Synthes (USA) v. Spinal Kinetics Inc.

Filing 160

ORDER by Magistrate Judge Howard R. Lloyd granting in part and denying in part 134 Plantiffs' Motion to Compel Samples of the Accused Devices and Components Thereof. (hrllc2, COURT STAFF) (Filed on 2/25/2011)

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Synthes (USA) v. Spinal Kinetics Inc. Doc. 160 1 2 3 4 5 6 7 8 9 10 NOT FOR CITATION IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION SYNTHES USA, LLC (f/k/a SYNTHES (U.S.A.)); SYNTHES USA SALES, LLC; and SYNTHES, INC., Plaintiffs, v. SPINAL KINETICS, INC., Defendant. / 17 18 19 20 21 22 23 24 25 26 27 28 The samples and components in question are responsive to plaintiffs' Request for Production Nos. 86 and 87. (See Olson Decl. Ex. A). 1 *E-FILED 02-25-2011* United States District Court 11 For the Northern District of California No. C09-01201 RMW (HRL) ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFFS' MOTION TO COMPEL SAMPLES OF ACCUSED DEVICES AND COMPONENTS THEREOF [Re: Docket No. 134] 12 13 14 15 16 Plaintiffs Synthes USA, LLC (f/k/a Synthes (U.S.A.)), Synthes USA Sales, LLC, and Synthes, Inc. (collectively Synthes) move for an order compelling defendant to produce samples of the accused devices, as well as complete set of components for each device.1 Specifically, plaintiffs seek samples and components of defendant's M6-C ("classic" and "integrated" versions) and M6-L disc devices. Defendant Spinal Kinetics, Inc. (Spinal Kinetics) agrees to produce the requested samples and components. The parties, however, are unable to agree on what compensation, if any, defendant should receive for the requested production. Defendant argues that Synthes should be made to pay the reasonable commercial value for the devices--i.e., $3,300 per unit. Plaintiffs say that they previously offered to pay $1,000 per device--a sum that they believe is sufficient to cover defendant's reasonable costs. But, 1 2 3 4 5 6 7 8 9 10 because defendant insists on payment of the devices' commercial value, plaintiffs now contend that the court should, as a "minor penalty," order Spinal Kinetics to produce additional samples and components of each device for free. (Mot. at 5). Ordinarily, the responding party bears the expense of complying with discovery requests. OpenTV v. Liberate Techs., 219 F.R.D. 474, 476 (N.D. Cal. 2003). Nevertheless, the court retains broad discretion in managing discovery. See FED. R. CIV. P. 26(c) & (d). And, for good cause shown, this court may make any order protecting a party from any undue burden or expense, "including orders conditioning discovery on the requesting party's payment of the costs of discovery." OpenTV, 219 F.R.D. at 476. The requested samples indisputably are relevant. The parties disagree as to how readily the devices are available from other sources. But, there appears to be no dispute that, aside from defendant, the devices are available only through defendant's European distributors. The costs of production likely are small compared to the total amount in controversy. Defendant says that it is a small start-up company that is not readily able to absorb the cost of essentially giving away free samples of its devices to plaintiffs. It has not, however, provided declarations substantiating its claimed lack of operating profit. Nevertheless, defendant points out that (a) prior to this litigation, plaintiffs managed to acquire a sample of the devices abroad; and (b) defendant previously gave plaintiffs free samples of the M6-L and M6-C "integrated" devices. And, this court appreciates that these are devices which serve a medical need. As such, defendant should not bear the entire cost of production of these devices and components. Synthes' motion to compel is granted in part and denied in part as follows: Defendant shall produce the requested samples and components of its M6-L and M6-C ("classic" and "integrated" versions) within 7 days from the date of this order. Plaintiffs shall, upon receipt of the samples and devices, promptly tender to defendant payment of $1650 per device. To the extent Synthes wishes to provide supplemental expert reports based on testing and analysis of the produced samples, plaintiffs may need to find themselves seeking appropriate relief from United States District Court 11 For the Northern District of California 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2 1 2 3 4 Judge Whyte. SO ORDERED. Dated: February 25, 2011 HOWARD R. LLOYD 5 6 7 8 9 10 UNITED STATES MAGISTRATE JUDGE United States District Court 11 For the Northern District of California 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 3 1 2 3 5:09-cv-01201-RMW Notice has been electronically mailed to: Allan William Jansen Andre De La Cruz,,,, 4 Ehab Monsef Samuel 5 James W. Geriak 6 Jeffrey Martin Olson 7 Kurt Timothy Mulville 8 Matthew Spencer Jorgenson 9 Monte M.F. Cooper 10 Paul Howard Meier,,,,,,,, United States District Court 11 Robert W. Dickerson For the Northern District of California 12 Robert William Dickerson 13 Samuel N. Tiu 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 4 Counsel are responsible for distributing copies of this document to co-counsel who have not registered for e-filing under the court's CM/ECF program.

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