A U.S. District Court has ruled against Fraunhofer-Gesellschaft Zur Forderung Der Angewandten Forschung E.V. in its attempt to impose sanctions against My-Chau Nguyen, a former executive at Sirius XM Radio Inc. The court's decision, issued on July 31, 2026, is significant as it addresses the complexities of compliance with subpoenas in patent infringement cases and reinforces the rights of nonparty witnesses.
The court's ruling came in response to a dispute stemming from a subpoena issued to Nguyen in a patent infringement case involving Sirius XM. Fraunhofer sought nearly $180,000 in attorneys’ fees and costs, claiming Nguyen's initial refusal to comply warranted sanctions. However, the court found that Nguyen had complied with the subpoena after being held in civil contempt, leading to the denial of Fraunhofer's request for additional sanctions.
Background
The parties involved in this case are Fraunhofer-Gesellschaft Zur Forderung Der Angewandten Forschung E.V. (Fraunhofer) and My-Chau Nguyen. Fraunhofer is a research organization that was involved in a patent infringement lawsuit against Sirius XM Radio Inc. in the U.S. District Court for the District of Delaware. Nguyen, who served as the Senior Vice President of Direct Sales and Marketing at Sirius XM, was identified as a key witness with relevant knowledge in the case.
The dispute arose when Sirius XM indicated that Nguyen was unavailable for a deposition due to her retirement. In response, Fraunhofer issued a subpoena for her deposition. After some discussions, Sirius XM objected to the subpoena, leading to Fraunhofer filing a motion to compel Nguyen's testimony. The Delaware District Court ultimately determined it did not have jurisdiction to enforce the subpoena served in Washington, D.C., prompting Nguyen to file a Motion to Quash and a Motion for a Protective Order in the District of Columbia.
The Ruling
Magistrate Judge Moxila A. Upadhyaya presided over the case and issued a memorandum opinion that addressed the motions filed by both parties. The court granted Nguyen's uncontested Motion to Expunge her civil contempt citation, stating, "Because Nguyen does not currently meet the elements of contempt, the Court must expunge her contempt citation." The court also denied Fraunhofer's Cross-Motion for Sanctions, emphasizing that Nguyen had complied with the subpoena after the contempt citation was issued.
Judge Upadhyaya noted that the court had previously held Nguyen in civil contempt for failing to comply with the subpoena, but her compliance purged her of that citation. The ruling stated, "A court can hold in contempt a person who, having been served, fails without adequate excuse to obey the subpoena or an order related to it." The judge clarified that civil contempt is conditional and can be purged by compliance with the court's order.
Impact
This ruling has important implications for future cases involving subpoenas and nonparty witnesses. It reinforces the principle that compliance with a subpoena can negate a contempt citation and that additional sanctions may not be warranted if the witness ultimately complies. The court's decision also highlights the need for parties to carefully consider the appropriateness of seeking sanctions in discovery disputes, particularly against nonparties.
The ruling sets a precedent that may discourage overly aggressive tactics in discovery disputes, particularly where a party seeks substantial fees for compliance-related issues. It emphasizes that the legal framework governing subpoenas and sanctions is nuanced and must be navigated with care.
What's Next
Details were not available in the court filing regarding any potential appeals. However, given the court's clear ruling against the imposition of sanctions, it is unlikely that Fraunhofer will pursue further legal action in this matter.