*1 This case is before the undersigned pursuant to 28 U.S.C. § 636, the Rules of this Court, and Standing Order 13-02.

Now before the Court is Plaintiff's Motion to Compel Alexion Pharmaceuticals, Inc., to Comply with a Subpoena Duces Tecum [Doc. 137]. Alexion Pharmaceuticals, Inc. (“Alexion”) [Doc. 167] responded in opposition, and Plaintiff replied [Doc. 168]. For the reasons explained below, the Court GRANTS IN PART AND DENIES IN PART Plaintiff's motion [Doc. 137].

I. BACKGROUND

The allegations in this case relate to an antibody, 11-1F4 (the “antibody”), effective in treating amyloidosis that Dr. Solomon created while working as a professor and researcher for the University of Tennessee [Doc. 61 ¶¶ 3–4]. Plaintiff alleges that it acquired all patent rights, property rights, and know-how rights relating to the antibody from Dr. Solomon and his research team [Id. ¶¶ 69–70]. In April 2013, the United States Food & Drug Administration (“FDA”) granted Dr. Solomon approval to begin clinical trials using the antibody [Id. ¶ 42]. In December 2013, Dr. Lentzsch, a professor and researcher at Columbia University, agreed to lead the clinical trials [Id. ¶¶ 42, 47]. Contemporaneous to Dr. Solomon and Dr. Lentzsch's collaboration on the antibody and the clinical trials, employees of Plaintiff and Defendant The Trustees of Columbia University in the City of New York (“Columbia”) negotiated an Inter-Institutional Agreement (the “IIA”) with an effective date of December 16, 2013 [Id. ¶ 47]. Plaintiff states that the IIA only provided Columbia with certain patent rights relating to the antibody, and it expressly excluded any rights to the antibody materials or know-how [Id. ¶ 63].

According to Plaintiff, in January 2017, Fortress Biotech, Inc. (“Fortress”) founded Caelum Biosciences, Inc. (“Caelum”) “to advance the clinical development of research from Alan Solomon, M.D., of the University of Tennessee Graduate School of Medicine, with the goal of improving treatment options for patients with AL amyloidosis [Id. ¶ 1]. On March 14, 2017, Plaintiff, Caelum, and the University of Tennessee entered into the Confidentiality Agreement, wherein the parties could exchange information in connection with a potential sponsored research agreement involving the antibody's technology [Id. ¶ 104]. Caelum agreed that it would not utilize the research material and information received directly or indirectly from Plaintiff [Id. ¶ 110].

Plaintiff alleges that Caelum has breached the Confidentiality Agreement by proceeding to use the antibody's property rights and know-how [Id. ¶ 112]. Plaintiff avers that Caelum is commercializing the antibody, claiming that it owns “worldwide license rights” to it [Id. ¶¶ 1, 6 & 153]. Caelum, however, claims that it received all rights necessary to commercial the antibody from Columbia [Id. ¶¶ 20, 164–66]. Plaintiff challenges this claim, alleging that while Plaintiff and the University of Tennessee collaborated with Columbia University on the development of the antibody, Columbia never had the rights to commercialize the material, know-how, and research data at issue [Id. ¶¶ 82–100].

*2 In the Second Amended Complaint [Doc. 61], Plaintiff asserts various claims against Caelum, including breach of contract, conversion, slander of title, tortious interference with business relationships, unjust enrichment, and misappropriation of trade secrets under the Tennessee Uniform Trade Secrets Act [Id. at 39–61]. Plaintiff also seeks a declaratory judgment that it owns the right, title, and interest in the antibody, related tangible materials, know-how, and confidential research data from the University of Tennessee and its employees and the exclusive commercial rights to the antibody, related tangible materials, know-how, and confidential research data obtained from the National Cancer Institute (“NCI”) [Id. at 62–70].

Relevant to the dispute before the Court, on January 30, 2019, Caelum, Alexion, and Fortress executed the Development, Option and Stock Purchase Agreement (“DOSPA”), wherein Alexion acquired a minority equity interest in Caelum and an exclusive option to acquire the remaining equity in the company [Doc. 166 p. 6]. Plaintiff alleges that Alexion decided to invest in Caelum based on Caelum providing data that had been generated at the University of Tennessee [Doc. 61 ¶ 30]. Plaintiff states that after it filed this case, the parties to the DOPSA amended their agreement in direct response to the litigation [Doc. 166 p. 16]. In September 2021, Alexion exercised its option to acquire Calum pursuant to the DOPSA [Doc. 167 pp. 1–2].

In April 2022, Plaintiff served Alexion with a subpoena duces tecum containing seven (7) requests for production of documents (“RFPs”). In five of the seven RFPs, Alexion declined to search for documents [See Doc. 138-5 pp. 5–9 (declining to search for documents responsive to RFP Nos. 1, 2, 5, 6 & 7)]. In response to the remaining two RFPs, Alexion declined to search for documents but stated that it is “willing to meet and confer regarding a set of custodians and/or a set of search terms to apply to produce documents in response” [Doc. 138-5 pp. 6–7]. Plaintiff and Alexion participated in a meet and confer on May 12, 2022, but arrived at an impasse.

The parties appeared before the Court on June 6, 2022, for a motion hearing.[1] Attorneys Daniel Hipskind, Dorian Berger, and Wayne Ritchie, II, appeared on behalf of Plaintiff. Attorney Zachary Garrett and Joseph Harvey appeared on behalf of Columbia. Attorneys John Elder, Christopher Strongosky, and Anna Finger appeared on behalf of Caelum. Attorney Michael Hynes appeared on behalf of Alexion.

II. ANALYSIS

Federal Rule of Civil Procedure 45 governs discovery requests served on non-parties.[2] Rule 45(d)(1) provides that “a party or attorney responsible for issuing and serving a subpoena must take reasonable steps to avoid imposing undue burden or expense on a person subject to the subpoena.” Courts may quash or modify a subpoena that subjects the non-party to undue burden. Fed. R. Civ. P. 45(c)(3)(iv). In determining whether a subpoena subjects the non-party to an undue burden, courts consider whether the information can be obtained from a more convenient source, including the parties. Raymond James & Assocs., Inc. v. 50 N. Front St. TN, LLC, No. 18-CV-2104-JTF-TMP, 2018 WL 6528192, at *1 (W.D. Tenn. Sept. 10, 2018) (“[N]umerous courts have quashed subpoenas issued to non-parties when the requesting parties could have obtained the documents from other parties.” (collecting cases)); see also Fed. R. Civ. P. 26(b)(2)(C)(i) (stating that the court on its own or by motion may limit the frequency or extent of discovery if it can be obtained from another source that is more convenient).

*3 “[T]he scope of discovery under a subpoena is the same as the scope of discovery under Rule 26.” Hendricks v. Total Quality Logistics, 275 F.R.D. 251, 253 (S.D. Ohio 2011) (quoting Barrington v. Mortgage IT, Inc., No. 07-61304-CIV, 2007 WL 4370647, at *3 (S.D. Fla. Dec. 10, 2007)); see also Porter v. AAR Aircraft Servs., Inc., No. 15-CV-02780-STA-TMP, 2016 WL 10570881, at *3 (W.D. Tenn. Sept. 26, 2016). Rule 26(b)(1) provides as follows:

Fed. R. Civ. P. 26(b)(1). Courts have explained that the “scope of discovery under the Federal Rules of Civil Procedure is traditionally quite broad.” Meredith v. United Collection Bureau, Inc., 319 F.R.D. 240, 242 (N.D. Ohio 2017) (quoting Lewis v. ACB Bus. Serv., Inc., 135 F.3d 389, 402 (6th Cir. 1998)). “Courts are required to balance the need for discovery against the burden imposed on the person ordered to produce documents, and the status of a person as a non-party is a factor that weighs against disclosure.” Sagebrush Solutions, LLC v. Health Mgmt. Sys., 289 F.R.D. 251, 253 (S.D. Ohio 2013); see also In re: Mod. Plastics Corp., 890 F.3d 244, 251 (6th Cir. 2018) (“Undue burden is to be assessed in a case-specific manner considering such factors as relevance, the need of the party for the documents, the breadth of the document request, the time period covered by it, the particularity with which the documents are described and the burden imposed.” (citation omitted)).

As explained below, the Court finds that RFP Nos. 1 and 2 seek relevant information, but the parties shall conduct a meet and confer to determine the appropriate limitations to these RFPs. The Court further finds RFP No. 7 seeks relevant information that is proportional to the needs of this case. Finally, with respect to RFP Nos. 3–6, Alexion has agreed to produce documents from its internal central repository, and the Court finds Alexion shall produce documents from its internal repository to Plaintiff.

A. RFP Nos. 1, 2, and 7

The parties dispute whether Alexion should be compelled to respond to the following RFPs propounded by Plaintiff:

*4 [Doc. 138-1 pp. 8–9].

In Alexion's response to the subpoena, it objected to the above RFPs, stating that the requests were unduly burdensome because Plaintiff could obtain this information from other sources, including the parties to the litigation; that the requests were not narrowly tailored or formed with reasonable particularity; and that the requests seek information protected by the attorney-client and work-product privileges [Doc. 138-5 pp. 5–6, 8–9]. With respect to RFP No. 7, Alexion added to its objection that it seeks information that is confidential and proprietary and that the terms “diligence” and “analysis” are vague [Id. at 8–9]. Alexion declined to search for or produce documents in response to RFP Nos. 1, 2, and 7 [Id. at 5–6, 9].

In its response to Plaintiff's motion to compel, Alexion also claims that the requests seek information that is not relevant to the claims and defenses in this case. Plaintiff counters that Alexion did not raise a relevancy objection in its response to the subpoena, and therefore, Alexion has waived it. The Court, however, will consider Alexion's relevancy objections. A court can consider untimely objections when good cause exists and where there are unusual circumstances, such as “where: (1) the subpoena is overbroad on its face and exceeds the bounds of fair discovery; (2) the subpoenaed witness is a non-party acting in good faith; and (3) counsel for the witness and counsel for the subpoenaing party were in contact concerning the witness's compliance prior to the time the witness challenged the legal basis for the subpoena.” Zamorano v. Wayne State Univ., No. 07-12943, 2008 WL 597224, at *1 (E.D. Mich. Mar. 3, 2008). Here, Alexion reserved its right to raise a relevancy objection to the subpoena [Id. at 3 (“Alexion specifically reserves all objections as to the ... relevancy ... of any documents or the subject matter thereof ....”)]. While this language does appear to be boilerplate, Alexion asserts that the requests are overly broad and during Plaintiff's and Alexion's meet and confer meeting, Alexion asserted that Plaintiff's need for the documents did not outweigh the burden and expense of complying with the subpoena [Doc. 138 ¶ 11]. Under the circumstances, the Court finds it appropriate to consider Alexion's relevancy objections.

With respect to RFP No. 1, Alexion claims that the information it seeks is not relevant as the indemnification provision in the DOPSA that allocates the costs of the litigation amongst Alexion and Caelum does not relate to any claim or defense in this case. Plaintiff counters that the information it seeks is relevant because the parties to the DOPSA added several provisions in direct response to this litigation.[3] Plaintiff states that Alexion's communications with Caelum and its internal communications and documents relating to this litigation are therefore relevant to the core issues in this case, including Caelum's intent. At the hearing, Plaintiff explained that malice is one of the elements in its slander of title claim against Caelum. “Malice is a necessary component of a slander of title claim.” Dauenhauer v. Bank of New York Mellon, 562 F. App'x 473, 483 (6th Cir. 2014) (citation omitted). In order to establish malice, Plaintiff must show that Caelum made statements maliciously or with “reckless disregard of the property owner's rights or reckless disregard toward the truthfulness of the statement.” Thompson v. Bank of Am., N.A., 773 F.3d 741, 754 (6th Cir. 2014) (citation omitted).

*5 In light of the allegation that the parties to the DOPSA amended the agreement in response to the litigation, the Court finds that RFP No. 1 seeks relevant discovery in that it may shed light on what Caelum knew during the relevant time period in which Plaintiff alleges that Caelum made slanderous statements about title to 11-1F4. Moreover, the Second Amended Complaint alleges that Caelum “undertook a campaign of publishing false statements” regarding ownership of the antibody [Doc. 61 ¶ 222], and given Alexion's decision to invest in Caelum to assist in commercializing the antibody [Id. ¶¶ 30–31], the Court finds RFP No. 1 seeks relevant information. The Court further finds that RFP No. 2, which seeks documents, correspondence, and communications relating to the DOPSA amendment, seeks relevant information for similar reasons.

At the hearing, Plaintiff explained that, to the extent the litigation has affected the value of the antibody as illustrated in the DOPSA, such information is responsive to RFP No. 2 and relevant to its damages analysis. With respect to RFP No. 7, Plaintiff acknowledged that Alexion's purchase price of Caelum is public knowledge but stated that the purchase price is not the proper valuation of the antibody. Plaintiff argued that the purchase price is the baseline for its damages, but information regarding the potential profit from owning Caelum is also relevant. While the Court does not opine on how to properly calculate any of the alleged damages in this case, the Court finds that Plaintiff has established the relevancy of information subject to these two requests.

The Court has also considered Alexion's claims of undue burden, especially given its status as a non-party. To the extent Alexion claims that these RFPs are unduly burdensome because they seek documents subject to the attorney-client privilege and the work-product doctrine, such a “blanket assertion is insufficient.” Factory Mut. Ins. Co. v. Derby Indus., LLC, No. 3:17CV-00198-JHM-RSE, 2018 WL 11412924, at *3 (W.D. Ky. Sept. 18, 2018) (citation omitted). The appropriate method to assert a privilege is through a privilege log. See Fed. R. Civ. P.45(e)(2)(A). Alexion also asserts that privileged information is not discoverable pursuant to Rule 26(b)(1), but without a privilege log, Plaintiff cannot properly evaluate Alexion's claims of privilege.

Alexion too argues that Plaintiff should request the documents from Caelum before seeking discovery from Alexion, and as for RFP Nos. 1 and 2, the Court finds merit in this argument. “[C]ourts in this circuit have repeatedly denied motions to compel discovery and quashed subpoenas directed to non-parties where the discovery sought was obtainable from a party to the litigation.” Baumer v. Schmidt, 423 F. Supp. 3d 393, 408 (E.D. Mich. 2019) (collecting cases); see also Fed. R. Civ. P. 26(b)(2)(C)(i). Plaintiff acknowledges, “To start, any documents filed in this case or communications exchanged in this case between [Plaintiff] and Alexion, Caelum or Columbia are not the focus of Document Request No. 1” [Doc. 168 p. 11]. But RFP No. 1 is written so that it seeks such documents. Likewise, RFP No. 2 explicitly requests documents and correspondence to and from Caelum. Plaintiff must seek discovery sought through RFPs Nos. 1 and 2 from Caelum before requiring a non-party to produce such documents. See Fed. R. Civ. P. 45(d)(1) (a party serving the subpoena “must take reasonable steps to avoid imposing undue burden and expense on the subpoenaed party”).

The Court ORDERS Plaintiff and Alexion to participate in a meet and confer within fourteen (14) days to discuss the specific documents Plaintiff seeks in response RFP Nos. 1 and 2 that are relevant to this litigation (i.e., documents related to Caelum's intent and Plaintiff's damages), what appropriate parameters can be put into place to avoid undue expense and burden, and whether Caelum may have possession of any documents Plaintiff seeks in response to these RFPs. Should they arrive at an impasse, they may contact chambers to schedule a hearing.

*6 Plaintiff's RFP No. 7, however, appears to seek documents that Plaintiff cannot obtain from Caelum or Columbia. Alexion contends that any documents reflecting its analysis of Caelum's ownership rights would be protected by the attorney-client privilege. In support of its position, Alexion filed the Declaration of Michael Yamauchi (“Yamauchi”), the Senior Director and Patent Counsel for Alexion, stating the following:

[Doc. 155 ¶¶ 1–3]. Alexion further argues that discovery of any non-privileged documents that do exist is not proportional to the needs of this case and that the burden of requiring Alexion to search for and produce documents far outweighs the importance of the information sought.

The Court has already addressed the relevancy arguments in relation to RFP No. 7. The Court further finds that the relevant information RFP No. 7 seeks is proportional to the needs of this case. While Plaintiff does not request a specific amount of money damages in its Second Amended Complaint, it alleges that Caelum has secured at least $500 million based on the success of the antibody [Doc. 61 ¶ 6]. The Court further finds this discovery is proportional given that it relates to Plaintiff's damages, and Alexion has not sufficiently supported its argument that producing such information constitutes an undue burden or expense. Cratty v. City of Wyandotte, 296 F. Supp. 3d 854, 859 (E.D. Mich. 2017) (“A party objecting to a request for production of documents as burdensome must submit affidavits or other evidence to substantiate its objections.”); see also Waskul v. Washtenaw Cnty. Cmty. Mental Health, No. CV 16-10936, 2021 WL 5049154, at *5 (E.D. Mich. Oct. 31, 2021) (“This burden cannot be sustained with bald generalizations or a conclusory assertion that production will be time-consuming and/or expensive.” (citation omitted)).

Yamauchi provided a declaration stating that he led the due diligence analysis, but he offers no explanation of why producing a privilege log would constitute an undue burden. Further, Alexion has not provided a privilege log in accordance with Rule 26(b)(5)(A) so that Plaintiff cannot properly evaluate Alexion's assertion. CSX Transp., Inc. v. Meserole St. Recycling, Inc., No. 5:06-CV-138, 2009 WL 104262, at *1 (W.D. Mich. Jan. 14, 2009) (explaining that the purpose of a privilege log is to “separate out documents not subject to discovery” and that the “furnishing of a privilege log may satisfy an opposing attorney that he has received all documents to which he is entitled, or he may choose to seek further discovery by challenging the privilege log”); see generally Vector Cap. Corp. v. Ness Techs., Inc., No. 11 CIV. 6259 PKC, 2014 WL 171160, at *3 (S.D.N.Y. Jan. 9, 2014 (explaining that while legal analysis is protected by the attorney-client privilege, in some instances, “the factual information can be severed from the analysis and legal advice”). Thus, the Court ORDERS Alexion to respond to RFP No. 7 within thirty (30) days of this order.

B. RFP Nos. 3–6

*7 Plaintiff's RFP Nos. 3–6 request documents, correspondence, and communications relating to Plaintiff, the University of Tennessee, Dr. Solomon, and Dr. Jonathan Wall [Doc. 138-1 pp. 8–9]. Alexion objected to RFP Nos. 3 and 4 but agreed to participate in a meet and confer to determine appropriate custodians and a set of search terms [Doc. 138-5 pp. 6–7]. Alexion declined to search and produce documents in response to RFP Nos. 5 and 6 [Id. at 7–8].

In its response to the motion to compel, while maintaining its objections that RFP Nos. 3–6 are overbroad, irrelevant, and likely privileged, Alexion has agreed to conduct a “reasonable search of its internal central repository containing information relating to its acquisition of Caelum for any responsive, non-privileged documents relating to [Plaintiff], the University of Tennessee, Dr. Alan Solomon, and/or Dr. Jonathan Wall dated before December 11, 2019 (the filing of this litigation)” [Doc. 167 p. 11].

During the motion hearing, Alexion offered to produce the documents from its internal central repository within two (2) weeks and agreed to further meet and confer with Plaintiff. Plaintiff responded that Alexion's offer to produce documents within two weeks is acceptable, but such documents should also include emails [See also Doc. 168 p. 15]. Alexion's counsel stated that he was not certain whether Alexion's internal central repository contained email communications. The parties also continued to disagree about whether Alexion should produce documents dated after December 11, 2019 [See id. at 15–16].

In light of Alexion's agreement to produce documents from its internal central repository in response to RFP Nos. 3–6, the Court ORDERS Alexion to produce such documents to Plaintiff within fourteen (14) days of this order. After Plaintiff's receipt and review of Alexion's production, if Plaintiff believes additional production is warranted, it SHALL participate in a meet and confer with Alexion to discuss the parameters of such search, including custodial files and an appropriate temporal scope. If Plaintiff and Alexion arrive at an impasse, they may contact chambers to schedule a hearing on the matter.

III. CONCLUSION

For the reasons explained above, the Court GRANTS IN PART AND DENIES IN PART Plaintiff's Motion to Compel Alexion Pharmaceuticals, Inc., to Comply with a Subpoena Duces Tecum [Doc. 137].

IT IS SO ORDERED.

ENTER: