UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA ____________________________________ ) CHIDAMBARAM S. IYER, ESQ., ) ) Case No. 23-mc-8 (CKK/GMH) Petitioner, ) ) v. ) Ingenus Pharms., LLC v. Nexus ) Pharms, Inc., Case No. 22-cv-2868 NEXUS PHARMACEUTICALS, INC., ) (Related case pending in the U.S. ) District Court for the Northern Respondent. ) District of Illinois) ____________________________________)

MEMORANDUM OPINION AND ORDER

Petitioner Chidambaram S. Iyer, a lawyer who helped to prosecute a patent for a

chemotherapy drug that is the subject of an infringement action in the Northern District of Illinois

styled Ingenus Pharmaceuticals, LLC v. Nexus Pharmaceuticals, Inc. (“Ingenus”), has moved to

quash a deposition subpoena issued to him by the defendant in that matter, Nexus Pharmaceuticals,

Inc. (“Nexus”), on the basis that he now serves as trial counsel for the patent owner in the

infringement case. ECF No. 1. Nexus asks the Court to transfer the motion to quash to the

Northern District of Illinois for resolution or, in the alternative, to deny the motion to quash and

compel the deposition. ECF No. 4. For the reasons that follow, Nexus’ request to transfer the

motion to quash is granted.

I. BACKGROUND

A. Prosecution of the ’952 Patent and FDA Applications

The plaintiffs in the underlying Ingenus case—Ingenus Pharmaceuticals, LLC (“Ingenus”)

and Leiutis Pharmaceuticals, LLP (Leiutis”)— are owners and assignees of a patent (known as the

’952 patent) “relat[ing] to stable ready to use, liquid parenteral formulations of Cyclophosphamide

solution for intravenous use in the treatment of various cancers and process and preparation thereof.” Exh. to Complaint at 2, Ingenus, No. 22-cv-2868 (N.D. Ill. June 1, 2022) (the ’952 patent

document), ECF No. 1-1; see Complaint at 5, Ingenus, No. 22-cv-2868 (N.D. Ill. June 1, 2022),

ECF No. 1. Chandrashekhar Kocherlakota and Nagaraju Banda, the inventors of what became the

’952 patent, applied for patent protection in August 2017. ECF No. 1-10 at 424. The application

went through a number of iterations over the course of the next approximately three-and-one-half

years until the U.S. Patent and Trademark Office (“PTO”) issued the patent in May 2021. See

ECF No. 1-10 at 34; see also Exh. to Complaint, Ingenus Pharm., No. 22-cv-2868, ECF No. 1-1.

Two individuals helped shepherd the application through its prosecution, including participating

in six interviews with the patent examiner to explain why the patent was non-obvious—Adolph

Bohnstedt, a non-attorney patent agent who took part in four interviews between October 2019

and September 2020; and Iyer, a patent attorney who replaced Bohnstedt in December 2020 and

participated in the remaining two interviews in January and March 2021, soon after which the

examiner provided notice that the patent would be allowed. See ECF No. 1-10 at 2–3 (noting the

acceptance of a power of attorney filed on Dec. 11, 2020), 15–26 (Notice of Allowance dated

March 29, 2021, and related documents); 27–28 (summary of Mar. 22, 2021 interview between

patent examiner and Iyer); 96–98 (summary of Jan. 5, 2021 interview between patent examiner

and Iyer); 118–19 (summary of Sept. 8, 2020 interview between patent examiner and Bohnstedt);

165–67 (summary of Apr. 6, 2020 interview between patent examiner and Bohnstedt); 201-02

(summary of Dec. 19, 2019 interview between patent examiner and Bohnstedt); 210–12 (summary

of Oct. 4, 2019 interview between patent examiner and Bohnstedt); see also ECF No. 1-2 at 7. In

connection with those interviews, Bohnstedt and Iyer submitted to the PTO a number of affidavits

from inventors Kocherlakota and Banda. See ECF No. 1-10 at 77–81 (declaration of Kocherlakota

dated Jan. 14, 2021); 139–43 (declaration of Banda dated Apr. 8, 2020); 144–48 (declaration of

2 Kocherlakota dated Apr. 8, 2020); 223–30 (declaration of Banda dated Oct. 1, 2019); 231–38

(declaration of Kocherlakota dated Oct. 1, 2019).

The patent examiner ultimately found that the invention now protected by the ’952 patent

had better stability compared to the formulations in the prior art and that the stability was

“unexpected.” 1 ECF No, 1-10 at 25. Consequently, the patent’s four remaining claims were

allowed and the patent issued in May 2021. See ECF No. 1-10 at 19–26; see also Exh. to

Complaint at 1, 5, Ingenus, No. 22-cv-2868.

Prior to issuance of the ’952 patent, Ingenus and Leiutis filed a New Drug Application

(“NDA”) for its injectable cyclophosphamide solution for use in cancer treatment, which was

approved by the Food and Drug Administration (“FDA”) in July 2021; an NDA regarding a

supplemental dosage was approved in November 2021. Complaint at 4–5, Ingenus, No. 22-cv-

2868. Later, in December 2021, Nexus filed an Abbreviated New Drug Application (“ANDA”)

to obtain approval for the manufacture, use, or sale of purported generic versions of the Ingenus

product prior to the expiration of the ’952 patent. 2 Id. at 6; see also ECF No. 5 at 24. The ANDA

included a so-called “paragraph IV certification” that the ’952 patent is invalid or will not be

11 An invention is not patentable “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.”

. “Unexpected results” can be “probative of nonobviousness.” Galderma Labs., L.P. v. Tolmar, Inc.,

(Fed. Cir. 2013). 2 The Food, Drug, and Cosmetic Act requires a company that seeks to market a new brand-name drug to submit an NDA that includes “among other things, evidence of the drugs’ safety and effectiveness, as well as information about patents that cover or might cover the drugs.” Purepac Pharm. Co. v. Thompson,

, 879 (D.C. Cir. 2004). The so-called “Hatch-Waxman” amendments to that statute allow companies seeking to sell generic versions of approved brand-name drugs to submit ANDAs “that ‘piggyback’ on the safety-and-effectiveness information that the brand-name manufacturers submitted in their NDAs.” Id. To address the patents that cover or might cover the generic drugs, companies can “include[e] in their ANDAs one of several ‘certifications’ that explain why the FDA should approve the application despite the patent’s claim on the drug.” Id. Among these is a certification that the patent is invalid or will not be infringed by the new drug. Id. Once an ANDA applicant provides notice to a patent holder of its application, the FDA must wait 45 days before approving the ANDA, “thereby giving the patent holder that much time to file a patent-infringement suit.” Id.

3 infringed by the new drug. See Complaint at 6, Ingenus, No. 22-cv-2868; see also Purepac

Pharm., 354 F.3d at 879 (“[A] ‘paragraph IV certification,’ named for the subsection of the law

that describes it[,] states ‘that such patent is invalid or will not be infringed by the manufacture,

use, or sale of the new drug.’” (quoting

(j)(2)(A)(vii)(IV)). In light of Nexus’

ANDA and paragraph IV certification, Ingenus and Leiutis filed their patent infringement suit in

the Northern District of Illinois in June 2022, which was assigned to District Judge Mary M.

Rowland. Complaint, Ingenus, No. 21-cv-2868.

B. Procedural Histories of Ingenus and This Action

Nexus timely filed its Answer and a counterclaim in the Illinois action seeking a declaration

that Nexus’ proposed ANDA product did not infringe any valid claim of the ’952 patent. Answer

at 18–23, Ingenus, 22-cv-2868 (N.D. Ill. July, 25, 2022), ECF No. 15. The parties’ August 29,

2022 report of their Rule 26(f) conference in the Illinois action noted that Iyer was among the

attorneys who participated in the conference on Ingenus’ behalf. ECF No. 1-2 at 2. That report

also disclosed that Nexus sought permission to depose Iyer and Bohnstedt, a request that Ingenus

opposed, and “request[ed] guidance from the Court as to how the parties should proceed in in

connection with [that] issue.”

at 8–9. In her scheduling order of August 31, 2022, Judge

Rowland stated that she was

inclined to allow Defendant limited depositions of patent prosecutors Adolph Bohnstedt and Chidambaram Iyer. The Court is not aware of authority categorically barring such depositions. . . . [H]owever, the parties shall meet and confer further on this issue to attempt to reach agreement on limited video depositions of these individuals. If the parties cannot resolve the issue, they should include further specifics in their October 31 status report and the Court will rule thereafter.

ECF No. 1-3 at 4. Pursuant to the Local Patent Rules of the Northern District of Illinois, that order

also set a schedule for infringement, non-infringement, unenforceability, and invalidity

4 contentions and claim construction briefing; it further set April 24, 2023, as the deadline for pre-

claim construction fact discovery. ECF No. 1-3 at 2; see generally Local Patent Rules,

https://www.ilnd.uscourts.gov/_assets/_documents/_rules/localpatentrules-preamble.pdf (last

visited Apr. 21, 2023) [hereinafter, N.D. Ill. Patent Rules]. That deadline was later extended to

May 31, 2023. Minute Entry, Ingenus, No. 22-cv-2868 (N.D. Ill. Apr. 20, 2023).

In September 2022, Nexus served notices on counsel for Ingenus and Leiutis setting the

depositions of Iyer and Bohnstedt for December 1, 2022, and December 2, 2022, respectively.

ECF Nos. 1-5, 5-5. Ingenus and Leiutis objected, stating first that any depositions should have

been noticed by a Rule 45 subpoena, since neither individual is a party to the Illinois case. ECF

No. 1-6 at 2. They further charged that “noticing [Iyer’s] deposition under the guise of fact

discovery seem[ed] little more than a harassment tactic designed to create a witness out of trial

counsel.”

They also contended that (1) testimony relating to Iyer’s and Bohnstedt’s

representation before the PTO was irrelevant given that the PTO’s rules require patentability

decisions to be made only on the written record before that office, and (2) questions about the

positions taken before the PTO would be “more properly directed to the applicants who made

them, not the attorneys who represented them.”

at 2–3.

Judge Rowland vacated the status report due on October 31, 2022 and set a status

conference for November 21, 2022. Minute Entry, Ingenus, No. 22-cv-2868 (N.D. Ill. Oct. 12,

2022), ECF No. 26. The parties filed a status report in advance of that hearing, asserting that they

had not yet resolved the issue concerning the depositions of Iyer and Bohnstedt. ECF No. 5-1 at

2. That status report also noted that the parties had resolved an issue about the location of the Rule

30(b)(6) deposition of Leiutis. See

That deposition took place virtually on November 22, 2022;

5 Kocherlakota, one of the inventors, was the deponent and Iyer defended the deposition. See ECF

No. 1-9 at 3–5.

In early January 2023, Iyer’s law firm was served with a subpoena from the Northern

District of Illinois requiring Iyer to appear for a deposition in this District, which is where he is

employed. 3 ECF No. 1-1; ECF No. 4 at 9 & n.3; ECF No. 4-2 at 2. On January 26, 2023, Iyer

filed a motion to quash the subpoena in this Court pursuant to Rule 45(d)(3)(A), which provides

that “the court for the district where compliance is required must quash or modify a subpoena that

subjects a person to an undue burden or calls for disclosure of privileged information,” among

other things. See ECF No. 1; see also Fed. R. Civ. P. 45(d)(3)(A)(iii)–(iv). This Court issued an

order calling for a response from Nexus that also reminded the parties that Nexus could consent to

the transfer of the motion to quash to the Northern District of Illinois under Rule 45(f), which

allows such a transfer upon consent or if the court where compliance is required finds “exceptional

circumstances.” ECF No. 3. A joint status report filed in Ingenus on the same day that this Court

issued its scheduling order noted that Iyer did not consent to transfer to that court and indicated

that Nexus would file a motion there to compel his deposition. Joint Status Report at 2, Ingenus,

No. 21-cv-2868 (N.D. Ill. Jan. 31, 2023), ECF No. 31. Nexus filed its motion a few days later and

Judge Rowland denied it soon thereafter without further briefing. See Motion to Compel the

Deposition Testimony of Chidabaram Iyer, Ingenus, 22-cv-2868 (N.D. Ill. Feb. 3, 2023), ECF No.

32; ECF No. 5-4 at 2. Judge Rowland held that the proper forum for a motion to compel

compliance with a subpoena is the district where compliance is required unless the court in that

3 Nexus admits that the subpoena was not personally served upon Iyer, in violation of Rule 45. See Joint Status Report at 1, Ingenus Pharm., No. 21-cv-2868 (N.D. Ill. Jan. 31, 2023), ECF No. 31; Henderson v. Day, No. 19-cv-945,

, at *2 (D.D.C. May 17, 2021) (noting that this Circuit requires the target of a subpoena to be personally served). Although Iyer does not challenge the subpoena on the basis of improper service in his motion to quash, he asserts that he has made his motion “without reference to or waiver of any rights with respect to the failure of proper service.” ECF No. 1 at 5; see also Alexander v. FBI,

(D.D.C. 1998) (holding that objections to proper service can be waived or forfeited).

6 district transfers the dispute to the district that issued the subpoena. ECF No. 5-4 at 2. As that had

not happened here, she denied the motion without prejudice.

Briefing on the motion to quash proceeded in this Court, with Nexus filing an opposition

that also argued that exceptional circumstances existed to transfer the motion to the Northern

District of Illinois. ECF No. 4 at 4. In his reply brief, filed on February 21, 2023, Iyer opposed

the transfer request and further argued, among other things, that Nexus had served the deposition

subpoena to gain discovery on “an inequitable conduct defense that does not exist” and that he was

not the proper individual to testify on the bulk of the topics proposed. ECF No. 5 at 3, 21–22.

February 21, 2023, was also the deadline for parties to amend the pleadings in Ingenus.

See ECF No. 4-1 at 5 (setting Feb. 20, 2023 as the “deadline for the parties to Amend the Pleadings

or Add Parties”); Motion for Leave to Amend Counterclaims at 1, Ingenus, No. 22-cv-2868 (N.D.

Ill. Feb. 21, 2023), ECF No. 39 (noting that, because Feb. 20, 2023, was a federal holiday, the

deadline for amendment of pleadings was Feb. 21, 2023, pursuant to Rule 6(a)(1)(C) of the Federal

Rules of Civil Procedure). Nexus duly filed a motion to amend its answer to include, for the first

time, a counterclaim alleging that Leiutis engaged in inequitable conduct before the PTO; Judge

Rowland granted that motion. Minute Entry, Ingenus, No. 22-cv-2868 ((N.D. Ill. Feb. 22, 2023),

ECF No. 40; Amended Counterclaims at 5–18, Ingenus, No. 22-cv-2868 (N.D. Ill. Feb. 22, 2023),

ECF No. 41.

Recognizing that the interposition of an inequitable conduct counterclaim changed the

complexion of both Iyer’s motion to quash and Nexus’ request to transfer, this Court set a motion

hearing “to allow counsel to address th[e] new developments.” ECF No. 6 at 4. Specifically, the

Court noted that “[t]here is significant authority indicating that the pleading of an inequitable

conduct defense or counterclaim counsels against quashing a deposition subpoena served on an

7 attorney who prosecuted a patent, even if he is trial counsel in the infringement case involving that

same patent.”

at 2–3 (collecting cases). More, because the inequitable conduct claim “is

material to the question of whether the deposition subpoena served on Mr. Iyer should be quashed,

a challenge by Ingenus and [Leiutis] . . . to the pleading of that claim, if granted by the Northern

District of Illinois court, might well affect the resolution of the motion to quash.” Id. at 3.

On March 24, 2023, Ingenus and Leiutis filed an answer to the amended counterclaims.

See Plaintiffs’ Answer to Nexus Pharmaceuticals, Inc.’s First Amended Counterclaims, Ingenus,

No. 22-cv-2868 (N.D. Ill. Mar. 24, 2023), ECF No. 42. At that point, the stage seemed set for

resolution of this dispute: the inequitable conduct counterclaim would go forward in Ingenus and

this Court could rule on the requests before it on the record as it stood. However, days before the

hearing on Iyer’s motion to quash and Nexus’ request to transfer, Ingenus and Leiutis challenged

the inequitable conduct claim in the Ingenus case via a motion for judgment on the pleadings. See

Plaintiffs’ Motion for Judgment on the Pleadings Pursuant to Fed. R. Civ. P. 12(c), Ingenus, No.

22-cv-2868 (N.D. Ill. Apr. 10, 2023), ECF No. 43. That motion argues that none of the “four

alleged instances of misrepresentation” Nexus offers in support of its inequitable conduct claim—

that (1) the first declarations submitted to the PTO “compar[ed] a formulation that was not even

disclosed in their application to allegedly show unexpected results over selected examples from

the prior art”; (2) “the second inventor declarations [] improperly used data from compositions

outside the claimed ranges to show unexpected results”; (3) “the applicant was improperly

claiming a broader range than that described in the patent application”; and (4) the third round of

inventors’ declarations did not compare the claimed invention to the closest prior art as is required

to show unexpected results,” id. at 5 (alterations in original) (quoting the counterclaims)—is

8 actually a misrepresentation, so “Nexus cannot meet the threshold showing” for such a claim, let

alone the further requirements of materiality and intent to deceive the PTO. Id. at 1–2, 5.

The Court held a hearing on April 14, 2023, at which the parties addressed both the motion

to quash and the request to transfer. 4 The discussion below focuses on the transfer request, leaving

the merits of the motion to quash to Judge Rowland in the Northern District of Illinois.

II. DISCUSSION

Motions to quash a subpoena are to be filed, in the first instance, in the jurisdiction where

compliance is required. Fed. R. Civ. P. 45(d)(3)(A). However, Rule 45(f) allows transfer of

subpoena-related motions to the issuing court upon consent of the target or if the court where the

motion is filed finds “exceptional circumstances.” The proponent of a transfer has the burden of

establishing such circumstances. Fed. R. Civ. P. 45(f) advisory committee’s note to 2013

amendment. According to the advisory committee,

[t]he prime concern should be avoiding burdens on local nonparties subject to subpoenas and it should not be assumed that the issuing court is in a superior position to resolve subpoena-related motions. In some circumstances, however, transfer may be warranted in order to avoid disrupting the issuing court’s management of the underlying litigation, as when that court has already ruled on issues presented by the motion or the same issue is likely to arise in discovery in many districts.

Id. “Th[at] list is not exhaustive,” Dr. Muhammad Mirza & Allied Med. & Diagnostic Servs., LLC

v. Yelp, Inc., No. 21-mc-80077,

, at *2 (N.D. Cal. July 13, 2021), and, “[a]mong

other elements, courts determining whether ‘exceptional circumstances’ exist to warrant transfer

have considered ‘[case] complexity, procedural posture, duration of pendency, and the nature of

the issues pending before, or already resolved by, the issuing court in the underlying litigation,’”

44 As of the time that this Memorandum Opinion and Order issued, the transcript of the April 14, 2023 hearing had not been posted on ECF. However, the undersigned was provided a copy of that transcript and cites the page numbers therein.

9 In re UBS Fin. Servs., Inc. of P.R. Sec. Litig.,

(D.D.C. 2015) (second

alteration in original) (quoting Jud. Watch, Inc. v. Valle Del Sol, Inc.,

(D.D.C.

2014). Thus, in analyzing a request to transfer a subpoena-related motion to the issuing court, the

court where compliance is required should engage in a “balancing test,” considering “on one

hand . . . the burden on the party responding to the subpoena in the event of a transfer, and on the

other hand . . . factors such as judicial economy, docket management, and the risk of inconsistent

rulings.” Obesity Research Inst., LLC v. Fiber Research Int’l, LLC, No. 16-cv-61,

, at *3 (D. Nev. Feb. 12, 2016).

Respondent argues that an undue burden would be placed on him if he were to be required

to litigate the motion to quash in the Northern District of Illinois. He points out that he neither

lives nor works in that district, that he is not a member of the bar of that court, and that “all of the

areas of inquiry about which [he] would be questioned took place in this judicial district.” ECF

No. 5 at 15. He further complains that he should not be required “to take additional steps in a

foreign jurisdiction for the benefit of [Nexus].”

. However, the Court finds the burden of

transfer on Respondent is slight.

For all his protestations, Iyer is no stranger to the Northern District of Illinois. Indeed, his

primary argument opposing enforcement of the subpoena is that he is litigation counsel in the

Ingenus case in that court and “[l]itigation counsel are presumptively entitled to a protective order

against being deposed by an adversary.” ECF No. 1 at 2; see also, e.g.,

(“Chidambaram ‘Chid’

S. Iyer, Esq. of Sughrue Mion, . . . , litigation counsel to Ingenus Pharmaceuticals, LLC, and

Leiutis Pharmaceuticals LLP . . . , moves this Court for an Order quashing a deposition subpoena

served on him by Nexus Pharmaceuticals, Inc. . . .”);

(identifying Iyer as “litigation

counsel” for the plaintiffs in Ingenus), 5 (same), 6 (same), 8 (same), 9 (same), 11 (same); ECF No.

10 1-6 at 2 (same); ECF No. 1-7 at 2 (same); ECF No. 1-8 at 2 (same); see also Transcript of Apr. 14,

2023 Hearing [hereinafter, “Hearing Tr.”] at 38. He has actively participated in that litigation,

taking part in the Rule 26(f) conference and defending the Rule 30(b)(6) deposition of Leiutis. See

ECF No. 1-2 at 2; ECF No. 1-9 at 3–5; Hearing Tr. at 39. More, the firm with which he is a

partner—Sughrue Mion—which is representing him with respect to this subpoena, is also

responsible, through Iyer, for the competent representation of Ingenus in Illinois. Courts have

discounted the burden that a transfer to the issuing court will work in similar circumstances. For

example, in Lipman v. Antoon, the plaintiff in a case filed in the Western District of Arkansas

served a non-party subpoena on an attorney who was a partner at the firm that represented the

defendant in the Arkansas case.

, 8–9 (D.D.C. 2018). The attorney filed a motion

to quash and the plaintiff sought to transfer the motion to the issuing court. See

. The

court rejected the attorney’s argument that he would be burdened by the transfer because “he and

his attorney [were] based in the District of Columbia” and should not have to litigate in a

jurisdiction to which they had no connection.

. Rather, it found the burden “negligible”

because the attorney was “represented by his own firm,” which also was involved in the underlying

litigation.

“In [that] circumstance, ‘the general interest in protecting local nonparties by

requiring local resolution of subpoena-related disputes is significantly reduced’ because [the

subpoena target is] represented by a firm familiar with th[e] [underlying] litigation and the issuing

court.” (quoting Judicial Watch,

); see also, e.g., Alberi v. Aerojet Rocketdyne,

Inc., No. 22-mc-90,

, at *3 (S.D.N.Y. May 3, 2022) (“Th[e] potential burden is

especially minimal in light of the fact that [the target’s] counsel, Condon & Forsyth, represents

defendants in the underlying action.”); CFA Inst. v. Am. Soc’y of Pension Prof’ls & Actuaries,

Nos. 20-mc-19, 20-mc-19,

, at *2 (D.D.C. Apr. 7, 2020) (“[R]esolution of this

11 [subpoena] dispute in the [issuing court] will impose an insignificant burden on [the individuals

subject to the subpoena], who are represented by the same Washington, D.C. law firm that has

been representing Defendants in the underlying case.”); In re Braden,

(D.D.C. 2018) (following Lipman); cf. Google, Inc. v. Digital Citizens Alliance, No. 15-mc-707,

, at *5 (D.D.C. July 31, 2015) (discounting the alleged burden on a small entity

comprising three employees in the District of Columbia of litigating a motion to compel

compliance with a subpoena in the Southern District of Mississippi where the entity was involved

in the litigation in Mississippi). Here, not only is Iyer represented by a firm that also represents

the plaintiff in the underlying litigation in Illinois, he himself is an attorney for that party.

The import of the fact that Iyer himself is not admitted to practice in the Northern District

of Illinois is minimal. Iyer says nothing about whether the attorneys representing him in this action

are admitted there, and his firm advertises itself as “an international firm in every sense of the

word,” boasting that it has “successfully litigated IP disputes in every popular forum, including

U.S. District Courts across the country.” Sughrue, About the Firm,

https://www.sughrue.com/about-the-firm (last visited Apr. 21, 2023); see, e.g., Lipman,

(finding the burden of transfer negligible where the attorney who was subject to the

subpoena was represented by a “‘global’ law firm” that also represented a party in the underlying

litigation). More importantly, Rule 45 itself allows an attorney authorized to practice in the

compliance court to appear in the issuing court. See Fed. R. Civ. P. 45(f) (“[I]f the attorney for a

person subject to a subpoena is authorized to practice in the court where the motion was made, the

attorney may file papers and appear on the motion as an officer of the issuing court.”).

Additionally, the advisory committee’s note to that rule further encourages judges “to permit

telecommunications methods to minimize the burden a transfer imposes on nonparties,” Fed. R.

12 Civ. P. 45 advisory committee’s note to the 2013 amendments—methods with which the Northern

District of Illinois is certainly familiar in light of the Covid-19 pandemic. Indeed, it is clear from

the docket of the Ingenus case that Judge Rowland presides over remote proceedings. See, e.g.,

Minute Entry, Ingenus, No. 22-cv-2868 (N.D. Ill. Apr. 20, 2023), ECF No. 47. “Therefore, there

is a ‘strong possibility that [Mr. Iyer’s] counsel will not even need to leave Washington, D.C. to

litigate the motion,’” Lipman,

(quoting Flynn v. FCA US LLC,

(D.D.C. 2016)), or even to attend his deposition if it goes forward. Counsel for Nexus

represented at the hearing that Mr. Iyer’s deposition will occur either in-person in Washington,

D.C., or remotely with Iyer appearing from this district. Hearing Tr. at 39–40; see also ECF No.

4 at 9. For the same reason, the fact that “all the areas of inquiry about which [he] would be

questioned took place in this judicial district,” ECF No. 5 at 15, makes little difference in terms of

the burden that transferring the motion to quash to Illinois will impose.

Finally, to the extent that Petitioner complains about having to “take additional steps in a

foreign jurisdiction,” ECF No. 5 at 16, courts have found that the transfer of a motion to quash to

the jurisdiction where the underlying litigation is pending should “require[] few, if any,

modifications of the written submissions” and does not impose a significant burden. In re Braden,

(quoting Google,

, at *4). That is perhaps especially true

here, where Petitioner had the opportunity to argue his motion to this Court in light of the new

inequitable conduct counterclaim and Rule 12(c) motion attacking it but raised no new substantive

arguments in support of quashing the subpoena. In short, the burden on Petitioner is nominal.

On the other side of the balance are circumstances that counsel strongly in favor of transfer.

Most obvious is the Rule 12(c) motion pending before Judge Rowland that seeks dismissal of

Nexus’ inequitable conduct counterclaim. As noted above and in this Court’s earlier Order, cases

13 from this district and elsewhere suggest that the viability of an inequitable conduct claim or defense

is material—and can even be dispositive—on the issue of whether a patent prosecutor who also

serves as litigation counsel will be subject to a limited deposition in a patent infringement case.

See, e.g., Sterne, Kessler, Goldstein & Fox v. Eastman Kodak Co.,

, 382–83

(D.D.C. 2011) (stating that “courts have permitted the deposition of patent prosecution counsel

who is also serving as trial counsel where the knowledge of counsel was pertinent to a defense

raised of inequitable conduct,” but quashing the subpoena because no inequitable conduct defense

had actually been pleaded in the relevant underlying patent infringement case (quoting Genal

Strap, Inc. v. Dar, No. 04-cv-1691,

, at *2 (E.D.N.Y. Mar. 3, 2006))); accord

Sterne, Kessler, Goldstein & Fox v. Edwards Lifesciences Corp., No. 13-mc-48,

, at *2 (D.D.C. Apr. 16, 2013); Resqnet.Com, Inc. v. Lansa, Inc., No. 01-cv-3578,

, at *3–5 (S.D.N.Y. July 21, 2004); see also, e.g., In re Insogna, No. 19-cv-1589,

, at *11 (C.D. Cal. Jan. 3, 2020) (“Understandably, in cases where inequitable

conduct is alleged, courts are more willing to permit depositions of opposing counsel, since their

intent and mental state during the patent prosecution are directly at issue. Here, however,

Defendants do not allege an inequitable conduct defense.” (internal citation omitted)); Tech.

Patents LLC v. Deutsche Telekom AG, No. 07-cv-3012,

, at *2 (D. Md. Mar.

29, 2010) (“Defendants are correct in asserting that there is a ‘sizable body of patent law

recognizing the right to depose patent prosecutors, even if trial attorneys as well.’ ‘Courts regularly

permit depositions of patent prosecution counsel.’ However, this significant body of law exists

where ‘inequitable conduct’ is alleged in patent cases.” (internal citations omitted) (quoting

Leviton Mfg. Co. v. Shanghai Meihao Elec., Inc.,

, 717–18 (D. Md. 2009)));

Ed Tobergte Assocs. v. Russell Brands, LLC,

(D. Kan. 2009) (“Given the

14 numerous cases that permit the deposition of patent prosecution counsel [who also serves as trial

counsel] where the defense of inequitable conduct has been raised, the Court finds that Defendant

has established that the deposition of [the attorney] is the only reasonably practical means available

for obtaining the information relevant to that defense.”); V. Mane Fils v. Int’l Flavors &

Fragrances Inc., No. 06-cv-2304,

, at *3–4 (D.N.J. Aug. 20, 2008) (“[M]ultiple

jurisdictions recognize that mental impressions of the prosecuting patent attorney are not only

relevant, but possibly crucial, to an inequitable conduct defense in subsequent litigation over that

patent.”); Genal Strap,

, at *2 (collecting cases); aaiPharma, Inc. v. Kremers

Urban Dev. Co.,

, 775–779 (N.D. Ill. 2005) (allowing the deposition of trial

counsel who was involved in the patent prosecution process and therefore might have had a duty

of candor to the PTO). Briefing on the Rule 12(c) motion will be complete on May 31, 2023, after

which Judge Rowland will decide whether the inequitable conduct claim survives and, if it does

so, in what form. Minute Entry, Ingenus, No. 22-cv-2868 (N.D. Ill. Apr. 11, 2023), ECF No. 44.

At the hearing, both parties before this Court agreed that the outcome of that motion will impact

the resolution of the motion to quash. Hearing Tr. at 10, 12. Where the outcome of a motion

pending before the issuing court will materially affect a subpoena-related motion in the district

where compliance is required, compliance courts routinely transfer the subpoena-related motion

to the issuing court. See, e.g., CTIA–The Wireless Assoc. v. Cohen, No. 20-cv-26,

, at *2 (finding exceptional circumstances favored transfer where “[d]epending on how

the [issuing court] resolves the issues [pending before it], a ruling by this Court on the motion

to quash could potentially create inconsistent or conflicting rulings, disrupting the underlying

litigation”); see also, e.g., Lipman,

(finding the fact that the issues “at the

heart of” the motion to quash before the compliance court were also involved in a pending motion

15 before the issuing court favored transfer to that court); Duck v. SEC,

, 324–25

(D.D.C. 2016) (finding that the pendency of a motion for summary judgment in the issuing court

that, if granted, would moot the motion to compel compliance with a subpoena in the compliance

court counseled in favor of transfer “in order to avoid the ‘risk of inconsistent results’ concerning

the discoverability of the documents [at issue], and . . . ‘in order to avoid disrupting the issuing

court's management of the underlying litigation’” (quoting Fed. R. Civ. P. 45(f) advisory

committee’s note to 2013 amendments).

In addition, courts have recognized that, where questions regarding the relevance of

subpoenaed material are likely to arise, the issuing court is generally in a better position to rule on

those issues because of its greater familiarity with the underlying case. See, e.g., Flynn,

(“As other courts have noted, ‘the relevance argument advanced emphasizes the

need for the court where the underlying matter lies to decide the matter.’” (some internal quotation

marks omitted) (quoting XY, LLC v. Trans Ova Genetics, L.C.,

(D.D.C. 2014));

cf. Flanagan v. Wyndham Int’l, Inc.,

(D.D.C. 2005) (“A court with jurisdiction

over a discovery dispute for an action pending in a different district generally has limited exposure

to and understanding of the primary action. A court in such a situation should hence be cautious

in determining relevance of evidence[.]” (internal citations omitted)). To determine whether to

quash a subpoena, “courts generally employ a balancing test, weighing the burdensomeness to the

moving party against the . . . need for, and the relevance of, the information being sought.”

Flanagan,

. Here, before Nexus pleaded an inequitable conduct claim, Petitioner

had already made arguments that some of the testimony sought would be irrelevant. See ECF No.

5 at 22, 24–26. Those relevance arguments would still be before this Court if that claim does not

survive. Additionally, at the hearing, both parties agreed that if the inequitable conduct claim goes

16 forward, Judge Rowland’s ruling as to the scope of that claim will affect the extent of any

limitations to be imposed on Iyer’s testimony. Hearing Tr. at 17–18, 21. More, Petitioner’s

deposition, should it be taken, is almost certain to raise issues of the applicability of attorney-client

privilege. At the hearing, Nexus asserted that it believes the so-called “crime-fraud exception”—

which pierces the privilege where it can be shown that a litigant “participated in a crime or fraud”

and “consulted with counsel for the purpose of furthering a crime or fraud,” Alexander v. FBI,

(D.D.C. 2000)—may apply and that the extent of any forfeiture of the privilege

would depend on the contours of the inequitable conduct claim. 5 Hearing Tr. at 28, 43–44.

Similarly, Ingenus and Leiutis indicated at the hearing that they may choose to defend against the

inequitable conduct counterclaim by asserting an advice-of-counsel defense. Id. at 49; see, e.g.,

Martin Marietta Materials, Inc. v. Bedford Reinforced Plastics, Inc.,

(W.D.

Pa. 2005) (recognizing that defending against an inequitable conduct claim by asserting reliance

on counsel’s advice can waive privilege); see also Barry v. Medtronic, Inc., No. 14-cv-104,

, at *6 (E.D. Tex. May 8, 2016) (similar). Any waiver worked by such a defense

could also be impacted by the scope of the inequitable conduct claim. Judge Rowland would be

in a better position than this Court to interpret her ruling on the motion for judgment on the

pleadings and the effect it might have on such questions. This is thus a situation similar to that in

In re Nonparty Subpoenas Duces Tecum, where the court found that it “would make no sense” to

decide a motion to quash before the issuing court resolved a closely-related pending motion and

that the issuing court would be “far better positioned” thereafter to determine issues of burden and

5 The Federal Circuit has made clear that “inequitable conduct is not by itself common law fraud,” In re Spalding Sports Worldwide, Inc.,

(Fed. Cir. 2000), but that a finding of inequitable conduct in some circumstances “may also prove the crime or fraud exception to the attorney-client privilege,” Therasense, Inc. v. Becton, Dickinson & Co.,

(Fed. Cir. 2011).

17 attorney-client privilege issues that “partially turn[ed]” on whether an advice of counsel defense

would be invoked in the underlying case.

, 26 (D.D.C. 2018).

Petitioner nevertheless urges the Court not to transfer the motion to quash, but to hold it in

abeyance until the Ingenus court decides the Rule 12(c) motion, which (as he argued at the hearing)

could be resolved “in a way which makes this moot” (presumably because if it is granted there

will be no basis to depose Iyer—an issue this Court does not decide here). Hearing Tr. at 19.

However, courts in similar situations—that is, courts faced with a motion to quash a subpoena that

could be mooted by a pending motion in the issuing court—have noted that as a point in favor of

transfer. See, e.g. In re Nonparty Subpoena Duces Tecum, 327 F.R.D. at 26; Duck, 317 F.R.D. at

324–25. More importantly, “[a] transfer will ‘avoid disrupting the issuing court’s management of

the underlying litigation’ and enable resolution of fundamental issues underlying this matter.” In

re Nonparty Subpoena Duces Tecum, 327 F.R.D. at 26 (quoting Fed. R. Civ. P. 45(f) advisory

committee’s note to 2013 amendments). The pre-claim construction fact discovery deadline is fast

approaching and, according to the Northern District of Illinois’ Local Patent Rules, additional

discovery may be granted in the discretion of the trial judge upon a showing by the parties that

“further discovery is necessitated by the claim construction ruling.” N.D. Ill. Patent Rule 1.3

comment. Waiting to decide this motion until after the Rule 12(c) motion is decided threatens to

interfere with the discovery schedule set (or to be set) by Judge Rowland, who should be allowed

to navigate her court’s local rules and set an appropriate schedule without disruptions attributable

to this Court’s schedule or delayed decision on the motion to quash—which necessarily would

follow Judge Rowland’s decision on the motion for judgment on the pleadings. Cf., e.g., CFA

Inst.,

, at *2 (transferring a motion to quash to the issuing court where the

discovery deadline has passed in order to avoid interfering with that court’s management of its

18 schedule). And, of course, delay will not simplify the complications outlined above that this Court

will face if the inequitable conduct claim proceeds. In short, holding this motion in abeyance is

inefficient and potentially disruptive to the issuing court’s management of the underlying

litigation.

CONCLUSION

For the foregoing reasons, it is hereby

ORDERED that Respondent’s request to transfer this matter to the Northern District of

Illinois is GRANTED. The Clerk of Court is respectfully directed to transfer the case and

terminate all pending motions in this Court.

SO ORDERED. Digitally signed by G. Michael Harvey Date: 2023.04.21 Date: April 21, 2023 12:12:15 -04'00' ___________________________________ G. MICHAEL HARVEY UNITED STATES MAGISTRATE JUDGE

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