Opinion
CAUSE NO. IP 00-1791-C(B/S)
September 18, 2003
ENTRY ON OBJECTIONS TO MAGISTRATE JUDGE'S DENIAL OF MOTION FOR PROTECTIVE ORDER
This cause is before the Court on plaintiff Cook Incorporated's ("Cook") Objections to Magistrate Judge's Denial of Motion for Protective Order which was filed pursuant to Federal Rule of Civil Procedure 72(a). Cook's objection is fully briefed, and the Court, being duly advised, OVERRULES the objection for the following reasons.
At issue is the Magistrate Judge's ruling permitting defendant C.R. Bard, Inc. ("Bard") to take the deposition of Richard J. Godlewski, a patent attorney employed in-house by Cook. Our review of a discovery-related ruling by the Magistrate Judge is governed by Rule 72(a), which provides: "The district judge to whom the case is assigned shall consider such objections and shall modify or set aside any portion of the magistrate judge's order found to be clearly erroneous or contrary to law." Fed.R.Civ.P. 72(a); see also 28 U.S.C. § 636(b)(1). "The clear error standard means that the district court can overturn the magistrate judge's ruling only if the district court is left with the definite and firm conviction that a mistake has been made." Weeks v. Samsung Heavy Industries Co., Ltd., 126 F.3d 926, 943 (7th Cir. 1997).
Cook argues that the Magistrate Judge's ruling is clearly erroneous and contrary to law because the Magistrate Judge failed to follow the standard set forth in Shelton v. American Motors Corp., 805 F.2d 1323 (8th Cir. 1986) and its progeny, which imposes upon a party seeking to depose opposing counsel the burden of first demonstrating that "(1) no other means exist to obtain the information than to depose opposing counsel . . .; (2) the information sought is relevant and nonprivileged; and (3) the information is crucial to the preparation of the case." id at 1327. Cook argues at length-correctly, in the Court's estimation — that Bard failed to satisfy the burden imposed upon would — be deponents by Shelton. However, Cook is incorrect that in denying its motion for protective order the Magistrate Judge "misapplied the Shelton test." Cook's Brief at 2. In fact, the Magistrate Judge did not apply theShelton test at all, but rather implicitly rejected the holding ofShelton altogether. Therefore, the threshold issue before the Court is whether it was error for the Magistrate Judge to reject the Shelton standard. The Court finds that it was not.
The rule established in Shelton "was intended to protect against the ills of deposing opposing counsel in a pending case which could potentially lead to the disclosure of the attorney's litigation strategy."Pamida, Inc. v. E.S. Originals, Inc., 281 F.3d 726, 730 (8th Cir. 2002). The Eighth Circuit determined that "this abuse of the discovery process had become an ever increasing practice," and therefore "erected the Shelton test as a barrier to protect trial counsel from these depositions." Id. Unlike the Shelton court, this court has not found that deposing opposing counsel has become a common practice; there is certainly no indication that it has become enough of a problem in cases before this court that a special rule is necessary to deal with it. Rather, the Court believes that the sanctions provisions available under the Federal Rules of Civil Procedure and 28 U.S.C. § 1927 generally are sufficient to prevent the type of discovery abuses with which the Shelton court was concerned. Given the availability of sanctions, the Court agrees with the Magistrate Judge that the desirability of placing concrete objections before the Court for resolution, rather than asking the Court to resolve abstract privilege and relevancy arguments, outweighs the need to protect attorneys from the risk of sitting through frivolous depositions. See Magistrate Judge's Entry at 1-2 ("[T]he burden of convening a deposition, even if virtually every question is met with a privilege objection, is simply not so great as to justify a prior restraint on the deposition. . . .);accord qad.inc v. ALN Associates. Inc., 132 F.R.D. 492 (N.D. III. 1990) ("[T]his Court subscribes wholeheartedly to a procedure that rejects any prior restraint in favor of permitting the deposition to go forward, with any individualized objections to be dealt with during its regular course."). Therefore, the Court finds that it was not error for the Magistrate Judge to decline to follow Shelton and permit the deposition of Mr. Godlewski to proceed.
The Court notes that it is not clear whether the Eighth Circuit itself would apply Shelton in this case, inasmuch as it has held that theShelton rule applies to depositions of counsel in a particular case regarding his or her knowledge about that case; it does not apply to depositions regarding an attorney's knowledge of other matters, such as previous litigation involving the same client. Pamida, Inc., 281 F.3d at 730. In this case, it appears that Bard wishes to depose Mr. Godlewski regarding his prosecution of patents other than the one at issue in this case; further, the extent of Mr. Godlewski's role as counsel for Cook in this litigation is not entirely clear to the Court. He is not counsel of record in this court, and the parties' briefs do not paint a clear picture of his involvement in this case thus far.
The Court wishes to stress, however, that this ruling should in no way be read as creating an open season on deposing opposing counsel. Such depositions will be appropriate in rather limited circumstances, and counsel should think carefully before noticing such a deposition. While the Court generally will not prohibit such depositions preemptively — absent, as the magistrate judge held, some showing that the impetus behind the deposition request is harassment — the Court will be vigilant in utilizing all available sanctions provisions if, in retrospect, it is apparent that the deponent had so little relevant, non-privileged information that the deposition was no more than a waste of everyone's time.