Receiving a third-party subpoena (or subpoena duces tecum) in an intellectual property (IP) case can be disruptive—particularly when your company is not directly involved in the underlying dispute. These subpoenas can compel the production of documents, corporate testimony, electronically stored information (ESI), or tangible items. In IP litigation, requests frequently target sensitive technical documentation, source code, design files, licensing agreements, supplier communications, and sales data. A request for a corporate deponent to testify about such documentation often accompanies these document subpoenas.
Your response should be prompt, deliberate, and strategic.
Key Components of a Federal Third-Party Subpoena
A third-party subpoena in federal litigation is typically issued pursuant to Federal Rule of Civil Procedure 45 and formally commands the recipient to take specific action in connection with an ongoing lawsuit. It may require the recipient to:
- Produce documents and ESI
- Permit inspection of tangible items
- Or some combination of these requests
The subpoena itself identifies key compliance details, including the court from which it was issued, the case caption, and critical deadlines. These deadlines often include the date by which written objections must be served or a motion to quash filed, as well as the specific date, time, and location for any deposition or document production. In some instances, the subpoena may also specify the format in which ESI must be produced.
Attached to the subpoena is typically a detailed schedule or exhibit with the specific topics being requested. This attachment often includes defined terms and instructions that govern the scope of compliance, such as broad definitions of “documents,” “communications,” or “relating to,” which can significantly enlarge the universe of potentially responsive materials—often reaching beyond the scope of relevancy.
If testimony is requested, the attachment may list deposition topics, particularly in the case of a corporate representative designation similar to a Rule 30(b)(6) notice. It will also enumerate specific document requests, sometimes organized by subject matter or time period, and may contain detailed instructions regarding privilege logs and confidentiality designations. Careful review of these attachments is essential, as the definitions and instructions frequently shape the true scope and burden of the subpoena.
Act Promptly and Engage Experienced IP Counsel
A subpoena is a court order, and deadlines move quickly. As soon as you are served with a subpoena, you should calendar all deadlines and consult experienced IP litigation counsel.
Discovery in IP cases is often not straightforward. And requests routinely implicate complex technologies, proprietary systems, and highly sensitive commercial information. Counsel with experience in patent, trade secret, and trademark litigation can evaluate the technical relevance of the requests, identify overbreadth, and develop a strategy to protect your business interests while meeting your legal obligations.
Early involvement allows your counsel to negotiate with the issuing party to narrow the scope—limiting custodians, reducing timeframes, refining search terms, and excluding irrelevant product lines or technical materials.
Duty to Preserve Is Triggered Upon Service
Once a party is served with a subpoena, its duty to preserve potentially responsive information takes effect immediately. This means the served party must take reasonable steps to prevent the loss or destruction of potentially relevant materials within its possession, custody, or control.
This includes suspending routine document destruction policies and auto-delete functions. This obligation extends beyond paper records to ESI, including emails, shared drives, cloud storage, messaging platforms, and—particularly in IP matters—technical repositories that may house engineering documentation, design files, testing data, or source code.
Experienced counsel can help implement a focused and proportionate litigation hold tailored to the subpoena’s scope. Rather than disrupting an entire organization, counsel can assist in identifying the relevant custodians, systems, and timeframes. Working alongside your IT department, counsel can also help establish a defensible collection process that maintains data integrity, protects privileged communications, and safeguards sensitive proprietary information.
Evaluating Scope, Burden, and Confidentiality
As a non-party, a recipient of a subpoena is entitled to protection from undue burden or expense. See Fed. R. Civ. P. 45 (d)(1). Courts recognize that third parties should not be forced to pay for litigation between two other parties.
Subpoenas issued in IP cases frequently seek:
- Proprietary engineering documents
- Product development materials
- Confidential licensing or supply agreements
- Sensitive internal communications
Your counsel can negotiate to narrow the scope of requests and reduce compliance costs. Where compliance would impose significant cost—particularly in matters involving extensive ESI, forensic collections, or source code review—Rule 45 provides mechanisms for cost-shifting. Specifically, courts are required to protect third parties from “significant expense resulting from compliance.” Fed. R. Civ. P. 45(d)(2)(B)(ii). As a result, a responding non-party may seek cost-shifting, requiring the issuing party to bear some or all of the expenses associated with compliance.
Cost-shifting can be addressed proactively during negotiations with the issuing party or, if necessary, raised with the court. In many cases, courts will condition enforcement of a subpoena on the requesting party’s agreement to cover reasonable costs—especially where the burden is substantial and the non-party has no stake in the underlying litigation.
In addition to monetary cost, counsel may also negotiate practical measures to reduce burden, such as staged productions, sampling, use of targeted search terms, or alternative formats for production. These strategies can significantly streamline compliance while preserving the requesting party’s access to relevant information. Counsel can also insist on robust protective order provisions, including “Attorneys’ Eyes Only” designations, to protect your trade secrets and competitively sensitive information.
Preparing for and Responding to a Deposition Subpoena
When a subpoena requires testimony—whether of an individual witness or a corporate representative—the response requires additional preparation beyond document collection. Deposition subpoenas in IP cases often involve highly technical subject matter, making thoughtful preparation essential to ensure accurate, consistent, and protected testimony.
If the subpoena seeks testimony from a corporate representative (e.g., under Rule 30(b)(6)), the organization must designate one or more individuals to testify on its behalf regarding the listed topics. These witnesses are expected to provide the company’s knowledge—not just their personal knowledge—on the specified subjects. As such, preparation may involve reviewing documents, interviewing knowledgeable employees, and coordinating across technical and business teams.
Key considerations include:
- Understanding the Scope of Testimony – Carefully analyze the deposition topics. These are often broadly drafted and may require negotiation to narrow vague or overly expansive subject areas.
- Selecting the Right Witness(es) – Choose individuals with the appropriate technical background, institutional knowledge, and communication skills. In some cases, multiple witnesses may be appropriate to cover distinct subject areas.
- Coordinating Document Review – The designated witness should be familiar with key documents produced in response to the subpoena, as these materials will likely form the basis of questioning.
- Protecting Privileged and Sensitive Information – Counsel plays a critical role in preparing the witness to avoid disclosure of privileged communications, trade secrets, or competitively sensitive information beyond the agreed scope.
- Deposition Logistics and Objections – Your counsel will attend the deposition, assert appropriate objections, and help manage the scope of questioning in real time.
Early engagement with experienced IP litigation counsel is especially important in the deposition context. Counsel can negotiate the timing, location (including remote options), and scope of testimony, and may seek to sequence document production before the deposition to allow for adequate preparation.
In some instances, it may be appropriate to seek a protective order limiting the scope or manner of testimony—particularly where the topics implicate trade secrets, source code, or other highly confidential technical information.
With proper preparation and strategic guidance, a deposition can be managed efficiently while minimizing risk to the organization and ensuring compliance with legal obligations.
Motion Practice: When Necessary
If negotiations fail and the subpoena remains overly broad, unduly burdensome, or seeks disclosure of highly sensitive trade secrets without adequate protection, a motion to quash or modify may be appropriate.
Common grounds include:
- Undue burden or disproportionate expense
- Insufficient time to comply
IP-focused litigation counsel can assess whether motion practice is strategically warranted and advocate for appropriate limitations to protect the company’s interests.
The Value of Specialized IP Counsel
Firms such as Brooks Kushman, with a deep focus in intellectual property law and attorneys who possess technical backgrounds alongside litigation experience, are particularly well-positioned to evaluate complex technical requests, negotiate scope effectively, and protect proprietary information.
With the right strategy and experienced counsel, you can comply with your legal obligations while minimizing disruption, controlling cost, and safeguarding your most sensitive business assets.
About Brooks Kushman P.C.
Founded in 1983, Brooks Kushman P.C. has built a national reputation as a premier intellectual property and technology law firm. We accomplish this with the understanding that the most effective IP solutions come from putting great minds together – our clients and our own. With offices across the country, we forge strong relationships with corporations, small to medium-sized businesses, and leading universities across the country.
Brooks Kushman counts a number of Fortune 100 Corporations across a variety of industries among its clients. Our attorneys have a deep understanding and broad range of experience in a variety of industries and technologies, including automotive, AI & data, automation, consumer electronics, manufacturing, medical device, computer technology, aerospace, chemicals, biotechnology, retail, food & beverage, green technology, fintech, and more. We are also recognized by leading legal publications and rankings, including, Best Lawyers, Law360, Intellectual Asset Management, Managing Intellectual Property, and World Trademark Review. For more information, please visit www.BrooksKushman.com.
