United States District Court, N.D. California
DISCOVERY ORDER Re: Dkt. No. 91
MARIA-ELENA JAMES United States Magistrate Judge
Nevro Corp. (“Nevro”) and Defendants Boston
Scientific Corporation and Boston Scientific Neuromodulation
Corporation (together, “BSC”) filed a Joint
Letter concerning Nevro's ability to disclose certain
confidential information to its in house counsel and
Nevro's request that BSC supplement certain records. Jt.
Ltr., Dkt. No. 91. Having considered the parties'
positions, the relevant legal authority, and the record in
this case, the Court issues the following order.
patent infringement action concerns Nevro's spinal cord
stimulation (“SCS”) therapy, used to treat
chronic pain. See Compl., Dkt. No. 1.
“Traditional SCS therapy delivers „low
frequency' electrical pulse waveforms . . . to generate a
sensation known as paresthesia.” Id. ¶ 3.
Paresthesia, which is experienced as a tingling, numbness,
buzzing, or pins-and-needles sensation, masks the
patient's pain. Id.
alleges it developed and patented the Senza system, “an
SCS therapy that differs dramatically from traditional SCS
therapy”: by using a “high frequency”
electrical waveform, Nevro's SCS therapy provides pain
relief without generating paresthesia. Id. ¶ 5;
see Id. ¶ 19. On May 8, 2015, the U.S. Food and
Drug Administration (“FDA”) approved Nevro's
Senza system for sale in the United States. Id.
¶¶ 7, 22.
contends BSC “is now aggressively trying to mimic
Nevro's SCS therapy” and initiated a clinical trial
that uses SCS devices that operate at the same electrical
frequency as Nevro's SCS system, and that BSC's
devices infringe Nevro's patents. Id. ¶ 8;
see Id. ¶¶ 30-31. Nevro further alleges
BSC manufactures and/or sells these infringing in the United
States, the United Kingdom, and the Netherlands. Id.
¶¶ 40, 43. Nevro asserts six claims for patent
infringement and six declaratory judgment claims for
infringement of those patents. Id. ¶¶
Rule of Civil Procedure 26 provides that a party 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[.]” Fed.R.Civ.P. 26(b)(1).
Factors to consider include “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.”
Id. Discovery need not be admissible in evidence to
be discoverable. Id. However, “[t]he parties
and the court have a collective responsibility to consider
the proportionality of all discovery and consider it in
resolving discovery disputes.” Fed.R.Civ.P. 26 advisory
committee notes (2015 amendments). Thus, there is “a
shared responsibility on all the parties to consider the
factors bearing on proportionality before propounding
discovery requests, issuing responses and objections, or
raising discovery disputes before the courts.”
Salazar v. McDonald's Corp., 2016 WL 736213, at
*2 (N.D. Cal. Feb. 25, 2016); Goes Int'l, AB v. Dodur
Ltd., 2016 WL 427369, at *4 (N.D. Cal. Feb. 4, 2016)
(citing advisory committee notes for proposition that parties
share a “collective responsibility” to consider
proportionality and requiring that “[b]oth parties . .
. tailor their efforts to the needs of th[e] case”).
26(c) “confers broad discretion on the trial court to
decide when a protective order is appropriate and what degree
of protection is required.” Seattle Times Co. v.
Rhinehart, 467 U.S. 20, 36 (1984). “The court may,
for good cause, issue an order to protect a party or person
from annoyance, embarrassment, oppression, or undue burden or
expense, ” including by (1) prohibiting disclosure or
discovery; (2) conditioning disclosure or discovery on
specified terms; (3) preventing inquiry into certain matters;
or (4) limiting the scope of disclosure or discovery to
certain matters. Fed.R.Civ.P. 26(c)(1).
Disclosures to In House Counsel
may not deny access to confidential information solely on the
basis of counsel's in-house or retained status. U.S.
Steel Corp. v. United States, 730 F.2d 1465, 1467-68
(Fed. Cir. 1984). “Denial or grant of access . . .
cannot rest on a general assumption that one group of lawyers
are more likely or less likely inadvertently to breach their
duty under a protective order.” Id. at 1468.
Rather, “the factual circumstances surrounding each
individual counsel's activities, association, and
relationship with a party, whether counsel be in-house or
retained, must govern any concern for inadvertent or
accidental disclosure.” Id. Denial of access
may be appropriate in some instances; for example,
“where in-house counsel are involved in competitive
decisionmaking, it may well be that a party seeking access
should be forced to retain outside counsel or be denied the
access recognized as needed.” Id.
seeks to disclose a “specific high level summary”
of information that BSC designated as “Confidential -
Attorneys' Eyes Only” to Peter Socarras,
Nevro's Senior Director of Intellectual Property. Jt.
Ltr. at 3. Socarras is presumably involved with Nevro's
competitive decision-making. See Id. at 3
(“Nevro has five in-house counsel. . . . It does not
have counsel who can run this suit who is not involved in
competitive decision-making.”). Nevro argues Socarras
needs this information so Nevro can make strategic decisions
about this lawsuit. Id. at 1. BSC disputes the