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Synthes v. Reis

August 2, 2007


The opinion of the court was delivered by: Hon. Anthony J. Battaglia U.S. Magistrate Judge United States District Court

Order Granting In Part and Denying In Part the Motion to Compel Jurisdictional Discovery ; Granting In Part and Denying In Part the Motion for Protective Order and Denying the Motion to Stay Discovery [Doc. No. 16]

Plaintiff Synthes (U.S.A.) (hereinafter "Synthes"), moves to compel production of jurisdictional discovery from Defendant, G.M. Dos Reis Jr. Ind. Com. De Equip. Medico a/k/a GMReis (hereinafter "GMReis"). GMReis filed an opposition and Synthes has filed a replied. The matter was set for hearing on June 5, 2007, at 3:30 p.m. before Judge Battaglia, however, on June 4, 2007, the Court issued an Order vacating this hearing date and permitting additional briefing by Defendants. Defendants subsequently filed a surreply. This motion is appropriate for submission on the papers and without oral argument pursuant to Local Rule 7.1(d)(1). For the reasons set forth herein, Synthes' Motion to Compel is hereby GRANTED IN PART and DENIED IN PART, GMReis' Motion for Protective Order is GRANTED IN PART and DENIED IN PART, and GMReis' Motion to Stay Discovery is DENIED.


Synthes is a global medical devices company that develops, produces and markets instruments and implants for the surgical fixation, correction and regeneration of the human skeleton. Synthes has a number of United States Patents directed to its bone plate technology, including the patent-in-suit, U.S. Patent No. 7,128,744.

GMReis is a Brazilian corporation that manufactures and sells orthopedic devices, including bone plates. Plaintiff contends that many of GMReis' products, including the bone plates, are essentially copies of Synthes products.

Both Synthes and GMReis are frequently exhibitors at various professional society meetings attended by orthopedic surgeons and other industry professionals held throughout the United States. These meetings or trade shows, provide opportunities for medical device companies to display and promote their products, and to interact with orthopedic surgeons and other professionals who use these products. One of the largest trade shows in the field of orthopedics is the American Academy of Orthopedic Surgeons, which was most recently held on February 14-18, 2007 at the Convention Center in San Diego, California.

GMReis set up a booth at this trade show displaying a variety of products. Plaintiff contends that at least one bone plate that GMReis displayed at the San Diego trade show infringed Synthes' U.S. Patent No. 7,128,744, which issued on October 31, 2006. Synthes filed the instant case for patent infringement on February 14, 2007 and caused the complaint to be served on the GMReis agent that appeared to be in charge of the booth at the San Diego trade show. Synthes later served the chief executive officer of GMReis, Mr. Geraldo Marins dos Reis Jr., who also attended the San Diego trade On April 6, 2007 GMReis filed a Motion to Dismiss Synthes' complaint for lack of personal jurisdiction under Rule 12(b)(2).*fn1 GMReis contends that it is not subject to general personal jurisdiction in California because it does not have "systematic and continuous" contacts with California. GMReis also argues that it is not subject to specific jurisdiction because GMReis has not committed patent infringement and the Southern District of California is an inconvenient forum having no interest in the present dispute.

In support of its motion to dismiss, GMReis filed two declarations of officers/employees: Mr. Reis, the Chief Operating Officer of GMReis and Mr. Lecumberri, an employee whose title is unknown. The declarations do not contest contact with this forum, rather they attempt to establish that GMReis' contacts with the forum are insufficient to establish personal jurisdiction, placing the quantity and nature of the admitted contacts with the forum at issue.

Plaintiff subsequently filed the instant motion to compel, seeking: 1) production of documents by GMReis responsive to the document requests served on April 20, 2007;*fn2 2) a Rule 30(b)(6) deposition of GMReis directed to the topics listed in the deposition notice served on April 20, 2007; 3) a deposition of declarant Geraldo Marins dos Reis Jr.; and 4) a deposition of declarant Jose Luiz Landa Lecumberri.

Defendants have filed an opposition requesting the Court deny Plaintiff's motion to compel and grant Defendants' motion for a protective order staying all discovery pending resolution of Defendants' motion to dismiss. Alternatively, Defendants' argue that should the Court permit jurisdictional discovery, the Court should grant Defendants motion for protective order and require Plaintiff to comply with Brazilian law to obtain discovery for Defendants.*fn3 Defendants also request that if the Court permits discovery prior to ruling on Defendants' motion to dismiss, that the Court grant Defendants motion for a protective order limiting discovery to the issue of jurisdiction. Defendants contend that many of Plaintiff's document requests reach far beyond matters relevant to the Court's jurisdictional determination in this case.


I. Jurisdictional Discovery

In evaluating Synthes' motion to compel jurisdictional discovery and GMReis' motion for protective order to stay or limit discovery, the Court must first determine whether the requested jurisdictional discovery should proceed while a dispositive motion is pending. A party seeking jurisdictional discovery must demonstrate that such discovery will yield additional relevant facts that will supplement its jurisdictional allegations and/or bolster its contentions. Trintec Industries, Inc. v. Pedre Promotional Products, Inc., 395 F.3d 1275, 1283 (Fed. Cir. 2005). In a patent infringement case, Federal Circuit law, rather than the law of the regional circuit, applies to ...

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