NOT FOR PUBLICATION 

 

UNITED STATES DISTRICT COURT 

DISTRICT OF NEW JERSEY 

__________________________________________ 

 : 

KONINKLIJKE PHILIPS ELECTRONICS : 

N.V., : 

 : Civil Action No. 11-3684 (ES)(MAH) 

 Plaintiff, : 

 : MEMORANDUM 

v. : OPINION & ORDER 

 : 

HUNT CONTROL SYSTEMS, INC., : 

AN ASSUMED TRADE NAME FOR : 

CARIBE CORPORATION, : 

 : 

 Defendant/Counterclaimaint. : 

__________________________________________: 

SALAS, DISTRICT JUDGE

Defendant Hunt Control Systems, Inc. (“Hunt”) appeals an Order and Opinion by 

Magistrate Judge Clark. (D.E. No. 122). On April 16, 2014, Judge Clark granted Plaintiff 

Koninklijke Philips N.V.’s (“Philips”) Motion for a Protective Order against Hunt’s notice of a 

Rule 30(b)(6) deposition directed at Philips’s ability to search and produce electronically stored 

information (ESI). (D.E. No. 117). For the reasons below, Hunt’s appeal is DENIED. 

I. BACKGROUND 

This case was originally assigned to Magistrate Judge Dickson, and was transferred to 

Magistrate Judge Clark in August 2013. It was transferred to Magistrate Judge Hammer in April 

2014. (D.E. No. 116).

As the Court writes for the parties involved, it will review the facts briefly. This is a 

trademark action in which Philips asks the Court to reverse a decision by the U.S. Patent and 

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Trademark Office’s Trademark Trial and Appeal Board. The Board sustained Hunt’s opposition 

and denied Philips’s registration of the tagline “Sense and Simplicity.” Hunt’s registered tagline 

is “Simplicity.” (See D.E. No. 1). 

For the past two years, the parties have engaged in discovery disputes regarding Philips’s 

ability to search and produce ESI. Hunt first interviewed a Philips employee regarding Philips’s 

ESI practices in March 2012. (D.E. No. 124 at 5). Nine months later, in December 2012, Hunt 

noticed a 30(b)(6) deposition directed toward Philips’s information technology (IT) capabilities. 

(Id.). In an order addressing several discovery disputes, Judge Dickson stayed the IT deposition, 

and instead instructed Hunt to send Philips a letter with no more than eight questions regarding 

Philips’s IT capabilities that Hunt alleges were not answered during the March 2012 interview. 

(D.E. No. 53 at 4). Judge Dickson instructed Philips to respond to the eight questions in writing, 

and granted Hunt permission to “re-apply [for the 30(b)(6) deposition] once the parties have met 

and conferred in good faith.” (Id.). 

Hunt reissued its notice of a 30(b)(6) IT deposition in November 2013, following the 

completion of Philips’s initial document production. (D.E. No. 95 at 6). Philips objected in a 

letter to Judge Clark, arguing that an IT deposition “is untimely and unnecessary.” (D.E. No. 80 

at 3). Hunt responded, and submitted the declaration of Sean McNeill, an IT professional for The 

Microsoft Consulting Company, who opined that Philips can easily run searches across its 

company without custodian-based searching or disruption of service. (D.E. No. 84 at 16-17). 

Philips countered with its own declarations from Phil Fedele (the Philips employee initially 

interviewed by Hunt in March 2012) and Tom Matzen (Philips’s e-discovery consultant), who 

disputed Mr. O’Neill’s assertions regarding the feasibility of a cross-company search. (D.E. No. 

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85). 

On January 27, 2014, Judge Clark ordered Philips to file a formal motion for a protective 

order against Hunt’s 30(b)(6) IT deposition. (D.E. No. 88 at 1-2). After reviewing the parties’ 

briefs and accompanying declarations and exhibits, Judge Clark granted Philips’s motion for a 

protective order. (D.E. No. 117). Hunt filed the present appeal. (D.E. No. 122). 

II. DISCUSSION 

A. Standard of Review 

Generally, a district court may reverse a magistrate judge’s determination of a nondispositive issue only if it is “clearly erroneous or contrary to law.” 28 U.S.C. § 636(b)(1)(A); see 

also Fed. R. Civ. P. 72(a); Cipollone v. Liggett Grp., Inc., 785 F.2d 1108, 1113 (3d Cir. 1986). A 

finding is clearly erroneous “when although there is evidence to support it, the reviewing court on 

the entire evidence is left with the definite and firm conviction that a mistake has been committed.” 

United States v. U.S. Gypsum Co., 333 U.S. 364, 395 (1948). 

When an appeal “seeks review of a matter within the purview of the Magistrate Judge, such 

as a discovery dispute, an even more deferential standard, the ‘abuse of discretion’ standard, must 

be applied.” Salamone v. Carter’s Retail Inc., No. 09–5856, 2012 WL 821494, at *4 (D.N.J. Mar. 

9, 2012); see also 12 Charles Alan Wright, Arthur R. Miller & Richard L. Marcus, Federal Practice 

and Procedure: Civil 2d § 3069 (2d ed. 1997) (“[M]any matters such as discovery scheduling or 

disputes might better be characterized as suitable for an abuse-of-discretion analysis”). “The 

deferential standard of review is particularly appropriate in a case where the magistrate judge 

managed the case from the outset, and thus has a thorough knowledge of the proceedings.” 

Robinson v. Horizon Blue Cross-Blue Shield of New Jersey, No. 12-2981, 2014 WL 3573339, at 

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*1 (D.N.J. July 21, 2014) (citing Cooper Hosp./Univ. Med. Ctr. v. Sullivan, 183 F.R.D. 119, 127 

(D.N.J. 1998). 

Because the present appeal concerns a discovery dispute, which is squarely within the 

magistrate judge’s purview, the Court reviews for abuse of discretion. Though the Court 

recognizes that Judges Dickson and Clark shared management of the case, it is satisfied that Judge 

Clark had thorough knowledge of the proceedings, and that an abuse-of-discretion analysis is 

suitable. In any event, the Court finds that Judge Clark’s opinion would stand under either the 

“clearly erroneous” or “abuse of discretion” standard. 

B. The Magistrate’s April 16, 2014 Order Granting Philips’s Motion for a 

Protective Order Did Not Constitute an Abuse of Discretion and Was Not 

Clearly Erroneous or Contrary to the Law 

i. Legal Standard for Protective Orders

Judge Clark’s Opinion and Order granting Philips’s motion for a protective order was not 

contrary to law or an abuse of discretion. A court may enter a protective order limiting discovery, 

including a deposition, for “good cause.” See Cipollone, 785 F.2d at 1121. Accordingly, the Court 

may deny a discovery request if, after considering the following factors, the Court finds it likely 

that the burden of the discovery would outweigh its benefits: (i) the unreasonably cumulative or 

duplicative effect of the discovery, (ii) whether the party seeking discovery had ample opportunity 

to obtain the information by other discovery, and (iii) the needs of the case, the amount in 

controversy, the parties’ resources, the importance of the issues at stake in the action, and the 

importance of the discovery in resolving the issues. Fed. R. Civ. P. 26(b)(2)(C); see also A&B 

Ingredients, Inc. v. Hartford Fire Ins. Co., No. 8-6264, 2010 WL 335616, at *4 (D.N.J. Jan. 29, 

2010). This rule aims “to guard against redundant or disproportionate discovery by giving the 

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court authority to reduce the amount of discovery that may be directed to matters that are otherwise 

proper subjects of inquiry.” Leksi, Inc. v. Fed. Ins. Co., 129 F.R.D. 99, 105 (D.N.J. 1989). 

Discovery and relevance are broad but not boundless. Id. 

ii. The Parties’ Positions

Hunt argues that the Court should reverse Judge Clark’s Order granting Philips’s Motion 

for a Protective Order. (D.E. No. 122-1 at 11). Specifically, Hunt argues that Judge Clark 

“mistakenly concluded that [Hunt] was seeking to ‘reopen the door to the collection of ESI 

discovery.’” (D.E. No. 122-1 at 9). Hunt further argues that Judge Clark determined that Hunt 

failed to demonstrate that Philip’s ESI production was insufficient without giving Hunt the 

chance to make a record of insufficiency through a 30(b)(6) deposition. (Id. at 9-10). Finally, 

Hunt argues that Judge Clark incorrectly conducted a “substantial burden” analysis by focusing 

on the burden of discovery stemming from a 30(b)(6) deposition, rather than focusing on the 

burden of the deposition itself. (Id. at 10). 

Philips responds that the Court should uphold Judge Clark’s decision because there was 

no abuse of discretion. (D.E. No. 124 at 2). Philips argues that Hunt failed to show that 

Philips’s production of ESI was materially deficient, and further failed to show that an IT 

deposition would yield any meaningful additional information. (Id. at 17-18). Philips also states 

that Hunt’s notice of an IT deposition was unauthorized and untimely, given Judge Dickson’s 

instruction that Hunt may “reapply” for the deposition. (Id. at 19-20). According to Philips, 

Judge Dickson’s instruction to “reapply” did not constitute leave to issue an IT deposition notice 

without first seeking the Court’s permission. (Id.). The Court will not address Philips’s 

timeliness argument because it affirms on other grounds. 

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iii. Judge Clark’s Opinion

Judge Clark’s findings support the conclusion that “good cause” existed to grant Philips’s 

Motion for a Protective Order, and his Opinion and Order was not clearly erroneous or an abuse 

of discretion. 

First, the Court disagrees with Hunt that Judge Clark “mistakenly concluded that [Hunt] 

was seeking to ‘reopen the door to the collection of ESI discovery.’” (D.E. No. 122-1 at 9). 

Despite Hunt’s protestations, the record reflects that Hunt had two fulsome opportunities to 

probe Philips’s ESI capabilities—during its initial interview of Mr. Fedele, and through the eight 

follow-up questions issued to Philips. Though Hunt correctly notes that Judge Dickson gave 

Hunt permission to reapply for an IT deposition, the “reapplication” effectively occurred through 

briefing on Philips’s Motion for a Protective Order. Thus, while the Court does not disagree that 

“Judge Dickson always made it abundantly clear that the ESI discovery door was always 

‘open,’” Judge Dickson’s position did not preclude Judge Clark from finding (a year later) that 

the door had closed. Judge Clark specifically found that “Philips has made adequate 

representations to this Court that its approach to conducting and gathering ESI is reasonable.” 

(D.E. No. 117 at 6). This finding weighs toward the duplicative nature of the discovery Hunt 

seeks, and ultimately toward the conclusion that there was “good cause” for granting Philips’s 

protective order. 

Second, the Court disagrees with Hunt that Judge Clark “declared the winner before the 

race was even run” by determining that Hunt failed to demonstrate that Philips’s ESI production 

was insufficient. Hunt asserts that Judge Clark’s Order “deprived Hunt of the ability to make a 

record of Philips’s materially deficient ESI production,” but ignores the extensive record already 

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created on that issue. In addition to Hunt’s interview of Philips and the eight questions ordered 

by Judge Dickson, the parties have submitted the declarations of Sean O’Neill, Phil Fedele, and 

Thomas Matzen—all on the topic of Philips’s ESI capabilities. Again, Judge Clark’s finding 

indicates the duplicative nature of the discovery sought, as well Hunt’s opportunity to obtain the 

information by other discovery. 

Third, while the Court agrees with Hunt that the proper “burden” inquiry must focus on 

the burden of the deposition itself (rather than the burden posed by the mere possibility of 

opening the door to more discovery), Philips has demonstrated the burden posed by the IT 

deposition alone. For example, in its opposition to Hunt’s appeal, Philips states that “forcing 

Philips to prepare for and attend an IT Deposition to explore the same information Hunt already 

has learned multiple times from multiple sources . . . would be futile, wasteful, and hence 

burdensome.” (D.E. No. 124 at 21). Though Judge Clark mentions the continued burden that 

Philips might endure if the IT deposition opens the door to additional discovery (D.E. 114 at 7), 

the Court does not find that he applied the “burden” analysis erroneously, and, in any event, the 

Court is satisfied that the record reflects the unnecessary burden that Philips would incur from an 

IT deposition. 

III. CONCLUSION 

For the foregoing reasons, Hunt’s motion appealing the Opinion and Order of Judge 

Clark is DENIED. 

 /s/Esther Salas 

 Esther Salas, U.S.D.J.

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