United States District Court, N.D. California, San Jose Division
In re Application of AIS GMBH AACHEN INNOVATIVE SOLUTIONS & ABIOMED EUROPE GMBH, Petitioners, for an Pursuant to 28 U.S.C. § 1782 to Take Discovery for Use in Foreign Proceedings, Pursuant to the Federal Rules of Procedure, of Respondent Thoratec LLC
ORDER RE DISCOVERY DISPUTE JOINT REPORTS NOS. 1-4 RE:
DKT. NOS. 38, 44, 45, 46, 47
R. LLOYD United States Magistrate Judge
AIS GmbH Aachen Innovative Solutions and Abiomed Europe GmbH
(collectively, “Abiomed”) seek an order
compelling Thoratec, LLC (“Thoratec”) to produce
discovery responsive to a subpoena this court authorized
under 28 U.S.C. § 1782.
holds the German parts of certain European patents covering
intracardial blood pumps. The Abiomed pumps are said to have
certain unique features, such as a magnetic clutch and a
flexible projection called a pigtail tip. Abiomed is suing
Thoratec in four separate patent actions in Germany, claiming
that Thoratec's HeartMate PHP pumps contain all the
limitations of the Abiomed patents in issue. Thoratec denies
any infringement. To test that defense, Abiomed wants to
obtain samples of the accused products to see exactly how
end, Abiomed petitioned this court for an order authorizing
discovery. Section 1782 authorizes that, upon the application
of an “interested person, ” this Court may order
any person in this District to produce documents or give
testimony “for use” in a proceeding in a foreign
or international tribunal. The court found that Abiomed's
request complied with the statute, met the factors to be
considered under section 1782, and allowed the subpoena.
Basically, the subpoena sought 5 sample HeartMate PHP devices
along with an operating console and any required hardware,
technical drawings and specifications, documents to and from
any regulatory body, plus safety and testing information.
Thoratec did not move to quash the subpoena, but it objected
and refused to produce anything.
for a compromise, Abiomed dialed back the scope of the
subpoena: 3 HeartMate PHP devices, a controller to operate
the devices (on a 30 day loan), 3 of any other products or
hardware needed to operate them, and instructions for use.
Thoratec said “no, ” and suggested that Abiomed
should be satisfied with product specifications.
Dispute Joint Report #1 (Dkt. 44)
Discovery Dispute Joint Report (“DDJR”) #1,
Abiomed asks for an order compelling Thoratec to turn over
what it offered to take in compromise: the 3 HeartMate PHP
devices, controller, necessary hardware, and operating
opposition, Thoratec says, without offering any actual data,
that supply is limited and giving 3 HeartMate PHP's to
Abiomed would mean forgoing or delaying treatment for 3 heart
patients who need one. Apparently, the HeartMate devices are
in use in Europe, and there is a clinical trial going on in
the United States. Thoratec foresees a “potential
disruption to obtaining clinical data necessary for
regulatory approval.” Anyway, says Thoratec, Abiomed
would get everything it wants to know from documents (which
had not been produced) without imposing on Thoratec the
“undue burden” of giving up three of the actual
devices. Furthermore, Thoratec argues that Abiomed failed to
avail itself of certain limited discovery procedures that
were, reportedly, available under German law, so it is not
fair that it wants to take advantage of more liberal
discovery opportunities in this court.
says it would gladly buy three of the devices, but they are
not on offer anywhere. Thoratec was asked but is
“mum” on where or how the devices might be
purchased. And, Abiomed argues that it really needs to see
just how the mechanical devices operate, an insight it would
not get from looking at specifications.
Thoratec's arguments are persuasive. Surely, Abiomed
should have samples of the allegedly infringing devices, and
the only place it can get them is from Thoratec. Abiomed is
not playing unfair by skipping what little discovery might be
available to it under German law. The “undue
burden” argument is painfully short of factual support
(i.e., what is the weekly output of new devices, what is the
inventory stock, what quantities are needed going forward,
and the like?)
must produce to Abiomed what it has requested.
Dispute Joint Report #2 (Dkt. 45)
#2 the parties, in anticipation that the court might order
Thoratec to turn over to Abiomed samples of the accused
device, disagree on whether there should be a protective
order and, if so, what should ...