Sunrise Medical (US) LLC v. Permobil Holding AB et al

Filing 31

ORDER granting 25 Plaintiff Sunrise's Motion to Compel Discovery from Permobil, as set forth in the Order, by Magistrate Judge Michael J. Watanabe on 2/7/2012.(mjwcd)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Civil Action No. 11-cv-01560-CMA-MJW
SUNRISE MEDICAL (US) LLC,
Plaintiff(s),
v.
PERMOBIL HOLDING AB,
PERMOBILE AB, and
PERMOBIL INC.,
Defendant(s).

ORDER REGARDING
PLAINTIFF SUNRISE’S MOTION TO COMPEL DISCOVERY FROM PERMOBIL
(DOCKET NO. 25)

Entered by Magistrate Judge Michael J. Watanabe

This matter is before the court on Plaintiff Sunrise’s Motion to Compel Discovery
from Permobil (docket no. 25). The court has reviewed the subject motion (docket no.
25), the response (docket no. 28), and the reply (docket no. 30). In addition, the court
has taken judicial notice of the court file and has considered applicable Federal Rules of
Civil Procedure and case law. The court now being fully informed makes the following
findings of fact, conclusions of law, and Order.
Plaintiff Sunrise seeks an Order from this court compelling Defendant Permobil to
supplement its response to Plaintiff Sunrise’s Interrogatory No. 10 and to respond fully
to Plaintiff Sunrise’s Request for Production of Documents Nos. 6, 9, and 11.
This is a declaratory judgment and patent infringement case involving the 307

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Patent which covers a seat and base for a power wheelchair. Plaintiff Sunrise contends
that the 307 Patent is invalid and not infringed. Defendant Permobil’s counterclaim
alleges patent infringement. In the counterclaim, Defendant Permobil contends that
Plaintiff Sunrise’s acts of infringement have been wilful. Defendant Permobil further
contends in its counterclaim that it is entitled to an injunction and damages, including
treble damages and attorney’s fees, for Plaintiff Sunrise’s infringement. Defendant
Permobil seeks a declaratory judgment from this court of non-infringement and
invalidity. Defendant Permobil also contends that its wheelchairs have been and are
commercially successful because of the patented features of its seats (as opposed to its
unpatented bases), and that all or a portion of the profit generated by sales of its
wheelchairs is attributable to the patented features of it seats (as opposed to its
unpatented bases).
FINDINGS OF FACT AND CONCLUSIONS OF LAW
The court finds:
1.

That I have jurisdiction over the subject matter and over the parties
to this lawsuit;

2.

That venue is proper in the state and District of Colorado;

3.

That each party has been given a fair and adequate opportunity to
be heard;

4.

That Rule 26(b)(1) of the Federal Rules of Civil Procedure defines
the scope of discovery as follows:
Unless otherwise limited by court order, the scope of
discovery is as follows: Parties may obtain discovery
regarding any nonprivileged matter that is relevant to

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any party’s claim or defense–including the existence,
description, nature, custody, condition, and location of
any documents or other tangible things and the
identity and location of persons who know of any
discoverable matter. For good cause, the court may
order discovery of any matter relevant to the subject
matter involved in the action. Relevant information
need not be admissible at the trial if the discovery
appears reasonably calculated to lead to the
discovery of admissible evidence. All discovery is
subject to the limitations imposed by Rule 26(b)(2)(C).
Fed. R. Civ. P. 26(b)(1). However, “a party’s right to obtain
discovery of ‘any matter, not privileged, that is relevant to the claim
or defense of a party’ . . . may be constrained where the court
determines that the desired discovery is unreasonable or unduly
burdensome given the needs of the case, the importance of the
issues at stake in the litigation, and the importance of the proposed
discovery in resolving the issues.” Simpson v. University of Colo.,
220 F.R.D. 354, 356 (D. Colo. 2004). “The Federal Rules of Civil
Procedure permit a court to restrict or preclude discovery when
justice requires in order to protect a party or person from
annoyance, embarrassment, oppression, or undue burden or
expense. . . .” Id. See Fed. R. Civ. P. 26(b) and (c);
5.

That as to Plaintiff Sunrise’s Interrogatory No. 10, Defendant
Permobil’s objection that such Interrogatory is premature and calls
for legal conclusions is overruled, noting the counterclaim brought
by Defendant Permobil; and

6.

That as to Plaintiff Sunrise’s Requests for Production of Documents

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(“RFP”) 6, 9, and 11, they seek information showing unit and dollar
sales and profitability of Defendant Permobil’s wheelchairs that use
the patented seat design, and linking the sales and profitability to
specific seat/base combinations. I find that the information sought
in Plaintiff Sunrise’s RFPs Nos 6, 9, and 11 are discoverable and
directly relevant to whether any commercial success of the
Defendant Permobil’s wheelchairs is attributable to features other
than the patented seat - e.g., features provided by the different
bases used with the patented seat. Such information is necessary
to determine what profits, if any, are attributable to the patented
seat as opposed to the base. Plaintiff Sunrise’s RFPs Nos. 6, 9,
and 11 seek information concerning sales and profitability of
Defendant Permobil’s seat/base combinations. See Ormco Corp.
v. Align Technology, Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006)
(holds that to rebut a claim that the patented invention is invalid as
obvious [a claim that Plaintiff Sunrise makes in this suit],
commercial success must be due to the patented features and
cannot be due to unpatented features). Lastly, regarding
Defendant Permobil’s argument that such information requested
outlined above is “highly sensitive,” I find that such information can
be adequately protected per the protective order (docket no. 21)
entered by this court on September 23, 2011.

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ORDER
WHEREFORE, based upon these findings of fact and conclusions of law this
court ORDERS:
1.

That Plaintiff Sunrise’s Motion to Compel Discovery from Permobil
(docket no. 25) is GRANTED. Defendant Permobil shall provide to
Plaintiff Sunrise a supplemental response to Plaintiff Sunrise’s
Interrogatory No. 10 on or before February 24, 2012. Defendant
Permobil shall fully respond to Plaintiff’s Sunrise’s Requests for
Production of Documents 6, 9, and 11 on or before February 24,
2012;

2.

That the responses to the above discovery requests shall be
subject to the written protective order (docket no. 21) entered by
this court on September 23, 2011; and

3.

That each party shall pay their own attorney fees and costs for this
motion. I find that under the facts and circumstances of this
discovery dispute an award of expenses would be unjust.
Done this 7th day of February 2012.
BY THE COURT

s/Michael J. Watanabe
MICHAEL J. WATANABE
U.S. MAGISTRATE JUDGE