*1 Before the Court are two interrelated discovery motions from Defendant Analog Devices, Inc. (“ADI”) in a long-running patent infringement dispute. First is ADI's motion for protective order (Docket No. 186), seeking to prevent Plaintiff Ocean Semiconductor, LLC (“Ocean”) from deposing several current ADI employees. Second is ADI's motion to quash third-party subpoenas (Docket No. 189), seeking to prevent Ocean from deposing several former ADI employees. Judge Saris has referred these motions to me. Docket No. 192. In all, Ocean noticed depositions of nine current and former ADI employees, and ADI seeks to quash the lot of them.

There has been extensive briefing on the two motions, much of it repeating the same arguments and facts. As to the motion for protective order: ADI filed a memorandum in support of the motion (Docket No. 187); Ocean filed an opposition (Docket No. 191); ADI filed a reply (Docket No. 196); and Ocean filed a sur-reply (Docket No. 200). Same story for the motion to quash. See Docket Nos. 190 (ADI's memorandum in support), 197 (Ocean's opposition), 203 (ADI's reply), 206 (Ocean's sur-reply).

On April 3, 2024, I held a hearing on the two motions and took the matter under advisement. At that hearing, I invited Ocean to submit a proposed outline of depositions—aimed at narrowing the scope of inquiry while allowing some discovery—and I invited ADI to respond. See Docket No. 211. The parties have since made these submissions. See Docket Nos. 216 (Ocean's Proposed Deposition Plan), 219 (ADI's Response to Plaintiff's Proposed Deposition Plan).

For the following reasons, the Court GRANTS in part the motion for protective order and DENIES the motion to quash third-party subpoenas as moot.

I. Background

ADI is a semiconductor company that designs and manufactures integrated circuits. Ocean is a non-practicing entity and the owner by assignment of certain patents. Ocean alleges that ADI has sold products that were manufactured, either directly by ADI or indirectly by third-party foundries that partner with ADI, using systems that infringe on one or more of Ocean's patents. Ocean's patents, roughly speaking, are method patents that concern quality control processes in the semiconductor manufacturing industry.

Ocean filed its original complaint on December 31, 2020. In that complaint, Ocean identified seven patents as the basis of its infringement claims: U.S. Patent Nos. 6,660,651 (“the ‘651 patent”), 6,907,305 (“the ‘305 patent”), 6,725,402 (“the ‘402 patent”), 6,968,248 (“the ‘248 patent”), 7,080,330 (“the ‘330 patent”), and 6,836,691 (“the ‘691 patent”), and 8,676,538 (“the ‘538 patent”). Ocean alleged that ADI or the third-party foundries utilized certain systems (designed by third-party suppliers) that infringed on the patents, including ASML's TWINSCAN, Applied Materials’ E3, PDF Solutions’ Exensio, camLine's LineWorks, and ASML's YieldStar. See, e.g., Docket No. 1 ¶¶ 74, 95, 115, 155, 176, 199. Each of these allegations also included the notation that ADI may have used “similar systems (e.g., with similar technical and functional features)” to infringe on the patents. See id.

*2 On August 5, 2022, Ocean filed its first amended complaint (“FAC”). In that complaint, Ocean raised infringement claims based on the same seven patents. Ocean's allegations relied on the use of some of the same systems: ASML's TWINSCAN, PDF Solutions’ Exensio, camLine's LineWorks, and ASML's YieldStar. See, e.g., Docket No. 61 ¶¶ 83, 105, 129, 175, 197, 220. Ocean's allegations also relied on two new systems: Applied Materials’ AM/RTD and PDF Solutions’ Maestria. See, e.g., Docket No. 61 ¶¶ 129, 152, 197. As before, each of the allegations also included the notation that ADI may have used “similar systems (e.g., with similar technical and functional features)” to infringe on the patents.

On October 12, 2022, Ocean filed a Notice of Voluntary Dismissal of its claims as to the ‘651 patent. See Docket No. 91.

On December 19, 2022, Judge Saris held a hearing with the parties, at which Ocean confirmed that one of its foundry partners, TSMC, entered a licensing agreement with Ocean. Judge Saris ruled that the licensing agreement effectively mooted claims of indirect infringement through TSMC. See Docket No. 118, at 14. At that hearing, Judge Saris also noted that, with respect to considering infringement claims based on ADI's use of tools created by third parties, she is “not likely to allow ‘and similar products,’ ” but would instead “look at the specific systems.” Id. at 45.[1]

On March 28, 2023, Judge Saris issued an order dismissing the allegations concerning the ‘691 patent in the FAC, without prejudice to repleading infringement of claims 4 and 5 of that patent. See Docket No. 126, at 19.

On April 27, 2023, Ocean filed its second amended complaint (“SAC”). The SAC recognized that Ocean's assertions were limited by the outcome of certain administrative appeals to the U.S. Patent and Trademark Office (“PTO”).[2] The SAC also recognized that Ocean's assertions were limited by its voluntary dismissal of the ‘651 patent claims, and by orders from Judge Saris as to the ‘691 patent and the ‘330 patent. See Docket No. 134, at 1. Ocean's allegations relied on use of systems that were not identified in the original complaint or the FAC: Inficon's FabGuard and “KLA metrology systems and software and/or Hitachi measurement systems such as the CG5000 and/or CG6300.” See, e.g., Docket No. 134 ¶¶ 60, 80, 106. As before, each of the allegations also included the notation that ADI may have used “similar systems (e.g., with similar technical and functional features)” to infringe on the patents. See id.

*3 Shortly thereafter, on May 24, 2023, Ocean filed its third amended complaint (“TAC”). The TAC contained minimal substantive changes from the SAC. Ocean's allegations in the TAC relied on the use of the same systems identified in the SAC: Inficon's FabGuard and “KLA metrology systems and software and/or Hitachi measurement systems such as the CG5000 and/or CG6300.” See, e.g., Docket No. 142 ¶¶ 60, 80, 106. As before, each of the allegations also included the notation that ADI may have used “similar systems (e.g., with similar technical and functional features)” to infringe on the patents. See id.

ADI filed a motion to dismiss Counts II and III of the TAC, alleging infringement, respectively, of the ‘691 Patent and the ‘330 Patent.[3] On October 11, 2023, Judge Saris entered an order dismissing Count II of the TAC, in part.[4] Count II had alleged infringement of the ‘691 Patent under several theories of liability, namely direct infringement under 35 U.S.C. § 271(a), induced infringement under 35 U.S.C. § 271(b), and importation of infringing products under 35 U.S.C. § 271(g). Ocean only identified one system, Inficon's FabGuard, as the basis of the infringement of claims 4 and 5 of the ‘691 Patent, while also noting that ADI may have used “similar systems (e.g., with similar technical and functional features).” Judge Saris found that Ocean had plausibly alleged infringement of claims 4 and 5 of the ‘691 Patent. See Docket No. 166, at 4–6. Judge Saris also found that while Ocean had plausibly alleged importation of infringing products, Ocean had not plausibly alleged the scienter element required to make out an inducement claim. See id. at 6–17.

Accordingly, the only operative theories of liability relevant to this discovery dispute are direct infringement of claims 4 and 5 of the ‘691 patent, in violation of 35 U.S.C. § 271(a), and the importation of products infringing claims 4 and 5 of the ‘691 patent, in violation of 35 U.S.C. § 271(g). As to those theories, Ocean has—to date—specifically identified only Inficon's FabGuard system as the infringing system, although Ocean alleges that ADI may have used “similar systems.”

On November 15, 2023, Judge Saris entered an amended scheduling order, which set a fact discovery deadline of September 27, 2024. Docket No. 174.

On January 10, 2024, Judge Saris held a claim construction hearing, during which the parties discussed the status of discovery. Judge Saris ordered the parties “to engage in discovery as ordered by the Court and as stated on the record.” Docket No. 181. Several of those discussions merit summary:

Two days after the claim construction hearing, Ocean noticed nine depositions addressed to current and former ADI employees. Ocean and ADI held a meet and confer, during which ADI argued that discovery related to the ‘691 patent should be limited to three systems: PDF Solutions’ Maestria, camLine's LineWorks, and Inficon's FabGuard. Docket No. 187-14, at 3. In response, Ocean argued that discovery should extend to “systems, platforms, and/or tools” that ADI (and three third-party foundries) uses “for metrology, process control, and/or fault detection” and identified a list of ten companies as the potential supplier(s) of those systems. Id.

On March 28, 2024, Ocean filed a motion for leave to amend its preliminary infringement contentions, identifying certain systems supplied by six third-party companies: Inficon, Inc. (“Inficon”); Applied Materials, Inc. (“Applied Materials”); Onto Innovation, Inc. (“Onto”); KLA Corporation (“KLA”); Rockwell Automation, Inc. (“Rockwell”); and Nova Measuring Instruments Ltd (“Nova”). See Docket No. 214, at 5.[5] ADI has opposed Ocean's motion, arguing that the “new information” upon which Ocean's motion relies is a public website that has shown the same information since 2014 and contending that the proposed amendment identifies “over sixty new systems and tools.” See Docket No. 218, at 13, 17.

At the hearing on the instant motions, I asked Ocean to propose a list of deposition topics, limited by scope. And I invited ADI to respond to Ocean's proposal. Ocean agreed, effectively recognizing the need for a limited protective order as to the subject matter of the depositions. As noted above, Ocean filed its proposal (Docket No. 216), and ADI filed its response (Docket No. 219).

Ocean proposes to depose only three individuals, all of whom are current ADI employees. Ocean has agreed to “set aside” the depositions of former ADI employees and to “inform the Court if it believes that the testimony of any of these subpoenaed witnesses becomes necessary.” Docket No. 216, at 2. This concession moots ADI's motion to quash the third-party subpoenas.

*5 Ocean also proposes four topics for the individual depositions: two concerning processes potentially infringing claim 1 of the ‘691 Patent, one concerning processes potentially infringing claims 4 and 5 of the ‘691 Patent, and one seeking to identify “systems or tools” that perform those processes, “including, without limitation, those Ocean has identified in its Amended Infringement Contentions.” Id. at 6.

ADI's response repeats the arguments that ADI raised in its motions to quash the individual depositions, and suggests that an appropriate limitation would a 30(b)(6) deposition on the topic of whether “the accused systems specifically identified in Ocean's operative complaint” (i.e., Inficon's FabGuard) performs the method described in claims 4 and 5 of the ‘691 Patent.

II. Motion for Protective Order

As a general matter, “[p]arties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case.” Fed. R. Civ. P. 26(b)(1). Further “because ‘discovery itself is designed to help define and clarify the issues,’ the limits set forth in Rule 26 must be ‘construed broadly to encompass any matter that bears on, or that reasonably could lead to other matters that could bear on, any issue that is or may be in the case.’ ” In re New England Compounding Pharmacy, Inc. Prods. Liab. Litig., No. MDL 13-2419, 2013 WL 6058483, at *3 (D. Mass. Nov. 13, 2013) (citing Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978)).

Discovery may be limited upon a request that the court, “for good cause, issue an order to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense.” Fed. R. Civ. P. 26(c)(1) (emphasis added). Protective orders are subject to tailoring by the court for a particular purpose; Rule 26(c) enumerates the various forms that a protective order may take, including: “forbidding the disclosure or discovery”; “prescribing a discovery method other than the one selected by the party seeking discovery”; and “forbidding inquiry into certain matters, or limiting the scope of disclosure or discovery to certain matters.” Id.

Specific to discovery taken through depositions, the Federal Rules of Civil Procedure provide that a party may seek a protective order to terminate or limit a deposition on the grounds that “it is being conducted in bad faith or in a manner that unreasonably annoys, embarrasses, or oppresses the deponent or party.” Fed. R. Civ. P. 30(d)(3)(A).

Only in exceptional circumstances will the Court prohibit a deposition in its entirety. See Salter v. Upjohn Co., 593 F.2d 649, 651 (5th Cir. 1979) (“It is very unusual for a court to prohibit the taking of a deposition altogether and absent extraordinary circumstances, such an order would likely be in error.”); see also Baron Fin. Corp. v. Natanzon, 240 F.R.D. 200, 202 (D. Md. 2006) (noting that the majority of federal courts deny motions to stay depositions). One reason blanket orders barring depositions are disfavored is that they require the court to decide, a priori, that there are no permissible questions to be asked (i.e., that all possible questions would fall into the categories required by Rule 26(c)). See Micro Motion, Inc. v. Kane Steel Co., 894 F.2d 1318, 1328 (Fed. Cir. 1990) (“Until the subpoenaed person is asked specific questions during the deposition, the deponent has, in virtually all cases, no basis to invoke the protective principles of Rule 26(c) in advance of his appearance, except as to the convenience of the time or place for the deposition.”).

*6 In the same vein, courts rarely accept lack of relevance as sufficient grounds to limit deposition testimony. See Conning v. Halpern, No. 18-cv-12336-ADB, 2020 WL 5803188, at *3 (D. Mass. Sept. 29, 2020) (“Lack of relevance is not referenced in Rule 30 as a sufficient justification for instructing a deponent not to answer a question and courts have generally held that it is not.”). This is because “relevancy must be broadly construed at the discovery stage such that information is discoverable if there is any possibility that it might be relevant to the subject matter of the action.’ ” Id. at *2 (quoting Viscito v. Nat'l Planning Corp., No. 18-cv-30132, 2019 WL 5318228, *1 (D. Mass. Oct. 21, 2019)).

ADI seeks a protective order to bar all of Ocean's proposed depositions of fact witnesses. As grounds for such an order, ADI contends that it anticipates that Ocean will use the depositions to conduct “fishing expeditions” to identify additional, unaccused systems that Ocean may then use as a basis for its infringement claims. Docket No. 187, at 4. ADI argues that, had Ocean wished to obtain discovery only as to the specifically identified accused systems, Ocean should have noticed a 30(b)(6) deposition to ADI, or else a personal deposition of Brett Carlson, the individual that ADI has identified as having knowledge of Maxim's use of the accused system, Inficon's FabGuard.[6] Id. at 3, 5–6. In the alternative, ADI argues that “even if the Court were inclined to allow some of the depositions, it should nevertheless issue an order limiting their scope to forbid any fishing into unaccused systems.” Id. at 7.

Ocean contends that it should be permitted to seek discovery into “similar systems” and contends that it has adequately specified the systems in question by providing a list of third-party “suppliers of systems for process control, metrology, and fault detection and classification in semiconductor manufacturing” that have contracted with ADI. Docket No. 191, at 9–10. Ocean argues that its inquiry should not be limited to the FabGuard system it has already identified, because—Ocean claims—other systems may be using infringing methods to perform the same functions, and information about such systems is not “in the public domain.” Ocean supports this argument with two central assertions: 1) that the semiconductor industry “closely guards its manufacturing process,” and 2) that ADI uses “multiple manufacturing tools” to practice the ‘691 patent. Id. at 5, 11, 13.

Although ADI insists that Ocean's noticed depositions are proof that Ocean is on a “fishing expedition,” talismanic words alone are not sufficient to negate Ocean's right to discovery. Judge Saris has denied ADI's motion to dismiss this case in its entirety, and discovery must proceed. The question is not whether discovery will be permitted; the question is what discovery is appropriate in the context of a patent infringement claim that has been significantly circumscribed by the Judge Saris's rulings.

Within this broader question, I see two main issues. First, should the depositions be permitted to occur at all? Second, if the depositions are permitted to occur, what is an appropriately limited protective order? I address each in turn.

*7 In support of its argument for a protective order barring the depositions entirely, ADI points to a handful of cases, none of which bears much resemblance to the circumstances here. Of the cases ADI cites, the closest, procedurally, is Sanofi-Synthelabo v. Apotex Inc., No. 02-cv-2255, 2009 WL 5247497 (S.D.N.Y. Dec. 30, 2009). That is to say, in Sanofi-Synthelabo, the court entered a protective order to stop a 30(b)(6) deposition and several individual depositions on the basis of relevance. That, of course, is the kind of relief that ADI seeks here.

Apart from the desired outcome, and the bare fact that a patent was involved, Sanofi-Synthelabo offers no meaningful point of comparison with the matter at bar. In Sanofi-Synthelabo, the parties had entered into a settlement agreement requiring the defendant to pay damages based on sales of its infringing products, and that agreement included a proviso that such damages would be reduced if the plaintiff marketed an authorized generic version of the brand-name product. The defendant sought individual depositions and a 30(b)(6) deposition to explore the plaintiff's marketing strategy, based on the defendant's contention that the plaintiff had reduced the marketing of its brand-name product, with the effect of driving down sales in a manner that was comparable to marketing a generic product. The Sanofi-Synthelabo court rejected the defendant's gambit, ruling that discovery into the plaintiff's marketing strategy was completely irrelevant, since the plaintiff had not marketed an authorized generic. As the court noted, the plaintiff's conduct did “not fall within the plain and unambiguous meaning of the contract that contemplate[d] the ‘launch of an authorized generic drug.’ ” Id. at *2. The court examined the deposition notices and noted that the 30(b)(6) deposition notice identified only topics related to the plaintiff's marketing of its brand-name product. While the individual deposition notices did not list topics, the defendant's briefing represented that those depositions would seek similar information. Because the defendant only sought information that the court found to be irrelevant, as a matter of contractual interpretation of the settlement agreement, the court granted the plaintiff's motion for protective order. See id. (citing Jones v. Hirschfeld, 219 F.R.D. 71, 78 (S.D.N.Y. 2003).

The salient point in Sanofi-Synthelabo is that there was a specific document, the parties’ settlement agreement concluding the litigation, which permitted a bright-line relevance determination with respect to the entirety of the proposed questioning. The scope of discovery in Sanofi-Synthelabo was limited by the terms of the settlement agreement, which the court found to be unambiguous; extrinsic evidence about marketing of the brand-name product was plainly irrelevant, as a matter of law. Here, by contrast, discovery is still underway as to Ocean's patent infringement case in chief.[7]

*8 The circumstances in this case, in contrast to Sanofi-Synthelabo, do not lend themselves to simple, bright-line rulings. Judge Saris has determined that the complaint against ADI plausibly alleges infringement of two claims in the ‘691 Patent. The goal now is to fashion a practicable discovery plan to determine, expeditiously, whether there are facts to support Ocean's surviving infringement theories. Setting parameters for discovery, therefore, entails a somewhat nuanced judgment. The challenge is to permit discovery that will enable Ocean to develop the relevant facts, while guarding against open-ended, and potentially disproportionate, exploratory forays.

At the hearing on the parties’ discovery motions, ADI relied heavily on Micro Motion, Inc. v. Kane Steel Co., 894 F.2d 1318 (Fed. Cir. 1990), a case that was cited in Ocean's opposition brief and was first argued in ADI's favor in ADI's reply brief. In Micro Motion, the plaintiff sought discovery from a third party, purportedly as part of an effort to substantiate various potential theories of damages, by exploring the third party's sales of products that competed with a patented device. In the passages that ADI relies on, the Federal Circuit analogized the proposed third-party discovery in support of a market-survey/damages theory with merits discovery against a defendant and noted that “were suit brought ... on a mere suspicion of infringement, discovery would not be allowed based on an allegation alone.” Id. at 1327. The Federal Circuit further noted that “Rule 26(g) requires a party to make a ‘reasonable inquiry’ before seeking discovery, and parallels the thrust of Rule 11 with respect to making allegations in a complaint.” Id.; see generally Fed. R. Civ. P. 11(b) (requiring “inquiry reasonable under the circumstances” that factual contentions in papers submitted to court are likely supported by evidence in course of discovery); Fed. R. Civ. P. 26(g)(1) (requiring “reasonable inquiry” that discovery requests are warranted). In Micro Motion, the Federal Circuit found that the plaintiff had not made a reasonable inquiry into the relevance of its discovery requests and, applying an abuse of discretion standard, reversed the district court judge who had denied the third party's motion to quash the discovery.

Although Micro Motion cannot bear the weight that ADI attempts to load onto it, several aspects of that decision warrant consideration. There are important contrasts, as well as some similarities, with this case.

The plaintiff in Micro Motion had served 30(b)(6) deposition subpoenas and document requests on a third party. The plaintiff had requested a “sample” of each model of various products for measuring fluid flow, along with documents showing the configuration and operation of the products, and comparisons of the third party's products with the alleged infringing product. The court focused on the breadth of this request and noted that the plaintiff “virtually admits” that the plaintiff does not know whether the third party's products infringe on the patent “by asking for models of [the third party's] products so that it can determine whether they infringe.” Micro Motion, 894 F.2d at 1327. Because that type of product “can be made without infringing [the plaintiff's] patents,” the failure to request particular products showed the court that the plaintiff “can have only a suspicion of infringement.” Id. The court also noted that the plaintiff “has supplied no evidence or affidavit which indicates that [the plaintiff] has made a reasonable inquiry into the nature” of the third party's products. Id. (opining that the plaintiff's request relies on “its studied ignorance,” which could be cured by researching the third party's publicly marketed products). The Federal Circuit concluded that the plaintiff's broad discovery requests could aptly be characterized as a “fishing expedition” and quashed the subpoenas.

*9 In considering the significance of Micro Motion for this case, it is essential to bear in mind that the subpoena at issue in that case was aimed, not at the merits of any infringement claim, but at an abstruse theory of damages that extended to an entire market for flow meter products, infringing and non-infringing alike. As the Federal Circuit noted in Micro Motion, extending discovery on the basis of such a damages theory threatened to turn a complex patent case “into an absolute quagmire of proofs concerning a dozen or so other products that are related to the main suit only with respect to damages.” 894 F.2d at 1324.

In this case, by contrast, the discovery that Ocean seeks is related, not to some market-wide damages theory, but to the merits of Ocean's infringement claim against ADI. Unlike Micro Motion, which dealt with a discovery request to a non-party who was not alleged to have committed any patent infringement, this case involves requests for discovery from a defendant who has been accused of infringement in a complaint that has survived a motion to dismiss.

It also bears noting that Micro Motion was a direct appeal from a district court decision (D. N.J.) granting a stand-alone motion to compel responses to a third-party subpoena, while a completely different court (N.D. Cal.) was responsible for adjudicating the underlying patent case. Thus, as the Federal Circuit made clear, the court whose order was under review had not been in the “best position” to gauge the significance/relevance of the requested discovery against the backdrop of the litigation as a whole. Id. at 1324. Here, by contrast, the same Court will determine the substantive merits of the case as well as matters concerning discovery; this Court has as good a vantage point as any to determine whether proposed discovery is “proportional to the needs of the case.” Fed. R. Civ. P. 26(b)(1).

ADI also ignores that the Micro Motion decision does not provide any general support for blanket orders to halt individual depositions on relevance grounds, as ADI proposes to do here. On the contrary, the Federal Circuit acknowledged in Micro Motion:

894 F.2d at 1328 (emphasis added).

The “general rule” against wholesale prohibitions on taking depositions, which Micro Motion reiterates, retains its potency. It is telling that ADI fails to cite a single case that post-dates the 1990 Micro Motion decision to support the remarkably broad preemptive order that ADI seeks. Indeed, ADI has not identified any case in which individual depositions seeking information about an infringement claim were quashed based on a lack of “reasonable inquiry” into the particulars of the infringement, or based on suspicion that the depositions might ultimately fail to unearth evidence that would be helpful to a plaintiff's claim. I find no reasonable basis for a protective order prohibiting the noticed depositions, wholesale, as requested by ADI.

Even though Micro Motion does not support ADI's position in the way ADI claims, there is considerable value in the Federal Circuit's observations that discovery in a patent case ought to be aimed at fleshing out an existing infringement claim and ought not be an exploratory expedition to identify new claims. This logic is embedded in amendments to Rule 26, which post-date the Micro Motion decision. Whereas Rule 26 once permitted discovery into matters “relevant to the subject matter involved in the pending action,” the rule now specifies that discovery must be “relevant to a[ ] party's claim or defense.” See Fed. R. Civ. P. 26(b)(1) advisory committee's notes to 2000 amendment (“The rule change signals to the court that it has the authority to confine discovery to the claims and defenses asserted in the pleadings, and signals to the parties that they have no entitlement to discovery to develop new claims or defenses that are not already identified in the pleadings.”).

*10 Simply put, the goal here is to identify a workable boundary that will, on the one hand, permit Ocean to develop the facts relevant to its claim that ADI uses its patented method in some portions of ADI's manufacturing process without, on the other hand, inviting Ocean to “do a fishing expedition and get everything under the sun.” Docket No. 184, at 50–51. Although Ocean seeks evidence about the operation of systems used by ADI in its manufacturing process, those systems are designed by third parties. It would make no sense to permit an open-ended inquiry into any and all third-party systems that ADI uses in its manufacturing and testing operations.

Intoning its “fishing expedition” refrain, ADI insists that, if Ocean does not know precisely which systems ADI uses, then Ocean's requests for information about such third-party supplied systems are too exploratory to warrant discovery. Ocean, by contrast, complains that ADI alone is in a position to know what systems it uses to perform the functions that—Ocean contends—are accomplished by methods that infringe Ocean's patent. Although both parties’ positions lose force if taken to extremes, it is not unusual that “information asymmetry” may “mean that the burden of responding to discovery lies heavier on the party who has more information, and properly so.” Fed. R. Civ. P. 26(b)(1) advisory committee's notes to 2015 amendment.

Ocean's initial proposal for nine depositions of current and former ADI employees offered little in the way of specifics about what would be covered, and that lack of specificity was a focus of attention at the hearing on the pending motions. In response to my order, Ocean has now submitted a significantly narrower proposal for depositions, reducing the number of depositions from nine to four (three individually identified deponents and one 30(b)(6) representative deponent). Equally significant, Ocean has now identified the topics, and an outline of questions, which it plans to cover at the individual depositions. By showing its hand, Ocean has made the strategic gamble that the identified deposition topics are sufficiently relevant to avoid a blanket order precluding it from taking any depositions at all.

ADI has responded to Ocean's revised proposal with yet another chorus of its anti-fishing song (see Docket No. 2019), hewing to its position that Ocean should be prohibited from inquiring about any manufacturing control systems that may infringe Ocean's method patent, apart from Inficon's FabGuard, which is apparently a system that ADI did not use during the relevant period. See Docket No. 219, at 3 (proposing a single topic for a 30(b)(6) deposition, limited to “the accused systems specifically identified in Ocean's operative complaint”); see also Docket No. 187-12, at 3, 5 (noting that FabGuard was only used on two tools, which were retired in 2018). ADI effectively argues that I should not permit discovery into systems other than Inficon's FabGuard—in any form—unless Judge Saris grants Ocean's motion to amend the preliminary infringement contentions.

While ADI's position has the virtue of consistency, it provides no assistance to the Court in the nuanced line-drawing exercise that is required in this case. Rather than engage with the effort to delineate appropriate topics for discovery, ADI paradoxically asks the Court to “Reconsider its Contemplated Ruling.” Docket No. 219, at 3.

Because Ocean's direct infringement and importation claims concerning claims 4 and 5 of the ‘691 patent have survived ADI's motion to dismiss, and because Ocean has alleged that the FabGuard system or “similar systems (e.g., with similar technical and functional features)” infringe the ‘691 patent, discovery into such similar systems is plainly relevant to Ocean's claims. The problem for the Court is a prudential one: given that Ocean does not know much about ADI's manufacturing processes, how can the Court ensure that discovery will be narrowly focused on matters that pertain to Ocean's infringement claim? To put it another way: what counts as a “similar system”?

*11 ADI's pertinacious insistence that Ocean should only be permitted to ask about FabGuard ignores that Ocean's requested discovery is—on its face—aimed at supporting Ocean's infringement claim, as pleaded. Ocean alleges that ADI has used the method of its patent in performing process control, and it seeks to identify the specific ways that ADI may have done so. As I noted at the hearing, I am not persuaded by ADI's suggestion that Judge Saris has precluded discovery into “similar systems,” that is systems that are similar to the accused infringing FabGuard system. Judge Saris pointed out that discovery in this case must be tailored to the needs of this case and should not extend to “everything under the sun.” But she also made clear that Ocean is entitled to discovery, at least as to infringement issues. See Docket No. 184 at 51(“You need to produce the documents .... I take your point; you don't need to produce financial documents if there's no way the person infringes.”).

In its response to Ocean's proposal, ADI complains that Ocean's proposed questions are too open-ended, that they start from generalities about ADI's metrology systems and proceed toward more granular details about the control functions that might be accomplished by employing the patented method(s). See Docket No. 219, at 4. ADI does not propose any workable limiting principle, however. Instead, ADI simply asserts that “[i]t would be an abuse of discretion for the Court to allow any depositions on these topics,” (id. at 4), and cites as authority Micro Motion, which cannot reasonably be read to support such a sweeping assertion.

I do not see anything inherently offensive in proceeding from general to specific questions in the manner that Ocean proposes, and I see no virtue in attempting to micro-manage the precise wording of deposition questions. On the other hand, there must be some controlling principle to set the limits of an inquiry that could otherwise stray over the full breadth of ADI's manufacturing process. I find little useful guidance in ADI's insistence that discovery be limited to a single system that was not used in the relevant timeframe, or in ADI's request for a blanket ban on depositions. Nor does Ocean's proposal by itself delineate adequate boundaries for the anticipated questioning.

To set limits on Ocean's deposition questioning, I will order that the scope be limited to the topics proposed by Ocean, with the additional condition that Ocean may not ask about systems other than those systems that Ocean has identified in its Motion for Leave to Amend its Preliminary Infringement Contentions. See Docket Nos. 213-15 (sealed). These systems, which are limited to six third-party suppliers (and include Inficon's FabGuard), presumably reflect Ocean's counsel's current good-faith identification of systems that employ the methods of the ‘691 patent. In other words, while Ocean may ask ADI about the processes it uses and the relationship between those processes and the remaining claims of the ‘691 Patent, Ocean may not “fish” for the identity of unnamed systems used by ADI.

I am mindful that Judge Saris has not, to date, had occasion to rule upon Ocean's motion to amend its infringement contentions. In a perfect world, discovery into infringement would follow a decision on such motions, so as to limit discovery into claims that may not ultimately be relevant to the case. That being said, the considerations that will likely govern Judge Saris's decision on that motion differ considerably from those that govern mine. I note, for example, that ADI contends that Ocean was too slow to identify these additional systems suppliers and, therefore, should not be permitted to amend its infringement contentions at this juncture. See Docket No. 218, at 13. Whatever may be the merits of ADI's contentions on that score, they do not bear on the question before me. The goal here is to reasonably circumscribe the scope of discovery and to get discovery underway, without further delay. Ocean's identification of systems is adequate for that purpose.

*12 There is no perfect answer to the “chicken and egg” problem in this discovery dispute. Ocean is entitled to discovery but does not have an intimate understanding of ADI's manufacturing and testing processes. ADI, meanwhile, has no interest in helping focus Ocean's inquiries. Recognizing that any particular ruling is bound to be imperfect, it is nevertheless essential that there be some ruling. Otherwise, discovery will remain bogged down indefinitely. Limiting topics for deposition testimony to the specific systems that Ocean has identified has the virtue of setting a workable perimeter around Ocean's inquiries. I expect the parties to complete the proposed four depositions in a timely fashion.

For the foregoing reasons, ADI's motion for protective order (Docket No. 186) is ALLOWED in part and ADI's motion to quash third-party subpoenas (Docket No. 189) is DENIED as moot.[8]

The Court enters a protective order pursuant to Rule 26(c)(1)(D), limiting the number and scope of depositions to be taken by Ocean, and related discovery, subject to the following conditions: