Case 3:16-cv-06001-WHO Document 184 Filed 09/12/17 Page 1 of 6
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`APPLE INC.,
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`Plaintiff,
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`v.
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`MOBILE STAR LLC, et al.,
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`Defendants.
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`Case No. 16-cv-06001-WHO
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`ORDER GRANTING MOTION FOR
`LEAVE
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`Re: Dkt. No. 148
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`INTRODUCTION
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`Apple seeks leave to take a second deposition of non-party Amazon on issues not covered
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`at the first deposition. It argues that the scope of the first deposition was limited by the stipulated
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`order permitting early discovery prior to its motion for a preliminary injunction. Amazon objects
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`to the request because a second deposition would be unduly burdensome, the information
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`requested is not necessary for Apple’s case, and the issues could have been covered at the first
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`deposition. As a compromise, to avoid the expense and burden of appearing for a deposition,
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`Amazon offers to respond to a deposition by written questions. Apple rejects that offer. Because
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`the burden here is not undue and the information requested cannot be secured solely through
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`document productions and is more effectively secured from a live deposition (as opposed to a
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`deposition by written questions), I GRANT Apple’s motion for leave to take a second Rule
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`30(b)(6) deposition of Amazon. The September 20, 2017 hearing is VACATED. Civ. L.R. 7-
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`1(b).
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`BACKGROUND
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`On October 17, 2016, Apple filed this case alleging Mobile Star supplied Amazon and
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`Groupon with counterfeit Apple-branded products. Complaint ¶ 1 (Dkt. No. 1). Apple moved for
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`expedited discovery. Following the hearing on that motion, Apple and Mobile Star agreed to a
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`stipulated order for expedited discovery in support of Apple’s then-pending motion for a
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`preliminary injunction. Stipulated Order (Dkt. No. 43). That agreement limited the discovery
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`Case 3:16-cv-06001-WHO Document 184 Filed 09/12/17 Page 2 of 6
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`Apple could seek from Mobile Star, and allowed the parties to serve discovery subpoenas on
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`Amazon but did not limit the scope of discovery that could be sought. Id. at 2-3. Apple then
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`subpoenaed Amazon requesting documents and Rule 30(b)(6) deposition testimony on two topics:
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`Amazon’s purchase of Apple-branded products from Mobile Star and the origin of other
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`counterfeit Apple-branded products. Ex. A to the Declaration of Thomas H. Zellerbach [Dkt. No.
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`148] (Subpoena).
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`More specifically, the Subpoena sought deposition testimony (1) on the identity and
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`quantity of all Apple-branded products that Mobile Star sold Amazon over the previous three
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`years and (2) linking twelve Amazon order numbers to the sources who provided Amazon with the
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`product. Subpoena at 7. The Subpoena also required Amazon to produce documents that (1)
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`identified all Apple-marked products acquired from Mobile Star by any means within the past
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`three years and (2) showed the source of twelve products identified by their Amazon Standard
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`Identification Number and Amazon Order Number. Subpoena at 6.
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`According to Apple, Amazon did not fully comply with the Subpoena. Apple complains
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`that Amazon produced only 38 documents requested by Apple (and other documents responsive to
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`Mobile Star’s request). Zellerbach Decl., ¶ 3. Apple contends that Amazon’s witness was only
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`prepared to testify to the origin of the counterfeit products purchased by Apple on the Amazon
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`website. Motion for Leave [Dkt. No. 148] at 2-4; Zellerbach Decl., ¶ 4.1
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`In order to secure the discovery Apple contends it needs for the merits of this case, on May
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`1, 2017, Apple served Amazon a second subpoena identifying additional topics not covered in the
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`first deposition and additional document requests. Second Subpoena [Dkt. No. 159, Ex. 1],
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`Zellerbach Decl., ¶ 6. After discussions with Amazon, where Amazon objected only to the
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`proposed date of deposition, Apple served a final amended subpoena on June 28, 2017, setting
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`1 Amazon contends that it produced 585 documents and the deposition witness was prepared and
`qualified on both topics listed in the deposition and testified for a full day on January 11, 2017.
`Opposition/Response [Dkt. No. 158] 3-4. According to Apple over 90 percent of Amazon’s
`document production consists of documents that were responsive to Mobile Star’s subpoena
`including communications between Apple and Amazon. Apple’s Reply [Dkt. No. 170] at 2.
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`Case 3:16-cv-06001-WHO Document 184 Filed 09/12/17 Page 3 of 6
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`July 7, 2017 as the deposition date. Zellerbach Decl., Ex. B (Amended Subpoena).2
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`Amazon objected to the second deposition request because Apple did not seek leave to take
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`a second deposition, and informed Apple that it would not appear for the deposition. Zellerbach
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`Decl., ¶ 7. Amazon continued to produce responsive documents, however, providing 113
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`supplemental documents on July 5, July 21, and August 18, 2017. Declaration of Brian Buckley ¶
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`7 [Dkt 160]. Apple moved to compel Amazon to appear at the second deposition in the U.S.
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`District Court in Western District of Washington. On August 4, 2017, Judge Jones denied Apple’s
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`Motion to Compel, concluding that Apple needed to seek leave from me before a second
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`deposition could be compelled. Zellerbach Decl., Ex. C. Accordingly, Apple now seeks leave
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`from me to take the second Rule 30(b)(6) deposition of Amazon.3 Motion for Leave [Dkt. No.
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`2 The seven new deposition topics are (1) how and when Mobile Star began selling Apple-
`branded products to Amazon; (2) the process and criteria Amazon used to qualify Mobile Star to
`sell the Apple-branded products; (3) Amazon’s procedures for ordering and buying products from
`Mobile Star; (4) Amazon’s steps to authenticate the Apple-branded products Mobile Star sold; (5)
`the investigative procedures Amazon followed in June 2016 when responding to complaints and
`concerns that the Mobile Star products were counterfeit; (6) all complaints and counterfeit
`allegations made to Amazon regarding Mobile Star Apple-branded products and any investigatory
`procedures followed by Amazon; and (7) the quantity and identity of all Apple-branded products
`Mobile Star distributed to Amazon since October 17, 2012.
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` 3
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` In support of its Reply, Apple relies on information Mobile Star and Amazon have marked as
`confidential and, in accordance with the Northern District’s Local Rules, filed an administrative
`motion to conditionally file under seal the portions of its pleadings referencing those materials.
`Dkt. No. 169. In support of continued sealing, Mobile Star filed a declaration from its CEO Jack
`Braha [Dkt. No. 183] stating that good cause exists to seal Ex. G to the Shaffer Declaration [Dkt.
`No. 169-9] and page 7:17 in Apple’s Reply because the information relates “to Mobile Star’s
`confidential business information and trade secrets, including the prices and quantities of goods
`purchased by Mobile Star’s customers. The materials also include confidential correspondence
`between Mobile Star and its customers, which reveal sensitive and proprietary information about
`Mobile Star’s business operations and finances.” Braha Decl. ¶ 5. I agree that good cause exists
`to seal Ex. G to the Shaffer Declaration because the attached email discloses Mobile Star’s
`pricing. However, good cause has not been shown to seal the text at page 7, line 17 of the Reply,
`disclosing Amazon’s belief that unidentified products supplied by Mobile Star were counterfeit.
`Amazon filed a declaration from Brian Buckley in support of continued sealing of its information,
`asserting materials “relate to Amazon’s proprietary systems and processes, including those that
`assist Amazon in preventing counterfeit goods from being sold on the Amazon marketplace and
`for identifying the source of a specific product shipped through an Amazon facility.” Dkt. No.
`180, ¶ 7. I agree and GRANT the motion to seal as to Shaffer Exs. C, D, and E as the information
`discloses details about Apple’s inventory, sales, and investigatory processes. However the motion
`is DENIED as to Exhibit B, and Reply Br. at 5:22-27, 6:11-12, 6:15-19, 6:23-26, 7:24-25 as that
`information merely references Amazon requiring samples and conducting investigations but does
`not disclose any confidential details of processes or procedures, as well as general information
`regarding Amazon’s beliefs about source of Mobile Star’s goods. Dkt. Nos. 169-4 & 169-5 shall
`be UNSEALED by the clerk.
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`Case 3:16-cv-06001-WHO Document 184 Filed 09/12/17 Page 4 of 6
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`148] at 2.4
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`LEGAL STANDARD
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`A party requesting multiple depositions of a deponent must obtain leave of court. Fed. R.
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`Civ. P. 30(a)(2)(A)(ii). A deposition is limited to one day consisting of seven hours unless
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`ordered by the court or stipulated by the parties. Fed. R. Civ. P. 30(d)(1).5 Rule 30(a)(2) provides
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`that a “court must grant leave to the extent consistent with Rule 26(b)(2).” Rule 26(b)(2) in turn
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`provides that a court must limit discovery where “the discovery sought is unreasonably cumulative
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`or duplicative,” “the party seeking discovery has had ample opportunity to obtain the information
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`by discovery in the action,” or “the burden or expense of the proposed discovery outweighs its
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`likely benefit, considering the needs of the case, the amount in controversy, the parties’ resources,
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`the importance of the issues at stake in the action, and the importance of the discovery in resolving
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`the issues.”
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`The parties dispute whether Apple must show good cause for seeking the second Amazon
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`deposition. Compare cases cited at Apple Reply at 3 with Amazon Oppo. at 7-8. For purposes of
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`ruling on this motion I will assume the good cause standard applies and under that standard
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`GRANT Apple’s motion for leave to serve its deposition subpoena. Zellerbach Decl., Ex. D.
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`DISCUSSION
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`Apple argues that the deposition it wants, seeking discovery on seven topics, is key to
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`proving its willful infringement cases against Mobile Star and, as shown by documents recently
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`produced by Amazon, can only be secured through deposition. Amazon opposes on the bases of
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` Apple objected and continues to object to Amazon’s standing to appear in this Court to oppose
`Apple’s motion for leave. However, as described in my August 17, 2017 Order Regarding
`Request to Shorten Time and Briefing on Motion for Leave, it makes sense for purposes of
`judicial efficiency to allow Amazon to explain its objections now. August 17, 2017 Order [Dkt.
`No. 153].
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` The parties dispute whether leave of court is required before a party may take a second Rule
`30(b)(6) deposition and there are cases on both sides of that issue. See, e.g., Blackwell v. City &
`Cty. of San Francisco, No. C-07-4629 SBA (EMC), 2010 WL 2608330, at *1 (N.D. Cal. June 25,
`2010) (recognizing split in opinions). However, I need not reach this question because Apple has
`sought leave, if not in the first instance then at least in the second, after Judge Jones ruled leave
`was required.
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`Case 3:16-cv-06001-WHO Document 184 Filed 09/12/17 Page 5 of 6
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`burden and relevance, that Apple already had the opportunity to secure this information, and that
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`the less burdensome and more convenient method of deposition by written questions is sufficient
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`to meet Apple’s needs.
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`Amazon contends that the burden required to prepare for and attend the second deposition
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`is outweighed by the minimal relevance of the information sought to Apple’s claims against
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`Mobile Star. Oppo. at 9-13. While courts must be especially cautious not to burden non-parties
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`(who typically deserve extra protection from the courts) with discovery obligations, Amazon
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`played a central role in the underlying dispute and has information solely within its deponent’s
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`knowledge relevant to Apple’s claim of willful infringement against Mobile Star. See Apple
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`Reply at 5-7. Apple has explained why the information sought about Amazon’s procedures and
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`steps with respect to verifying the authenticity of Apple-branded products Amazon purchased
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`from Mobile Star is directly relevant to its willful infringement claims against Mobile Star.
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`Amazon’s complaint that Apple may be attempting to secure confidential discovery from it – an
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`Apple competitor – is blunted by the fact that the only procedures and steps that must be discussed
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`at the deposition are those that Amazon took with respect to the purchases from and investigations
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`related to Mobile Star.6
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`While it is true that nothing in the Stipulated Order restricted Apple from taking full blown
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`discovery from Amazon, my purpose in allowing expedited discovery was so that Apple could
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`secure enough discovery to support its motion for a Preliminary Injunction, not to be ready for
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`trial. That explains why Apple’s initial document requests and deposition topics were so limited.
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`Transcripts of Proceedings Held on 11-9-16 [Dkt. No. 45] at 7-8. I recognize that Amazon had no
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`control over or input into that process as a third-party and that the second deposition places an
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`additional burden on it. However, because of the central role it played in the underlying events, I
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`find that there is good cause for a second deposition.
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`6 Amazon argues that the deposition topics seeking seek testimony about Amazon’s conduct,
`internal procedures, and investigatory techniques would not help Apple build its case against
`Mobile Star. Oppo. at 13. Apple disagrees, provides a short explanation of each topic’s necessity,
`and notes that even if Amazon had reason to be concerned, the Protective Order in this case
`permits Amazon to restrict use of its confidential information to this case. Reply at 8.
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`Case 3:16-cv-06001-WHO Document 184 Filed 09/12/17 Page 6 of 6
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`As to the argument that a second deposition would be unduly cumulative, duplicative, and
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`obtainable through written deposition testimony, Apple has shown that the discovery it seeks is
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`implicated by but not answered by the documents produced by Amazon. Reply at 5-7. Amazon’s
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`offer of a deposition by written questions under Rule 31 is not an effective solution given the
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`complex issues in this case, the central role Amazon played in the underlying events, and
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`Amazon’s apparent knowledge regarding the Mobile Star’s sale of counterfeit items to it.
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`There is good cause for leave to take a second Amazon deposition. Apple’s motion for
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`CONCLUSION
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`leave is GRANTED.
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`IT IS SO ORDERED.
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`Dated: September 12, 2017
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`William H. Orrick
`United States District Judge
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