St. Jude Medical et al v. Volcano Corporation

Filing 225

MEMORANDUM OPINION Overruling 139 Objections to 136 Order. Signed by Judge Richard G. Andrews on 6/5/2012. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
ST. JUDE MEDICAL, et al.,
Plaintiffs,
v.

Civil Action No. 10-631-RGA

VOLCANO CORPORATION,
Defendant.

MEMORANDUM OPINION
Steven J. Fineman, Esq., Richards, Layton & Finger, Wilmington, Delaware; Drew M.
Wintringham, Esq. (argued), DLA Piper LLP, New York City, New York; Attorneys for
Plaintiffs.
Thomas L. Halkowski, Esq., Fish & Richardson, Wilmington, Delaware; Michael; M.
Rosen, Esq. (argued), Fish & Richardson, San Diego, California; Attorneys for Defendant.

S

June
,2012
Wilmington, Delaware

-1

I
r

j(
~
;

The Plaintiffs have filed objections (D.I.139) to a decision ofthe United States Magistrate
Judge. (D.I. 136). The Defendant has responded. (D.I. 151). And so on. (D.I. 164, 177). The
Court has heard argument on the objections. (D.I. 220). The matter is now before this Court for
a decision.
The Magistrate Judge had authority to make the decision pursuant to 28 U.S.C. §
636(b)(1 )(A), which provides that "a [district] judge may designate a magistrate judge to hear
and determine any pretrial matter pending before the court [other than certain specified matters
including injunctive relief, judgment on the pleadings, summary judgment, class action status,
Rule 12(b)(6) motions, and involuntary dismissal]." Such a designation was made in regard to
discovery. (D.I. 19, ~5(g)). The decision is subject to review pursuant to 28 U.S.C. §
636(b)(1 )(A), which further provides that the district judge "may reconsider any pretrial matter ..
. where it has been shown that the magistrate judge's order is clearly erroneous or contrary to
law."
Thus, findings of fact are reviewed for clear error. Review of the factual determinations
is limited to the record that was before the magistrate judge. Determinations of applicable legal
standards are reviewed for error. There are also decisions that involve the exercise of discretion,
and discretionary decisions are reviewed for abuse of discretion. "This deferential standard of
review is 'especially appropriate where the Magistrate Judge has managed this case from the
outset and developed a thorough knowledge ofthe proceedings.'" Cooper Hospital/University

Med. Ctr. v. Sullivan, 183 F.R.D. 119, 127 (D.N.J. 1998) (quoting another District ofNew Jersey
case).
The instant matter involves the Magistrate Judge's decision in regard to a discovery

I

I

dispute. The Magistrate Judge has excluded certain prior art evidence for discovery violations.
The Magistrate Judge has managed this case for more than a year. She has a thorough
knowledge of the proceedings. The parties had as of the date of the oral argument "been before
[the Magistrate Judge] on eleven different motions." (D.I. 220, p. 37.) 1 This seems the
prototypical case in which deference to the Magistrate Judge's decision is appropriate.
The Plaintiffs provided extensive factual information with their expert disclosures on
February 1, 2012. (D.I. 151, ~~ 6-8, 14-15). It was their conscious choice to do so. (See D.I. 220,
p.67, ll. 4-6). The Court's scheduling order provided that: "All fact discovery shall be
commenced in time so as to be completed by November 4, 2011." (D.I. 19, p. 2).

Plaint~ffs

did

not start looking for relevant prior art factual information in regard to their invalidity arguments
about the Defendant's '994 patent until October 18, 2011. (D.I. 220, p. 36; D.I. 140, ~ 10).
Plaintiffs' invalidity contentions (dated August 1, 2011) were useless in terms of giving
Defendant any information about what theories they would actually pursue, as they included as
invalidating prior art 100 patents, 21 publications, and 92 prior art systems. (D.I. 151, Exh. A,
pp. 13-21; D.I. 171-3, p.88 ("it was up to [the Plaintiffs] to narrow them down and to provide and
update factual based discovery and information prior to the time fact discovery closed."));
Buried amidst these invalidating prior art references were the "EP MedSystems Workmate
System" and the "GE Prucka Cardiolab 4000/7000 Systems." (D .I. 151, Exh. A, pp. 17-18).
In my opinion, the Magistrate Judge's decision that the Plaintiffs had violated the
scheduling order (D.I. 19) was not clearly erroneous, and the decision to exclude the prior art

1

Some of these appearances were after the ruling at issue. Some of them may have been
on the papers. The Court's review of the docket confirms, at a minimum, teleconferences and/or
arguments on discovery issues on February 11, 2011, September 29, 2011, and November 7,
2011.

1

I

(including the videotape of the Prucka Cardiolab (see D.I. 151, Exh. 2, ~8; D.I. 171-3, p.$9), the
used Prucka Cardiolab system (same), and the EP Workmate source code and related documents
(see D.I. 151, Exh. 2,

~~

t

12-14; D.I. 171-3, p.89)), which sanction was tailored to the nature and

extent of the violation, was not an abuse of discretion. 2 See Meyers v. Pennypack Woods Home
Ownership Ass 'n, 559 F.2d 894, 904 (3d Cir. 1977).

Thus, the objections (D.I. 139) are OVERRULED.

2

I
I

It is worth noting the obvious: (1) I do not have the history with this case that the
Magistrate Judge has; and (2) I therefore cannot say that I would, or would not, have impqsed the
same sanction that the Magistrate Judge imposed. All I am holding is that, given the wide range
of discretion committed to the Magistrate Judge on discovery issues, I do not think that di~cretion
was abused.

r

I

I
I