*1 Presently before the Court are three motions filed by Defendants, Innovative Vending Solutions, LLC and Innovative Strollers, LLC (hereinafter collectively, “IVS”), seeking to compel non-parties 3i Group plc (hereinafter, “3i”), Benjamin Krause, and Jay Maher to comply with subpoenas pursuant to Federal Rule of Civil Procedure 45.[1] Each motion is opposed by the non-party to which the motion to compel is directed. The Court held oral argument on these motions on February 2, 2024, at which time all counsel appeared as set forth on the record. The Court has considered the submissions of the parties and the arguments of counsel. For the reasons that follow and for good cause shown, IVS’ motions to compel are denied without prejudice.

This case has an extensive background and the Court will therefore set forth only those facts relevant to resolution of the present discovery dispute. Generally, in this case Plaintiff, Smarte Carte, Inc. (hereinafter, “Smarte Carte”), alleges that IVS’ commercial stroller dispensing system infringes on United States Patent No. 7,434,674 (hereinafter, the “’674 patent”), which is now owned by Smarte Carte.[2] (Op. [D.I. 90], Sept. 28, 2020, pp. 2-3.) The ’674 patent relates to a dispensing system for wheeled devices, and Smarte Carte alleges that it is “the market-leading designer, developer, manufacturer and lessor of dispensing systems for commercial strollers for use in malls, retail stores and other locations[.]” (Id. at p. 2.) IVS also “operate[s] a commercial stroller dispensing system under the name ‘Zoomaroo’ ” which Smarte Carte contends infringes on the ’674 patent. (Id. at p. 3.)

IVS filed counterclaims against Smarte Carte, including a claim “that Smarte Carte's patent infringement claim against IVS is a ‘sham litigation’ and Smarte Carte's suit is in furtherance of [its] monopoly of the commercial stroller system market, in violation of federal and state antitrust laws.” (Id.) IVS specifically avers in its counterclaim, inter alia, that Smarte Carte “asserted claims of patent infringement ... in an attempt to interfere with their business relationships and prevent [IVS] from rightfully competing in the marketplace” and that IVS “historically competed against Counterclaim Defendants in the vending massage chair market and [has] now become a successful competitor of Counterclaim Defendants.” (Defs.’ First Am. Answer to Am. Compl., Affirmative Defenses, and Counterclaims [D.I. 52], p. 20, ¶¶ 53, 54.) IVS further avers that shortly before Smarte Carte filed this lawsuit, Smarte Carte's Business Development & Marketing Manager, Christopher Plumber, approached Gregory Ruggiero, the owner of IVS, about the possibility of Smarte Carte buying out IVS, but IVS declined the offer. (Id. at p. 21, ¶ 57.) IVS contends that Smarte Carte thus “utilized this litigation, purporting to enforce an old patent in a legacy product that [it is] not even deploying anymore, as a means to obtain commercially sensitive information from [its] main competitor” and restrict IVS’ expansion in the stroller business market while Smarte Carte attempts “to replace the antiquated patented [ ] systems with new systems and new contract terms that will foreclose new competition.” (Id. at pp. 22-23, ¶¶ 63, 68.)

*2 Smarte Carte and IVS engaged in extensive discovery in this action, with fact discovery having closed on November 30, 2023. Smarte Carte has served its affirmative expert disclosures, and IVS’ rebuttal expert disclosures are to be filed by March 8, 2024. (Letter Order [D.I. 255], Feb. 28, 2024.) As of the close of fact discovery, IVS still sought to depose the Chief Executive Officer (hereinafter, “CEO”) and Chief Legal Officer (hereinafter, “CLO”) of Smarte Carte, sought an unredacted copy of the assignment of the ’674 patent from Mr. Bain's wife to Smarte Carte, sought documents identified by Smarte Carte witnesses during their depositions, and sought to compel four non-parties to comply with subpoenas. (See Letter from Christopher R. Kinkade, Esq. [D.I. 222], Nov. 30, 2023.) During oral argument on February 2, 2024, the Court resolved a number of these issues, having denied IVS’ request to take the depositions of Smarte Carte's CEO and CLO and directed Smarte Carte to produce an unredacted copy of the assignment of the ’674 patent, which discloses the price that Smarte Carte paid Mr. Bain's wife for the patent. The parties agreed that the production of the assignment rendered moot one of the motions to compel. Accordingly, at this time the Court addresses the remaining three motions to compel compliance with subpoenas and IVS’ request for documents identified during the depositions of Smarte Carte witnesses.[3]

“Federal Rule of Civil Procedure 26 sets forth the framework for the scope of discovery.” Capps v. Dixon, 593 F. Supp. 3d 146, 150 (D.N.J. 2022). “ ‘Parties 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[.]’ ” Id. (quoting Fed. R. Civ. P. 26(b)(1)). However, the scope of discovery “is not without its limits and may be circumscribed[,] ... especially where the information sought ‘is unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive,’ the party seeking discovery has had ‘ample opportunity to obtain the information by discovery in the action,’ or the discovery is outside the scope permitted under Rule 26(b).” In re Novo Nordisk Sec. Litig., 530 F. Supp. 3d 495, 501 (D.N.J. 2021)(quoting Fed. R. Civ. P. 26(b)(2)(C)).

“With regard to a subpoena issued to a third party, the third party may seek protection from the subpoena under the provisions of Rules 26 and 45.” Avago Techs. U.S., Inc v. IPtronics Inc, 309 F.R.D. 294, 296 (E.D. Pa. 2015)(citation omitted). “Once the subpoenaing party has shown that the documents requested are relevant, the objecting party must demonstrate why discovery should nevertheless be denied.” In re Novo Nordisk, 530 F. Supp. 3d at 501. “Relevance, need, confidentiality, and harm are factors to consider in analyzing the subpoena and requested documents.” Avago Techs., 309 F.R.D. at 296. “ ‘[E]ven if the information sought is relevant, discovery is not allowed where no need is shown, or where compliance is unduly burdensome, or where the potential harm caused by production outweighs the benefit.’ ” Id. (internal citation omitted). “The court ‘must limit the ... extent of discovery’ where it is duplicative, where it can be obtained from another source that is ‘more convenient, less burdensome, or less expensive,’ where the party seeking discovery has had ample opportunity to obtain the discovery, or where the burden or expense outweighs any perceived benefit of the discovery.” Id. at 297 (quoting Fed. R. Civ. P. 26(b)(2)(C)(i)-(iii)).

The Court first addresses the subpoena served on 3i, a private equity firm that holds a majority economic interest in Smarte Carte. (Decl. of Benjamin Krause (hereinafter, “Krause Decl.”) [D.I. 194-1], Sept. 1, 2023, pp. 1-2, ¶ 3; Third Party 3i Group plc's Opp. to Defs.’ Mot. to Compel Compliance with Subpoena to 3i Group plc (hereinafter, “3i's Opp. Br.”) [D.I. 194], p. 5.) IVS seeks from 3i documents that IVS categorizes into three groups: (1) documents concerning “3i's involvement in Smarte Carte's business strategies with respect to IVS and this litigation[;]” (2) documents concerning “the patent asserted in the underlying litigation ... as well as competing patents that Smarte Carte acquired from” Mr. Maher; and (3) documents seeking “information to identify and discover evidence of 3i's pattern and practice of [ ] anticompetitive litigation.” (Defs.’ Mem. of Law in Supp. of Mot. to Compel Compliance with Subpoena (hereinafter, “Defs.’ 3i Br.”) [D.I. 2 in Civil No. 23-20807], pp. 7-9.) In opposition to the motion, 3i asserts that the subpoena “is an improper attempt to use this Court and the discovery process to get documents that Defendants can use to prepare a bid to purchase Smarte Carte” as 3i has recently decided “to sell its interest in Smarte Carte[.]” (3i's Opp. Br. at p. 1.) In addition, 3i argues that the subpoena is unduly burdensome because the documents sought via subpoena can be obtained from Smarte Carte directly as “documents possessed by 3i about Smarte Carte are received from Smarte Carte and are therefore cumulative and duplicative of documents available through discovery with Smarte Carte.” (Id. at pp. 6, 11.) At oral argument, Smarte Carte also argued that IVS’ subpoena seeks documents that are not relevant to the claims in this case.

*3 Initially, the Court finds that IVS has not sufficiently demonstrated the relevance of each item of discovery sought from 3i. While IVS’ subpoena to 3i contains eighteen requests (see Decl. of Christopher R. Kinkade, Esq. in Supp. of Defs.’ Mot. to Compel Compliance with Subpoena [D.I. 3-1], Aug. 11, 2023, Ex. 1), and IVS’ brief in support of the motion to compel asserts generally that the requests are relevant to the patent infringement and sham litigation claims in this case, IVS cites no authority in its brief to support its relevance arguments. (See Defs.’ 3i Br. at pp. 6-9.) At oral argument, IVS focused its discussion on an “internal valuation” of IVS that IVS represents is maintained by Smarte Carte and/or 3i. Counsel for Smarte Carte and 3i argued that a valuation of Smarte Carte, IVS, or either party's stroller business is not relevant to the patent infringement and sham litigation claims in this case. IVS did not provide any case law to support its assertion of relevance, nor did it argue that its expert requires such valuation to address Smarte Carte's claimed damages.[4]

Moreover, IVS fails to demonstrate that the discovery sought from 3i has not been obtained directly from Smarte Carte since the motion to compel was filed. At the time the briefing on the motion to compel was completed, Smarte Carte and IVS were still engaging in discovery, and several key personnel of Smarte Carte had not then been deposed. In particular, IVS had not deposed Smarte Carte's Chief Financial Officer, Scott Warren, its Vice President and General Manager, Steven Wagner, its Account Manager, Abby Johnson, or Smarte Carte's Rule 30(b)(6) witness. (See 3i's Opp. Br. at p. 12.) 3i argued in its opposition brief that these individuals should be deposed before 3i is compelled to respond to the subpoena, as the discovery sought by IVS could be readily obtained from a party. (Id.) 3i also argued that “the document request in the subpoena served on 3i is virtually identical to and comprises requests Defendants have already served on Smarte Carte” and that “compelling 3i to produce documents ... would be futile, producing only information duplicative and cumulative of that which Defendants may or already have gathered through other discovery with Smarte Carte and its witnesses.” (Id. at p. 13.)

Several Smarte Carte representatives have now been deposed and Smarte Carte has also produced its expert disclosures. (See Letter from Christopher R. Kinkade, Esq. [D.I. 222], Nov. 30, 2023; Letter from Joseph Schramm, III, Esq. [D.I. 238], Jan. 22, 2024.) In addition, as noted above, the Court has compelled disclosure of the price that Smarte Carte paid for the assignment of the ’674 patent. (Order [D.I. 242], Feb. 5, 2024, pp. 1-2, ¶ 2.) It is unclear to the Court at this time what information IVS still seeks from 3i in light of the discovery that has been produced by Smarte Carte since the motion to compel was filed. While IVS asserted at oral argument that Smarte Carte's counsel objected during depositions of Smarte Carte personnel to certain questions on the basis of the attorney-client privilege, IVS does not contend that it was unable to obtain any information during the depositions or that additional documents produced by Smarte Carte failed to address any of the eighteen document requests directed to 3i, nor has IVS moved to strike Smarte Carte's privilege assertions. Consequently, at this time, IVS fails to demonstrate that the discovery sought from 3i via subpoena could not be obtained from Smarte Carte directly, and the Court thus denies without prejudice IVS’ motion to compel.[5]

*4 The Court next addresses IVS’ motion to compel Mr. Krause to comply with a subpoena seeking both documents and deposition testimony, which motion was also fully briefed before Smarte Carte and IVS completed discovery. The subpoena commands production of “[a]ll documents and communications with or concerning Innovative Vending Solutions, LLC or its products, including Zoomaroo strollers” as well as deposition testimony which is not delineated by topic. (See Decl. of Christopher R. Kinkade, Esq. in Supp. of Defs.’ Mot. to Compel Compliance with Subpoena [D.I. 3-1 in Civil No. 23-20806], Aug. 11, 2023, Ex. 1.) In support of this motion, IVS submitted a Declaration from Michael Brielmann, who was “hired by [IVS] as a consultant” to “participate in discussions with representatives of Smarte Carte's owners, 3i Group plc [ ] and Smarte Carte, Inc.” (Decl. of Michael Brielmann [D.I. 3-17 in Civil No. 23-20806], Aug. 11, 2023, pp. 1-2, ¶ 2.) Mr. Brielmann states that he attended a meeting on August 1, 2020 with Mr. Krause that was “intended to open a dialog around pausing the legal approach and opening discussions to a potential business deal[,]” at which time Mr. Krause purportedly stated “that Smarte Carte uses litigation as part of [its] business strategy.” (Id. at p. 2, ¶¶ 3-5.) IVS contends that its sham litigation counterclaim is “based among other things on admissions made by Krause that litigation is part of 3i's business strategy.” (Defs.’ Mem. of Law in Supp. of Mot. to Compel Compliance with Subpoena [D.I. 2 in Civil No. 23-20806], p. 9.) In addition, IVS asserts that Mr. Krause participated in business negotiations with IVS representatives and he therefore likely has information concerning 3i's valuation of Smarte Carte, IVS, and their competing stroller businesses, the business strategies available to Smarte Carte, the commercial viability of purchasing Smarte Carte competitors, and efforts by 3i to obtain financing to purchase competitors. (Id. at p. 9; Reply to Benjamin Krause's Opp. to Defs.’ Mot. to Compel Compliance with Subpoena [D.I. 10 in Civil No. 23-20806], pp. 3-4.)

In opposition to the motion, Mr. Krause submitted a declaration in which he expressly denies making a statement that Smarte Carte uses litigation as a business strategy. (Decl. of Benjamin Krause [D.I. 8-3 in Civil No. 23-20806], Sept. 1, 2023, p. 3, ¶ 10.) Mr. Krause acknowledges, however, that in August 2020 he engaged in discussions with IVS “advisors and officers” about “business opportunities between IVS and Smarte Carte[,]” although he represents that these discussions “did not culminate in any business dealings between Smarte Carte and IVS or address or relate to this lawsuit in any way.” (Id. at p. 3, ¶ 11.) Mr. Krause opposes the motion on the basis that he is an apex witness who lacks unique knowledge of any matters relevant to this case, stating that his knowledge is “learned from reports and briefings by Smarte Carte.” (Id. at p. 3, ¶ 8; Mem. of Law in Supp. of Benjamin Krause's Opp. to Defs. Mot. to Compel Compliance with Subpoena [D.I. 7 in Civil No. 23-20806], pp. 7-9.)

The Court finds that IVS fails to demonstrate that discovery from Mr. Krause is appropriate at this time and therefore denies without prejudice the motion to compel Mr. Krause to comply with the subpoena. As set forth above, the Court must limit discovery where it is duplicative or can be obtained from another source that is more convenient, less burdensome, or less expensive. See Fed. R. Civ. P. 26(b)(2)(C)(i). To the extent the subpoena seeks documents from Mr. Krause, the Court as an initial matter notes the overbreadth of the request, which seeks without limitation all documents and communications with or concerning IVS. IVS fails to address why all documents concerning IVS are relevant to the claims in this case. The Court also notes Mr. Krause's representation that his knowledge is obtained from reports and briefings from Smarte Carte, and it therefore appears that the documents requested by IVS can be obtained from Smarte Carte directly.

With respect to the deposition of Mr. Krause, the Court likewise finds that IVS fails to demonstrate that such testimony is appropriate at this time. IVS argues that Mr. Krause has unique knowledge because he purportedly made a statement that Smarte Carte uses litigation as a business strategy, which statement allegedly serves as the basis for the sham litigation counterclaim. However, the sham litigation counterclaim [D.I. 52] was filed on February 4, 2020, approximately six months before Mr. Krause engaged in business discussions with IVS representatives in August 2020; thus, the statement purportedly made by Mr. Krause concerning litigation as a business strategy had not occurred prior to IVS’ filing and therefore other factual allegations apparently support IVS’ counterclaim. Moreover, to the extent Mr. Krause participated in business negotiations with IVS and has knowledge of Smarte Carte's valuation of Smarte Carte, IVS, or these entities’ stroller businesses, IVS again cites no case law to demonstrate that such information is relevant to any of the claims in this case. The Court therefore finds that IVS fails to meet its burden of demonstrating a basis to compel Mr. Krause to provide documents and testimony at this time.[6]

*5 IVS also seeks to compel documents and testimony from Mr. Maher. IVS asserts that Mr. Maher is “an inventor of a stroller system similar to that at issue in the underlying patent litigation” and was “awarded his own patents for his similar stroller system, which he sold to” Smarte Carte. (Defs.’ Mot. to Enforce Subpoena and Incorporated Mem. of Law (hereinafter, “Defs.’ Maher Br.”) [D.I. 1 in Civil No. 23-22560], p. 1.) IVS contends that Mr. Maher, during prosecution of his own patents, “submitted declarations to the U.S. Patent and Trademark Office [hereinafter, ‘PTO’] claiming that his inventions predated the ’674 Patent” and that IVS has asserted invalidity of the ’674 patent based on Mr. Maher's patents and the declarations he submitted to the PTO. (Id. at pp. 1, 7.) IVS further asserts that Mr. Maher, as an inventor of similar technology during a similar time period, would have knowledge of the state of the art at the time of the ’674 patent and would provide evidence concerning “what a person of ordinary skill in the art would have known and found obvious.” (Id. at p. 1.) IVS also states that Smarte Carte purchased Mr. Maher's patents and the price and terms of the assignment are relevant to the damages in this case. (Id. at p. 2.)

In opposition, Mr. Maher concedes that his patents are included in IVS’ invalidity contentions but he argues that his patents cannot be prior art because they were filed after the ’674 patent. (Non-Party Jay Maher's Response in Opp. to Defs.’ Mot. to Enforce Subpoena (hereinafter, “Maher Opp. Br.”) [D.I. 9 in Civil No. 23-22560], p. 1.) Mr. Maher asserts that IVS is attempting “to create prior art from admittedly non-prior art patents[.]” (Id.) Mr. Maher also notes that IVS already has his deposition transcript from prior litigation between Mr. Maher and the inventor of the ’674 patent, Mr. Bain, and IVS also has Mr. Maher's statements to the PTO during the prosecution of one of his patents. (Id. at pp. 1, 3.) Mr. Maher contends that because IVS’ invalidity contention is based on statements made by Mr. Maher that are a matter of public record and IVS can obtain information from other sources, the subpoena to Mr. Maher is improper. (Id. at pp. 3, 5.) Mr. Maher also notes that IVS can obtain information directly from IVS’ expert witness, particularly on the state of the art and “person of ordinary skill in the art” issues identified by IVS. (Id. at pp. 7-8.) Further, Mr. Maher argues that the subpoena is overbroad, imposes a substantial burden on Mr. Maher, who is presently 80 years old, and seeks testimony that is likely unreliable given that the asserted patent was filed twenty years ago. (Id. at pp. 9-11.)

In reply, IVS notes that Smarte Carte acquired ownership of the Maher patents but “has not revealed the prices paid for the license and assignment of the Maher patents[,]” which IVS argues is relevant to the damages analysis in this case. (Reply to Jay Maher's Opp. to Defs.’ Mot. to Enforce Subpoena (hereinafter, “Defs.’ Maher Reply Br.”) [D.I. 13 in 23-22560], pp. 2-3.) IVS also contends that the ’674 patent was non-functional as described and that Maher “had to ... rework the ’674 Patent into a reliable working mechanism[,]” which purportedly supports IVS’ invalidity contention. (Id. at pp. 7-8.) IVS states that to minimize any burden on Mr. Maher, IVS will travel to Mr. Maher's hometown or take the deposition remotely. (Id. at p. 8 n.5.)

At oral argument, Mr. Maher's counsel noted a recent development in that the PTO, which recently reexamined the ’674 patent in light of IVS’ assertion that one of the Maher patents constitutes prior art, concluded that the Maher patent is not prior art. Mr. Maher thus asserted at oral argument that the Court should deny the motion to compel given this finding by the PTO. However, IVS asserts in its supplemental invalidity contentions in this case that the ’674 patent is invalid because the Maher Patents are prior art. (See IVS’ Supplemental Invalidity Contentions [D.I. 191-1], pp. 3-4.) Therefore, notwithstanding the findings by the PTO, the Maher Patents remain an issue in connection with the patent infringement claims in this case.[7]

*6 The Court finds that IVS fails to demonstrate that the discovery it now seeks from Mr. Maher is appropriate under Rule 26(b)(1) as it appears it is duplicative and not proportional given the claims in this case. In so finding, the Court initially notes IVS’ counsel's assertion at oral argument that the subpoena to Mr. Maher was served before Smarte Carte and IVS agreed to limit the invalidity contentions to be asserted by IVS, and therefore some of the topics in the subpoena are no longer necessary in light of the parties’ subsequent stipulation.[8] The subpoena was served on Mr. Maher on July 31, 2023, and the parties entered into their stipulation to limit certain contentions on September 20, 2023. IVS filed its motion to compel Mr. Maher to respond to the subpoena on October 30, 2023, more than a month after IVS agreed not to pursue certain invalidity contentions. Nonetheless, IVS’ motion seeks to compel compliance with the subpoena in its entirety; IVS failed to note in its briefing that some of the requests in the subpoena are no longer relevant in light of the stipulation entered on September 20, 2023. As such, the subpoena is overbroad and IVS has not identified which specific requests seek information relevant to the claims and defenses presently in this case.

The Court also finds that IVS fails to demonstrate that Mr. Maher is likely to have information that IVS has not already obtained through other discovery in this case. IVS seeks information from Mr. Maher related to events from approximately twenty years ago and which were the subject of litigation between Mr. Maher and Mr. Bain. IVS has been provided with Mr. Maher's deposition transcript from that prior litigation, which was taken on June 28, 2007, as well as the pleadings from that case (Decl. of Anthony R. Zeuli, Esq. [D.I. 9-1 in Civil No. 23-22560], Nov. 20, 2023, p. 2, ¶ 8; Ex. A), yet IVS does not articulate what additional information it requires that is lacking from these documents.[9] Moreover, IVS represents that Mr. Maher “sold his business assets, including his patents, to Smarte Carte in 2012” (Defs.’ Maher Br. at p. 7), and Mr. Maher asserts that “Smarte Carte acquired certain assets from [Mr. Maher's company] including the exclusive license from Bain.” (Maher's Opp. Br. at p. 2.) IVS fails to identify what additional information it requires that was not already obtained – or could not have been obtained – from Smarte Carte directly.[10] Lastly, to the extent IVS asserts that Mr. Maher would have an understanding of the state of the art and what a person of ordinary skill in the art would have known, IVS fails to address Mr. Maher's argument that this information can be obtained from IVS’ own expert witness rather than a lay witness. Therefore, given the overly broad nature of the subpoena, IVS’ failure to demonstrate that the documents it already obtained – including Mr. Maher's declarations to the PTO and his prior deposition testimony – lack sufficient information, and IVS’ attempt to obtain deposition testimony related to issues from twenty years ago, the Court finds no basis at this time to compel Mr. Maher to respond to IVS’ subpoena. The motion to compel is consequently denied without prejudice to IVS’ ability to file a renewed request by way of letter application that addresses with specificity the information that it still seeks from Mr. Maher that was not obtained, and could not be obtained, from Smarte Carte directly.

*7 Finally, the Court addresses the attorney-client privilege and work product issues raised by way of informal letter application of the parties. (See Letter from Christopher R. Kinkade, Esq. [D.I. 222], Nov. 30, 2023, pp. 2-3; Letter from Joseph Schramm, III, Esq. [D.I. 238], Jan. 22, 2024, pp. 6-8.) IVS has requested that Smarte Carte produce board meeting minutes and a presentation to Smarte Carte's board of directors concerning Smarte Carte's “internal view of IVS[,]” but Smarte Carte refused to produce these documents on the basis of the attorney-client privilege and work product doctrine. (See Letter from Joseph Schramm, III, Esq. [D.I. 238], Jan. 22, 2024, p. 6.) In addition, Smarte Carte's counsel asserted privilege objections during the depositions of Smarte Carte witnesses, as noted above. (See Letter from Christopher R. Kinkade, Esq. [D.I. 222], Nov. 30, 2023, p. 2.) IVS, however, has not moved to strike these privilege assertions, nor does the Court have sufficient information to rule on the attorney-client privilege and work product issues at this time as discussed infra.

Federal Rule of Civil Procedure 26(b)(3) provides that “a party may not discover documents and tangible things that are prepared in anticipation of litigation or for trial by or for another party[.]” Fed. R. Civ. P. 26(b)(3). However, “ ‘[e]ven where the reasonable anticipation of litigation is established, whether the document comes within the purview of the work product privilege still depends primarily on the reason or purpose for the documents’ production.’ ” Trejo v. All Lynn, LLC, 344 F.R.D. 8, 11 (D.N.J. 2023)(quoting In re Gabapentin Pat. Litig., 214 F.R.D. 178, 184 (D.N.J. 2003)). Moreover, even when materials constitute work product, they are nonetheless discoverable if “the party shows that it has substantial need for the materials to prepare its case and cannot, without undue hardship, obtain their substantial equivalent by other means.”[11] Fed. R. Civ. P. 26(b)(3). In this case, the parties do not address whether the materials withheld as work product were prepared primarily for litigation and whether the material, if work product, is still discoverable under the “substantial need” and “substantial equivalent” prongs of Rule 26(b)(3)(A).

With respect to Smarte Carte's claim of attorney-client privilege over documents and deposition testimony, the Court likewise lacks sufficient information to assess Smarte Carte's privilege assertion. “It is axiomatic that the [attorney-client] privilege extends to corporations.” Louisiana Mun. Police Emps. Ret. Sys. v. Sealed Air Corp., 253 F.R.D. 300, 305 (D.N.J. 2008).[12] “Communications between corporate counsel and company personnel are privileged so long as the information is relayed for the purpose of obtaining legal counsel.” Andritz Sprout-Bauer, Inc. v. Beazer E., Inc., 174 F.R.D. 609, 633 (M.D. Pa. 1997) (citing Upjohn Co. v. United States, 449 U.S. 383, 394-95 (1981)). The privilege, however, “attaches only if the attorney is acting in the role of legal advisor.” Id. “Communications made by in-house counsel functioning in the role of business advisor or corporate administrator are not privileged.” Id. In reviewing a document for attorney-client privilege, the Court must “focus[ ] on whether the communications/documents were made to in-house counsel in their professional capacity as lawyers” as “[c]ommunications which relate to business rather than legal matters do not fall within the protection of the privilege.” Leonen v. Johns-Manville, 135 F.R.D. 94, 98 (D.N.J. 1990). The proper inquiry “is focused on whether ‘the communication is designed to meet problems which can fairly be characterized as predominately legal.’ ” Id. (internal citation omitted). The Court must also consider whether the attorney-client privilege was waived by the presence of third parties during the communications. Westinghouse Elec. Corp. v. Republic of Philippines, 951 F.2d 1414, 1424 (3d Cir. 1991)(“voluntary disclosure to a third party of purportedly privileged communications has long been considered inconsistent with an assertion of the privilege”). Here, Smarte Carte appears to assert that any discovery concerning board meetings “discussing IVS and this lawsuit” are privileged because its in-house counsel was present during such meetings. (See Letter from Joseph Schramm, III, Esq. [D.I. 238], Jan. 22, 2024, p. 8.) However, Smarte Carte must proffer additional information to demonstrate that its privilege assertions are appropriate, including that the communications at issue satisfy the “predominantly legal” requirement and that no other individuals were present during the communications that would render the privilege waived.[13]

*8 Given that the record on the attorney-client and work product issues is not at this time fully developed, the Court shall require Smarte Carte to produce a privilege log as required by Federal Rule of Civil Procedure 26(b)(5)(A) to the extent a privilege log has not yet been served. If IVS takes the position that Smarte Carte's privilege assertions are improper, it may file a renewed letter application concerning the privilege claims after meeting with Smarte Carte pursuant to Local Civil Rule 37.1.[14]

In summary, the Court denies without prejudice IVS’ motions to compel directed to non-parties 3i, Mr. Krause and Mr. Maher. Since these motions were filed, numerous Smarte Carte personnel have been deposed, Smarte Carte has served its expert disclosures, and the Court has required Smarte Carte to produce to IVS the unredacted price that Smarte Carte paid for the assignment of the ’674 patent from the inventor's widow to Smarte Carte. IVS fails to demonstrate that this discovery renders duplicative at least some of the discovery requested from non-parties 3i, Mr. Krause and Mr. Maher, and the Court thus concludes that IVS fails to demonstrate a basis to grant these motions to compel. Moreover, the subpoenas are overly broad and seek in part information that is not relevant to a claim or defense under Rule 26, and IVS has failed to narrow its requests.[15] In so finding, the Court recognizes that Smarte Carte has refused to produce certain discovery on the basis of the attorney-client privilege and work product doctrine, and the Court shall therefore require Smarte Carte to serve a privilege log in accordance with Federal Rule of Civil Procedure 26(b)(5), which shall contain adequate information for IVS to evaluate the privilege claims. Any remaining issues that cannot be resolved by agreement of the parties may be renewed by way of letter application, provided that such submissions address with particularity the need for a specific discovery request, the relevance of the disputed discovery, and the propriety of any privilege claim if asserted.

CONSEQUENTLY, for the reasons set forth above and for good cause shown:

IT IS on this 28th day of February 2024,

ORDERED that the motions to compel [D.I. 1 in Civil No. 23-20806, D.I. 1 in Civil No. 23-20807, D.I. 1 in Civil No. 23-22560] filed by IVS with respect to subpoenas served on 3i, Benjamin Krause and Jay Maher shall be, and are hereby, DENIED WITHOUT PREJUDICE; and it is further

*9 ORDERED that Smarte Carte shall produce to IVS within 14 days a privilege log in connection with any documents or deposition testimony for which it claims the attorney-client privilege or work product protection with sufficient information, in light of the applicable case law cited above, to demonstrate the propriety of its privilege assertions.