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 Order 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 DENYING MOTION FOR RELIEF FROM NONDISPOSITIVE
PRETRIAL ORDER OF MAGISTRATE JUDGE RE: DKT., 52
J. DAVILA UNITED STATES DISTRICT JUDGE
miscellaneous action filed pursuant to 28 U.S.C. § 1782,
Petitioners AIS GmbH Aachen Innovative Solutions and Abiomed
Europe GmbH (“Petitioners”) sought to obtain
discovery from Respondent Thoratec LLC
(“Respondent”) for use in foreign proceedings.
Petitioners' application was granted by the assigned
magistrate judge, and all of Respondent's objections to
producing discovery were eventually overruled.
now moves for relief from the magistrate judge's rulings.
Dkt. No. 52. Having carefully considered the relevant
pleadings and the parties' arguments, this court finds no
basis to disturb the orders authorizing discovery and
compelling production. Thus, Respondent's motion will be
denied for the reasons explained below.
FACTUAL AND PROCEDURAL BACKGROUND
are German companies which focus on developing technologies
designed to assist or replace the human heart. On May 4,
2016, Petitioners applied ex parte for an order pursuant to
§ 1782 for leave to serve a subpoena on Respondent,
which company also operates in the field of cardiac support
systems and maintains a principal place of business in
Pleasanton, California. Dkt. No. 1. Petitioners'
application was referred to Magistrate Judge Howard R. Lloyd.
N.D. Cal. Gen. Order No. 44(E)(3).
to their application, Petitioners sought to obtain discovery
related to patent infringement proceedings in Germany, filed
by Petitioners against Respondent and Thoratec Europe
Limited. The patents-in-suit in that action are European
Patents 2 047 872 B1, 2234 658 B1, and 1 651 290, and German
Patent DE 103 36 902, both of which are directed to
intracardiac blood pumps that can support the natural pumping
function of the heart. Petitioners allege in the German
proceedings that Respondent's HeartMate PHP percutaneous
heart pump infringes certain claims of their patents.
Respondent denies those allegations and contends the
HeartMate PHP does not practice all of the limitations of the
the subpoena itself, it required Respondent to produce a Rule
30(b)(6) witness for deposition and produce for inspection
samples of the HeartMate PHP along with technical information
describing the product. Petitioners represented in their
§ 1782 application that this information could not be
obtained in Germany, at least partially due to the fact that
Respondent had not begun commercial distribution of the
product in Europe.
informally learning of the Petitioners' application,
Respondent submitted a letter to Judge Lloyd requesting an
order vacating the § 1782 proceeding to allow the
parties to confer. Dkt. No. 14. Petitioners submitted a
letter in response. Dkt. No. 15. Judge Lloyd ultimately
granted Petitioners' application on July 1, 2016. Dkt.
No. 16. He found Petitioners had satisfied the requirements
of § 1782, observed that applications such as these are
typically considered on an ex parte basis, and explained that
Respondent could respond to the subpoena once served or move
to quash it. Judge Lloyd also ordered “in the event
discovery disputes arise, the parties shall comply with the
undersigned's Standing Order re Civil Discovery Disputes,
which (among other things) requires the submission of a joint
discovery letter brief, rather than a noticed motion.”
18, 2016, Respondent filed a motion to disqualify the
attorneys representing Petitioners at the time, and moved to
stay discovery pending resolution of that motion. Dkt. Nos.
19, 20. Petitioners retained new counsel to replace their
original attorneys on August 2, 2016, and Respondent withdrew
its motion to stay. Dkt. Nos. 22, 27. Judge Lloyd eventually
determined the motion to disqualify was moot in light of the
substitution of counsel. Dkt. No. 48.
the motion to stay was withdrawn, the parties proceeded to
file a series of pleadings documenting their discovery
disputes. They are summarized as follows:
In the first report (Dkt. No. 44), the parties disputed
whether Respondent must produce samples of the HeartMate PHP
in response to the subpoena. Petitioners argued the court had
already determined the appropriateness of its request;
Respondent argued Petitioners were circumventing German
discovery procedures and imposing an undue burden on
In the second report (Dkt. No. 45), the parties disputed
whether a production of samples should be made subject to a
protective order and, if so, what those terms should be.
Respondent sought imposition of a protective order limiting
access to in-house counsel, specifically excluding access to
Petitioners' former counsel, and imposing a patent
prosecution bar; Petitioners argued against a protective
order because the HeartMate PHP was already available for
sale in Europe.
In the third report (Dkt. No. 46), the parties disputed the
impact of a suspension of the German patent infringement
proceedings. Respondent stated that between courts in the
United Kingdom and Germany, all asserted claims of the
patents-in-suit were determined invalid, and the German
infringement proceedings were ordered stayed pending appeal.
Based on that, Respondent argued the statutory basis for
discovery had been eliminated. For their part, Petitioners
emphasized the stay imposed in the German infringement
proceedings was only temporary, and that the lack of a final
resolution meant the discovery sought could still be used in
In the fourth report (Dkt. No. 47), the parties disputed
whether a pause in clinical trials related to the HeartMate
PHP affected Petitioners' discovery request. Petitioner
argued that with HeartMate PHPs “sitting unused,
” producing samples would not harm or negatively impact
clinical trials; Respondent disagreed and claimed producing
discovery would disrupt its investigation into the
malfunction of one HeartMate PHP.
Lloyd issued a written ruling addressing the four discovery
reports on April 21, 2017. Dkt. No. 49. In essence, and
without repeating his reasoning, Judge Lloyd overruled all of
Respondent's objections to producing samples of the
HeartMate PHP to Petitioners, entered a protective order in
conjunction with the second joint report, and ordered