Free Memorandum in Opposition - District Court of California - California

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FOLEY & LARDNER LLP ATTORNEYS AT LAW 11250 EL CAMINO REAL, SUITE 200 SAN DIEGO, CA 92130 TELEPHONE: 858.847.6700 FACSIMILE: 858.792.6773 Debra D. Nye, Cal. Bar No. 226076 [email protected] Attorneys For Respondent, VIC NARURKAR, M.D.

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION CANDELA CORPORATION, et al., Plaintiffs, v. PALOMAR MEDICAL TECHNOLOGIES, INC., Defendant. ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. C08-80011 Misc PJH (EDL) VIC NARURKAR, M.D.'s OPPOSITION TO PLAINTIFFS' MOTION TO COMPEL DR. VIC NARUKAR TO PRODUCE SUBPOENAED DOCUMENTS Hearing: Time: Place: March 11, 2008 9:00 a.m. Courtroom E

The Honorable Elizabeth Laporte

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1

TABLE OF CONTENTS

2 TABLE OF AUTHORITIES ................................................................................................... ii 3 BACKGROUND ..................................................................................................................... 1 4 ARGUMENT........................................................................................................................... 4 5 6 7 8 9 10 11 12 13 14 B. 15 16 17 18 19 20 21 22 23 24 25 26 27 28
i DR. VIC NARURKAR'S OPPOSITION TO PLAINTIFFS' MOTION TO COMPEL CASE NO. CV-04-03843 RMW (HRL)

I.

The Harmful Disclosure of Confidential Patient Records Is Unjustified .......................................................................................... 4 The Motion Should Be Denied Because the Subpoena Exceeds the Permissible Scope of Discovery.............................................................................................................. 6 The Motion Should Be Denied Because, Even if Any of the Patient Information It Seeks Could Be Relevant, the Subpoena Is Overbroad ............................................................. 8 The Motion Should be Denied Because the Subpoena Is Oppressive and Unduly Burdensome............................................. 11 A. Dr. Narurkar Is Not a Party to this Action ................................................. 10 The Subpoena Would Force Dr. Narurkar to Divert Limited Resources Away from His Patients And Practice Thereby Disrupting His Practice and Causing Irreparable Harm........................................................................................ 11 Specific Requests ....................................................................................... 12

II.

III.

IV.

C.

CONCLUSION............................................................................................................... 13

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TABLE OF AUTHORITIES Page(s)

Bridgeport Music, Inc. v. UMG Recordings, Inc., No. 05 Civ. 6430, 2007 WL 4410405 (S.D.N.Y. Dec. 17, 2007).............................. 11 Cusumano v. Microsoft Corp., 162 F.3d 708 (1st Cir. 1998)................................................................................ 10, 11 Dart Indus. Co. v. Westwood Chem. Co., 649 F.2d 646, 649 (9th Cir. 1980) ............................................................10 EEOC v. Boston Mkt. Corp., No. 03 Civ. 4227, 2004 U.S. Dist. LEXIS 27338 (E.D.N.Y. Dec. 16, 2004).............. 5 Exxon Shipping Co. v. United States Dep't of Interior, 34 F.3d 774, 779 (9th Cir. 1994) .............................................................................. 11 Gonzales v. Google, Inc., 234 F.R.D. 674, 680 (N.D. Cal. 2006) ...................................................................... 10 Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464 (Fed. Cir. 1990).................................................................................... 7 Kalinoski v. Evans, 377 F. Supp. 2d 136 (D.D.C. 2005) ............................................................................. 5 Mack v. Great Atlantic & Pacific Tea Co., 871 F.2d 179 (1st Cir. 1989)........................................................................................ 9 Micro Motion, Inc. v. Kane Steel Co., 894 F.2d 1318 (Fed. Cir. 1990).......................................................................... 5, 8, 10 Rivera v. NIBCO, Inc., 364 F.3d 1057, 1072 (9th Cir. 2004) ......................................................................... 9 Trustees of Columbia Univ. v. Roche Diagnostics GMBH, 272 F. Supp. 2d 90 (D. Mass. 2002) ............................................................................ 7 Warner-Lambert Co. v. Apotex Corp., 316 F.3d 1348 (Fed. Cir. 2003).................................................................................... 9 Statutes, Rules and Regulations 35 U.S.C. § 271(b) ............................................................................................................. 7 Fed. R. Civ. P. 26(b)(1)...................................................................................................... 4 Fed. R. Civ. P. 26(b)(2)(C) ................................................................................................ 4 Fed. R. Civ. P. 45(c) .......................................................................................................... 2 Fed. R. Civ. P. 45(c)(1).................................................................................................... 10

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Health Insurance Portability and Accountability Act of 1996 ("HIPAA") 42 U.S.C.S. §§ 1320d-1329d-8.................................................................................... 5

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DR. VIC NARURKAR'S OPPOSITION TO PLAINTIFFS' MOTION TO COMPEL PRODUCTION OF SUBPOENAED DOCUMENTS Dr. Vic Narurkar hereby opposes Plaintiffs' Motion to Compel him To Produce

4 Subpoenaed Documents (the "Motion"). The Motion seeks to compel Dr. Narurkar, a third-party 5 with no stake in the underlying patent infringement litigation, to produce confidential and 6 sensitive patient treatment files ­ a task that will require him to review thousands of files. 7 Plaintiffs' demand for these confidential medical records of Dr. Narurkar's patients ­ who also 8 do not have any involvement in this litigation and who have not consented to the disclosure of 9 their records ­ will be extremely harmful both to Dr. Narurkar's practice and to his patients. 10 Moreover, Plaintiffs have failed to establish that any of these files are relevant to the

11 claims or defenses of the actual parties in the underlying lawsuit. The Motion ­ one of at least 12 eight such "cookie-cutter" motions Plaintiffs have directed against various doctors across the 13 country ­ represents an improper attempt by Plaintiffs to have this Court aid Plaintiffs' fishing 14 expedition by enforcing an overly broad subpoena duces tecum. 15 For these reasons and the reasons stated below, the Motion should be denied, at least until

16 Plaintiffs can establish the relevance of the materials they seek and, if so, narrow their requests 17 and develop less burdensome and more protective means for any collection and production. 18 19 BACKGROUND The underlying patent infringement action concerns light-based dermatology products.

20 Plaintiffs accuse Defendant Palomar Medical Technologies, Inc. ("Palomar") of infringing their 21 patents through Palomar's manufacture, use, and sale of various products (the "Accused 22 Products") to doctors. 1 Plaintiffs believe these Accused Products can be used to treat wrinkles in 23 human skin, the subject matter of the patents-in-suit. Plaintiffs contend that Palomar is inducing 24 doctors to treat patients for wrinkles with Palomar products. Plaintiffs have not, and do not now, 25 26
The Accused Products are used for aesthetic laser treatments. The products consist of handheld attachments used with Palomar's laser and pulsed light base platforms. The handpieces are 27 named the Lux 1540, the Lux 1540-Z, the LuxIR, the LuxDeepIR, the LuxB, the LuxG, and the LuxY.
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1 accuse Dr. Narurkar of anything. Attempting to find some possible evidence to support their 2 inducement theories against Palomar, in early November 2007, Plaintiffs served a subpoena on 3 Dr. Narurkar, along with identical subpoenas served on approximately 22 other physicians across 4 the country (the "First Subpoena"). In the First Subpoena, Plaintiffs requested documents 5 spanning 34 separate categories. 6 Dr. Narurkar retained the law firm of Foley & Lardner LLP (which also represents

7 Palomar in the underlying litigation) and objected to the First Subpoena by serving objections
2 8 pursuant to Fed. R. Civ. P. 45(c). In response, Plaintiffs withdrew the First Subpoena (along

9 with the subpoenas it had served on all of the other physicians represented by Foley & Lardner 10 LLP). On or about December 4, 2007, Plaintiffs served the current subpoena (the "Subpoena"). 11 The Subpoena seeks communications between Dr. Narurkar and Palomar, as well as

12 marketing and product information that Palomar provided to Dr. Narurkar, apparently directed to 13 identifying any inducement by Palomar to use the Accused Products to treat wrinkles. (See, e.g., 14 Subpoena, request nos. 3, 6, & 10.) However, the Subpoena goes further, and also seeks Dr. 15 Narurkar's patient treatment records themselves. (See, e.g., Subpoena, request nos. 4, 5, & 9.) 16 In fact, the Subpoena extends to thousands of such patient files by calling for all treatments that 17 involved any "Wrinkle Treatment." (See id.) The term "Wrinkle Treatment" is broadly defined 18 in the Subpoena as the "application of Electromagnetic Radiation to skin for treatments that 19 provide as a primary or peripheral benefit treating wrinkles, fine lines or rhytides/rhytids . . . 20 correction of skin laxity, or performing skin smoothing, skin tightening, skin or facial 21 rejuvenation, photorejuvenation, photofacials, skin resurfacing, tissue coagulation or 22 improvement of skin texture or tone." (Id. at 5.) This broad list of treatments encompasses 23 24
2

25 Palomar's counsel" and who "voluntarily produced a highly relevant set of documents . . . obviating 26 physician is one Tiffani K. Hamilton, M.D., who works on behalf of Plaintiff Candela in marketing
party.

Plaintiffs contrast Dr. Narurkar to another physician "who chose to not be represented by

Plaintiffs' filing of a motion to compel for that physician's documents." (Memo. p. 5.) That referenced Candela's products. (See Plaintiff Candela's "Clinical Bulletin No. 6" featuring Dr. Hamilton, a copy of

27 which is attached hereto as Exhibit A.) Unlike Dr. Narurkar, Dr. Hamilton is not an independent third28

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1 virtually every possible light based dermatological treatment including scars, vascular lesions, 2 pigment lesions, and acne, as well as any treatments of actual skin wrinkles. 3 On December 14, 2007, Dr. Narurkar objected to the Subpoena pursuant to Fed. R. Civ.

4 P. 45(c). Dr. Narurkar explained, inter alia, that the burden of responding to the Subpoena 5 would be onerous and the production of confidential records would be detrimental to him and his 6 patients for several reasons. First, the patient records contain their medical histories and other 7 sensitive personal information. In many instances, the patient records contain photographs of 8 patients showing cosmetic and medical treatments. (Dr. Narurkar Decl., ¶ 7.) 9 Second, Dr. Narurkar's patient records are maintained alphabetically. (Dr. Narurkar

10 Decl., ¶ 4.) They are not arranged by the date when each patient was seen or the type of 11 procedure or treatment performed on the patient. (Dr. Narurkar Decl., ¶ 4.) Dr. Narurkar's 12 patient records number in the thousands. (Dr. Narurkar Decl., ¶ 2.) Dr. Narurkar estimates that 13 it would take several months to review the medical records in his possession to just determine 14 what treatments were used on individual patients. (Dr. Narurkar Decl., ¶ 3.) There is only one 15 administrative employee working with Dr. Narurkar; the services of this employee are essential 16 to the operation of Dr. Narurkar's office. (Dr. Narurkar Decl., ¶ 5.) If this individual was 17 required to take time away from her normal duties to assist Dr. Narurkar in reviewing the 18 records, Dr. Narurkar's practice would suffer significant harm as a result of the allocation of 19 resources away from patients and the operation of Dr. Narurkar's practice. (Dr. Narurkar Decl., 20 ¶ 6.) 21 Third, the disclosure of confidential patient records ­ which include photographs in many

22 instances ­ could be ruinous to Dr. Narurkar's practice, because his patients' privacy would be 23 irreparably violated. (Dr. Narurkar Decl., ¶ 7.) The invasion of patient privacy would 24 undermine the confidence reposed by Dr. Narurkar's patients in his practice, and would likely 25 prompt many of his patients to discontinue their association with Dr. Narurkar. (Dr. Narurkar 26 Decl., ¶ 7.) 27 In late December and early January, counsel for all parties met and conferred about Dr.

28 Narurkar's objections and his concerns on his own behalf and that of his patients. Dr. Narurkar
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1 agreed to produce any communications he had with Palomar and any marketing or similar 2 product information from Palomar. (Tolliver Decl., Exhibit 5.) 3 Despite this offer, Plaintiffs continue to insist that Dr. Narurkar also review, collect, and

4 produce all of his requested patient records and treatment files. Thus, without establishing that 5 Palomar ever induced Dr. Narurkar to do anything, Plaintiffs are seeking to steamroll over 6 substantial patient confidentiality issues without concern for the consequences to those patients 7 or to Dr. Narurkar's reputation and medical practice. 8 9 ARGUMENT The Motion seeks to enforce a Subpoena that seeks the harmful disclosure of confidential

10 patient information and medical treatment records. The Subpoena also is not narrowly tailored 11 to seek the discovery of only relevant or potentially relevant documents, and is overly broad, 12 unduly burdensome and oppressive to both Dr. Narurkar and his patients, and, therefore, should 13 be denied. See Fed. R. Civ. P. 26(b)(1) & 26(b)(2)(C). 14 I. 15 16 Dr. Narurkar's patients would balk upon learning that their private patient files THE HARMFUL DISCLOSURE OF CONFIDENTIAL PATIENT RECORDS IS UNJUSTIFIED.

17 containing highly sensitive personal information had been disclosed without their consent to 18 parties in a litigation that has no connection to them or to their doctor. Although the interests of 19 these patients would be irreversibly affected by such production, none of the patients are 20 represented in this matter or in the underlying action. Notably, none of the authorities cited by 21 Plaintiffs involve such a wholesale invasion of patient privacy that Plaintiffs are demanding 22 through their request for the production of thousands of confidential patient records from a non3 23 party physician's private practice.

24 25
Plaintiffs' reference to Boston Mkt. Corp. (Memo. p. 17) is inapposite because ­ unlike the respondent to the Subpoena in this case ­ the respondents in Boston Mkt. Corp. were doctors who 26 treated the plaintiff and the plaintiff had specifically placed her medical condition at issue in that lawsuit. EEOC v. Boston Mkt. Corp., 2004 U.S. Dist. LEXIS 27338, at *2 (E.D.N.Y. Dec. 16, 2004). Even there, 27 the court circumscribed the type of information that could be provided to the requesting party. Id. at *2021.
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1

There is a "strong federal policy in favor of protecting the privacy of patient medical

2 records." EEOC v. Boston Mkt. Corp., 2004 U.S. Dist. LEXIS 27338, *18 (E.D.N.Y. Dec 16, 3 2004); 42 U.S.C.S. §§ 1320d-1329d-8, the Health Insurance Portability and Accountability Act 4 of 1996 ("HIPAA"). Plaintiffs propose only passing consideration to this "strong federal policy" 5 favoring patient confidentiality by offering to have the patient records produced under the 6 protective order entered in the underlying action. The underlying protective order, however, 7 lacks any reference to medical records or patient information (see Tolliver Decl., Exhibit 2) and
4 8 the Plaintiffs have made no effort to have it altered to accommodate these circumstances.

9 Neither Dr. Narurkar nor any of the unrepresented patients had an opportunity to negotiate the 10 terms of the protective order. In addition, individual patients whose records were disclosed to 11 Plaintiffs would lack the resources and/or standing to enforce the terms of such an order in the 12 event their records were disclosed to others. See Micro Motion, Inc. v. Kane Steel Co., Inc., 894 13 F.2d 1318, 1325 (Fed. Cir. 1990) (rejecting patent holder's "argument that the protective order . . 14 . obviates [respondent's] objections to discovery. The protective order is not a substitute for 15 establishing relevance or need." And noting that "[i]t would be divorced from reality to believe 16 that either party" to the underlying litigation "would serve as the champion" of the respondent, 17 and "disclosure of its information depends on the action by a court before whom it has no 18 standing."). Thus, the existence of a protective order provides no justification for the wholesale
5 19 violation of patient trust in the confidentiality of their own records.

20

In the event that confidential patient information were improperly disclosed (whether

21 intentionally or unintentionally), the resulting harm would be irreversible and irreparable. For 22 23
Moreover, the terms of the protective order permit a party to the lawsuit to challenge the designation of a record as confidential (Tolliver Decl., Exhibit 2), thereby inviting a circumstance where 24 the confidentiality of patient records would be removed after the records are produced ­ a circumstance 25 that neither Dr. Narurkar nor his patients could realistically prevent.
4

26

Plaintiffs' reliance on Kalinoski v. Evans, 377 F. Supp. 2d 136 (D.D.C. 2005) (Memo. p. 20) for their contention that the existing protective order is appropriate is misplaced, because the 27 physician/patient privilege was waived there when the plaintiff consented to the disclosure of her records and placed her mental health at issue in the lawsuit. There has been nothing close to such a waiver here.

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1 example, there would not be adequate remedies available to a patient whose treatment 2 photographs were utilized in open court or otherwise released into the public domain. And while 3 the risk of this occurrence may be small, it only exists if any medical records are produced 4 pursuant to the Motion. Thus, in light of the unknown risk of further dissemination of 5 confidential patient records and the high degree of harm to the unsuspecting patients (as well as 6 to Dr. Narurkar) that would result from such disclosure, Plaintiffs have failed to justify the 7 production of Dr. Narurkar's patient records. 8 The disclosure of confidential patient records also risks ruining Dr. Narurkar's practice

9 and his professional reputation, because such an invasion of patient privacy would likely deter 10 present and future patients from seeking treatment from Dr. Narurkar. Plaintiffs dismiss Dr. 11 Narurkar's concerns by arguing that "[e]very health care provider is subject to the same privacy 12 rules as Dr. Narurkar. Patients cannot therefore escape the possibility that their medical records 13 might be subpoenaed by going to another health care provider. Dr. Narurkar's reputation is 14 therefore no more at risk that those of his competitors." (Memorandum of Points and Authorities 15 in Support of the Motion ("Memo."), pp. 20-21.) Plaintiffs are wrong. Dr. Narurkar along with 16 the other physicians subpoenaed by Plaintiffs are facing a great and immediate risk for 17 irreparable harm compared to their fellow physicians, because most of their fellow physicians 18 were not subpoenaed by Plaintiffs and most of them do not use Palomar's products. Thus, Dr. 19 Narurkar is facing unique harm among his competitors. In sum, the burden of producing 20 confidential patient records outweighs the benefit to any party that would flow from their 21 disclosure. 22 II. 23 24 The underlying litigation involves three patents directed to the treatment of wrinkles in THE MOTION SHOULD BE DENIED BECAUSE THE SUBPOENA EXCEEDS THE PERMISSIBLE SCOPE OF DISCOVERY.

25 human skin. (Memo. pp. 2-4.) The vast majority of the asserted patent claims are method claims 26 ­ claiming the method of actually treating patients to remove their wrinkles. Palomar is the sole 27 defendant accused of infringement. Palomar, however, does not treat patients. Like its 28 competitor, Plaintiff Candela Corporation, Palomar only manufactures and sells light-based skin
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1 treatment products. Therefore, to prove Palomar has infringed the method claims, Plaintiffs must 2 attempt to find doctors who are treating patients for wrinkles with Palomar's Accused Products 3 and then must show that Palomar somehow actively induced those doctors to do so. See 35 4 U.S.C. § 271(b); Trustees of Columbia Univ. v. Roche Diagnostics GMBH, 272 F. Supp. 2d 90, 5 104 (D. Mass. 2002) (holding "this statute is analogous to a criminal statute imposing liability
6 6 for one who acts as an accessory before the fact.").

7

As a result, even if there are doctors using Palomar's Accused Products to treat wrinkles,

8 any evidence of such treatments is only relevant to Palomar and this lawsuit if Plaintiffs can 9 show Palomar intentionally induced those doctors to perform those treatments. See Hewlett10 Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990) (holding "proof of 11 actual intent to cause the acts which constitute the infringement is a necessary prerequisite to 12 finding active inducement."). Plaintiffs' subpoenas demand potential evidence of any such 13 inducement by including several categories directed to any communications between Dr. 14 Narurkar and Palomar, as well as marketing materials, presentations, and other materials 15 provided by Palomar to Dr. Narurkar. (See, e.g., Subpoena, request nos. 3, 6, & 10.) 16 Plaintiffs' subpoenas, however, do not stop with potential evidence of inducement by

17 Palomar. Instead, they assume such evidence exists and simultaneously demand Dr. Narurkar's 18 highly sensitive patient treatment records, including all documents that show the number of times 19 Dr. Narurkar used one of the Accused Products, documents concerning the evaluation of 20 treatment with an Accused Product, and photographs of patients. (See, e.g., Subpoena, request 21 nos. 4, 5, & 9.) This puts the cart before the horse. If Palomar has not induced Dr. Narurkar to 22 use the Accused Products in an infringing manner, then Dr. Narurkar's treatment records and 23 patient files are wholly irrelevant to the underlying action and not the subject of proper 24 discovery. Without evidence of Palomar inducing Dr. Narurkar, there is no reason to subject Dr. 25 26
6

27 concede they seek the doctor's patient records in connection with attempting to prove inducement claims 28
against Palomar. (Memo. pp. 4 and 6.)

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1 Narurkar to the risk, burden, and injury of having to search and produce his patient records. 2 The Federal Circuit has rejected improper attempts to obtain irrelevant material from

3 third-parties. See, e.g., Micro Motion, Inc., 894 F.2d 1318. In Micro Motion, a patent owner 4 sought to obtain discovery of confidential business information from a non-party in connection 5 with a patent infringement suit. 894 F.2d at 1319. The non-party respondent sought to quash the 6 patent owner's subpoena on the basis that the information sought (i.e., records concerning use of 7 the relevant products and customer information) was not relevant, the confidentiality of the 8 information was essential, and disclosure would cause the respondent "serious, if not irreparable, 9 injury." Id. at 1321. The Federal Circuit affirmed the judgment of the district court denying the 10 patent owner's requested discovery because the patent owner was engaging in "merely 11 speculative inquiries in the guise of relevant discovery." Id. at 1328. Specifically, the court 12 noted that: "The discovery rules are designed to assist a party to prove a claim it reasonably 13 believes to be viable without discovery, not to find out if it has any basis for a claim." Id. at 1327 14 (emphasis original) (internal citations omitted). The Federal Circuit further found, as is the case 15 with Dr. Narurkar's patient files here, that the potential damage that would follow the disclosure 16 of confidential business information was substantial, and that the patent owner had not 17 sufficiently demonstrated that the requested discovery was sufficiently relevant and necessary. 18 Id. at 1325. 19 Before invading the privacy of Dr. Narurkar's patients, disrupting Dr. Narurkar's

20 practice, and risking the destruction of Dr. Narurkar's reputation and livelihood, Plaintiffs must 21 first establish that the patient records they seek are relevant and discoverable. If the 22 communications with Palomar and other materials Dr. Narurkar has produced do not establish 23 any inducement, the more sensitive patient records are irrelevant and need not be produced. 24 25 26 27 Plaintiffs also face another steep hurdle here. None of the Accused Products are III. THE MOTION SHOULD BE DENIED BECAUSE, EVEN IF ANY OF THE PATIENT INFORMATION IT SEEKS COULD BE RELEVANT, THE SUBPOENA IS OVERBROAD.

28 approved by the United States Food and Dug Administration ("FDA") for the treatment of
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1 wrinkles. Instead, they are approved for treating other skin conditions including hair removal, 2 vascular and pigmented lesions, and scars. So in order for Plaintiffs to prove infringement by 3 Palomar, they must find doctors who are using the Accused Products "off-label" for treating 4 wrinkles and show that Palomar intentionally induced those doctors to perform those "off-label" 5 treatments. See Warner-Lambert Co. v. Apotex Corp., 316 F.3d 1348, 1365 (Fed. Cir. 2003) 6 (requiring evidence of manufacturer's intentional inducement of doctor's "off-label" uses). 7 Desperate to find any such evidence of doctors treating wrinkles with Palomar's

8 products, Plaintiffs served, and now move to enforce, overbroad subpoenas in an improper
7 9 fishing expedition. The Subpoena employs a definition of "Wrinkle Treatment" that goes well

10 beyond actually treating wrinkles. (See Tolliver Decl., Exhibit 2, p. 5.) The Plaintiffs' definition 11 of "Wrinkle Treatment" includes broad terms loosely used in the skin care industry by 12 dermatologists to mean treating a wide array of skin conditions ­ "skin rejuvenation," 13 "photofacials," etc. These terms encompass many different types of skin treatment, and expand 14 the Subpoena to cover much more than simply any treatments of wrinkles. (See id.) 15 Thus, the issue is not one of "confusion" as Plaintiffs claim (Memo. pp. 15-16) over what

16 their definition of "Wrinkle Treatment" means, it is one of overbreadth and relevance. The 17 Plaintiffs' offer to remove the reference to "Wrinkle Treatment" altogether (Memo. p. 16) only 18 serves to expand the scope of the Subpoena, as the removal of such reference leaves the request 19 for records unrestricted. 20 Plaintiffs should not be allowed "to undertake wholly exploratory operations in the vague

21 hope that something helpful will turn up." Mack v. Great Atlantic & Pacific Tea Co., Inc., 871 22 F.2d 179, 187 (1st Cir. 1989). In other words, this court "need not condone the use of discovery 23 to engage in `fishing expeditions.'" Rivera v. NIBCO, Inc., 364 F.3d 1057, 1072 (9th Cir. 2004) 24 (citation omitted). 25 26
Illustrating how broadly and haphazardly Plaintiffs have cast their nets, Plaintiffs served one of their subpoenas on a physician who does not use or possess a single one of the Accused Products. 27 Undeterred, Plaintiffs filed a motion to compel the production of that physician's documents in the Eastern District of Virginia.
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1

Plaintiffs' patents-in-suit are directed only to "treating wrinkles." (Memo. p. 2)

2 Plaintiffs, therefore, are only entitled to evidence about treating wrinkles. Assuming Plaintiffs 3 can first show the Court some evidence of Palomar inducing Dr. Narurkar to treat wrinkles, (see, 4 supra, Section II), Dr. Narurkar should only be required to review and produce treatment records 5 and patient files of such actual wrinkle treatments and not files relating to the treatment of other 6 skin conditions covered by Plaintiffs' overbroad definition. See Micro Motion, Inc., 894 F.2d at 7 1328 (rejecting patent owner's attempt to engage in "merely speculative inquiries in the guise of 8 relevant discovery"). 9 IV. 10 11 Rule 45(c)(1) requires that "[a] party or an attorney responsible for issuing and serving a THE MOTION SHOULD BE DENIED BECAUSE THE SUBPOENA IS OPPRESSIVE AND UNDULY BURDENSOME.

12 subpoena must take reasonable steps to avoid imposing undue burden or expense on a person 13 subject to the subpoena." Fed. R. Civ. P. 45(c)(1). "[A] court determining the propriety of a 14 subpoena balances the relevance of the discovery sought, the requesting party's need, and the 15 potential hardship to the party subject to the subpoena." Gonzales v. Google, Inc., 234 F.R.D. 16 674, 680 (N.D. Cal. 2006). In addition to the damage to Dr. Narurkar and his patients that would 17 result from the production of confidential patient records discussed in Section I above, the 18 Plaintiffs' failure to show the relevance of the documents discussed in Section II, and the overly 19 broad definitions and requests discussed in Section III, additional factors in determining whether 20 there is an undue burden on Dr. Narurkar weigh in favor of denying the Motion. 21 22 A. Dr. Narurkar Is Not A Party To This Action.

"Underlying the protections of Rule 45 is the recognition that `the word non-party serves

23 as a constant reminder of the reasons for the limitations that characterize third-party discovery. 24 subpoena.'" Gonzales, 234 F.R.D. at 680, quoting Dart Indus. Co. v. Westwood Chem. Co., 649 25 F.2d 646, 649 (9th Cir. 1980); see also Cusumano v. Microsoft Corp., 162 F.3d 708, 717 (1st Cir. 26 1998) (noting that "concern for the unwanted burden thrust upon non-parties is a factor entitled 27 to special weight in evaluating the balance of competing needs"). "The Federal Rules . . . afford 28 nonparties special protection against the time and expense of complying with subpoenas."
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1 Exxon Shipping Co. v. United States Dep't of Interior, 34 F.3d 774, 779 (9th Cir. 1994). It is 2 thus particularly relevant to this Motion that Dr. Narurkar has no stake in the underlying 3 litigation, and was not involved in any transactions that would have led him to anticipate that he 4 would be subpoenaed in this action. See Exxon Shipping Co., 34 F.3d at 779; Gonzales, 234 5 F.R.D. at 680; see also Cusumano, 162 F.3d at 717 (upholding District Court's denial of motion 6 to compel and stating that "[i]t is also noteworthy that the respondents are strangers to the 7 antitrust litigation; insofar as the record reflects, they have no dog in that fight. Although 8 discovery is by definition invasive, parties to a law suit must accept its travails as a natural 9 concomitant of modern civil litigation. Non-parties have a different set of expectations."). 10 Since Dr. Narurkar is a non-party respondent with no connection to this action, Plaintiffs'

11 reliance on Bridgeport Music, Inc. v. UMG Recordings, Inc., 2007 WL 4410405 (S.D.N.Y. Dec. 12 17, 2007) (Memo. pp. 13-14), is wholly misplaced. In Bridgeport Music, Inc., the non-party 13 respondent was "the drafter of the agreement at issue," was "indisputably integral to the parties' 14 relationship during the crucial time period," and "as a former attorney for one of the parties, it 15 was foreseeable that he would be asked for records related to services he performed for his 16 former client that is now the subject of litigation." 2007 WL 4410405, * 3 n.4. In addition, the 17 subpoena there contained "only one document request and that request is relatively narrow," (id. 18 at *2) and "the information in question is not confidential, nor is the request overly burdensome" 19 (id. at *3 n.5). Plaintiffs do not contend that Dr. Narurkar was involved in any aspect of the 20 underlying dispute here (and there would be no basis for such a contention) and, thus, the burden 21 of responding to the Subpoena is particularly unwarranted here. Moreover, in contrast to 22 Bridgeport Music, Inc., the document requests here are broad, they are overly burdensome, and 23 they seek confidential information. 24 25 26 B. The Subpoena Would Force Dr. Narurkar To Divert Limited Resources Away From His Patients And Practice Thereby Disrupting His Practice And Causing Irreparable Harm.

Plaintiffs argue that they made significant modifications ­ withdrawing the First

27 Subpoena and offering to reduce the scope of the current Subpoena ­ in order to avoid imposing 28
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1 undue burden on Dr. Narurkar. However, the breadth of the documents sought by Plaintiffs 2 through the Motion belies this assertion. Although Plaintiffs reduced the number of requests 3 contained in the First Subpoena from 34 to the 8 categories of documents it is seeking here, the 4 burden of compliance imposed upon Dr. Narurkar remains high. The remaining requests require 5 the review of, inter alia, thousands of patient files. (See Dr. Narurkar Decl., ¶ 2.) 6 The Subpoena's limitation to a particular timeframe or treatment is not determinative of

7 the burden on Dr. Narurkar. Dr. Narurkar's medical records are maintained alphabetically by 8 patient, and not categorized by the type of laser treatment provided to each patient. (Dr. 9 Narurkar Decl., ¶ 4.) Thus, in order to determine which records ­ among thousands of records ­ 10 are responsive, Dr. Narurkar would have to review practically all of his patient records to 11 identify any responsive documents. As discussed above, Dr. Narurkar estimates that it would 12 take several months to review his medical records. (Dr. Narurkar Decl., ¶ 3.) The diversion of 13 Dr. Narurkar's limited resources from the operation of his practice would cause an unscheduled 14 interruption to his business, thereby causing irreparable harm, accordingly, the Motion should be 15 denied. (See Dr. Narurkar Decl., ¶ 7.) 16 17 C. Specific Requests

While the foregoing discussion addresses the entirety of the Subpoena, the following

18 points are relevant to the determination of the propriety of Plaintiffs' request for an order 19 compelling the production of documents described by each of the categories. 20 To the extent that Dr. Narurkar has responsive documents in his possession, custody, or

21 control (as specifically indicated below), he will produce documents in response to the following
8 22 categories:

23 24 25 26 27

i

Category No. 1: Dr. Narurkar has no such documents in his possession, custody, or control.

i

Category Nos. 3 & 10: Dr. Narurkar will produce communications concerning

8

28

Category No. 7 has been voluntarily withdrawn by Plaintiffs.
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1 2 3 4 5 6 7
i

use of the Accused Products as limited and described by the Plaintiffs in the Motion. Category No. 8: While Plaintiffs already have any such documents, as they were previously produced by Palomar, Dr. Narurkar will produce the requested documents in his possession, custody, or control to the extent they concern the Accused Products. In light of the fact that the remaining request for documents seek irrelevant information,

8 implicate patient privacy concerns, and subject Dr. Narurkar to unduly burdensome production, 9 Dr. Narurkar reiterates his objections to producing documents described in the following 10 categories: 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
i i

Category Nos. 2 & 6: Dr. Narurkar's marketing of the Accused Products (including any patient photographs he has used for marketing purposes) is only relevant if there is any evidence of inducement. As more fully discussed in Section II above, unless there is evidence of inducement shown by any other document in Dr. Narurkar's possession, custody, or control, his marketing materials ­ i.e., those materials that he uses to market his own services ­ are irrelevant and will not be produced. Moreover, as discussed in Section III above, Plaintiffs' definition of "Wrinkle Treatment" is so broad it would cover virtually all of Dr. Narurkar's marketing materials and, therefore, this request exceeds the permissible scope of discovery. (To the extent that these requests call for communications that are otherwise described in category nos. 3 & 10, such communications will be produced as stated above.) Category Nos. 4, 5, & 9: For all of the reasons discussed above, Plaintiffs' request for these materials is beyond the scope of discovery and, since Dr. Narurkar will not violate his patients' confidentiality, the requested materials will not be produced without a court order. CONCLUSION

WHEREFORE, for the reasons set forth herein, Dr. Narurkar respectfully requests that
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1 the Plaintiff's Motion to Compel be DENIED. 2 DATE: FEBRUARY 19, 2008 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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