES MAY FOREGO UNDISCLOSED INFRINGEMENT AND VALIDITY ARGUMENTS 

At the end of her decision, Magistrate Judge Bowbeer reminded the parties that “a party who fails to meet its obligations to disclose its positions and contentions on infringement and validity may risk losing the opportunity later to rely on information that was not properly disclosed,” and advised both parties to ensure that their disclosures were complete.

A copy of Magistrate Judge Bowbeer’s decision is available here.