In Re: Motion to Compel Compliance With Subpoena Directed to Department of Veteran Affairs

Citation: Not availableDocket: Misc. No. 2008-0525

Court: District Court, District of Columbia; May 4, 2009; Federal District Court

Original Court Document: View Document

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A Motion to Compel Compliance with a subpoena has been filed by Burlodge Limited against the Department of Veterans Affairs (DVA) in connection with a patent infringement case pending in the U.S. District Court for the Middle District of Tennessee. This case involves a method for preparing and serving food using 'rethermalization' food carts. Although both Burlodge and Standex International Corporation can sell these carts, only Burlodge can grant rights to use its patented method. Burlodge alleges that Standex is selling retherm carts and enabling third parties to use its patented method, specifically noting Standex’s sale of Unitron 7's to the DVA.

On April 4, 2008, Burlodge served a subpoena on the DVA requesting information about the DVA’s use and purchase of the Unitron 7, along with any related correspondence with Standex. The subpoena included a notice of deposition outlining topics such as the meal preparation methods, purchase details, communications with Standex, and cost analyses related to meal services.

Burlodge also requested various documents, including those related to the purchase of Unitron 7 equipment, proposals for rethermalization systems, and financial records regarding meal preparation costs and profits. The DVA refused to comply with the subpoena, citing its Touhy regulations, which dictate its criteria for responding to legal requests. Burlodge argues that Rule 45 of the Federal Rules of Civil Procedure is the applicable standard for compliance, emphasizing the necessity of the information to substantiate its claims of direct patent infringement by Standex and its customers.

Burlodge's potential claim against the DVA hinges on the use of Burlodge's patented method, which could establish 'direct infringement.' Burlodge is seeking information about communications between the DVA and Standex to demonstrate that Standex aided the DVA or was aware that the DVA would utilize Burlodge's patent. The key issues include: (1) whether the DVA acquired retherm carts from Standex, and (2) whether Burlodge’s patented food dispensing method was employed. Burlodge argues that the requested information is 'highly relevant' and permissible under Federal Rule of Civil Procedure 26(b)(1). 

To mitigate any undue burden on the DVA, Burlodge provided a Narrowing Table that limits discovery to specific VAMC facilities potentially using the patented method, identified through information from Standex. The DVA asserts that compliance with the subpoena should be evaluated under the Touhy regulations, which it claims indicate that various factors weigh against compliance. The DVA further argues that if it infringed on Burlodge's patent, the remedy would solely be a suit against the Federal government in the Court of Federal Claims. 

Additionally, the DVA contends that Burlodge's basis for suspicion of infringement—stemming from the Atlanta VA's purchase of retherm carts—is insufficient for discovery. It characterizes Burlodge's motion as irrelevant and a 'fishing expedition' aimed at substantiating its claims against Standex. The DVA also finds the information requested overly broad, as it encompasses all purchases and related data rather than being confined to specific methods associated with the retherm carts. Finally, the DVA argues that responding to the subpoena would impose an undue burden, disrupting operations across multiple facilities and requiring significant resource allocation. 

The legal standards governing compliance with subpoenas from government agencies are defined by the Touhy regulations, established under the Federal Housekeeping Statute, which do not grant the government a separate privilege to withhold information in response to a valid federal subpoena.

Rule 45 applies the privilege and undue burden standard to both document and testimonial subpoenas. The case arises under section 35 of the U.S. Code, addressing inducement to infringe and contributory infringement. The DVA argues that Burlodge's only remedy for patent infringement by the government lies in the Court of Federal Claims under 28 U.S.C. § 1498, suggesting that the discovery sought by Burlodge is irrelevant to a district court case involving private parties. However, the Federal Circuit has indicated that § 1498 does not strip district courts of jurisdiction in patent infringement suits between private parties, viewing it as an affirmative defense rather than a jurisdictional barrier. Consequently, jurisdiction to resolve a motion to quash a subpoena directed at the government remains intact.

The DVA also claims that Burlodge cannot pursue discovery based solely on suspicion. Citing the Federal Circuit's ruling in Micro Motion, Inc. v. Kane Steel Co., the DVA emphasizes the necessity for concrete evidence rather than unfounded allegations to justify discovery. A mere allegation of wrongdoing does not warrant imposing financial burdens on a defendant to support a plaintiff’s case. Discovery is intended to assist in proving a claim believed to be viable, not to ascertain whether a claim exists. Burlodge, however, asserts its exclusive right to permit the use of retherm carts for its patented method and seeks to investigate whether Standex made statements about the equivalence of its systems to Burlodge's methods and whether Standex engaged in active inducement to infringe.

Burlodge must demonstrate a reasonable basis for its claim that the DVA's use of certain carts infringes its patent. The court acknowledges Burlodge's assertion that the carts can be misused, suggesting a potential patent violation. However, this does not automatically justify Burlodge's motion to compel discovery from the DVA. Under Rule 45(c)(1), subpoenas must avoid imposing undue burdens; therefore, the court may quash or modify subpoenas that do so.

Upon evaluating Burlodge's requests against the relevance standard in Rule 26(b)(2), many demands are found lacking, particularly those unrelated to direct infringement, such as inquiries about meal preparation costs. The court identifies that pertinent discovery should focus solely on the instructions provided by Standex to the DVA regarding the system's use.

Burlodge's request to inspect DVA premises is deemed premature and unnecessarily disruptive until relevant information is obtained. Additionally, the court notes that Burlodge has not shown it has pursued information through the Freedom of Information Act or sought relevant data from Standex, which could be more easily accessible.

Because Burlodge has not sufficiently pursued alternative means to obtain necessary information, the subpoena to the DVA is determined to impose an undue burden and is consequently quashed. The motion by Burlodge is denied, and an accompanying order will be issued.