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In re Application of AIS GmbH Aachen Innovative Solutions & Abiomed Europe GmbH

United States District Court, N.D. California, San Jose Division

April 21, 2017

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

          HOWARD R. LLOYD United States Magistrate Judge


         Petitioners 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.

         Abiomed 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 they work.

         To that 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.

         Trying 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.

         Discovery Dispute Joint Report #1 (Dkt. 44)[1]

         In 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 instructions.

         In 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.

         Abiomed 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.

         None of 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?)

         Thoratec must produce to Abiomed what it has requested.

         Discovery Dispute Joint Report #2 (Dkt. 45)

         In DDJR #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 ...

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