Opinion
Civil Action Nos. 99-CV-4304, 00-CV-4888, 01-CV-0159, 01-CV-2169, 99-CV-2926, 00-CV-5953, 02-CV-1484, 00-CV-1393, 00-CV-6464, 01-CV-2602, 01-CV-1027, 01-CV-3364, 01-CV-2981, 03-CV-3365.
March 23, 2004.
MEMORANDUM AND ORDER
Presently before the Court is the Alphapharm Pty. Ltd.'s Motion to Compel and for Sanctions under Fed.R.Civ.P. 37 (Doc. No. 54, Civil Action No. 01-1027; Doc. No. 45, Civil Action No. 01-3364). For the following reasons, Alphapharm's Motion will be granted in part and denied in part.
Additional background regarding this litigation is set forth in the Court's Memoranda and Orders dated September 29, 2001, September 30, 2002, October 31, 2002, and December 20, 2002.
These consolidated cases involve claims of patent infringement made by SmithKline Beecham Corporation, SmithKline Beecham, P.L.C., Beecham Group, P.L.C. and GlaxoSmithKline, P.L.C. ("SmithKline"). The patents at issue cover certain forms of paroxetine hydrochloride, processes for making paroxetine hydrochloride, and uses of paroxetine hydrochloride. SmithKline manufactures paroxetine hydrochloride, and then tablets and sells that product in the United States under the trademark Paxil® ("Paxil"). Paxil is an anti-depressant drug used to treat a variety of disorders, and is one of the most widely prescribed prescription drugs in the United States. Many of the Defendants have made various counterclaims against SmithKline, including claims for unfair competition, patent misuse, and monopolization. Many of the Defendants also seek declaratory judgments that they will not infringe SmithKline's patents, and that the patents are invalid.
The dispute presently before the Court is over discovery. Alphapharm noticed SmithKline's deposition pursuant to Fed.R.Civ.P. 30(b)(6) and designated several categories on which Alphapharm desired testimony. Upon receipt of Alphapharm's notice of deposition, SmithKline designated several persons to testify on its behalf. However, SmithKline did not allow those persons to testify about certain matters. Alphapharm then moved to compel SmithKline to answer its questions and for sanctions. In their opposition to Alphapharm's motion to compel, SmithKline argues in part that Alphapharm is improperly trying to obtain legal contentions and expert testimony through Rule 30(b)(6) depositions. We will examine each of the disputed categories and assess SmithKline's reasons for refusing to provide the requested information. SmithKline is the party resisting discovery, and therefore it bears the burden of showing that the information requested is not discoverable. Josephs v. Harris Corp., 677 F.2d 985, 992 (3d Cir. 1982); Harner v. Greyhound Lines, Inc., No. 02-0088, 2003 WL 147774, at *2 (E.D. Pa. Jan. 10, 2003).
II. THE DISPUTED DISCOVERY REQUESTS
A. Category 3
Category 3 of Alphapharm's deposition notice calls for testimony regarding the "[a]nalytical methods suitable for detecting and identifying crystalline forms of paroxetine hydrochloride." (Doc. No. 54, Ex. 1 at 3.) SmithKline prepared a witness to testify about this subject, but its witness refused to answer certain questions about whether or not SmithKline stands by statements in its patents. SmithKline argues that these questions improperly seek legal contentions and expert testimony. In lieu of a Rule 30(b)(6) deposition, SmithKline is willing to answer interrogatories and provide expert discovery concerning Category 3. Alphapharm argues that a Rule 30(b)(6) deposition is appropriate to discover the facts, opinions, and subjective beliefs within SmithKline's corporate knowledge as to the analytical techniques used to distinguish various forms of paroxetine hydrochloride, including those described in SmithKline's patent.
SmithKline's argument requires us to examine the proper use of Rule 30(b)(6) depositions. A corporation can testify only through its agents. Deposing a corporation presents difficulties that Rule 30(b)(6) was enacted to resolve. Kanaji v. Phila. Child Guidance Ctr. of Children's Hosp., No. 00-937, 2001 WL 708898, at *2 (E.D. Pa. June 20, 2001). Pursuant to Rule 30(b)(6), a party may name a corporation as a deponent and describe with reasonable particularity the matters on which that party wishes the corporation to testify. FED. R. CIV. P. 30(b)(6). A corporation receiving such a notice must designate a person or persons to testify on its behalf, and the persons so designated must "testify as to matters known or reasonably available" to the corporation. Id.; see also SmithKline Beecham Corp. v. Apotex Corp., No. 98 C 3952, 2000 WL 116082, at *8 (N.D. Ill. Jan. 24, 2000) ("Rule 30(b)(6) imposes a duty upon the named business entity to prepare its selected deponent to adequately testify not only on matters known by the deponent, but also on subjects that the entity should reasonably know.").
Alphapharm contends that it has a near absolute right to conduct depositions in lieu of serving written interrogatories. It relies on Marker v. Union Fidelity Life Ins. Co., 125 F.R.D. 121 (M.D.N.C. 1989). In Marker, the defendant objected to an interrogatory on the grounds that responding to it would be unduly burdensome. The plaintiff then noticed the defendant's deposition pursuant to Rule 30(b)(6) in an attempt to discover the information. The defendant produced a witness, but that witness was not prepared to answer the plaintiff's questions. In opposing the plaintiff's motion to compel, the defendant argued that its answer to the interrogatory negated the plaintiff's need for a deposition. The court rejected this argument, stating, "[n]othing in the Federal Rules of Civil Procedure gives a party the right to not respond or inadequately respond to a Rule 30(b)(6) deposition notice or subpoena request and elect to supply the answers in a written response to an interrogatory. An attempt to so limit a Rule 30(b)(6) deposition is not warranted." Marker, 125 F.R.D. at 126. At least two courts within this district have cited Marker for this proposition. See Mellon Bank, N.A. v. Bank of Mid-Jersey, No. 91-3142, 1992 WL 80800, at *1 (E.D. Pa. Apr 14, 1992); Ierardi v. Lorillard, Inc., No. 90-7049, 1991 WL 158911, at *1 (E.D. Pa. Aug 13, 1991).
We think Marker is distinguishable. In Marker, the defendant did not intend to answer the plaintiff's interrogatories or participate in depositions. In this case, SmithKline intends to provide Alphapharm with the discovery it seeks, but contends that with respect to certain matters, interrogatories and expert discovery are more appropriate than depositions. The fact that SmithKline is willing to provide Alphapharm with the information it seeks (albeit not in the form Alphapharm prefers) distinguishes Marker. In any event, since Marker was decided, several courts have stated that in certain circumstances, a party may properly resist a Rule 30(b)(6) deposition on the grounds that the information sought is more appropriately discoverable through contention interrogatories. See SmithKline Beecham Corp. v. Apotex Corp., 2000 WL 116082, at *8-10 (ordering plaintiffs to answer contention interrogatories with respect to some topics, and to submit to Rule 30(b)(6) depositions with respect to others); United States v. Taylor, 166 F.R.D. 356, 363 n. 7 (M.D.N.C. 1996) ("Whether a Rule 30(b)(6) deposition or a Rule 33(c) contention interrogatory is more appropriate will be a case by case factual determination."); Exxon Research Eng'g Co. v. United States, 44 Fed. Cl. 597, 601 (Fed.Cl. 1999) (holding that under the circumstances contention interrogatories were more appropriate than Rule 30(b)(6) depositions); McCormick-Morgan, Inc. v. Teledyne Indus., Inc., 134 F.R.D. 275, 286 (N.D. Cal.) (stating that the question is "which device would yield most reliably and in the most cost-effective, least burdensome manner information that is sufficiently complete to meet the needs of the parties and the court in a case like this"), overruled on other grounds by, 765 F. Supp. 611 (N.D. Cal. 1991).
This fact also distinguishes Mellon Bank and Ierardi, because in both those cases the party resisting discovery did not intend to respond to interrogatories or participate in Rule 30(b)(6) depositions.
Indeed, the magistrate judge who decided Marker recently issued an unpublished opinion in which he ordered that the plaintiff could provide the defendant with certain information through contention interrogatories in lieu of participating in Rule 30(b)(6) depositions. See SmithKline Beecham Corp. v. Synthon Pharm., Ltd., No. 1:00CV01179, slip op. at 16 (M.D.N.C. Nov. 19, 2001).
We agree that in some circumstances, courts may order parties to answer contention interrogatories in lieu of participating in Rule 30(b)(6) depositions. Importantly, the Rules permit courts to "make any order which justice requires to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense, including [an order] . . . that the discovery may be had only by a method of discovery other than that selected by the party seeking discovery." FED. R. CIV. P. 26(c); see also FED. R. CIV. P. 1 (stating that the Rules "shall be construed and administered to secure the just, speedy, and inexpensive determination of every action"). Whether contention interrogatories are more appropriate than Rule 30(b)(6) depositions "will be a case by case factual determination." Taylor, 166 F.R.D. at 363 n. 7. In making this determination we will be guided by "which device would yield most reliably and in the most cost-effective, least burdensome manner information that is sufficiently complete to meet the needs of the parties and the court in a case like this." McCormick-Morgan, 134 F.R.D. at 286.
With these principals in mind, we now consider which discovery device is most appropriate with respect to the information Alphapharm seeks in Category 3. Although Alphapharm contends that it merely seeks the facts, opinions, and subjective beliefs of SmithKline, our review of the disputed questions reveals that Alphapharm was asking SmithKline's witness to take a legal position with respect to certain statements in SmithKline's patents. It would be very difficult for a non-attorney witness to answer such questions at a deposition. A better method would be for SmithKline to respond to interrogatories because then it would be able to receive input from both its attorneys and other persons familiar with its patents. See Exxon Research, 44 Fed. Cl. at 601 (holding that contention interrogatories were more appropriate than depositions to inquire about claim construction). Accordingly, we will require SmithKline to respond to Category 3 through interrogatories.
Alphapharm also complains that SmithKline's witness refused to answer questions about suitable analytical techniques for detecting and identifying crystalline forms of paroxetine hydrochloride. SmithKline claims in one of its patents that the different forms of paroxetine hydrochloride anhydrate can be differentiated from one another based on various analytical techniques. Alphapharm is interested in identifying those techniques. Alphapharm's inquiry appears to be related to claim construction. Interrogatories are a more appropriate form of discovery for issues related to claim construction. See Exxon Research, 44 Fed. Cl. at 601.
B. Category 7
Category 7 of Alphapharm's deposition notice calls for testimony regarding "[t]he analytical distinctions of Form A over the prior art cited during prosecution of the '423 Form A patent." (Doc. No. 54, Ex. 1 at 3.) There appears to be some confusion among the parties with respect to SmithKline's willingness to prepare a witness to testify about this category. SmithKline contends that its witness was prepared to testify about Category 7, but that Alphapharm prematurely ended the deposition. However, SmithKline objects to Alphapharm's attempts to question its witness about its legal positions regarding its '423 patent application. Our review of the disputed questions reveals that Alphapharm was asking SmithKline's witness to state legal positions. A more appropriate way for Alphapharm to obtain SmithKline's legal position is through interrogatories. See Exxon Research, 44 Fed. Cl. at 601.
C. Category 8
Category 8 of Alphapharm's deposition notice calls for testimony regarding the "[t]he bases for [SmithKline's] allegations in its complaints filed in these consolidated actions that Alphapharm infringes and will infringe the patents asserted in those complaints." (Doc. No. 54, Ex. 1 at 3.) Alphapharm is trying to discover SmithKline's legal contentions. Interrogatories are a more appropriate method of discovery for this purpose. See In re: Indep. Serv. Org. Antitrust Litig., 168 F.R.D. 651, 654 (D. Kan. 1996) (rejecting attempt to use a Rule 30(b)(6) deposition to discover the factual bases of the defendant's defenses and counterclaims because the information sought was discoverable through other, less burdensome means); Arkwright Mut. Ins. Co. v. Nat'l Union Fire Ins. Co., No. 90 Civ. 7811 (KC), 1993 WL 34678, at *3 (S.D.N.Y. Feb. 4, 1993) (same).
D. Category 1
Category 1 of Alphapharm's deposition notice calls for testimony regarding "[t]he conditions under which particular forms of paroxetine, including without limitation paroxetine hydrochloride anhydrate, allegedly convert to paroxetine hydrochloride hemihydrate." (Doc. No. 54, Ex. 1 at 3.) SmithKline prepared a witness to testify on this subject and that witness testified at length about the various ways in which paroxetine hydrochloride anhydrate can convert to paroxetine hydrochloride hemihydrate. However, SmithKline's witness was not prepared to testify about the conditions under which this conversion can occur inside the human body.
According to Alphapharm, SmithKline has taken the position that paroxetine hydrochloride can convert to a different form inside the body, and has publicly alleged infringement of its patents based on in vivo conversion. See, e.g., SmithKline Beecham Corp. v. Apotex Corp., 247 F. Supp.2d 1011, 1014-15 (N.D. Ill. 2003) (discussing SmithKline's claim that its paroxetine hydrochloride hemihydrate patent could be infringed if paroxetine hyrochloride anhydrate converted to a different form inside a person's stomach). SmithKline does not dispute this assertion. However, SmithKline claims that questions about in vivo conversion of paroxetine hydrochloride require expert testimony, and that such testimony is premature. We disagree. If SmithKline has concluded that its patents are infringed when paroxetine hydrochloride converts to a different form inside the body, it must have some basis for that belief, and Alphapharm is entitled to discover that information. See AMP Inc. v. Melox Inc., 227 U.S.P.Q. 172, 172 (N.D. Ill. 1985) (stating that "the court doubts that no non-expert representative could testify [about the basis for plaintiff's infringement claims], since plaintiff's agents and representatives made the decision to file this lawsuit"). Accordingly, SmithKline is ordered to prepare a witness to testify to the matters described in Category 1.
E. Category 5
Category 5 of Alphapharm's deposition notice calls for testimony regarding the "[t]he mechanisms and natural history of 'universal' and 'local' seeding by paroxetine hydrochloride hemihydrate, including the potential as of today for obtaining paroxetine hydrochloride free of the hemihydrate." (Doc. No. 54, Ex. 1 at 3.) SmithKline prepared a witness to testify on this subject, but that witness refused to answer a question about whether or not SmithKline sent any paroxetine hydrochloride hemihydrate to the United States in 1985. SmithKline contends that Alphapharm wants this information to show that SmithKline's clinical trials in the United States constituted a public use of its paroxetine hydrochloride hemihydrate invention under 35 U.S.C. § 102(b). SmithKline notes that another court has ruled that SmithKline's clinical trials did not constitute a public use of paroxetine hydrochloride hemihydrate. See SmithKline Beecham Corp. v. Apotex Corp., 286 F. Supp.2d 925, 932-38 (N.D. Ill. 2001). However, Alphapharm was not a party to that litigation, and SmithKline does not argue that Alphapharm is bound by that determination. Alphapharm is entitled to discover facts relevant to whether SmithKline's paroxetine hydrochloride hemihydrate patent is invalid because of public use or prior art. See SmithKline Beecham Corp. v. Apotex Corp., 2000 WL 116082, at *10 (ordering SmithKline to produce a 30(b)(6) witness to testify on prior art bearing on the validity and enforceability of its patent). Accordingly, SmithKline is ordered to prepare a witness to testify to the matters described in Category 5.
"Seeding" refers to the spread of particles of paroxetine hydrochloride hemihydrate. SmithKline has taken the position in other litigation involving its Paxil patents that tiny bits of paroxetine hydrochloride hemihydrate can contaminate facilities that produce paroxetine hydrochloride anyhdrate, with the result that those facilities can no longer produce paroxetine hydrochloride anyhdrate. See SmithKline Beecham Corp. v. Apotex Corp., 247 F. Supp.2d at 1020-21.
We also reject SmithKline's argument that it should not have to prepare a witness to testify on Category 5 because it already produced to Alphapharm information regarding seeding generated during other litigation. SmithKline has not convinced the Court that the information it already produced to Alphapharm eliminates the need for a deposition on Category 5.
III. ALPHAPHARM'S MOTION FOR SANCTIONS
Because we have denied in part Alphapharm's motion to compel, we find that SmithKline's opposition to that motion was substantially justified. Accordingly, we will deny Alphapharm's motion for sanctions. See FED. R. CIV. P. 37(a)(4).
An appropriate Order follows.
ORDER
AND NOW, this 23rd day of March, 2004, upon consideration of Alphapharm Pty. Ltd.'s Motion to Compel and for Sanctions under Fed.R.Civ.P. 37 (Doc. No. 54, Civil Action No. 01-1027; Doc. No. 45, Civil Action No. 01-3364), it is ORDERED that:
1. SmithKline is ORDERED to respond to Categories 3, 7, and 8 of Alphapharm's deposition notice through interrogatories.
2. SmithKline is ORDERED to designate and prepare witnesses to testify on its behalf with respect to Categories 1 and 5 of Alphapharm's deposition notice.
3. Alphapharm's Motion for Sanctions is DENIED.
IT IS SO ORDERED.