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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

July 21, 2017

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



         In this 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.

         Respondent 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.


         Petitioners 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).

         According 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 patents-in-suit.

         As to 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.

         After 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.”

         On July 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.

         After 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 Respondent.

         • 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 those proceedings.

         • 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.

         Judge 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 ...

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