Abiomed, Inc. v. Maquet Cardiovascular, LLC (16-cv-10914).

Judge Saylor denied Abiomed’s motion for a protective order prohibiting discovery of foreign sales of products whose components were exported from the United States and assembled abroad. Abiomed had sought to preclude this information because Maquet had not specifically pled 35 U.S.C. § 271(f) as a basis for infringement. Noting that the limits on discovery set forth in Rule 26 may encompass matters that could bear on any issue that “is or may be in the case,” Judge Saylor determined that discovery as to worldwide sales is potentially relevant to damages. He stated that the order concerns only discoverability, and that he was taking no position on whether a claim under 271(f) was properly pled or on whether the resulting discovery would ultimately be admissible at trial. Judge Saylor further denied Abiomed’s motion to compel discovery from the Getinge Group, a consortium of companies that includes Maquet and that is owned by Getinge AB, a Swedish company. Getinge AB had initially been named as a defendant in Abiomed’s declaratory judgment complaint, but had successfully moved to dismiss because it’s lack of ownership of the subject patents meant that it lacked standing to defend such claims. Abiomed then had sought information and documents related to patent transactions, assessments, valuations and licenses held by Getinge Group entities located outside of the United States. Judge Saylor determined that the documents were not in the possession, custody or control of Maquet, because the fact that Maquet is a subsidiary of and shares a legal services department with Getinge was insufficient to establish that Maquet is an alter ego of Getinge.

Palomar Technologies, Inc. v. MRSI Systems, LLC (18-cv-10236).

In a case involving allegations of infringement of a patent relating to placement of components on circuit boards, Palomar sought partial summary judgment of literal infringement.  Palomar asserted that of the three non-infringement grounds MRSI provided, one was based on a frivolous claim construction and the other two were directly contradicted by MRSI’s 30(b0(6) witness. Palomar also sought summary judgment on MRSA’s public use invalidity defense, alleging that MRSI had failed to timely provide contentions relating to this issue that provided the requisite detail to maintain the defense. Noting that o claim construction order has yet issued and discovery remains on-going, Judge Saylor denied Palomar’s motions without prejudice, finding them to be premature. He further noted that, to the extent the motions were the result of an alleged failure of MRSI to provide discovery or make required disclosures, a motion to compel or for sanctions would be the appropriate step for Palomar to take.

Deetz Family, LLC v. Rust-Oleum Corporation (16-cv-10790).

Judge Hillman denied Deetz’s emergency motion to quash the deposition of a former Rust-Oleum employee that was noticed after the close of discovery. Rust-Oleum noticed the deposition in an attempt to obtain testimony that could be entered at trial, as the ex-employee now resides outside of the subpoena power of the court. Judge Hillman, noting that the ex-employee was more of a “friendly” witness for Rust-Oleum and that Deetz had discouraged the ex-employee from voluntarily appearing at trial, determined that the deposition was more in the guise of preserving testimony than in collecting discoverable evidence, which makes the deposition permissible despite being noticed past the close of discovery. To allow for meaningful cross-examination, Judge Hillman further ordered that Deetz would be permitted to take two hours of discovery testimony before the preservation testimony would begin.

Palomar Technologies, Inc. v. MRSI Systems, LLC (18-cv-10236).

As a part of its defense to this patent infringement lawsuit, MSRI sought inter partes review in 2016. The patent emerged with most claims deemed valid. MSRI then challenged the validity of the patent over additional prior art references. MSRI sought to get around the estoppel provided by 35 USC 315(e)(2), which proscribes assertions of invalidity on grounds that were raised or could reasonably have been raised during the IPR, by providing declarations and search results from two outside search firms and asserting that these reasonable searches did not uncover the new references and thus the validity challenge could not reasonably have been raised. Magistrate Judge Bowler granted in part and denied in part MRSI’s motion to quash subpoenas issued by Palomar to the two search firms. She found that the searches were, at a minimum, subject to work-product protection, but that MSRI had waived such protection by affirmatively relying on the search results and affidavits in their opposition to Palomar’s motion for partial summary judgment. She determined that Palomar was entitled to discovery from the two firms, but that some of Palomar’s requests were overbroad and/or covered unrelated subject matter. Accordingly, while not quashing the subpoenas, she limited the subpoenas to specifics of the actual searches performed for MSRI.

MedIdea, L.L.C. v. DePuy Orthopaedics, Inc. (17-cv-11172).

MedIdea sued Depuy for patent infringement connected with total knee replacement prostheses in the Northern District of Illinois. Following the TC Heartland decision, the case was transferred to Massachusetts, where it has undergone contentious discovery. Judge Sorokin denied MedIdea’s request for detailed royalty reports, in light of MedIdea’s expert acknowledging that documents already produced provided sufficient information to calculate damages. He also refused to compel production, at no cost to MedIdea, of different sizes of the accused products, finding no authority to require the provision of thousands of dollars of products for free when the sole difference was the size. Judge Sorokin also denied MedIdea’s demand that DePuy produce a 30(b)(6) witness to testify on the nature of DePuy’s search for documents and choice of keywords for searching electronic records, in light of DePuy’s statement that only outside counsel participated in that task and in light of MedIdea’s delay of eight months form the time when the schedule required the parties to meet and confer on electronic discovery issues. Finally, Judge Sorokin granted DePuy’s motion to quash subpoenas to two inventors of prior art identified by Depuy and that served as the basis for institution of an IPR proceeding. Judge Sorokin noted that MedIdea had been obliged to identify any relevant witnesses in its initial disclosures more than a year prior, and had failed to seek to supplement its disclosures. Moreover, the reference was more than ten years old, and was but one of many references cited by DePuy, but was the sole reference on which the IPR was granted, creating an inference that MedIdea was seeking their depositions in the litigation to circumvent rules that would prohibit such in the IPR proceeding itself.

SiOnyx, LLC et al.v. Hamamatsu Photonics K.K. et al. (15-cv-13488).

Judge Saylor granted in part SiOnyx’s renewed motion to compel in this patent infringement, correction of inventorship, and breach of contract case. SiOnyx had entered into an agreement with Hamamatsu to explore a possible business relationship surrounding laser-textured infrared-sensing silicon photonic devices. The business relationship never came to fruition, and Hamamatsu subsequently applied for patents directed to similar technology. A discovery dispute arose over whether SiOnyx could obtain information on products that were textured by some means other than a laser, with Hamamatsu taking the position that the infringement contentions did not accuse such products and the former SiOnyx founder now working for Hamamatsu did not contribute to the invention of non-laser-textured devices. SiOnyx’s initial motion to compel was denied without prejudice, because at the time there was insufficient evidence to support a charge of infringement; since then, SiOnyx was able to develop sufficient information that the products infringe, and that an offer for sale of the accused products has been made that, if accepted, would generate significant sales. Judge Saylor found that SiOnyx’s evidence related to the breach of contract and use of confidential information claims (that the Hamamatsu engineers who were exposed to this information developed the non-laser-textured products) was insufficient to overcome the significant differences in the resulting textures that negate an inference that they were developed using SiOnyx’s confidential information. Because the motion was granted only with respect to the patent claims, Hamamatsu was compelled to produce information relating only to U.S. sales or imports.

In re: NeuroGrafix (‘360) Patent Litigation (13-cv-02432).

In a turn from his response to a previous similar motion, Judge Stearns denied defendant Johns Hopkins Hospital’s motion for costs for responding to a third party subpoena from NeuroGrafix, finding the costs incurred were not unreasonable given that the subpoena was quashed and Johns Hopkins did not have to fully respond, and the subpoena was not found to be vexatious.