Deposition of Corporate Witness Denied in Light of Contention Interrogatories

Oct 14, 2021

Reading Time : 2 min

Earlier in the litigation, the defendant filed a motion for an informal hearing before the magistrate judge regarding the appropriateness of the plaintiff’s 30(b)(6) deposition topics. Those topics included the defendant’s invalidity contentions, noninfringement contentions, damages limitations contentions and affirmative defenses. The magistrate judge issued a protective order preventing the plaintiff from asking the 30(b)(6) witness about those topics. The magistrate judge explained that in the case at hand, interrogatories were a better discovery vehicle for the topics and that a 30(b)(6) deposition on those topics would be overly burdensome. The plaintiff raised several objections to the protective order.

The district court reviewed the magistrate judge’s order for clear error under Federal Rule of Civil Procedure 72(a). First, the court found that the magistrate judge had not based the ruling on the premise that 30(b)(6) depositions are per se inappropriate vehicles for discovery on contentions and affirmative defenses. Instead, the order had explained that appropriateness is considered on a case-by-case basis, and this was what was done here.

Next, the court overruled the plaintiff’s objection that the magistrate judge had required the plaintiff to provide a compelling reason for the deposition. The court explained that, properly construed, the order stated that the deposition on those topics would be burdensome and not cost-effective, and that because the plaintiff had not provided a reason why that was not the case, the plaintiff had not provided a compelling reason for allowing the deposition on the topics.

Finally, the court overruled the objection that the magistrate judge had erred by requiring interrogatories as the only way to ask questions on the topics. The court explained that the plaintiff had failed to show clear error with its argument that the witnesses were in the best position to answer the questions. The court reasoned that even if the plaintiff would be in a better position with a deposition than an interrogatory, that did not show clear error by the magistrate judge, especially in light of the dearth of support showing that the deposition topics would not be overly burdensome and costly.

Practice Tip: Parties wishing to take 30(b)(6) deposition testimony should be aware of the local practices and rulings on whether and under what circumstances the 30(b)(6) topics can include contentions and defenses. Parties should also bear in mind that discovery should be proportional to the needs of the case, and that less burdensome and less costly methods of obtaining the same discovery may be favored by courts.

Lifted Limited, LLC v. Novelty Inc., Civil Action No. 16-cv-03135-PAB-GPG (D. Colo. Sept. 30, 2021)

Share This Insight

Categories

Previous Entries

IP Newsflash

August 11, 2025

In considering a motion to dismiss infringement claims for two related patents, the District of Massachusetts recently held that pre-suit knowledge of a “parent” patent, without more, is insufficient to establish pre-suit knowledge of the “child” patent for purposes of indirect and willful infringement.

...

Read More

IP Newsflash

August 8, 2025

Following a jury verdict finding trade secret misappropriation, the District Court for the District of Massachusetts granted-in-part a plaintiff’s motion for a permanent injunction to prohibit defendants from using plaintiff’s trade secrets. The district court further required defendants to reassign to plaintiff patents and patent applications that disclosed or were derived from plaintiff’s trade secrets as part of its equitable relief.

...

Read More

IP Newsflash

August 6, 2025

In ruling on a recent motion to strike, a judge in the Eastern District of Texas permitted a damages expert to rely on a damages theory based on defendant’s “avoided costs,” holding that this theory did not run afoul of the “entire market value rule.”

...

Read More

IP Newsflash

August 5, 2025

The Federal Circuit recently vacated a decision by the Patent Trial and Appeal Board after concluding that the board’s analysis of licensing evidence offered as a secondary consideration of nonobviousness constituted legal error and was not supported by substantial evidence. According to the court, the board applied a more exacting and improperly heightened nexus standard than is required by law for license evidence.

...

Read More

IP Newsflash

August 5, 2025

A Northern District of California judge recently granted a motion to reconsider his summary judgment ruling that defendant was barred from raising certain “device art” due to IPR estoppel under 35 U.S.C. § 315(e)(2). In the original ruling, the judge adopted the broader rule that IPR estoppel applies to device art that is “materially identical” to patents or printed publications that petitioners raised, or could have raised, in an IPR. Following that ruling, however, the Federal Circuit issued its Ingenico decision adopting the narrower view that IPR estoppel applies only to “grounds” based on patents and printed publications and not to device-based grounds. Citing Ingenico as a “change of law,” defendant moved for reconsideration of the court’s ruling, and the court granted the motion.

...

Read More

IP Newsflash

August 5, 2025

In a recent decision designated as Informative, the USPTO Director determined that the Patent Trial and Appeal Board abused its discretion by instituting two inter partes review proceedings challenging the same patent, based on petitions advancing different constructions of the same claim term. The Director expressed concerns that permitting multiple petitions based on alternative claim constructions effectively circumvents word count limitations, strains board resources, and undermines procedural efficiency.

...

Read More

IP Newsflash

July 25, 2025

Earlier this year, the Federal Circuit’s decision in Qualcomm Inc. v. Apple Inc. (Qualcomm II) raised questions about the extent to which petitioners can rely on applicant admitted prior art (“AAPA”) in inter partes review proceedings.  The Federal Circuit’s recent decision in Shockwave Medical, Inc. v. Cardiovascular Sys., Inc. largely cabins the Qualcomm II decision to its particular facts and makes clear that AAPA can be used as evidence of background knowledge as part of an obviousness argument.

...

Read More

IP Newsflash

July 11, 2025

The Federal Circuit recently reversed a PTAB determination on remand that a patent was obvious over applicant admitted prior art (“AAPA”) in combination with prior art patents, holding that expressly designating AAPA as a “basis” for a ground is improper under 35 U.S.C. § 311(b). In doing so, the Court rejected the PTAB’s “blanket rule” that “AAPA used in combination with prior art patents or printed publications under § 311(b) is ipso facto not the basis or part of the basis of a ground.” Ultimately, while the case clarifies that expressly listing AAPA in an IPR ground is improper, the precise line between proper and improper uses of AAPA in other instances remains unclear.

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.