Following construction of the claims, Judge Capser denied Philips’ motion for summary judgment of validity. WAC had sought inter partes review on several grounds, some of which were denied. Judge Casper, citing to Shaw Industries Group v. Automated Creel Systems, found that the Federal Circuit had determined that the estoppel resulting from an unsuccessful IPR did not apply to grounds that were not instituted by the PTO. Judge Casper denied WAC’s motion to compel the deposition of the named inventor of one of the patents-in-suit for lack of relevance. WAC had asserted that the inventor’s testimony was relevant on patent practices at the time the application was filed, prior art, the problem the patent allegedly solves, the underlying development of the technology claimed in the patent, the alleged contribution of each inventor to the patent, and the facts and circumstances surrounding the alleged invention. The problem was that none of these issues related to any claims or defenses of WAC, thus making these issues irrelevant. The court specifically noted, however, that the inventor was no longer an employee and was a resident of France, suggesting that the relevancy might have been sufficient had the witness been more readily available, but did not outweigh the inconvenience of making the witness appear.
Magistrate Judge Boal granted in part and denied in part Plaintiff’s motion to compel in a case involving claims of patent infringement, correction of inventorship and breach of contract. With respect to requests relating to customer identification information, she determined such information was relevant to infringement and damages, as well as to the breach of the non-disclosure agreement alleged, but limited the scope of the interrogatories to exclude communications with third parties who were not customers, potential customers, or distributors, and limited the subject of the communications to the accused products. Similarly, Judge Boal allowed the motion to compel sales information that underlies the summary spreadsheets produced by the defendants, but limited other requests that sought “all documents and things pertaining to” requests and requests seeking sales information on non-accused products as overly broad – “[c]ourts may find requests overly broad when they are couched in such broad language as to make arduous the task of deciding which of numerous documents may conceivably fall within their scope.” Finally, Judge Boal denied requests for information on each named inventor’s contribution to the specification and drawings of the disputed patents, finding that, as the inventorship dispute focusses on the claims, evidence on contributions to the specification is not proportional to the burdens imposed by the request.
Abiomed sued Maquet seeking a declaratory judgment that its Impella intracardiac heart pumps do not infringe Maquet’s patents, and Maquet counterclaimed for infringement. Abiomed, believing that Maquet’s parent company, Getinge AB, controls the litigation, moved to compel the deposition of Abraham Roani, Getinge’s General Counsel, on valuation, commercialization, validity and enfoceability of the patents-in-suit. Maquet opposed, arguing that any information Roani has would be protected by the attorney-client privilege and work product doctrine, and Maquet offered a non-attorney alternative witness. Magistrate Judge Boal, noting the red flags that are raised by the noticing of deposition of the opposing party’s attorney, referred to the Shelton test adopted by the Eight Circuit, which requires there be no other means to obtain the sought information, the information be relevant and non-privileged, and the information be crucial to the development of the case. She found that Abiomed had not met the first of these criteria, particularly given the proffer of a non-attorney witness, and denied the motion without prejudice.
Maquet fared better with its motion to compel. Abiomed unsuccessfully sought to limit production to documents relating to features of the accused products that are alleged to meet the claim limitations, rather than technical information on all features of the accused products. While Judge Boal compelled production of documents related to the accused products and not just the accused features, she sided with Abiomed that requests seeking all documents “related to” particular topics were overly broad, and limited these requests to the specific examples of types of documents contained in the requests. Finally, Judge Boal required Abiomed to produce technical documents that predate the six-year limitation on damages period set forth in 35 U.S.C. § 286, because such documents go to infringement and not just to damages.
Judge Young, tired of discovery disputes this case, put forward a new approach on Wednesday. With five trial days coming up in early September and the parties contending that relevant documents still had not been produced, Judge Young stated that no party would be allowed to introduce into evidence anything that had reasonably been called for but not produced prior to Monday, August 21, and that he would draw an adverse inference at trial against any party found not to have produced relevant and responsive documents. Effectively, he is inviting the parties to either cooperate or to dig their own graves.