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

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.

Shire LLC v. Abhai LLC (15-cv-13909).

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.