Opinion
Nos. 5:02-cv-1474 JW (RS), 03-cv-5669 JW (RS).
September 1, 2004
ORDER GRANTING IN PART AND DENYING IN PART MOTION TO COMPEL FURTHER DEPOSITION OF GUIDO GUGLIELMI
I. INTRODUCTION
Defendant Cordis Corporation ("Cordis") filed a motion to compel the further deposition of Dr. Guido Guglielmi ("Guglielmi"). More specifically, Cordis requests that it be permitted to attend the three-day deposition of Guglielmi scheduled on September 7-9, 2004, in Rome, Italy in the related case of The Regents of the University of California v. Micro Therapeutics, Inc. et al., C-03-5669 JW (RS). Alternatively, Cordis asks that Guglielmi be produced for a further deposition in the United States or that plaintiffs be required to pay Cordis' expenses for travel to Rome for a half-day deposition. The motion to compel was fully briefed and heard on shortened time by the Court on September 1, 2004.
Based on all papers filed to date, as well as on the oral argument of counsel, the Court grants the motion to compel to the extent that it will permit Cordis to depose Guglielmi in Rome for a period of up to one-half day, at its own expense, for the reasons set forth below.
II. BACKGROUND
The parties in these related actions have appeared several times before the Court regarding disagreements associated not only with the deposition of Guglielmi, but with respect to other discovery issues as well. Therefore, an extensive background to this dispute will not be reiterated in this order. In brief, these actions concern plaintiffs' claims that one of Cordis' products, the Cordis TruFill DCS detachable coil device, used for treating patients with aneurysms, infringes U.S. Patent Nos. 5,895,385 and 6,010,498. Guglielmi, as the lead inventor on these patents, (referred to by the parties as "the Guglielmi patents") assigned all rights, title and interest in such patents to the University of California ("the UC Regents"), its successors, legal representatives and assigns. The UC Regents, in turn, granted one of the plaintiffs, Target Therapeutics, Inc., the exclusive license to enforce the commercial development of certain inventions generally characterized as "Treatment of Intracranial Aneurysms with an Endovascular Guidewire."
Since Guglielmi is the lead inventor on the patents-in-suit, his deposition is critical to all parties. To that end, the Court previously granted Cordis' motion to compel Guglielmi's attendance at a further deposition. The Court also ordered plaintiff Boston Scientific Corporation ("Boston Scientific") to produce documents "encompassing presentations and speeches made by Guglielmi between May 1989 and February 1991 regarding the subject matter of his patents" to Cordis prior to the start of Guglielmi's further deposition. As a result of that Court order, Guglielmi was again deposed by Cordis on July 7, 8, and 9, 2004. On July 6, 2004, the day before Guglielmi's second deposition began, Boston Scientific tendered to Cordis approximately 800 slides reflecting medical work performed by Guglielmi during the relevant time period. Cordis refused to accept the slides at that time, but advised Boston Scientific to bring the slides to the deposition the following day. Boston Scientific complied with this request and the slides were produced at the Guglielmi deposition. However, although a slide projector was provided to Cordis so that Guglielmi could be questioned about the slides, Cordis objected to the "untimely" production of the slides and argued that it was entitled to a third deposition of Guglielmi to question him about the slides. In an attempt to avoid another deposition session, Guglielmi offered to be deposed for an extra day, so that counsel for Cordis could review the slides and question him before leaving Rome. Cordis rejected that offer. Instead, after three full days, Cordis concluded its deposition of Guglielmi.
Following the conclusion of the Guglielmi deposition, Boston Scientific discovered about 80 pages of documents which consist of about twelve consulting agreements between Guglielmi and Target, dated between 1992 to 1999. These documents were produced to Cordis, although they were not part of the Court's discovery order issued on May 26, 2004. As a result of the subsequent production of documents, and based on the previous production of 800 slides at the Guglielmi deposition, Cordis requests permission to attend the three-day deposition of Guglielmi which is scheduled in the related case of The Regents of the University of California v. Micro Therapeutics, Inc. et al., on September 7, 8, and 9, 2004. Cordis asks that it be allowed to attend all three days of the deposition and proposes that, at the end of such session, it be afforded a half-day to ask its remaining questions of Guglielmi.
Boston Scientific and The Regents (collectively, "plaintiffs") oppose Cordis' request to attend the deposition in the Micro Therapeutics case on the basis that Cordis is not a party to the protective order that has been entered in that action. They contend that the deposition, which must be conducted through an interpreter, will become even more cumbersome if Cordis is present because it will be necessary to stop the deposition at various points whenever confidential information is discussed so that Cordis may leave the room. Plaintiffs also note that it is intimidating for a non-expert witness such as Guglielmi, an elderly Italian gentleman, to be faced with not only MTI's United States and European counsel, but with Cordis' counsel as well. They argue that there is no legitimate reason for Cordis to attend the deposition let alone any legal authority in support of that request. Moreover, they note that Cordis was already afforded an opportunity to question Guglielmi about the slides. In addition, plaintiffs contend that the twelve consulting agreements produced to Cordis after the Guglielmi deposition post-date the critical patent filing date of February 24, 1991, such that they cannot relate to Cordis' defense of prior public use. For all of these reasons, Boston Scientific and The Regents ask that Cordis' motion to compel Guglielmi to attend yet another deposition be denied.
III. STANDARDS
Pursuant to Fed.R.Civ.P. 30(a)(2)(B), leave of court must be obtained before a witness may be deposed a second time in the same case. See Ameristar Jet Charter, Inc. v. Signal Composites, Inc., 244 F3d 189, 192 (2001). Likewise, discovery may be limited by the court for good cause shown "to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense." Fed.R.Civ.P. 26(c). Furthermore, Fed.R.Civ.P. 30(d)(2) provides that a deposition is limited to one seven hour day unless additional time consistent with Fed.R.Civ.P. 26(b)(2) is needed for a fair examination of the deponent or if the deponent or another person, or other circumstance, impedes or delays the examination. New Colt Holding Corp. v. RJG Holdings of Fla., Inc., 2003 U.S. Dist. LEXIS 18036, at *3 (D. Conn. 2003). A party seeking a court order to extend the examination must show "good cause" to justify such an order. Cardenas v. The Prudential Insurance Co. of America, 2003 WL 21302960, at *2 (D. Minn. 2003). Considerations relevant to the granting of an extension of time include the need for additional time for full exploration of the theories upon which the witness relies, or where new information comes to light triggering questions that the discovering party would not have thought to ask at the first deposition. See New Colt Holding Corp., 2003 U.S. Dist. LEXIS 18036, *3; See Keck v. Union Bank of Switzerland, 1997 U.S. Dist. LEXIS 10578, at *3 (S.D.N.Y. 1997).
IV. DISCUSSION
As noted above, Cordis' request to conduct a second deposition of Guglielmi was granted, resulting in a total of five (5) full days of Guglielmi testimony in this action. Despite this lengthy deposition, Boston Scientific and The Regents have offered Cordis an additional four (4) hours to depose Guglielmi based on materials which were produced shortly before and after his deposition. Nevertheless, Cordis insists that it be permitted to attend a three-day deposition of Guglielmi scheduled in a related case. Cordis fails to cite any authority in support of its request, but simply notes that the two cases are "related" and that defendant Micro Therapeutics ("MTI") has no objection to its presence at the deposition. Cordis also promises not to "interfere" in the deposition and offers to leave the room when any confidential material is discussed. It then requests that it be afforded up to four hours, if necessary, to cover questions not covered by MTI's counsel regarding the slides and documents subsequently produced. Unless it is permitted to attend the three day deposition, Cordis argues that Guglielmi should be produced for a four hour deposition in the United States or that plaintiffs should bear Cordis' expenses in flying to Italy for a four hour deposition.
Based on the record in this case, Cordis has demonstrated the existence of "good cause" sufficient to support its request that it be afforded an additional four (4) hours to depose Guglielmi. However, Cordis has failed to establish its need to attend Guglielmi's deposition in the related action and, in fact, Boston Scientific and The Regents have shown that Cordis' presence at that deposition would be burdensome and potentially oppressive. Moreover, it is clear that both plaintiffs and Guglielmi offered to provide additional deposition time to Cordis in July of 2004, thereby eliminating the need for another trip to Europe. For these reasons, should Cordis desire to depose Guglielmi for an additional four (4) hours, it must do so at its own expense.
V. CONCLUSION
For the reasons stated, Cordis may further depose Guglielmi for a period not to exceed four (4) hours. However, Cordis may not attend the deposition of Guglielmi in the MTI case nor will plaintiffs be required to produce Guglielmi in the United States or pay Cordis' expenses for travel to Italy. Rather, if Cordis wishes to depose Guglielmi regarding the 800 slides produced on July 7, 2004, and/or the documents produced after the Guglielmi deposition in July, 2004, it may do so following the conclusion of Guglielmi's deposition on September 9, 2004. Cordis will bear its own expenses for such deposition.
At the hearing, Boston Scientific stated that it was producing a small number of royalty agreements to Cordis. Therefore, Cordis may also question Guglielmi regarding these documents.
Of course, depending on what time the deposition concludes on September 9, 2004, Guglielmi may need to be deposed by Cordis on the following day, September 10, 2004.