Colibri Heart Valve LLC v. Medtronic CoreValve LLC
Colibri Heart Valve LLC v. Medtronic CoreValve LLC
2021 WL 6882375 (C.D. Cal. 2021)
December 6, 2021
Early, John D., United States Magistrate Judge
Summary
Colibri Heart Valve LLC filed a motion seeking an order compelling Medtronic CoreValve LLC to produce a privilege log related to expert testing. The motion was initially denied without prejudice, but after Colibri filed a motion to amend or clarify the scheduling orders, the court granted the motion and Colibri refiled their motion for disclosure of the privilege log. The court ultimately ruled that Colibri was not entitled to a privilege log disclosing specific testing conducted for the litigation.
Additional Decisions
COLIBRI HEART VALVE LLC
v.
MEDTRONIC COREVALVE LLC, et al
v.
MEDTRONIC COREVALVE LLC, et al
Case No. 8:20-cv-00847-DOC (JDEx)
United States District Court, C.D. California
Filed December 06, 2021
Counsel
Adam K. Mortara, Pro Hac Vice, Mortara Law, Chicago, IL, Joseph C. Smith, Jr., Pro Hac Vice, Meg E. Fasulo, Pro Hac Vice, Bartlit Beck LLP, Denver, CO, Katherine E. Rhoades, Matthew R. Ford, Pro Hac Vice, Bartlit Beck LLP, Chicago, IL, Mieke K. Malmberg, Skiermont Derby LLP, Los Angeles, CA, Theodore D. Kwong, Pro Hac Vice, Hilgers Graben PLLC, Dallas, TX, for Colibri Heart Valve LLC.Catherine Huang, Kathryn Bridget Riley, Stanley J. Panikowski, III, DLA Piper LLP, San Diego, CA, Mark D. Fowler, DLA Piper LLP, East Palo Alto, CA, James M. Heintz, Pro Hac Vice, DLA Piper LLP, Reston, VA, Martin M. Ellison, DLA Piper LLP, Los Angeles, CA, Matthew Ganas, Pro Hac Vice, DLA Piper LLP, New York, NY, Safraz Ishmael, Pro Hac Vice, DLA Piper LLP, Boston, MA, for Medtronic CoreValve LLC, et al.
Early, John D., United States Magistrate Judge
Proceedings: (In Chambers): Order Re Plaintiff's Motion Regarding Disclosure of Privilege Log Concerning Testing [Dkt. 253]
I.
INTRODUCTION
*1 On May 4, 2020, Plaintiff Colibri Heart Valve LLC (“Plaintiff”) filed this patent infringement action against Medtronic CoreValve LLC and Medtronic PLC. See Dkt. 1. After Medtronic PLC was dismissed as a defendant (see Dkt. 28, 29), Plaintiff filed a First Amended Complaint on June 12, 2020, naming Medtronic CoreValve LLC (“Defendant”) as the only defendant. See Dkt. 30.
On June 10, 2021, Plaintiff filed a Motion for Disclosure of Privilege Log Concerning Expert Testing (Dkt. 130, “First Motion”), seeking an order compelling Defendant to produce a privilege log “related to the submission of certain opinions in” a report prepared by Defendant's rebuttal expert. On June 11, 2021, the assigned Magistrate Judge denied the First Motion without prejudice to refiling in compliance with the Local Rules, subject to the operative Scheduling Order. Dkt. 138.
On July 16, 2021, Plaintiff filed a second Motion Regarding Disclosure of Privilege Log Concerning Testing. Dkt. 191 (“Second Motion”). On July 19, 2021, the assigned Magistrate Judge denied the Second Motion as untimely. Dkt. 193. This ruling was without prejudice to Plaintiff seeking a modification of the Scheduling Order to authorize the Magistrate Judge to hear the Motion.
On July 28, 2021, Plaintiff filed a Motion to Amend or Clarify the Scheduling Orders. Dkt. 206. On November 4, 2021, District Judge David O. Carter granted Plaintiff's Motion to Amend. Dkt. 250. After confirming that the Magistrate Judge's interpretation of the Scheduling Orders was correct, the District Judge found good cause for amending the Scheduling Orders and gave Plaintiff until December 9, 2021 to notice its motion before the Magistrate Judge. Id. at 2, 4.
On November 11, 2021, Plaintiff refiled its Motion Regarding Disclosure of Privilege Log Concerning Testing (Dkt. 253, “Motion”), with a supporting redacted Local Rule 37-2.1 Joint Stipulation (Dkt. 253-1, “Jt. Stip.”) and redacted supporting and opposing evidence (Dkt. 253-2 to 253-12), with a request to file unredacted versions of supporting documents under seal (Dkt. 251, “Application”), set for hearing before the assigned Magistrate Judge on December 9, 2021 at 10:00 a.m. The Motion seeks an order compelling Defendant “to disclose a privilege log concerning testing” and is based, in part, on Rules 26, 30 and 37 of the Federal Rules of Civil Procedure. Jt. Stip. at 11. Plaintiff filed a supplemental memorandum on November 24, 2021. Dkt. 262.
On November 24, 2021, the Court denied Plaintiff's Application, instructing that Plaintiff may file the unredacted versions of the documents in the public case file, unsealed, no earlier than 4 days and no later than 10 days from the date of this order, or Plaintiff may, within 4 days, file a notice that it is withdrawing the Application and instead will proceed on the Motion solely on the basis of the redacted materials filed with the Motion. Dkt. 263. On December 3, 2021, Plaintiff filed unredacted versions of the documents. Dkt. 264 (Jt. Stip.), 264-1 to 264-6 (exhibits).
*2 The Court finds the Motion may properly be decided without further briefing or oral argument, vacates the hearing on the Motion, and rules as follows.
II.
LEGAL STANDARD
“Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering 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.” Fed. R. Civ. P. (“Rule”) 26(b)(1). Relevance under Rule 26(b)(1) is defined broadly. See Snipes v. United States, 334 F.R.D. 548, 550 (N.D. Cal. 2020); V5 Techs. v. Switch, Ltd., 334 F.R.D. 306, 309 (D. Nev. 2019). Moreover, “[i]nformation within this scope of discovery need not be admissible in evidence to be discoverable.” Rule 26(b)(1). “Generally, the purpose of discovery is to remove surprise from trial preparation so the parties can obtain evidence necessary to evaluate and resolve their dispute.” Duran v. Cisco Sys., Inc., 258 F.R.D. 375, 378 (C.D. Cal. 2009) (citations omitted).
A party “seeking discovery may move for an order compelling an answer, designation, production, or inspection” on the basis that “a deponent fails to answer a question asked under Rule 30 or 31.” Rule 37(a)(3)(B). Under Rule 30(c)(2), “[a] person may instruct a deponent not to answer only when necessary to preserve a privilege, to enforce a limitation ordered by the court, or to present a motion under Rule 30(d)(3).”
“Upon a motion to compel discovery, the movant has the initial burden of demonstrating relevance. In turn, the party opposing discovery has the burden of showing that discovery should not be allowed, and also has the burden of clarifying, explaining and supporting its objections with competent evidence.” United States v. McGraw-Hill Cos., 2014 WL 1647385, at *8 (C.D. Cal. Apr. 15, 2014) (citations and internal quotation marks omitted); see also DIRECTV, Inc. v. Trone, 209 F.R.D. 455, 458 (C.D. Cal. 2002) (“The party who resists discovery has the burden to show that discovery should not be allowed, and has the burden of clarifying, explaining, and supporting its objections.”); Oakes v. Halvorsen Marine Ltd., 179 F.R.D. 281, 283 (C.D. Cal. 1998).
III.
DISCUSSION
In this Motion, Plaintiff seeks a privilege log identifying certain testing and/or analysis conducted “for this litigation” by Defendant or on Defendant's behalf, as well as related correspondence, that has been withheld on grounds of privilege. Jt. Stip. at 1, 6. In particular, Defendant's testifying expert, Dr. Richard Hillstead (“Hillstead”), instructed Defendant's Kshitija Garde (“Garde”) to perform a physical test of the accused Defendant products and a finite element analysis of the same products on his behalf in preparing his opinions for his rebuttal expert report. Id. at 3, 14. During Garde's deposition, Plaintiff attempted to elicit information regarding whether additional testing or analysis was performed that was not disclosed to Hillstead, but Defendant's counsel instructed the witness not to answer questions regarding undisclosed testing on the basis of the attorney-client privilege and work product doctrine. Id. at 1, 8-9. Plaintiff seeks a privilege log identifying “all such testing,” arguing that such information is relevant because “it will expose the extent to which [Defendant] conducted such testing and then withheld it from the testifying expert,” which the “jury is entitled to know ... as part of considering how much weight to give the expert's testimony, particularly where the testifying expert admitted that he would have wanted to know about any additional testing that was conducted.” Id. at 1, 6.
*3 Defendant asserts three primary contentions in opposition to the Motion. First, Defendant argues that courts in this District and the Ninth Circuit routinely deny motions to compel post-complaint privilege logs because requiring ongoing logs of all post-complaint privileged communications would have a “chilling effect” on the attorney-client relationship. Jt. Stip. at 4, 17-18. Second, Defendant argues that the information being sought in this case “would reveal protected attorney strategy and mental impressions as it implicates the specific patent claim limitations that would have been the subject of such specific tests.” Id. at 4, 19-23. Defendant notes that although initially framed as a request seeking “additional testing or analysis performed in connection with Hillstead's requests to Garde but not disclosed to Hillstead” (id. at 2-3), Plaintiff is asking the Court to require Defendant to identify the specific nature of any work product testing it may have performed “at any time during this litigation regardless of whether such tests were requested by [Defendant's] attorneys and regardless of whether such tests were performed prior to Dr. Hillstead's request.” Id. at 3-4, 19 (emphasis omitted). Finally, Defendant maintains that Plaintiff can show no undue hardship, prejudice, or substantial need for such privilege log because it had an opportunity at Garde's deposition to explore “privilege-log level information.” Id. at 4. In particular, during Garde's deposition, Defendant's counsel indicated that Plaintiff's counsel could ask Garde whether any analysis was performed on the accused products, but rather than asking such privilege log level questions, Plaintiff's counsel instead asked “questions specifically designed to elicit testimony on the substance of the analysis.” Id. at 4-5, 18 (emphasis omitted); see also Declaration of Mieke K. Malmberg, Exh. D at 160:9-161:18.
“Courts in this circuit routinely deny a motion to compel a privilege log of attorney-client communications or work product dated after commencement of litigation.” In re Snap Inc. Sec. Litig., 2018 WL 7501294, at *1 (C.D. Cal. Nov. 29, 2018); see also, e.g., Mon Cheri Bridals, LLC v. Cloudflare, Inc., 2021 WL 1222492, at *3 (N.D. Cal. Apr. 1, 2021); Gaby's Bags, LLC v. Mercari, Inc., 2020 U.S. Dist. LEXIS 215041, at *9 (N.D. Cal. Nov. 17, 2020); Hiramanek v. Clark, 2016 WL 217255, at *6 (N.D. Cal. Jan. 19, 2016); Hernandez v. Best Buy Co., Inc., 2014 WL 5454505, at *10 (S.D. Cal. Oct. 27, 2014); Ryan Inv. Corp. v. Pedregal de Cabo San Lucas, 2009 WL 5114077, at *3 (N.D. Cal. Dec. 18, 2009). “[C]ounsel's communications with the client and work product developed once the litigation commences are presumptively privileged and need not be included on any privilege log.” Ryan Inv. Corp., 2009 WL 5114077, at *3. “[A] rule requiring creation of an ongoing log of all post-complaint privileged communications would have a chilling effect on the attorney-client relationship.” In re Snap Inc. Sec. Litig., 2018 WL 7501294, at *1 (quoting Grider v. Keystone Health Plan Cent., Inc., 580 F.3d 119, 139 n.22 (3d Cir. 2009)). Plaintiff has not cited any authority departing from this general practice, or rebutted the presumption that such communications and information are protected.
Plaintiff argues that factual information and the existence of testing, analysis, and/or correspondence is not privileged or protected work product. Jt. Stip. at 12. However, none of the cases relied upon by Plaintiff ordered the disclosure of information – or a privilege log – regarding testing or analysis that was conducted after litigation commenced. As Defendant notes, Plaintiff “does not simply seek to compel a general identification of non-infringement analysis” that Defendant performed. Id. at 6, 11, 19. Plaintiff's counsel was provided the opportunity to obtain such basic information at Garde's deposition, but declined to do so. See id. at 8-9, 16. Rather, Plaintiff seeks the disclosure of information regarding specific testing that may have been performed. Specifically, Plaintiff requests an order that Defendant “produce a privilege log that identifies testing and/or analysis for this litigation by [Defendant] (or on [Defendant's] behalf) regarding any FEA tests or physical flow tests, as well as any related correspondence.” Proposed Order. Defendant persuasively argues that disclosure of such information “would necessarily reveal attorney strategy by revealing which patent claim limitations were tested and when any such specific testing might have taken place.” Id. at 19-23. Where, as here, the testing at issue was performed after litigation was initiated, the disclosure of information regarding such testing would necessarily reveal attorney strategy in defending this infringement action and therefore, at a minimum, is protected by the work product doctrine. See Vardon Golf Co., Inc. v. BBMG Golf Ltd., 156 F.R.D. 641, 648 (N.D. Ill. 1994) (defendant properly asserted the work product doctrine in response to request seeking production of all test results, test set-ups, and authorizations for tests reflecting on infringement or non-infringement, noting that the purpose of these tests, which were conducted to prepare a defense after litigation was initiated, “reflect the attorney's opinions, impressions, and strategy in litigating the patent infringement claims”; “[t]he selection of the tests and test data would surely reflect the attorney's strategy in defending the patent claim and thus the work product privilege clearly applies”); see also generally United States v. Christensen, 828 F.3d 763, 805 (9th Cir. 2016) (as amended) (for purposes of the work product doctrine, the documents (1) must be prepared in anticipation of litigation or for trial, and (2) must be prepared by or for another party or by or for that other party's representative). Plaintiff provides no authority recognizing a right to information regarding specific testing or analysis in such circumstances. As such, the Court concludes Plaintiff has not shown it is entitled to a privilege log disclosing specific testing conducted “for this litigation.”
IV.
CONCLUSION
*4 For the foregoing reasons, Plaintiff's Motion (Dkt. 253) is DENIED.