*1 Pending before the Court is Motion to Compel Compliance with Subpoena or Transfer [Doc. 1] filed by Dynatemp International, Inc., Fluorofusion Specialty Chemicals, Inc., Harold B. Kivlan, IV, William Gresham, and David Couchot (“Dynatemp Parties” or “Dynatemp” or Movants). The Movants request the Court to compel compliance with a subpoena served on Thomas Horstemeyer, LLP (“Thomas Horstemeyer” or Respondent) or to transfer this Motion to the United States District Court for the Eastern District of North Carolina pursuant to Federal Rule of Civil Procedure 45(f).

I. BACKGROUND

The Movants assert in their Motion that the District Court for the Eastern District of North Carolina issued a subpoena to the law firm of Thomas Horstemeyer regarding information in connection with pending patent litigation in that court, Dynatemp Int'l, et al. v. R421A LLC, et al., Case No. 5:20-CV-142-FL. [Doc. 1 at 1-2]. In that action, R421A LLC, RMS of Georgia LLC, Kenneth Ponder, and Lenz Sales & Distributing (“RMS Parties”) have alleged that the Dynatemp Parties infringe claims of various patents which an attorney from Thomas Horstemeyer prosecuted before the U.S. Patent & Trademark Office. [Id. at 2-3]. The RMS Parties are represented by Thomas Horstemeyer, among other firms. [Id. at 3].

According to the Movants, the Dynatemp Parties discovered information during discovery in that case which could potentially give rise to an inequitable conduct defense to the RMS Parties' claim of patent infringement. [Doc. 1 at 3]. The Dynatemp Parties then subpoenaed RMS Parties' patent attorneys, Thomas Horstemeyer, which served some written responses to the subpoena and objected to the subpoena. [Id. at 3-4; Doc. 1-1 at 6-15]. The subpoena was issued to Thomas Horstemeyer's place of business in Atlanta on September 20, 2022, by the District Court for the Eastern District of North Carolina. [Doc. 1-1 at 6-15]. The Dynatemp Parties also moved to amend their answer to include the defense of inequitable conduct, and this motion was granted by the North Carolina District Court in May 2023. [Doc. 1 at 4]. Over the next few months, counsel for the Dynatemp Parties and attorneys from Thomas Horstemeyer engaged in a number of discussions about discovery, documents were produced, and a status conference was held at the direction of the Court. [Id. at 5-7].

On September 15, 2023, after the status conference, the Dynatemp Parties wrote to Andrew Crain of Thomas Horstemeyer and explained that at the conference, the Court requested the parties to prepare a status update. [Doc. 1 at 6]. The Dynatemp Parties also asked Mr. Crain whether Thomas Horstemeyer would commit to completing its production by September 29, 2023, and whether Thomas Horstemeyer would consent to a request to move the motion to compel to North Carolina. [Id.]. Although the Dynatemp Parties asked Thomas Horstemeyer to respond by September 18, 2023, Thomas Horstemeyer did not respond to the request to commit to completing its production by September 29, 2023. [Id. at 6-7]. It appears that all communication after the status conference was done via email. [Doc. 1-1 at 1-4, Haas Declaration (“Dec.”) ¶¶ 14-15, Exs. I, K].

*2 Thomas Horstemeyer asserts in its response brief that it initially produced 372 pages of documents responsive to the underlying subpoena on July 11, 2023, and that it produced an additional 1,308 pages of responsive documents on August 9, 2023. [Doc. 6 at 3-4]. According to Thomas Horstemeyer, after the Dynatemp Parties questioned the completeness of the document production, Thomas Horstemeyer provided assurance of additional supplementation on August 15, 2023, and on September 14, 2023. [Id. at 4-5].

During the status conference on September 15, 2023, counsel for RMS informed both the Court and the Dynatemp Parties of his understanding that Thomas Horstemeyer was actively working on producing additional responsive documents in the near future. [Id. at 5]. The Court ordered the parties to meet and discuss their discovery disputes over the next two week, that is, by September 29, 2023, to try to resolve the disputes. [Id.]. Counsel for RMS stated that it was his understanding the Court's reference to “discovery disputes” included the dispute related to Thomas Horstemeyer's production of documents pursuant to the underlying subpoena and that the Dynatemp Parties were requested to give Thomas Horstemeyer until September 29, 2023, to address any lingering discovery disputes that existed between them. [Doc. 6 at 5-6; Doc. 6-2 at 2-4, Staley Dec. ¶ 8]. The Dynatemp Parties filed the present Motion to Compel Compliance with Subpoena or Transfer in this Court on September 22, 2023.[1] [Doc. 1].

II. DISCUSSION

Dynatemp's primary argument is that the enforcement proceeding should be transferred to the Eastern District of North Carolina. [Doc. 1 at 8-18]. Dynatemp argues alternatively that if the Court does not transfer the Motion, Thomas Horstemeyer should be compelled to produce all documents responsive to the subpoena. [Id. at 18-21]. In response, Thomas Horstemeyer argues the Motion is moot because the firm has produced all responsive, non-privileged documents and has continually supplemented its document production. [Doc. 6 at 2-9]. Thomas Horstemeyer also contends that the Motion to Compel is procedurally defective. [Id. at 9-17]. Finally, Thomas Horstemeyer argues the Motion to Transfer does not satisfy the requirements of Rule 45(f). [Id. at 17-24]. The Court will first address the issue of whether the Motion to Compel is procedurally proper.

A. Lack of Certification of Motion to Compel

“Before moving to compel discovery, the federal and local rules of procedure require the moving party to confer in good faith with the other party to resolve the issue and to certify to the court that he or she has done so.” Hays v. Adam, 512 F. Supp. 2d 1330, 1334 (N.D. Ga. 2007) (citations omitted). Local Rule 37.1 requires a motion to compel a response to discovery to include, inter alia, the “certification of counsel with regard to the duty to confer required” by Rule 37. LR 37.1(A)(1), NDGa. Rule 37, in turn, provides that a motion for an order compelling disclosure or discovery “must include a certification that the movant has in good faith conferred or attempted to confer with the person or party failing to make disclosure or discovery in an effort to obtain it without court action.” Fed. R. Civ. P. 37(a)(1).

In the present case, the Motion to Compel does not contain a certification stating that the Dynatemp Parties made a good faith effort to resolve the discovery dispute before filing their Motion with this Court. Without this certification, the Movants have “failed to carry [their] burden of showing that [they] indeed made the required good faith effort.” Ekokotu v. Federal Express Corp., No. 110CV04227RLVGGB, 2011 WL 13137363, at *2 (N.D. Ga. June 8, 2011). Because the Dynatemp Parties' Motion to Compel is not in compliance with Rule 37 or Local Rule 37.1, the undersigned concludes that the Motion should be denied. See Marks v. City of Atlanta, Georgia, No. 1:05-CV-0079-CAP-AJB, 2007 WL 9700632, at *2 (N.D. Ga. Jan. 10, 2007) (“Defendants failed to submit a certification that the parties conferred before moving to compel responses. Accordingly, the Court DENIES Defendants' motion to compel.”), report and recommendation adopted sub nom. Marks v. City of Atlanta, No. 1:05-CV-79-CAP, 2007 WL 9700657 (N.D. Ga. Mar. 21, 2007).

*3 Thomas Horstemeyer also correctly notes that this Court has held that a “reasonable good-faith effort to confer generally requires counsel to address and discuss the discovery requests either in person or by telephone to determine what responsive documents or information the opposing party is reasonably capable of producing and what specific, genuine objections or other issues, if any, cannot be resolved without judicial intervention.” Robinson v. Wells Fargo Bank, N.A., No. 1:10-CV-3819-TCB-GGB, 2012 WL 13130022, at *5 (N.D. Ga. June 7, 2012) (citing, inter alia, Kelly v. Old Dominion Freight Line, Inc., 376 F. App'x 909, 910 (11th Cir. 2010)). “Without such a showing, the motion to compel suffers from a fatal defect and must be denied.” Robinson, 2012 WL 13130022, at *5. “The federal courts have ‘vigorously implemented this requirement.’ ” Id. (quoting 8B Charles A. Wright, et al., Fed. Prac. & Proc. § 2285 (3d ed. 2010)). The Motion to Compel Compliance does not include factual allegations showing that counsel for the Dynatemp Parties made reasonable, good faith efforts to confer with opposing counsel by addressing and discussing the discovery requests in person or by telephone. [Doc. 1]. In fact, it appears that during the relevant time period, all of the communication between counsel was done via email. [Doc. 1-1 at 1-4, Haas Dec. ¶¶ 14-15, Exs. I, K].

As previously noted, Thomas Horstemeyer asserts that during the status conference on September 15, 2023, RMS counsel informed both the North Carolina Court and the Dynatemp Parties of his understanding that Thomas Horstemeyer was actively working on producing additional responsive documents in the near future. [Doc. 6 at 5]. The Court ordered the parties to meet and discuss their discovery disputes over the next two week, that is, by September 29, 2023, to try to resolve the disputes. [Id.]. Counsel for RMS stated that it was his understanding the Court's reference to “discovery disputes” included the dispute related to Thomas Horstemeyer's production of documents pursuant to the underlying subpoena and that the Dynatemp Parties were requested to give Thomas Horstemeyer until September 29, 2023, to address any lingering discovery disputes that existed between them. [Doc. 6 at 5-6; Doc. 6-2 at 2-4, Staley Dec. ¶ 8]. However, the Dynatemp Parties filed the present Motion to Compel Compliance in this Court on September 22, 2023. [Doc. 1].

In sum, the Dynatemp Parties' Motion to Compel does not include a certification that the parties conferred before moving to compel. The record also does not indicate that the Dynatemp Parties made reasonable, good faith efforts to confer with opposing counsel in person or by telephone. For these reasons, to the extent the Dynatemp Parties move to compel compliance with the subpoena, the Court RECOMMENDS that the Motion to Compel [Doc. 1] be DENIED.

B. Motion to Transfer

However, if the District Court finds that the substance of the Dynatemp Parties' Motion [Doc. 1] should be addressed, for the reasons discussed infra, the undersigned recommends that the subpoena-related Motion be transferred. The Dynatemp Parties request that the Court transfer this matter to the Eastern District of North Carolina pursuant to Rule 45(f). The underlying subpoena was issued to Thomas Horstemeyer in connection with pending patent litigation in the District Court for the Eastern District of North Carolina, Dynatemp Int'l, et al. v. R421A LLC, et al., Case No. 5:20-CV-142-FL. [Doc. 1 at 1-2]. In that case, the RMS Parties have alleged that the Dynatemp Parties infringe claims of various patents which an attorney from Thomas Horstemeyer prosecuted before the U.S. Patent & Trademark Office. [Id. at 2-3]. The RMS Parties are represented by Thomas Horstemeyer, among other firms. [Id. at 3]. The subpoena was issued to Thomas Horstemeyer's place of business in Atlanta on September 20, 2022. [Doc. 1-1 at 6-15].

Federal Rule of Civil Procedure 45 governs motions related to subpoenas and provides that such motions must be filed in the district where compliance with the subpoena is required. The Rule provides that “a subpoena must be issued by the court where the underlying action is pending, but challenges to the subpoena are to be heard by the district court encompassing the place where compliance with the subpoena is required.” Woods ex rel. U.S. v. SouthernCare, Inc., 303 F.R.D. 405, 406 (N.D. Ala. 2014) (citing Fed. R. Civ. P. 45(a)(2), (d)(3)(A)). When compliance with the subpoena is disputed, Rule 45(f) allows the court where compliance is required to transfer a subpoena-related motion to the court that issued the subpoena. Fed. R. Civ. P. 45(f). However, the transfer is only permissible “if the person subject to the subpoena consents or the court finds exceptional circumstances.” Id. In the present case, Thomas Horstemeyer does not consent to the transfer of the Motion to Compel, so the undersigned must determine whether exceptional circumstances exist. [Doc. 6 at 18].

*4 Rule 45(f) does not define “exceptional circumstances” or explain what qualifies. However, the Advisory Committee Notes state the following:

Fed. R. Civ. P. 45(f) Advisory Committee Notes (2013). “A district court should look to a variety of factors to determine if the judge from the issuing court is in a better position to rule on the motion due to [his or] her familiarity with the full scope of the issues involved as well as any implications the resolution of the motion will have on the underlying litigation.” The Dispatch Printing Co. v. Zuckerman, No. 16CV80037BLOOMVALLE, 2016 WL 335753, at *2 (S.D. Fla. Jan. 27, 2016) (citation and internal quotation marks omitted). “These factors include the complexity, procedural posture, duration of pendency, and the nature of the issues pending before, or already resolved by, the issuing court in the underlying litigation.” Id. (citations and internal quotation marks omitted).

The undersigned finds that an evaluation of these factors support transferring the present Motion to Compel Compliance. [Doc. 1]. Thomas Horstemeyer asserts that its personnel who have access to its business records, electronically stored information, and systems are located only in Atlanta. [Doc. 6 at 19]. The firm also claims that no Thomas Horstemeyer attorney is currently counsel of record in the underlying litigation because one of the attorneys is no longer counsel of record for the RMS Parties and the other attorneys identified by Dynatemp in the Motion are no longer affiliated with Thomas Horstemeyer. [Id. at 20]. Based on these assertions, Thomas Horstemeyer argues that Rule 45(f)'s “exceptional circumstances” requirement is not satisfied because it would be more burdensome for the firm to litigate the instant Motion in the Eastern District of North Carolina than in this district. [Id.]. The Court disagrees.

If the Motion to Compel is transferred, it appears Thomas Horstemeyer may experience an additional burden; however, other factors clearly favor transfer. As the Dynatemp Parties note, attorneys from the Thomas Horstemeyer firm have appeared in the underlying action since 2020. [Doc. 1 at 11-12]. In addition, the underlying North Carolina case involves a complex patent dispute that has been pending for more than three years. [Id. at 12-13]. “The complexity of the underlying litigation favors finding exceptional circumstances to transfer these subpoena related motions.” AT&T, Corp. v. Voxon LLC, No. 8:22-MC-43-WFJ-AAS, 2022 WL 17487984, at *2 (M.D. Fla. Dec. 7, 2022); accord The Dispatch Printing Co., 2016 WL 335753, at *3 (“[T]he duration of the Civil Case, combined with its complex history, weighs in favor of finding exceptional circumstances.”). Furthermore, the judge in that case is familiar with the full scope of issues involved and has been active in resolving discovery disputes. Given these facts, “[w]ithout a transfer, there is a risk of conflicting rulings on the relevance of the subpoenaed documents.” Honeywell Int'l Inc. v. Narco Asbestos Pers. Inj. Settlement Tr., No. 8:21-MC-157-CEH-AAS, 2021 WL 6118078, at *2 (M.D. Fla. Dec. 27, 2021).

*5 The Dynatemp Parties also note that the judge recently allowed them to amend their counterclaims and affirmative defenses, which are relevant to the subpoena at issue. [Doc. 1 at 13-14]. The judge in the underlying case issued an order specifically referencing the present subpoena, and the enforcement of the subpoena will have an effect on that Court's case management. [Id. at 14-16].

In conclusion, the “exceptional circumstances here—the risk of inconsistent discovery rulings, the complexity of the case, as well as the interests of judicial economy and efficiency—outweigh the interest [Thomas Horstemeyer] has in litigating [the Dynatemp Parties'] motion to compel locally.” AT&T, Corp., 2022 WL 17487984, at *2. The undersigned is also “unpersuaded that transfer will impose an undue burden that would have the effect of canceling out the exceptional circumstances weighing heavily in favor of transfer.” The Dispatch Printing Co., 2016 WL 335753, at *4. Therefore, if the District Court finds that the substance of the present Motion should be addressed, it is RECOMMENDED that the Motion [Doc. 1] be TRANSFERRED to the United States District Court for the Eastern District of North Carolina.

III. CONCLUSION

As discussed supra, the Dynatemp Parties' Motion to Compel does not include a certification that the parties conferred and there is no evidence that the Dynatemp Parties made reasonable, good faith efforts to confer with opposing counsel in person or by telephone before moving to compel. For these reasons, to the extent the Dynatemp Parties move to compel compliance with the subpoena, the undersigned RECOMMENDS that the Motion to Compel [Doc. 1] be DENIED.

However, if the District Court finds that the substance of the present Motion should be addressed, the undersigned RECOMMENDS that the Motion [Doc. 1] be TRANSFERRED to the United States District Court for the Eastern District of North Carolina because the pertinent facts weigh in favor of finding exceptional circumstances as required by Rule 45(f).

As this is a Final Report and Recommendation and there are no other matters pending before this Court, the Clerk is DIRECTED to terminate the reference to the undersigned.

SO REPORTED AND RECOMMENDED, this 8 day of November, 2023.