Oracle Corporation et al v. SAP AG et al

Filing 795

Appendix of Authorities Cited in re 791 Defendants' Oppositions to Plaintiffs' Motions in Limine filed by SAP AG, SAP America Inc, Tomorrownow Inc. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16, # 17 Exhibit 17, # 18 Exhibit 18, # 19 Exhibit 19, # 20 Exhibit 20, # 21 Exhibit 21, # 22 Exhibit 22, # 23 Exhibit 23, # 24 Exhibit 24, # 25 Exhibit 25, # 26 Exhibit 26)(Related document(s) 791 ) (Froyd, Jane) (Filed on 8/19/2010) Modified on 8/20/2010 (vlk, COURT STAFF).

Oracle Corporation et al v. SAP AG et al

Doc. 795 Att. 3

TAB 3

Dockets.Justia.com

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LEXSEE 2008 U.S. DIST. LEXIS 104329 Baxter Healthcare Corporation, et al., Plaintiffs, v. Fresenius Medical Care Holding, Inc., Defendants. No. C 07-1359 PJH (JL) UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA 2008 U.S. Dist. LEXIS 104329 December 15, 2008, Decided December 15, 2008, Filed SUBSEQUENT HISTORY: Request granted Baxter Healthcare Corp. v. Fresenius Med. Care Holding, Inc., 2009 U.S. Dist. LEXIS 4178 (N.D. Cal., Jan. 13, 2009) PRIOR HISTORY: Baxter Healthcare Corp. v. Fresenius Med. Care Holding, Inc., 2008 U.S. Dist. LEXIS 104328 (N.D. Cal., Dec. 15, 2008) COUNSEL: [*1] For Baxter Healthcare Corporation, Plaintiff: David K. Callahan, Jared Egan Hedman, Michael Ira Cohen, Robin Ann McCue, Serena Jean Gondek, LEAD ATTORNEYS, Helen Istvan Odom, LEAD ATTORNEY, PRO HAC VICE, Kirkland & Ellis, LLP, Chicago, IL; Garret Alan Leach, Mary Elizabeth Zaug, LEAD ATTORNEYS, Aaron D. Charfoos, Kirkland & Ellis, Chicago, IL; Kenneth Howard Bridges, LEAD ATTORNEY, Kirkland & Ellis, San Francisco, CA; Matthew James Shiels, LEAD ATTORNEY, PRO HAC VICE, Meredith Lee Krannich, Reid Phillip Huefner, LEAD ATTORNEYS, Bryce Alison Mautner, Chicago, IL; Michael Meir Rosen, San Diego, CA; Robert G Krupka, Kirkland & Ellis, Los Angeles, CA; Sam Baxter, McKool Smith PC, Marshall, TX. For Deka Products Limited Partnership, Plaintiff: Howard Alan Slavitt, Rachel Georgia Cohen, LEAD ATTORNEYS, Coblentz Patch Duffy & Bass LLP, San Francisco, CA; Maureen Katherine Toohey, LEAD ATTORNEY, Toohey Law Group, Boston, MA; Sam Baxter, LEAD ATTORNEY, McKool Smith PC, Marshall, TX; Jared Egan Hedman, Kirkland & Ellis LLP, Chicago, IL; Michael Meir Rosen, San Diego, CA. For Baxter International Inc., Baxter Healthcare SA, Plaintiffs: Helen Istvan Odom, LEAD ATTORNEY, PRO HAC VICE, David K. Callahan, [*2] Serena Jean Gondek, Kirkland & Ellis, LLP, Chicago, IL; Matthew James Shiels, LEAD ATTORNEY, PRO HAC VICE, Chicago, IL. For Fresenius Medical Care Holdings Inc., doing business as Fresenius Medical Care North America, Defendant: Jack Wesley Hill, LEAD ATTORNEY, Ireland Carroll & Kelley PC, Tyler, TX; Juanita R. Brooks, LEAD ATTORNEY, Todd Glen Miller, Fish & Richardson P.C., San Diego, CA; Mathias W. Samuel, LEAD ATTORNEY, Fish & Richardson P.C., P.A., Minneapolis, MN; Michael E. Florey, LEAD ATTORNEY, Rebecca L. Shult, PRO HAC VICE, Fish & Richardson P.C., Minneapolis, MN; Thomas M. Melsheimer, LEAD ATTORNEY, Fish & Richardson P.C., Dallas, TX; Limin Zheng, Fish & Richardson P.C., Redwood City, CA; Michael Meir Rosen, San Diego, CA. For Fresenius USA Inc., Defendant: Jack Wesley Hill, LEAD ATTORNEY, Ireland Carroll & Kelley PC, Tyler, TX; Juanita R. Brooks, LEAD ATTORNEY, Todd Glen Miller, Fish & Richardson P.C., San Diego, CA; Michael E. Florey, LEAD ATTORNEY, Rebecca L. Shult, PRO HAC VICE, Fish & Richardson P.C., Minneapolis, MN; Thomas M. Melsheimer, LEAD ATTORNEY, Fish & Richardson P.C., Dallas, TX; Limin Zheng, Fish & Richardson P.C., Redwood City, CA; Mathias W. Sam-

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uel, Fish & [*3] Richardson P.C., P.A., Minneapolis, MN; Michael Meir Rosen, San Diego, CA. For Fresenius Medical Care Holdings Inc., Fresenius USA Inc., Counter-claimants: Juanita R. Brooks, LEAD ATTORNEY, Fish & Richardson P.C., San Diego, CA; Limin Zheng, Fish & Richardson P.C., Redwood City, CA. For Baxter Healthcare Corporation, Counter-defendant: David K. Callahan, LEAD ATTORNEY, Serena Jean Gondek, Jared Egan Hedman, Kirkland & Ellis, LLP, Chicago, IL; Aaron D. Charfoos, Kirkland & Ellis, Chicago, IL; Kenneth Howard Bridges, LEAD ATTORNEY, Kirkland & Ellis, San Francisco, CA; Robert G Krupka, Kirkland & Ellis, Los Angeles, CA. For Deka Products Limited Partnership, Counter-defendant: Emily Jessica Schaffer, LEAD ATTORNEY, Bromberg & Sunstein LLP, Boston, MA; Howard Alan Slavitt, LEAD ATTORNEY, Coblentz Patch Duffy & Bass LLP, San Francisco, CA; Jared Egan Hedman, Kirkland & Ellis, LLP, Chicago, IL. For Baxter International Inc., Baxter Healthcare SA, Baxter Healthcare Corporation, Counter-defendants: David K. Callahan, Serena Jean Gondek, Kirkland & Ellis, LLP, Chicago, IL. For Fresenius USA Inc., Fresenius Medical Care Holdings Inc., Counter-claimants: Todd Glen Miller, Fish & Richardson P.C., San [*4] Diego, CA. JUDGES: JAMES LARSON, Chief Magistrate Judge. OPINION BY: JAMES LARSON OPINION ORDER DENYING BAXTER'S MOTION TO COMPEL FURTHER RESPONSE TO INTERROGATORY NO. 11 (Docket # 221) Introduction This Court received the parties' joint statement regarding Baxter's motion to compel a further response from Fresenius to Baxter's Interrogatory 11. All discovery has been referred by the district court (Hon. Phyllis J. Hamilton), pursuant to 28 U.S.C. §636(b). The Court finds the matter to be suitable for submission without oral argument pursuant to Civil Local Rule 7-1(b). Argument

Defendants' Liberty Cycler is accused of patent infringement in this case. For the past several years, and during the entire time that this litigation has been pending, the Liberty Cycler has undergone extensive changes during development and patient testing. Defendants have added and removed hardware and functions, modified the software (at least 700 times), and used variuos versions of the Liberty Cycler during at least four different patient testing periods. Baxter argues that it is entitled to know with certainty, which infringing Liberty Cycler features and characteristics were included in each different version of the Liberty Cycler at [*5] any given point in time. Given that Defendants produced more than 2,500,000 pages of documents in this case, Baxter served Interrogatory 11 which asked Defendants to identify (by Bates number) specific categories of documents (e.g., manuals, drawings, schematics, engineering change orders, bills of materials, parts lists, and software) that correspond with each distinct--and potentially infringing--version of the Liberty Cycler that was sold, leased, offered for sale, used, tested, etc. Baxter asks the Court to find that Defendants' response was deficient and to order a further response. Baxter argues that Defendants' response to its Interrogatory 11 is deficient because it improperly relies upon Rule 33(d), Federal Rules of Civil Procedure, and because, even if proper, the tens of thousands of pages cited is not sufficient to fully respond to the Interrogatory and Defendants admit that the production of remaining documents will not occur for at least another three weeks. During the parties' December 4, 2008, meet and confer, Defendants denied that their response was improper while also admitting that: (1) the entire design history file has not yet been produced; (2) "other potentially [*6] relevant documentation...separate from the DHF" which is necessary to identify the document citations requested in Interrogatory 11 has not yet been produced; and (3) Defendants will now produce the complete design history file and other "potentially relevant documentation" necessary to respond to Interrogatory 11. A "design history file" is made up of historical records that document the development of a medical device over time. This record is used to prove compliance with FDA regulations and, as such, is subject to an audit by the FDA at any time. Baxter argues that it is far less burdensome for Defendants than it is for Baxter to provide the answer to Interrogatory 11. Defendants' merely listing tens of thousands of pages, pursuant to Rule 33(d), is improper. Accordingly, Baxter asks the Court to compel Defendants to respond further to Interrogatory 11 and identify each requested document by individual Bates numbers

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that correspond to the different versions of the Liberty Cyclers. Fresenius argues that Rule 33(d) permits it to respond to this interrogatory by "specifying the records that must be reviewed in sufficient detail to enable the interrogating party to locate and identify [*7] them as readily as the responding party could." Fed. R. Civ. P. 33(d). Fresenius did precisely this by directing Baxter to the Design History File ("DHF") for the Liberty, a comprehensive, well-organized collection of relevant documentation containing everything Plaintiffs seek in their interrogatory. In response to Plaintiffs' discovery requests, Fresenius provided the entire DHF prior to commencement of formal discovery in this case, and that production was updated in August of this year. In addition, Fresenius produced to Baxter the Individual Device History Files ("IDHF") for each and every version of the Liberty Cycler. The IDHF's identify when the individual device was built and any subsequent modifications to the device. As Fresenius explained in its interrogatory response, armed with the build date for each device, Baxter can identify for itself-- in precisely the same manner that Fresenius would do so--the information requested by its Interrogatory No. 11, because all of the approved (known as "ECO'd") documents concerning the Liberty Cycler are dated. Fresenius argues that Plaintiffs can obtain the requested information relating to any particular Liberty Cycler by identifying [*8] the cycler's build date from the documents produced [IDHF's and other documents] and testimony obtained, and then locating within the production the hardware and software versions ECO'd immediately preceding that build date.) Baxter's motion fails to make clear that its interrogatory calls for the identification of literally thousands of documents for each of the many versions of the Liberty Cycler that have been used since early developmental testing of the product. Essentially, Baxter asks Fresenius to prepare massive charts correlating the thousands of documents that are responsive to this request with each of the numerous product builds. The burden of

that exercise, while massive and unnecessary, is the same for Baxter as it is for Fresenius. See United States ex rel Englund v. Los Angeles County, 235 F.R.D. 675, 680 (E.D. Cal. 2006) ("[W]here the information is contained in business records and answering the question would require the responding party to engage in burdensome or expensive research, the responding party may answer by specifying the records from which the answer may be obtained."). Fresenius does not maintain this information in this form. Instead, before responsibilities [*9] for the Liberty were transferred from R&D to manufacturing, this information was maintained in chronological order in the DHF and in an electronic database. The Bates ranges for the DHF production and for the IDHF within Fresenius' production have been identified, and any additional relevant documents will be identified for Baxter once produced. Fresenius contends that by following the method described above and in the interrogatory response, Baxter can easily categorize the documents in the manner it desires. As Plaintiffs have recognized in their own interrogatory responses, Rule 33(d) makes it entirely appropriate to shift the burden of that exercise to the requesting party when, as here, "the burden of deriving or ascertaining the answer will be substantially the same for either party." Conclusion and Order This Court finds that the burden of ascertaining the information responsive to Interrogatory 11 would be substantially the same for either party. Accordingly, Fresenius has properly made use of the business records option in responding to the interrogatory and Baxter's motion is be denied. IT IS SO ORDERED. DATED: December 15, 2008 /s/ James Larson JAMES LARSON Chief Magistrate Judge