Arthrex, Inc. v. Parcus Medical, LLC
Filing
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ORDER granting in part and denying in part 54 Defendant's Motion to Compel Substantive Answer to Defendant's Interrogatory No. 11. Defendant's Motion to compel subparts (3) and (4) of Interrogatory No. 11 is DENIED. Defendant' s Motion to Compel subparts (1), (2), (5), and (6) of Interrogatory No. 11 is GRANTED. Plaintiff shall provide the requested documents by September 20, 2012. If Plaintiff assets that any documents are privileged, confidential, or work-product, a proper privilege log shall be produced by this date. Defendant's request for an oral argument on this Motion is DENIED.Signed by Magistrate Judge Sheri Polster Chappell on 8/31/2012. (LMF)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
ARTHREX, INC.,
Plaintiff,
V.
Case No: 2:11-cv-694-FtM-29SPC
PARCUS MEDICAL, LLC,
Defendant.
___________________________________/
ORDER
This matter comes before the Court on Defendant's Motion to Compel Substantive
Answer to Defendant's Interrogatory No. 11 (Doc. #54) filed on July 27, 2012.
Plaintiff
Arthrex’s Response to Defendant’s Motion to Compel Substantive Answer to Defendant’s
Interrogatory No. 11 (Doc. #68) was filed on August 18, 2012. Thus, the Motion is ripe for the
Court’s review.
The Federal Rules state that, a party upon whom interrogatories have been served has 30
days to respond either by filing answers or objections to the propounded interrogatories. Fed. R.
Civ. P. 33(b). If the serving party does not receive a response to their interrogatories, then the
serving party may request an order compelling disclosure. Fed. R. Civ. P. 37(a). Whether or not
to grant the motion to compel is at the discretion of the trial court. Commercial Union Insurance
Co. v. Westrope, 730 F.2d 729, 731 (11th Cir. 1984).
On December 15, 2010, Arthrex filed its complaint alleging that Parcus infringed two
patents: United States Patent No. 5,993,451 (“the ‘451 patent”) entitled “Cannulated Suture
Anchor Drill Guide” and United States Patent No. 6,641,597 (“the ‘597 patent”) entitled
Interference Fit Knotless Suture Anchor Fixation. In its complaint, Arthrex alleged that Parcus’
infringement of the ‘451 patent included but was not limited to Parcus’ VMouth Drill Guide
(Part No. 10330) and 8-Point Drill Guide (Part No. 10446) instrumentation, and that Parcus’
infringement of the ‘597 patent included but was not limited to Parcus’ Series 3 Suture Anchors
(Part Nos. 10323T and 10313) and Parcus’ V-LoX Hybrid Suture Anchors (Part No. 10354T).
Arthrex further alleged that the purported infringement was “deliberate” and “willful” and
requests treble damages and attorney fees and costs pursuant to 35 U.S.C. §285.
On May 11, 2012, Defendant served Plaintiff with its second set of interrogatories. (Doc.
#54-1). Interrogatory No. 11 asks the Plaintiff to:
Identify and describe the basis for, and any analysis undertaken in support
of Arthrex’s pre-litigation investigation concerning infringement and
validity of any asserted claim of the Arthrex Patents, including but not
limited to: (1) all documents and information Arthrex relied upon in
conducting its pre-litigation investigation and upon which it based its
decision to sue for infringement of each of the Arthrex Patents; (2) all
information Arthrex obtained from viewing, using or testing each accused
device; (3) a description of how Arthrex first learned of each accused
product and the date(s) on which Arthrex acquired such knowledge; (4) an
identification of the person(s) most knowledgeable concerning the prelitigation investigation and decision to file the instant lawsuit; (5) any
construction of any term of any asserted claim of the Arthrex Patents
made, used or considered in connection with Arthrex’s pre-litigation
investigation; and (6) any comparison of the asserted claims of the Arthrex
Patents to any accused device made, used or considered in connection with
Arthrex’s pre-litigation investigation.
(Doc. #54-1).
On June 11, 2012, Plaintiff served its responses and objections to the interrogatories.
Plaintiff Response to Interrogatory No. 11 stated:
Arthrex objects to responding to this interrogatory because Parcus’ prior
interrogatories, including several that include multiple sub-parts, already
exceed the 25 interrogatory limit established by Fed. R. Civ. P. 33(a)(1).
This rule expressly states that no more than 25 written interrogatories may
be served on any other party unless ordered by the Court. The Court has
entered no such order.
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Arthrex is amenable to a joint motion allowing both parties to serve up to
35 interrogatories. Arthrex also objects to this interrogatory to the extent
that it seeks information that is protected by the attorney-client privilege,
the work product doctrine, or any other applicable privilege. See Phillips
Electronics v. Universal Electronics, 892 F. Supp. 108, 110 (D. Del.
1995). Any information sought by Parcus relating to the “analysis
undertaken” during Arthrex’s pre-litigation investigation is therefore
protected from disclosure.
Furthermore, Arthrex objects to this interrogatory because the information
sought is not relevant to Parcus’ claims or defenses, is not reasonably
calculated to lead to the discovery of admissible evidence, and is vague,
overly broad and unduly burdensome and oppressive to the extent that it
seeks information that is duplicative of information already sought by
Parcus and provided by Arthrex. For example, among the other
information already provided to Parcus in its responses to Parcus’
Interrogatories, Arthrex has detailed the accused products, the dates the
infringements began, the asserted claims of the patents-in-suit, and the
information and documents that support Arthrex’s contentions. Arthrex
has also provided infringement claim charts. See Arthrex’s objections and
responses to Parcus’ First Set of Interrogatories, Response to Interrogatory
Nos. 1 and 5, Exhibits A through D.
(Doc. #54-2).
Counsel for both parties met and conferred to discuss discovery matters, whereupon
counsel for Plaintiff agreed to supplement Plaintiff’s response to Interrogatory No. 11. On July
25, 2012, Plaintiff served Defendant with its Supplemental Objections and Responses to
Defendant’s Second Set of Interrogatories. Plaintiff’s Supplemental Response to Interrogatory
No. 11 stated:
Arthrex further responds that the information requested by Parcus in this
interrogatory is protected from disclosure by the attorney-client privilege
and the work product doctrine. Communications from a client to any
attorney for the purposes of obtaining legal advice are protected from
disclosure by the attorney-client privilege. See Upjohn Co. v. United
States, 449 U.S. 383, 389-95 (1981). In addition, the work product
doctrine is designed to protect from disclosure an attorney’s thoughts,
mental impressions, opinions, and strategies. See Fed. R. Civ. P. 26(b)(3);
Hickman v. Taylor, 329 U.S. 495, 511-12 (1947). In this regard, Fed. R.
Civ. P. 26 protects from discovery “documents and tangible things that are
prepared in anticipation of litigation or for trial by or for another party or
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its representative,” absent a showing of substantial need and undue
hardship by the requesting party. Fed. R. Civ. P. 26(b)(3).
In this case, Arthrex’s “pre-litigation investigation,” and in particular the
information requested in subparts (1), (2), (5) and (6) of Interrogatory No.
11, is protected from disclosure by both the attorney-client privilege and
the work product doctrine because these subparts seek privileged
communications and/or protected mental impressions rather than any
underlying facts. More specifically, the information Arthrex relied upon,
the information Arthrex obtained, the construction of any term of the
Arthrex patents, and any comparison of the asserted claims of the Arthrex
patents to any accused device that were made during Arthrex’s “prelitigation investigation” includes not only privileged communications but
also information that was specifically prepared for the purposes of this
litigation including the metal impressions, thoughts, legal theories,
opinions and analyses of Arthrex’s outside counsel attorneys. See, e.g.,
Medtronic v. Gyrus, 2006 U.S. Dist. LEXIS 17202 *7-10 (M.D. Fla.
2006). Arthrex will not produce or in any way disclose this protected
information to avoid waiving privilege and/or work product protection.
Furthermore, Parcus has not and cannot establish a substantial need and
undue hardship for the requested information as required by Fed. R. Civ.
P. 26(b)(3). Arthrex has provided Parcus with its infringement contentions
that detail Arthrex’s positions against Parcus. See Supplemental Exhibits
A and B of Arthrex’s Supplemental Objections and Responses to
Defendant’s First Set of Interrogatories. This information provides the
basis for the infringement claims that have been brought against Parcus,
including relevant facts that Arthrex has discovered to date that support its
infringement contentions.
Without waiving any of its general or specific objections, Arthrex answers
that it first learned of the Series 3 Push-In Suture Anchors, the V-Lox
Hybrid Suture Anchors and the VMouth Drill Guide on approximately
November 15, 2010 when these products were advertised on Parcus’
website. Arthrex first learned of the 8-Point Drill Guide on approximately
June 1, 2011 when this product was advertised on Parcus’ website.
Arthrex first learned of the 45 Knotless Peek CF Suture Anchors on
approximately February 2012 when these products were advertised on
Parcus’ website.
John Schmieding, General Counsel for Arthrex, is the person most
knowledgeable concerning the pre-litigation investigation and decision to
file the instant lawsuit.
Finally, pursuant to Fed. R. Civ. Pro. 33(d), Arthrex will produce any
nonprivileged and non-work product protected documents responsive to
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this interrogatory, to the extent such documents exist and can be located
after a reasonable search, at a mutually convenient date and location once
the confidentiality agreement the parties have agreed to in principal is
entered by the parties.
(Doc. #54-3).
Defendant argues that Plaintiff’s response to Interrogatory No. 11 failed to provide a
“substantive and meaningful” response over its objections in its Supplemental Response to
Interrogatory No. 11. Specifically, Defendant argues that Plaintiff’s supplemental response
failed to provide claim constructions, claim charts and substance. As grounds, Plaintiff responds
that the information requested in Interrogatory No. 11 is privileged and subject to work product
protection.
Plaintiff has provided a response to subparts (3) and (4) of Interrogatory No. 11. As
such, Defendant’s Motion is denied as to these subparts. However, at issue is the information
requested in subparts (1), (2), (5) and (6) of Interrogatory No. 11. Plaintiff has failed to respond
to subparts (1), (2), (5) and (6) of Interrogatory No. 11. Plaintiff states that these documents are
privileged and subject to work product protection. These subparts in pertinent part request:
(1) [A]ll documents and information Arthrex relied upon in conducting its
pre-litigation investigation and upon which it based its decision to sue for
infringement of each of the Arthrex Patents; (2) all information Arthrex
obtained from viewing, using or testing each accused device, . . . . (5) any
construction of any term of any asserted claim of the Arthrex Patents
made, used or considered in connection with Arthrex’s pre-litigation
investigation; and (6) any comparison of the asserted claims of the Arthrex
Patents to any accused device made, used or considered in connection with
Arthrex’s pre-litigation investigation.
The Court finds the information in subparts (1), (2), (5) and (6) relevant and necessary in order
for Defendant’s assessment of the claims filed against it. View Eng'g, Inc. v. Robotic Vision
Sys., Inc., 208 F.3d 981, 986 (Fed. Cir. 2000) (holding that performing a pre-filing assessment of
the basis of each infringement claim is . . . extremely important. In bringing a claim of
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infringement, the patent holder, if challenged, must be prepared to demonstrate to both the court
and the alleged infringer exactly why it believed before filing the claim that it had a reasonable
chance of proving infringement).
The Plaintiff has asserted that the information is protected by privilege or work product.
While attorney impressions are not discoverable, the factual basis including documents and
actions looked into by the Plaintiff in its pre-litigation investigation are discoverable because
the Plaintiff is required to provide a factual basis for their claims. Samsung SDI Co. v.
Matsushita Elec. Indus., Inc., 2006 WL 5097360 * 3 (C.D. Cal. June 5, 2006). Thus, the
Defendant is clearly entitled to a detailed description of the facts and contentions relied upon by
the Plaintiff in conducting its pre-litigation discovery.
If there are mental notes or impressions written on any of the documents the Plaintiff
may redact those notes or impressions from the documents. As a reminder, the Plaintiff is
cautioned that it is the party invoking the privilege bears the burden of proof. Tyne v. Time
Warner Entm’t Co., L.P., 212 F.R.D. 596, 599 (M.D. Fla. 2002). “This burden can be met only
by an evidentiary showing based on competent evidence, and cannot be discharged by mere
conclusory or ipse dixit assertions.” CSX Transp., Inc., v. Admiral Ins. Co., 1995 WL 855421
*1 (M.D. Fla. July 20, 1995) (internal quotes omitted). Pursuant to Fed. R. Civ. P. 26(b)(3) &
(5) this evidence is generally provided through the use of a privilege log. Typically, the
privilege log will identify each document and the individuals who were parties to the
communications with sufficient detail to permit the compelling party or court to determine if the
privilege is properly claimed. Id. at *3. More specifically, a proper privilege log should contain
the following information:
(1) the name and job title or capacity of the author of the document;
(2) the name and job title or capacity of each recipient of the document;
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(3) the date the document was prepared and if different, the date(s) on which it
was sent to or shared with persons other than the author(s);
(4) the title and description of the document;
(5) the subject matter addressed in the document;
(6) the purpose(s) for which it was prepared or communicated; and
(7) the specific basis for the claim that it is privileged.
See Roger Kennedy Constr., Inc. v. Amerisure Ins. Co., 2007 WL 1362746 * 1 (M.D. Fla. May
7, 2007) (detailing the information needed in a proper privilege log). As such, Plaintiff must
produce a privilege log for any documents it claims privilege on. If the documents requested are
not protected under privilege or work-product, Plaintiff must product the documents. Therefore,
Defendant’s request to subparts (1), (2), (5) and (6) of Interrogatory No. 11 is granted. Plaintiff
shall have 20 days to provide the requested documents. If Plaintiff asserts that any documents
are privileged, confidential, or work-product, a proper privilege log shall be produced in 20 days,
as well.
Accordingly, it is now
ORDERED:
Defendant's Motion to Compel Substantive Answer to Defendant's Interrogatory No. 11
(Doc. #54) is GRANTED in part and DENIED in part.
(1) Defendant’s Motion to compel subparts (3) and (4) of Interrogatory No. 11 is
DENIED.
(2) Defendant’s Motion to Compel subparts (1), (2), (5), and (6) of Interrogatory No. 11
is GRANTED. Plaintiff shall provide the requested documents by September 20,
2012. If Plaintiff assets that any documents are privileged, confidential, or workproduct, a proper privilege log shall be produced by this date.
(3) Defendant’s request for an oral argument on this Motion is DENIED.
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DONE and ORDERED in Fort Myers, Florida this 31st day of August, 2012.
Copies: All Parties of Record
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