Uniloc 2017 LLC v. athenahealth, Inc. (D. Mass. 19-cv-11278).

Uniloc 2017 sued athenahealth for patent infringement in 2019.  Now in discovery, Uniloc sought to have athenahelath’s source code produced to Uniloc’s expert in Dallas.  Athenahealth baulked, stating that its source code was highly valued and that disclosure in Dallas under the current COVID circumstances would involve undue risks.  Uniloc, meanwhile did not want to engage a new expert from the Boston area.  Judge Stearns, noting that both parties’ concerns were valid, denied Uniloc’s motion to compel production of the source code in Dallas and instead stayed the case until 2021.  He did indicate that he would consider lifting the stay if the parties could mutually agree on a solution before then.

Plastipak Packaging, Inc. v. Ice River Springs Water Co. Inc. et al. (D. Mass. 19-cv-11193).

Judge Talwani denied Ice River’s motion to compel additional information relating to the conception, diligence and reduction to practice the claimed invention.  Ice River asserted that the responses and documents provided failed to explain what transpired in the eight months between conception and reduction to practice.  Judge Talwani indicated that the response answered the question posed by the interrogatory, and noted that Plastipak would be limited to the evidence disclosed in its responses at trial.  She further noted that, where Plastipak’s counsel certified that they had performed a reasonably diligent search and Ice River can point to nothing more than a suspicion that unproduced documents exists, Ice River is not entitled to an order compelling more.

Judge Talwani denied Ice River’s motion to compel documents that were produced by a third party in an earlier litigation with Plastipak and were deemed confidential under a protective order in that case.  She had previously entered a protective order shielding these documents from production but requiring Plastipak to identify all such documents in a privilege log.  Judge Talwani determined that Ice River would have to subpoena the third party, who could then move to quash, and a determination could then be made as to the need for their production. 

Judge Talwani denied Ice River’s motion to compel the production of all prior art in Plastipak’s possession.  Ice River had requested all “material” prior art, and Plastipak had produced only references cited on the face of the subject patent, taking the position that anything not cited to the PTO was not material, particularly with respect to confidential materials in its possession. While Judge Talwani did not find this interpretation of the request to be unreasonable, she noted that non-public materials can be material at least with respect to obviousness.  Accordingly, while not granting Ice River’s motion, she allowed Ice River to rephrase the request to make clear what information it sought.  Judge Talwani had earlier struck Ice River’s invalidity contentions, finding them non-compliant with Local Rule 16.6.  Ice River had cited 163 prior art references and more than 3000 exemplary obviousness combinations, but had not provided claim charts for roughly half of the references and not articulating specific reasons to make the obviousness combinations.  Because Ice River had relied on the scheduling order, which it contended modified the Local Rule, Judge Talwani allowed Ice River leave to refile its disclosures.  Given that the invalidity contentions remained pending, Ice River would not be prejudiced by the delay in the production of any additional art.

Nike, Inc. v. Puma North America, Inc. (18-cv-10876).

Magistrate Judge Sorokin denied Puma’s motion to compel supplementation of Nike’s preliminary infringement claim charts. Nike, which is asserting seven patents against seventeen Puma products, filed and then supplemented its preliminary infringement contentions pursuant to L.R. 16.6(d)(1)(A). The District of Massachusetts amended L.R. 16 in 2018 to require the patentee produce claim charts providing with as much specificity as reasonably possible a description of where and how each claim element is found in the accused products. Nike’s most recent supplementation, totaling 260 pages, contain full color photographs with annotations showing where each element is located on each accused product. Judge Sorokin found this sufficient at the early stage of the proceedings to meet the requirement of the amended rule.

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

Magistrate Judge Boal granted in part and denied in part SiOnyx’s motion to compel testimony and documents concerning Hamamatsu’s customer agreements. Hamamatsu had previously been compelled to produce sales agreements pertaining to the accused products. SiOnyx asserts that as a result of that production, it learned that Hamamatsu had actively negotiated with a major (sealed) customer of SiOnyx during the course of the litigation. SiOnyx sought additional depositions concerning the late-produced agreements as well as documents concerning the agreements. Judge Boal found SiOnyx’s requests overly broad, in that they covered not only the newly-discovered information but also topics that SiOnyx could have covered in prior depositions, but acknowledged that SiOnyx was entitled to some additional discovery as a result of the late production She ordered Hamamatsu to respond to depositions by written question pursuant to FRCP 31.

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

Abiomed filed a declaratory judgment action seeking a declaration of non-infringement and invalidity of six Maquet patents relating to guidable intravascular blood pumps, and Maquet brought infringement counterclaims. Judge Saylor partially granted Abiomed’s motion to compel supplemental responses to Abiomed’s invalidity contentions. Maquet had originally asserted 98 claims, and Abiomed provided invalidity contentions as to all 98 claims. In response to a court order, Maquet narrowed the case to 35 claims; pursuant to the court’s order, Maquet will have to further narrow their case to 18 claims following the Markman order, after which Abiomed will have to narrow its list of primary references to 12. Maquet objected to responding to Abiomed’s invalidity contentions because they necessarily cover claims and prior art that will ultimately not be a part of the trial, and also asserted that Abiomed improperly sought expert analysis prematurely. Judge Saylor disagreed, noting that Maquet had the benefit of seeing Abiomed’s invalidity contentions prior to its initial narrowing of claims and that therefore Abiomed should get to see Maquet’s validity contentions prior to reducing the references it was asserting. Judge Saylor did, however, postpone the date by which Maquet would have to respond to the date that it would have to provide its final listing of 18 asserted claims, and limited Maquet’s response to validity contentions concerning those 18 claims. In a separate order, Judge Saylor denied Abiomed’s motion to compel discovery of Maquet’s patent assessments and valuations. Maquet had produced a presentation given to a different heart pump company that included reference to a proposal made by Maquet that made reference to the amount Maquet believed the company could obtain from Abiomed should the company acquire the patents. Abiomed, believing that this would reveal a substantially lower valuation than Maquet was seeking in damages, sought additional information on how Maquet came to the valuation in the proposals; Judge Saylor accepted Maquet’s representation that it had no non-privileged valuations to produce.

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.

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

Judge Saylor denied MRSI’s motion to compel more detailed infringement contentions. This case was originally brought in 2015 in the Southern District of California, with Palomar asserting infringement of U.S. Patent No. 6,776,327. In 2016, the case was stayed pending resolution of an IPR proceeding filed by MRSI; the case resumed progress when most of the claims were deemed valid by the PTO. In August 2017, MRSI moved to transfer venue to the District of Massachusetts in light of the TC Heartland decision on patent venue, and the case was transferred in February of this year. In denying the motion to compel, Judge Saylor noted that the district’s new local patent rules do not apply to this case, as the scheduling order was issued prior to June 1, 2018, that the prior applicable rule did not require any particular level of detail for infringement contentions, and that the scheduling order itself required only an identification of the claims asserted, products that are accused of infringing those claims, and whether the infringement is literal or by equivalents. While he noted that the contentions are skeletal, Judge Saylor determined that they met the requirements of the applicable rule and the scheduling order, and he indicated that at the early stage of the proceeding, there is no requirement for the claim construction contentions sought by MRSI.

Merchant Consulting Group, Inc. v. Beckpat, LLC (17-11405).

Merchant Consulting served a third-party subpoena on Blue Square Resolutions, a Scottsdale Arizona entity, seeking documents in its trademark infringement case against Beckpat. When Blue Square failed to respond or otherwise make contact with Merchant, Merchant filed a motion for contempt pursuant to Fed. R. Civ. P. 45(g). In granting the motion, Magistrate Judge Kelley found that the subpoena was properly served by mailing it to Blue Square, noting that in Massachusetts, service is proper where effectuated by a means reasonably calculated to complete delivery and the respondents had actual notice of the subpoena. She found that Massachusetts was the proper forum to enforce the subpoena, because the subpoena called for documents to be produced in Massachusetts, making this state the district where compliance was required, particularly given that Blue Square never raised an objection to production in Massachusetts. Having found Blue Square in contempt, Judge Kelley ordered Blue Square to comply with the subpoena within ten days, with a recommendation to the District Court that failure to do so should result in an order to show cause why monetary sanctions should not be imposed. She further recommended that Blue Square be ordered to pay Merchant’s legal fees associated with bring the motion for contempt.

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

Magistrate Judge Boal denied SiOnyx’ motion for evidentiary sanctions against Hamamatsu Photonics and Hamamatsu Corp.SiOnyx and Harvard filed suit in 2015, asserting correction of inventorship, patent infringement, and breach of contract. In discovery, Hamamatsu produced summary spreadsheets of damages information without providing the underlying invoices and purchase orders. By order of October 2017, the court ordered Hamamatsu to provide that information and some additional sales data. SiOnyx asserts that Hamamatsu failed to produce the information prior to the taking of depositions of Hamamatsu personnel and provided inaccurate and shifting information relating to damages, and sought both to preclude Hamamatsu from relying on the summary data and to have sales figures taken from annual reports be deemed established pursuant to Rule 37. Citing the strong presumption of allowing cases to be decided on the merits, Judge Boal determined that the defendants’ conduct was no so extreme as to warrant evidentiary sanctions (which were the only sanctions sought by SiOnyx). Judge Boal next addressed a dispute as to the interpretation of the October order, which modified certain requests for sales data to exclude data on unaccused products. Hamamatsu chose to interpret this to require production only of documents expressly mentioning an accused product. Judge Boal corrected them and ordered production of all sales documents that pertained to an accused product, but did not find them to be in contempt of the October order.