United States District Court, E.D. North Carolina, Southern Division
T. Numbers, II United States Magistrate Judge
Albert Gene Higdon, Jr. and Kristopher DiMauro seek orders
quashing subpoenas served by Defendant HSG, LLC requiring
them to provide deposition testimony. Mots. of Nonparty to
Quash Subpoena, or in the Alternative, for Protective Order,
D.E. 95, 97. In the alternative, they ask the court to enter
a protective order limiting the scope of the depositions.
Id. After review, the court finds that Higdon and
DiMauro may have knowledge relevant to the parties’
claims or defenses and thus declines to quash the subpoenas
or issue a protective order.
parties are embroiled in a patent infringement lawsuit.
Plaintiff Edge-Works Manufacturing Company designs,
manufactures, and sells tactical gear, including holsters and
firearm magazine carriers. Second Am. Compl. ¶ 8, D.E.
70. Edge-Works owns U.S. Patent No. 9, 668, 568 (the
“‘568 Patent”) and U.S. Patent No. 9, 795,
210 (the “‘210 patent”), a continuation of
the ‘568 Patent. Id. at ¶ 9–11.
‘568 and ‘210 Patents cover an expandable firearm
magazine carrier that allows a user to place varied
compression on the magazine using a binding device woven
through a series of channels. Id. at ¶ 12.
These patents include Edge-Works’ Hardshell Scorpion
products, injection molded expandable magazine pouches
launched in 2014. Decl. of Albert Gene Higdon, Jr., Mem. in
Supp. Ex. 4, at 1–2, D.E. 96–4.
also makes, sells, and manufactures tactical gear. Answer to
Second Am. Compl. ¶ 13, D.E. 75. Since its founding, HSG
has manufactured and sold a nylon TACO product, a fabric
compression magazine pouch. Higdon Decl. at 1. In 2017, HSG
began selling Polymer TACO products, the Kydex Handcuff TACO,
and the Kydex Tourniquet TACO, variations of the original
TACO. Second Am. Compl. ¶ 13, 25. Edge-Works alleges
that these HSG products infringe its ‘568 and
‘210 Patents. Id. at ¶ 32–38.
served subpoenas on Higdon and DiMauro requiring them to
appear for a deposition. Subpoenas Issued to Gene Higdon and
Kristopher Dimauro, D.E. 96–2, 98–2. Higdon
founded HSG, Inc., predecessor to Defendant HSG, LLC, and
served as its Chief Executive Officer until 2012. Higdon
Decl. at 1–2. While CEO, he and Edge-Works owner Scott
Evans collaborated to co-invent HSG’s original nylon
TACO product. Resp. to Mot. in Supp. at 2, D.E. 99. After
selling his company, Higdon worked as a design consultant for
HSG, LLC through 2013. Higdon Decl. at 1. DiMauro worked as
HSG’s Sales and Marketing Director from
2009–2011. Decl. of Kristopher DiMauro at 1–2,
D.E. 98–4. Higdon and DiMauro claim they have no
personal knowledge of any matter relevant to any
party’s claim or defense because they both stopped
working for HSG before 2014, when Edge-Works filed its patent
application which matured into the patents-in-suit.
See Mots. of Nonparty to Quash.
the Federal Rules, parties may obtain discovery on “any
nonprivileged matter that is relevant to any party’s
claim or defense and proportional to the needs of the
case[.]” Fed.R.Civ.P. 26(b)(1). When applying the
discovery rules, courts should give them “a broad and
liberal treatment to effect their purpose of adequately
informing the litigants in civil trials.” Herbert
v. Lando, 441 U.S. 153, 177 (1979). But court retains
the authority to limit the “frequency or extent of
discovery” if “the discovery sought is
unreasonably cumulative or duplicative, or can be obtained
from some other source that is more convenient, less
burdensome, or less expensive.” Fed.R.Civ.P.
question before the court is whether it should quash the
subpoenas or otherwise limit Higdon and DiMauro’s
depositions. To resolve this question, a court must balance
the relevance of the information sought, the need to obtain
information from the deponent, confidentiality concerns, and
the resulting harm to any party. Insulate Am. v. Masco
Corp., 227 F.R.D. 427, 432 (W.D. N.C. 2005); see
also Voit Techs., LLC v. Del-Ton, Inc., No.
5:17-CV-259-BO, 2019 WL 3423468, at *2 (E.D. N.C. July 29,
response to the motions to quash, HSG has identified these
topics as relevant to the parties’ claims or defenses:
(1) Higdon and DiMauro may know about pre-2012 kydex TACO
prototypes and discussions about the same that may be prior
art; (2) Higdon and DiMauro are familiar with the growth,
popularity, and commercial success of the TACO, relevant to
creating later derivatives of the product; and (3) Higdon and
DiMauro can explain the relationship between HSG, Inc., HSG,
LLC, and G-Code. Resp. to Mots. to Quash at 3–4.
court agrees that these topics are relevant and thus within
the scope of discovery. Higdon, DiMauro, and Edge-Works owner
Scott Evans have a long-time personal and professional
relationship and often collaborated before Higdon sold the
company. Id. at 2–3. Before leaving HSG in
2012, DiMauro made a kydex TACO prototype on which Higdon may
have collaborated. Both Higdon and DiMauro worked at HSG at
this time and would know about any discussions about a kydex
TACO prototype. Whether HSG developed a kydex TACO protype in
2012 is directly relevant to the claim that HSG infringed on
Edge-Works’ patents when it developed the Kydex
Handcuff and Tourniquet TACOs in 2017. Thus the information
sought goes to HSG’s affirmative defense of invalidity
based on prior art. Answer to Second Am. Compl. at 6, D.E.
75. This falls clearly within the scope of Rule 26. See
Brown v. Pope, No. 3:08–14, 2013 WL 12158596, at
*1 (D.S.C. July 18, 2013) (holding that because the party
moving to quash a subpoena “failed to show that it is
certain that he lacks knowledge of any facts which
may be relevant” to the claims at issue, the non-moving
party had a right to depose him).
needs to depose Higdon and DiMauro, despite being nonparties,
to determine the full scope of the inventions mentioned in
any collaborative discussions between HSG and Edge-Works.
Higdon and DiMauro can contribute more to a deposition than
merely their status as former employees. As HSG notes,
“no one at HSG was privy to Mr. DiMauro’s
conversations with Mr. Higdon or Mr. Evans” and
“HSG has no way of knowing the full scope of any
inventions disclosed in [Higdon and DiMauro]’s
collaborations with Mr. Evans without taking [their]
depositions.” Resp. to Mots. to Quash at 6. Because
whether these collaborations included the development of a
kydex TACO is relevant to HSG’s defense and it cannot
obtain the information from another source, HSG needs to
question both Higdon and DiMauro.
parties identify no confidentiality issues that would arise
from allowing Higdon and DiMauro’s depositions to
proceed. The court notes that a protective order allows the
parties to limit access to confidential materials produced in
discovery. See Protective Order, D.E. 67.
to harm, the only basis for harm Higdon identifies is that
HSG has already sued him twice in the last four years. Higdon
Mot. to Quash at 2, D.E. 95. But Higdon has not shown that he
will face any significant prejudice from disclosing the
information HSG seeks now. DiMauro also identifies no
impending harm. Thus the court finds that deposing DiMauro or
Higdon does not create any potential for harm.
court also finds that subjecting Higdon and DiMauro to a
deposition is not an “undue burden.” Fed.R.Civ.P.
45(d)(3)(A)(iv). When information requested from a nonparty
“offer[s] some value over and above what the requesting
party already has” and the requesting party can
“explain why it cannot obtain the same information, or
comparable information … from one of the parties to
the litigation, ” it is not unduly burdensome. Va.
Dep ’t of Corr. v. Jordan,921 F.3d 180, 189 (4th
Cir. 2019), petition for ...