The opinion of the court was delivered by: Hon. Nita L. Stormes U.S. Magistrate Judge
ORDER GRANTING DR SYSTEMS' MOTION TO COMPEL DISCOVERY RESPONSES FROM MEDICAL SOLUTIONS AND DENYING WITHOUT PREJUDICE ALTERNATIVE REQUEST FOR LEAVE TO FILE AMENDED FINAL INFRINGEMENT CONTENTIONS [Doc. No. 263] AND RELATED COUNTERCLAIMS.
Plaintiff and Counterdefendant DR Systems, Inc. (DR Systems) moves for an order to compel Defendants and Counterclaimants Siemens Medical Solutions USA, Inc. and Siemens AG (collectively, Siemens) to supplement their responses to DR Systems' first sets of interrogatories and requests for production of documents and things (RFPs). While DR Systems has already received discovery on Siemens' Leonardo product, it now seeks to compel discovery on the syngo and SIENET products so that DR Systems can examine the interrelationship between these products and Leonardo. Alternatively, DR Systems requests leave of court to file amended final infringement contentions.
Siemens opposes the motion, arguing that Leonardo, syngo and SIENET are separate and distinct products. They say DR Systems is not entitled to discovery on the syngo and SIENET products because they did not identify those products as actual infringing products. Siemens says that DR Systems' discovery should be limited to only those products they identified in their infringement contentions.
The Court reviewed all documents filed in support of and in opposition to the motion. The Court found the issues suitable for decision without oral argument. Based on its review and analysis of the issues, the Court GRANTS DR Systems' motion to compel and DENIES without prejudice its alternative request for leave to amend its final infringement contentions.
DR Systems filed this action February 24, 2006 and alleged infringement of its '416 patent against Fujifilm Medical Systems USA, Inc. The '416 patent involves technology that provides systems and processes for presenting and viewing medical images generated by imaging devices such as x-ray, MRI, CAT and PET. These systems are also known as Picture Archival and Communications products, or PACS. PACS products are generally large networked computer systems designed for use by doctors in a hospital or clinical environment.
On April 11, 2006, DR Systems filed a first amended complaint and added Siemens and several other entities as defendants. Siemens filed an answer and counterclaim on June 27, 2006 and asserted three patents against DR Systems. The Siemens patents also relate to PACS products.
The Court held a case management conference and issued an initial scheduling order on August 10, 2006. [Doc. No. 89.] On August 22, 2006, DR Systems served its preliminary infringement contentions. Those preliminary contentions identified Siemens' Leonardo Workstation as an infringing product. Bovich Decl. Ex. B
On August 28, 2006, all defendants joined in a motion to phase discovery. They sought to limit discovery in Phase 1 to only claim construction discovery. [Doc. No. 107.] DR Systems did not object to phasing discovery. [Doc. No. 109.] The Court stayed all fact discovery not related to claim construction until after a ruling on claim construction. [Doc. No. 115.] The Court entered a claim construction ruling on the '416 patent on October 2, 2007. [Doc. No. 236.] The Court lifted the discovery stay on October 30, 2007. [Doc. No. 247.]
On November 5, 2007, DR Systems served its final infringement contentions on Siemens. Those final contentions expressly named only the Leonardo Workstation as an infringing product, but identified some other Siemens' products as potentially infringing products:
Since fact discovery has been stayed, DR Systems reserves the right to amend its contentions as necessary to incorporate additional infringing products revealed in discovery. For example, it is not clear from publicly available information and/or the documents produced thus far whether SYNGO, SIENET MagicView and SIENET MagicWeb are each a component of the Leonardo system, software applications and/or separate products used in conjunction with Leonardo systems. Because DR Systems has had virtually no discovery, it cannot determine the exact configuration and/or names for Siemens' accused products.
On December 14, 2007, DR Systems served interrogatories and RFPs on Siemens. Pl.'s Exs. D, E. The requests seek information regarding Siemens' PACS products that include physician preferences, one characteristic that DR Systems claims in the '416 patent. Siemens served responses to the discovery on February 4, 2008. Pl.'s Exs. F, G. Siemens limited its responses to address only the Leonardo Workstation and not other PACS products.
Meanwhile, sometime around April 2004, Siemens added "new and expanded applications" to syngo Multimodality Workstation, "renaming" the product to Leonardo. Pl.'s Ex. C, ¶ 1; Bowman Decl. ¶ 4. In February 2006, Siemens changed the name of the Leonardo Workstation to syngo Multimodality Workplace. Bowman Decl. ¶ 5. Siemens says that Leonardo and syngo Multimodality Workplace are the same product. In its disclosures and document productions in October and November 2006, Siemens produced approximately 15,000 pages work of manuals and materials for Leonardo and syngo Multimodality Workplace. Bovich Decl. ¶¶ 8, 10. On January 16, 2007, Siemens produced a 510(k) pre-market notification of Leonardo. ...