Minerva Surgical, Inc. v. Hologic, Inc. et al

Filing 191

MEMORANDUM AND ORDER - IT IS ORDERED: The Magistrate Judge's oral order (D.I. #152 -2) is affirmed. The defendants' objections (D.I. #152 ) are denied. The Magistrate Judge's oral order is adopted in all respects. Signed by Judge Joseph F. Bataillon on 10/11/2019. (amf)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
MINERVA SURGICAL, INC.
Plaintiff/Counterdefendant,

C.A. No. 18-00217-JFB-SRF

vs.
MEMORANDUM & ORDER
HOLOGIC, INC. and CYTYC SURGICAL
PRODUCTS, LLC,

Defendants/counterclaimants.

Defendants Hologic, Inc., and Cytyc Surgical Products, LLC (collectively,
“Hologic”) object to the Magistrate Judge’s May 20, 2019, oral order (D.I. 152-2)
denying Hologic’s motion for a protective order as to certain 30(b)(6) deposition topics,
requests for production of documents, and depositions of Hologic’s employees. (D.I.
145). This is an action for patent infringement under 35 U.S.C. § 101, et seq.
I.

BACKGROUND
This is the second case between these parties relating to endometrial ablation

technologies. The first case, Hologic, Inc., et al. v. Minerva Surgical, Inc., C.A. No. 151031-JFB-SRF (“Minerva I”), involved Hologic’s NovaSure CLASSIC device, and
alleged infringement of U.S. Patent Nos. 6,872,183 (“the ’183 Patent”) and 9,095,348
(“the ’348 Patent”). The Court granted Hologic’s motion for summary judgment on the
issue of infringement and the action proceeded to trial by a jury on the issue of Hologic’s
patent infringement damages and Minerva’s Lanham Act and breach of contract claims
(Minerva I, D.I. 407, 408 and 498). At trial, Hologic prevailed on the merits of Minerva’s

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Lanham Act false advertising and unfair competition claims.

Id., D.I. 498.

In the

present action, Minerva alleges infringement of U.S. Patent No. 9,186,208 (“the ’208
patent”) by Hologic’s NovaSure ADVANCED device.
The discovery dispute between the parties involves testimony and discovery
about communications with the Food and Drug Administration (“FDA”) on efficiency
rates and changes to Hologic’s website regarding efficacy data.

Specifically, the

dispute centers on Topics 14 and 23 of Hologic’s motion for a protective order.1 D.I.
145. Hologic moved for a protective order, arguing the topics of post-approval FDA
communications and subsequent changes to Hologic’s website had been found to be
irrelevant in Minerva I, which involved broader issues than the patent infringement
action asserted in this case. In Minerva I, Minerva sought discovery on those topics in
connection with the deceptive practices claim, which is not at issue in this case.
The Magistrate Judge found the requested discovery relevant to Minerva’s
burden of proof with respect to lost profits damages, impliedly adopting Minerva’s
argument that the efficacy rates and marketing were relevant to the nature of the market
and competition in the market for determination of lost profits damages. Id. at 20-23,
28. The Magistrate Judge states:
I agree that exploring the why in relation to the change in efficacy rates
following communications with the FDA occurred. Whether or not any of
this information will ultimately be admissible at trial is another matter for
another day, but I believe based on what I've read in the papers and what
I've heard in this oral argument, that is relevant to Minerva's obligation to
and burden of proof with respect to lost profits[.]
(Id. at 23)
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Also, at issue are Topic Nos. 15-17 and 19-20, Request for Production No. 28, and Third-Party
Document Request Nos. 13-14. Hologic conceded at the hearing that the resolution of Topics 14 and 23
would be dispositive of the remaining 30(b)(6) deposition topics and document requests at issue in
Hologic’s Objections. D.I. 152-2 at 23-24, 29-30.

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Hologic objects to the Magistrate Judge’s finding, arguing that the finding is
clearly erroneous. It contends the efficacy data pertains to Hologic’s prior art CLASSIC
product (and earlier generations) and not specifically to the ADVANCED product at
issue in this case and argues that the “[t]he Magistrate Judge appears to have
overlooked the fact that the efficacy data Minerva seeks has nothing to do with any
design differences between the prior art CLASSIC and the accused ADVANCED
product.” D.I. 152 at 7. It disputes Minerva’s assertions that the discovery relates to
lost profits, arguing that the request for discovery is a reformulation of its failed theories
from Minerva I. It argues the efficiency data has nothing to do specifically with the
accused product and, therefore, cannot possibly be relevant to a patent damages
analysis, especially since none of the asserted claims of the ’208 patent contain
limitations about efficiency. It also challenges Minerva’s assertion that the discovery is
relevant to the issue of injunctive relief. Further, it contends that responding to the
discovery requests would be unduly burdensome because the information is extremely
sensitive and must be protected from inadvertent misuse.2
I.

LAW
The standard of review is governed by 28 U.S.C. § 636(b)(1)(C) and Federal

Rule of Civil Procedure 72(b). The Supreme Court has construed the statutory grant of
authority conferred on magistrate judges under 28 U.S.C. § 636 to mean that
nondispositive pretrial matters are governed by § 636(b)(1)(A) and dispositive matters

Hologic’s Objections also request a protective order with respect to “depositions of Hologic’s
employees,” (D.I. 152 at 1, 5, 10). That issue was not raised at the May 20, 2019 discovery dispute
hearing and will not be addressed by the court. See Smith Int’l, Inc. v. Baker Hughes Corp., 2016 WL
6122927, at *2 (D. Del Oct. 19, 2016) (declining to consider evidence and materials not presented to the
Magistrate Judge).
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are covered by § 636(b)(1)(B). Gomez v. United States, 490 U.S. 858, 873-74 (1989);
see also Fed. R. Civ. P. 72(a).
“A district court may refer a nondispositive motion to a magistrate judge ‘to hear
and determine,’” under subparagraph (A) of § 636(b)(1). EEOC v. City of Long Branch,
866 F.3d 93, 99 (3d Cir. 2017) (quoting 28 U.S.C. § 636(b)(1)(A)).

Following a

magistrate judge’s issuance of an order on a nondispositive matter, the parties may
serve and file objections to the order within 14 days of being served with a copy of the
order. Id.; see Fed. R. Civ. P. 72(a). “If a party objects to a magistrate judge’s order
regarding a nondispositive matter, the district court ‘must consider timely objections and
modify or set aside any part of the order that is clearly erroneous or is contrary to law.’”
EEOC, 866 F.3d at 99 (quoting 28 U.S.C. § 636(b)(1)(A)). “This standard requires the
District Court to review findings of fact for clear error and to review matters of law de
novo.” Id.
A Magistrate Judge’s order is contrary to law when the magistrate judge has
misinterpreted or misapplied the applicable law. See Brown v. Astrue, 649 F.3d 193,
195 (3d Cir. 2011). A finding of fact can be set aside as clearly erroneous when the
reviewing court is “left with the definite and firm conviction that a mistake has been
committed.” Green v. Fornario, 486 F.3d 100, 104 (3d Cir. 2007). The district court
must accept the ultimate factual determination of the fact-finder unless that
determination either (1) is completely devoid of minimum evidentiary support displaying
some hue of credibility, or (2) bears no rational relationship to the supportive evidentiary
data. Giles v. Kearney, 571 F.3d 318, 322 (3d Cir. 2009).

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III.

CONCLUSION
The Court finds the Magistrate Judge’s decision is not clearly erroneous or

contrary to law. Based on her familiarity with this case, the Magistrate Judge committed
no error in determining that the disputed discovery may be relevant to issues in the case
or may lead to the discovery of relevant evidence.
confuses discoverability with admissibility.

The Court finds that Hologic

For purposes of discovery, relevancy is

broadly construed. See Pacitti v. Macy's, 193 F.3d 766, 777–78 (3d Cir. 1999) (stating
“[i]t is well recognized that the federal rules allow broad and liberal discovery”).
Whether the information is admissible is a separate question. Information within the
scope of discovery as set forth in Federal Rule of Civil Procedure 26 “need not be
admissible in evidence to be discoverable.” Fed. R. Civ. P. 26(b)(1).
The discovery materials appear tangentially relevant to Minerva’s burden to
prove lost profits in the context of market conditions and competitive relationships. If
the probative value of the evidence does not outweigh the danger of prejudice or
possibility of confusion, the evidence will not be admitted at trial. Id. (noting that the
parties resisting discovery were “getting ahead of themselves” and that “[w]e are
currently dealing with discovery, not the admission or weight of any evidence[.]”).
Hologic’s concerns regarding the “sensitivity” of the documents are readily addressed
by a proper designation pursuant to the Protective Order in this case. Accordingly,
IT IS ORDERED:
1.

The Magistrate Judge’s oral order (D.I. 152-2) is affirmed.

2.

The defendants’ objections (D.I. 152) are denied.

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3.

The Magistrate Judge’s oral order is adopted in all respects.
DATED this 11th day of October, 2019.
BY THE COURT:
s/ Joseph F. Bataillon
Senior United States District Judge

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