On November 13, 2024, United States Magistrate Judge Victoria Reznik (S.D.N.Y.) granted-in-part and denied-in-part DJ Plaintiff Carvana, LLC’s (“Carvana”) motion for a Protective Order to preclude Defendant IBM from deposing Carvana’s in-house counsel, Ms. Jessica Wilson.
IBM sought Ms. Wilson’s testimony on three topics: 1) pre-suit communications between the parties; 2) Carvana’s awareness of the patents-in-suit; and 3) Carvana’s general licensing policies and practices. In analyzing each topic, the Court addressed the following factors: 1) the need to depose the lawyer; 2) the lawyer’s role in connection with the related discovery; 3) the risk of encountering privilege and work product issues; and 4) the extent of discovery already conducted.
With respect to pre-suit communications between the parties, the Court noted that several communications were memorialized in e-mails or other correspondence, but Ms. Wilson was the “best source of information” regarding these discussions with IBM. With respect to Carvana’s patent licensing practices, the Court found that Ms. Wilson would be the most knowledgeable on the topic. Indeed, Carvana’s 30(b)(6) deponent said as much, and otherwise had “very limited knowledge about Carvana’s negotiation and execution of prior licenses and related agreements.” With respect to Carvana’s awareness of the patents-in-suit, the Court found that IBM pointed to no “additional testimony Ms. Wilson could offer that would not be privileged.” The Court further noted that IBM already obtained information relevant to this topic from other witnesses.
The Court generally found that Ms. Wilson’s role “in the sought-after discovery supports granting a limited deposition.” Ms. Wilson “played a primary role in pre-suit communications with IBM, as well as Carvana’s licensing practices with third parties.” The Court also noted that Ms. Wilson “is not trial counsel” and a deposition of Ms. Wilson would not “disrupt the relationship between Carvana and its trial counsel.”
As a result of this analysis, the Court allowed a “limited deposition of Ms. Wilson on a limited set of topics” for a maximum of three hours. The Court allowed Ms. Wilson to be deposed only on her “conversations with IBM” and “Carvana’s general patent policies and practices and the non-privileged aspects of [Ms. Wilson’s] negotiations and execution of Carvana’s prior patent licensing agreements.” Carvana’s motion for a Protective Order was otherwise granted.
The case is Carvana LLC v. IBM Corp., Case NO. 23-cv-08616 (S.D.N.Y. Nov. 13, 2024).