Filed: Apr. 11, 2012
Latest Update: Apr. 11, 2012
Summary: ORDER BOYD N. BOLAND, Magistrate Judge. Pending is Becton Dickinson and Company's Emergency Motion to Compel Third-Party Mark Toukan's Compliance With Subpoenas [Doc. #2, filed 3/27/2012] (the "Motion to Compel"). The Motion concerns third-party discovery to be taken in the District of Colorado relating to an underlying patent litigation pending in the Southern District of California. The Motion seeks an order compelling Mark Toukan, not a party to the underlying action, to produce document
Summary: ORDER BOYD N. BOLAND, Magistrate Judge. Pending is Becton Dickinson and Company's Emergency Motion to Compel Third-Party Mark Toukan's Compliance With Subpoenas [Doc. #2, filed 3/27/2012] (the "Motion to Compel"). The Motion concerns third-party discovery to be taken in the District of Colorado relating to an underlying patent litigation pending in the Southern District of California. The Motion seeks an order compelling Mark Toukan, not a party to the underlying action, to produce documents..
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ORDER
BOYD N. BOLAND, Magistrate Judge.
Pending is Becton Dickinson and Company's Emergency Motion to Compel Third-Party Mark Toukan's Compliance With Subpoenas [Doc. #2, filed 3/27/2012] (the "Motion to Compel"). The Motion concerns third-party discovery to be taken in the District of Colorado relating to an underlying patent litigation pending in the Southern District of California.
The Motion seeks an order compelling Mark Toukan, not a party to the underlying action, to produce documents and appear for a deposition. The real controversy, however, concerns the command of the subpoena that Mr. Toukan produce documents and correspondence between Mr. Toukan, on the one hand, and "Gen-Probe, its attorney(s), on the other hand, concerning the patent litigation matter between Gen-Probe and Becton Dickinson & Company." Gen-Probe withheld these documents from production in the underlying action on a claim of attorney-client privilege. In connection with the subpoena at issue here, Gen-Probe's in-house counsel wrote to Mr. Toukan stating, "[W]e request that you not disclose responsive documents to BD's counsel without Gen-Probe's express consent." Mr. Toukan has resisted producing the documents in view of the statement of Gen-Probe's in-house counsel.
The same issue, concerning the claim of privilege to documents between Gen-Probe and Mr. Toukan, was first raised in the Southern District of California. That court has now ruled on the matter, finding that "the subject communications are protected by the attorney-client privilege." Order [Doc. #21-1] at p. 1.
The ruling by the court most familiar with the case is well-reasoned, and I have no issue with it. It resolves the principal dispute between the parties raised in the Motion.
IT IS ORDERED that the Motion [Doc. #2] is GRANTED IN PART and DENIED IN PART as follows:
• DENIED insofar as it seeks an order compelling Mr. Toukan to produce documents and correspondence between Mr. Toukan, on the one hand, and "Gen-Probe, its attorney(s), on the other hand, concerning the patent litigation matter between Gen-Probe and Becton Dickinson & Company";
• GRANTED to require Mr. Toukan to appear for his deposition at such time and place as the parties and Mr. Toukan may agree; and
• GRANTED to require Mr. Toukan to produce at the time of his deposition the remaining documents commanded to be produced by the subpoena.
