Abiomed Inc. v. Maquet Cardiovascular LLC
Abiomed Inc. v. Maquet Cardiovascular LLC
2019 WL 13089053 (D. Mass. 2019)
November 22, 2019
Boal, Jennifer C., United States Magistrate Judge
Summary
The court considered the importance of Electronically Stored Information, such as communications with or concerning the inventors of the '100 patent and corporate governance documents, in relation to the motions to compel documents and written discovery. The court denied Abiomed's motion to compel documents and Maquet's motion to compel documents and written discovery, while granting Abiomed's motion for a Maquet 30(b)(6) deposition and Maquet's motion for an Abiomed 30(b)(6) deposition in part.
Additional Decisions
ABIOMED INC., Plaintiff and Counter-Defendant,
v.
MAQUET CARDIOVASCULAR LLC, Defendant and Counter-Claimant,
v.
ABIOMED R&D, INC. and ABIOMED EUROPE GMBH, Third-Party Defendants
v.
MAQUET CARDIOVASCULAR LLC, Defendant and Counter-Claimant,
v.
ABIOMED R&D, INC. and ABIOMED EUROPE GMBH, Third-Party Defendants
Civil Action No. 16-10914-FDS
United States District Court, D. Massachusetts
Filed November 22, 2019
Counsel
Andrei Harasymiak, Pro Hac Vice, Lauren A. Moskowitz, Pro Hac Vice, Reshma R. Gogineni, Pro Hac Vice, Sharonmoyee Goswami, Pro Hac Vice, Keith R. Hummel, Pro Hac Vice, Cravath, Swaine & Moore LLP, C. Sebastian Zonte, Pro Hac Vice, John Padro, Pro Hac Vice, Matthew Wisnieff, Pro Hac Vice, Scott T. Weingaertner, Pro Hac Vice, Stefan M. Mentzer, Pro Hac Vice, Laura Rees Logsdon, Pro Hac Vice, White & Case LLP, New York, NY, Charles D. Larsen, White & Case, LLP, Boston, MA, for Plaintiff and Counter-Defendant.Andrew J. Ligotti, Pro Hac Vice, Christopher L. McArdle, Pro Hac Vice, Neal J. Mclaughlin, Pro Hac Vice, Paul J. Tanck, Pro Hac Vice, Wade G. Perrin, Pro Hac Vice, Alston & Bird, LLP, Gregory J. Carbo, Pro Hac Vice, Chadbourne & Parke LLP, New York, NY, James Charles Grant, Pro Hac Vice, Alston & Bird, LLP, Atlanta, GA, Michael S. Connor, Pro Hac Vice, Alston & Bird LLP, Charlotte, NC, Robert H. Stier, Jr., Margaret K. Minister, Pierce Atwood LLP, Portland, ME, Erik Paul Belt, McCarter & English, LLP, Boston, MA, for Defendant and Counter-Claimant.
Andrei Harasymiak, Pro Hac Vice, Lauren A. Moskowitz, Pro Hac Vice, Reshma R. Gogineni, Pro Hac Vice, Sharonmoyee Goswami, Pro Hac Vice, Keith R. Hummel, Pro Hac Vice, Cravath, Swaine & Moore LLP, C. Sebastian Zonte, Pro Hac Vice, Scott T. Weingaertner, Stefan M. Mentzer, Pro Hac Vice, White & Case LLP, New York, NY, Charles D. Larsen, White & Case, LLP, Boston, MA, for Third-Party Defendant Abiomed Europe GmbH.
Andrei Harasymiak, Pro Hac Vice, Lauren A. Moskowitz, Pro Hac Vice, Reshma R. Gogineni, Pro Hac Vice, Sharonmoyee Goswami, Pro Hac Vice, Keith R. Hummel, Pro Hac Vice, Cravath, Swaine & Moore LLP, C. Sebastian Zonte, Pro Hac Vice, Scott T. Weingaertner, Stefan M. Mentzer, Pro Hac Vice, White & Case LLP, New York, NY, for Third-Party Defendant Abiomed R&D, Inc.
Boal, Jennifer C., United States Magistrate Judge
ORDER ON DISCOVERY MOTIONS [Docket Nos. 396, 400, 404, 406, 408]1
*1 This is a patent infringement action. Defendant Maquet Cardiovascular LLC (“Maquet”) is the owner of several patents for guidable intravascular blood pumps and related methods. Abiomed Inc. has filed a complaint requesting declaratory judgment of noninfringement of three Maquet patents. Maquet has filed a counterclaim. Over time, this action has been narrowed to two claims of a single patent (the ’100 patent) which concern a component part of the blood pump.
Abiomed has filed motions to compel documents regarding Maquet's licensing efforts, communications with inventors and allegedly competing products; and an additional Maquet 30(b)(6) deposition. Docket Nos. 396, 400. Maquet has filed motions to compel the deposition of Michael Minogue and an Abiomed 30(b)(6) witness and for documents and written discovery. Docket Nos. 404, 406, 408. This Court rules as follows.[2]
I. STANDARD OF REVIEW
“Discovery procedures set forth in the Federal Rules of Civil Procedure seek to further the interests of justice by minimizing surprise at trial and ensuring wide-ranging discovery of information.” Cartel Asset Mgmt. v. Ocwen Fin. Corp., No. 01-cv-01644-REB-CBS, 2010 WL 502721, at *9 (D. Colo. Feb. 8, 2010) (citing United States ex rel. Schwartz v. TRW, Inc., 211 F.R.D. 388, 392 (C.D. Cal. 2002)). To that end, Rule 26(b) permits “discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case.” Fed. R. Civ. P. 26(b)(1). Factors that must be considered in weighing proportionality include “the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.” Id.
II. DISCUSSION
A. Abiomed's Motion to Compel Documents (Docket No. 396)
Abiomed has moved to compel documents regarding Maquet's licensing efforts, communications with inventors and sales of allegedly competing products. Docket No. 396. Maquet has represented that it has searched for and produced documents relating to each of these three categories of information. Docket No. 490 at 8, 11, 15. Abiomed has not persuasively argued that these productions are insufficient. In addition, the document requests at issue (requests for production (“RFPs”) 4, 5, 8, 14, 17, 33, 35, 36, 41, 44, 54) are overly broad. See Docket No. 397 at 24-26. Therefore, the requested discovery appears to be outside the scope of discoverable information pursuant to Rule 26(b)(1). The undersigned therefore denies this motion to compel.
B. Abiomed's Motion For A Maquet 30(b)(6) Deposition (Docket No. 400)
Abiomed has moved for an additional Rule 30(b)(6) deposition of Maquet for a number of reasons. Docket No. 400. Most importantly, Maquet produced approximately 30,000 pages of documents related to no fewer than twenty discovery requests one working day before Abiomed was scheduled to take Maquet's 30(b)(6) deposition. Docket No. 401 at 5. Maquet submits that those documents fall into the following five categories: (1) certified patent file histories; (2) publicly available SEC and FDA-related documents; (3) documents originating from “A-med” that include laboratory notebooks from named inventors; (4) copies of applications related to the ’100 patent family attached to correspondence with inventors; and (5) “minimal additional supplementations” related to Abiomed's requests. Docket No. 483 at 13-14.
*2 At oral argument, Abiomed was unable to identify any particular document or group of documents for which it sought Rule 30(b)(6) testimony even though it has now been in possession of the documents for over two months. However, Maquet itself acknowledges that Category 4 above contained new and unique documents. See Docket No. 483 at 15. This Court will allow 30(b)(6) testimony only on those documents that pertain to communications with or concerning the inventors of the ’100 patent as well as the corporate governance document Abiomed identified at oral argument, within the framework of Abiomed's existing Rule 30(b)(6) topics.
Prior to the deposition, Abiomed must identify for Maquet the subset of Rule 30(b)(6) topics implicated by this category of documents. Any Rule 30(b)(6) deposition is limited to those topics and the documents from the ’100 patent family category of the August 27, 2019 production. Any such deposition shall last no more than four hours. This Court does not find persuasive any of Abiomed's other arguments for a Rule 30(b)(6) deposition and therefore grants in part and denies in part the motion.
C. Maquet's Motion For An Abiomed 30(b)(6) Deposition (Docket No. 404)
Maquet has moved for an additional Rule 30(b)(6) deposition of Abiomed on certain topics contained within Maquet's second, third and fourth 30(b)(6) notices. Docket No. 404. Abiomed has refused to provide testimony on these topics for a variety of reasons. This Court has carefully reviewed each topic and the parties’ arguments regarding the same. Based on that review, in light of the prevailing case law, this Court rules as follows:
• The following deposition topics are overbroad:
- 2nd Notice: 11, 12, 23, 26, 31
- 4th Notice: 7
• Maquet has not sufficiently demonstrated the relevance of the following topics:
- 2nd Notice: 24, 30
- 3rd Notice: 1
• The following topics seek privileged information:
- 4th Notice: 5, 6
• In addition, the following topics seek legal contentions, or “facts” that a Rule 30(b)(6) deponent would not be able to distinguish from their legal consequences. See Fidelity Mgmt. & Research Co. v. Actuate Corp., 275 F.R.D. 63, 64 (D. Mass. 2011).
- 3rd Notice: 2, 3, 5
Therefore, this Court declines to compel testimony on all of those topics. This Court also denies the motion to compel testimony regarding the date(s) of the hypothetical negotiation (4th Notice, Topic 1) because that information is the subject of expert testimony, rather than the province of a 30(b)(6) corporate designee. See, e.g., Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970).
This Court grants Maquet's motion to compel testimony on the following topics, which are reasonably particular and proportional to the needs of the case:
- 2nd Notice: 27
- 3rd Notice: 6
- 4th Notice: 2, 4
This Court therefore grants in part and denies in part the motion.
D. Minogue Deposition (Docket No. 406)
Maquet has moved to compel the deposition of Michael Minogue, Abiomed's CEO. Docket No. 406. Although courts are loath to preclude parties from deposing prospective witnesses, special considerations arise when a party attempts to depose high-level corporate executives. Such “[h]ighly-placed executives are not immune from discovery.” Koninklijke Philips Elec. N.V. v. ZOLL Med. Corp., No. 10-11041-NMG, 2013 WL 1833010, at *1 (D. Mass. Apr. 30, 2013) (citation omitted). Courts, however, have acknowledged that precluding or conditionally deferring the depositions of such executives may be appropriate where they lack specific and unique knowledge related to the suit. Id.
Maquet submits that Minogue was pivotal in Abiomed's acquisition of the Impella line of products and can testify as to Abiomed's side of the hypothetical negotiation concept that is relevant to damages. Docket No. 407 at 4-5, 9-11. However, Maquet has not demonstrated adequately that Minogue possesses unique knowledge regarding the part of the Impella product that is still at issue in this case. Nor is a CEO's perspective on license value at the time of the hypothetical negotiation relevant. That analysis is highly technical and, as discussed above, looks to expert testimony and other data. See Georgia-Pacific Corp., 318 F. Supp. at 1120. Accordingly, this Court denies the motion to compel Minogue's deposition.
E. Maquet Motion To Compel Documents And Written Discovery (Docket No. 408)
*3 Maquet moves to compel various categories of documents and information. Docket No. 408. With respect to its requests for financial information, Maquet has not identified the specific RFPs and/or interrogatories to which such requests are responsive, which alone is a basis for denying that request. See L.R. 37.1(b). Maquet's reference to “interrogatories” without identifying them by number does not suffice. See Docket No. 522 at 5.
With respect to the following categories of information/requests, Abiomed has already produced responsive documents and Maquet has not adequately explained why those productions are deficient:
• Agreements and correspondence with third parties (RFPs 59, 60)
• Willful infringement (Interrogatories 5, 6, 12)
• Valuations of Abiomed's patents (RFPs 55, 56)
• Documents related to Abiomed's RFP and interrogatory answers (RFP 60).
In addition, Maquet has not sufficiently demonstrated the relevance of the following:
• European nullity proceedings (RFPs 50, 51)
• Abiomed's acquisition of Impella CardioSystems AG (RFPs 53, 54).
Maquet seeks discovery about 35 U.S.C. § 271(f) (Interrogatories 3, 17, 18, 19). A motion is presently pending before Judge Saylor that would affect the scope of discovery. See Docket No. 422. This Court therefore denies without prejudice the motion to compel with respect to those requests.
Maquet's request for five categories of extensive discovery relating to its assignor estoppel theory, see Docket No. 522 at 10, is not proportional given the broad nature of the requests (RPFs 9, 10, 14, 31, 32, 52, 60; interrogatory 8). The undersigned therefore denies the motion to compel this discovery.
Accordingly, this Court denies Maquet's motion to compel documents and written discovery.
III. ORDER
For the foregoing reasons, and to the extent outlined herein, this Court
(1) denies Abiomed's motion to compel documents on Maquet's licensing efforts, communications with inventors and allegedly competing products (Docket No. 396);
(2) grants in part and denies in part Abiomed's motion to compel Maquet 30(b)(6) deposition testimony (Docket No. 400);
(3) grants in part and denies in part Maquet's motion to compel Abiomed 30(b)(6) deposition testimony (Docket No. 404);
(4) denies Maquet's motion to compel the deposition of Michael Minogue (Docket No. 406); and
(5) denies Maquet's motion to compel documents and written discovery (Docket No. 408).
Footnotes
Citations to “Docket No. ___” are to documents appearing on the Court's electronic docket. They reference the docket number assigned by CM/ECF, and include pincites to the page numbers appearing in the top right corner of each page within the header appended by CM/ECF. Each document filed under seal has two docket numbers, one for the redacted public version and the other for the sealed unredacted version. This Court cites to the redacted public versions herein.
On August 1, 2019, Judge Saylor referred all discovery disputes to the undersigned. Docket No. 347.