WellWorx Energy Solutions, LLC v. Oilify New-Tech Solutions, Inc.

UNITED STATES DISTRICT COURT WESTERN DISTRICT OF TEXAS MIDLAND-ODESSA DIVISION WELLWORX ENERGY SOLUTIONS, § LLC, § § Plaintiff, § § CIVIL NO. MO-22-CV-00059-ADA v. § § OILIFY NEW-TECH SOLUTIONS, § INC., Q2 ARTIFICIAL LIFT SER- § VICES LLC, § Defendants. ORDER ON DISCOVERY DISPUTE On March 13, 2024, Plaintiff Wellworx Energy Solutions, LLC (“Wellworx”) submitted a discovery dispute, attached as Exhibit A to this Order, seeking to quash a subpoena for documents and testimony to Wellworx’s patent prosecution law firm, Frost Brown Todd. Since the submission of the dispute, Frost Brown Todd filed Objections and Responses to the Subpoena on March 15, 2024 and a deposition is now scheduled for March 22, 2024. After a review of the materials submitted, Plaintiff's blanket request to quash the subpoeDENIED. Frost Brown Todd is ORDERED to respond to the subpoena and Wellworx may assert privilege objections for specific (1) document requests and (2) questions proffered at a deposition. SIGNED this 21 day of March, 2024. A T. hn, AND UNITED STATES MAGISTRATE JUDGE EXHIBIT A – DISCOVERY CHART Issue Plaintiff’s Position Defendants’ Position 1. Q2 has subpoenaed Q2 served a subpoena on WellWorx makes a blanket WellWorx’s Patent Prosecu- WellWorx’s patent prosecu- assertion of privilege but has tion Law Firm for testimony tion law firm, Frost Brown not addressed any individual and documents. Todd. See Ex. A. This subpoe- document request or deposina seeks testimony and docu- tion topic. WellWorx has ments pertaining to the con- failed to explain why responception, reduction to practice, sive documents and testimospecification, and claims of the ny are privileged or otherwise Asserted Patents, communica- meet its burden to establish tions with WellWorx’s repre- its assertion of privilege is sentatives, information about proper. the Accused Product, and information pertaining to As- For example, WellWorx cites serted Prior Art. See id. to In re Spalding, which concerns the privileged nature of The subpoena seeks privileged an invention record, which is information. Frost Brown a “standard form[] generally Todd is a law firm, and its used by corporations as a lawyers rendered patent prose- means for inventors to discution legal services for close to the corporation's paWellWorx. Because the Sub- tent attorneys that an invenpoena seeks testimony, docu- tion has been made and to ments, and communications initiate patent action.” In re with patent counsel related to Spalding Sports Worldwide, their prosecution of the As- Inc., 203 F.3d 800 , 802 & n.2 serted Patents, they are subject (Fed. Cir. 2000). But Q2’s to the attorney-client privilege subpoena does not seek such and potentially the work prod- an invention record. Nor does uct doctrine. See In re Spal- Q2 presently seek to pierce ding Sports Worldwide, Inc., the attorney-client privilege, 203 F.3d 800, 805-06 (Fed. so Q2 need not establish Cir. 2000) (“[A]n invention “Walker Process fraud” as record constitutes a privileged WellWorx argues. communication, as long as it is provided to an attorney for the The discovery Q2 seeks is purpose of securing primarily factual information, and faclegal opinion, or legal ser- tual information is not privivices, or assistance in a legal leged. Greenthread, LLC v. proceeding.”). Intel Corp., No. 6:22-cc00105-ADA, 2022 U.S. Dist. Further, the discovery is irrel- LEXIS 161966, *9-10 (W.D. evant, disproportionate, and Tex. Sep. 1, 2022) (“[F]acts unduly burdensome. The pros- are not privileged and parties ecution histories speak for may not use a privilege claim themselves. Defendants have not alleged inequitable con- to prevent the disclosure of duct as to any individual at such facts.”). Indeed, WellFrost Brown Todd. Notwith- Worx identified “Patent standing, Defendants cannot Counsel” in its initial disclomake a prima facie showing of sures as having discoverable Walker Process fraud. See id. information. at 808. Defendants also cannot show that knowledge of coun- In any event, WellWorx’s sel cannot be derived from “assertion that the entirety of other sources. the deposition would concern privileged matters is the type Thus, any such discovery of blanket assertion of priviwould be outside the scope of lege that is disfavored. Condiscovery as privileged and sequently, the motion to irrelevant, unnecessary, and quash must be denied. It is unduly burdensome. See In re impossible to know whether Insogna, No. 3:19-CV-1589- individual questions may LAB-AHG, 2020 WL 85487 , elicit information that is proat *5–10 (S.D. Cal. Jan. 3, tected by privilege…. Simple 2020). possession of a law license does not result in blanket Relief: Order that “the Court immunity from a deposition.” quashes the subpoena to Frost Advanced Technology IncuBrown Todd LLP. Frost bator, Inc. v. Sharp CorporaBrown Todd LLP does not tion, 263 F.R.D. 395 , 399 have to appear at a deposition (W.D. Tex. 2009). Thus, and does not have to produce courts routinely permit the any documents in response to deposition of prosecution any subpoena. Defendants are counsel for asserted patents. forbidden from seeking dis- See, e.g., Goodman v. Smart covery from Frost Brown Modular Techs., Inc., No. HTodd LLP and its representa- 14-1380, 2015 U.S. Dist. tives.” LEXIS 121302, at *4-5 (S.D. Tex. Sep. 3, 2015) (collecting cases). In re Insogna inapposite. That case concerned discovery from prosecution counsel that was also trial counsel, and, unlike here, the discovery sought was not directed to an inequitable conduct allegation. Given Q2’s allegation of inequitable conduct, the factual information sought is relevant and proportionate. Beyond that, Frost Brown Todd has not objected to the subpoena and WellWorx does not have standing to interpose an objection other than privilege. Shenzhen Tange Li'An ECommerce Co. v. Drone Whirl LLC, No. 1:20-CV00738-RP, 2021 U.S. Dist. LEXIS 47445 , at *10 (W.D. Tex. Mar. 15, 2021) (“A party may not challenge a subpoena to a third party on the grounds that the information sought is not relevant or imposes an undue burden.”) (citation omitted). Relief: WellWorx’s motion to quash the subpoena to Frost Brown Todd LLP is denied.