Bonutti Skeletal Innovations LLC v. Linvatec Corporation et al
Filing
98
ORDER denying without prejudice 81 Motion to Compel answer to Interrogatory No. 16. Signed by Magistrate Judge Thomas B. Smith on 1/16/2014. (Smith, Thomas)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
ORLANDO DIVISION
BONUTTI SKELETAL INNOVATIONS LLC,
Plaintiff,
v.
Case No. 6:12-cv-1379-ORL-22TBS
LINVATEC CORPORATION AND CONMED
CORPORATION,
Defendants.
_____________________________________/
ORDER
This case is before the Court without oral argument on Defendant Linvatec’s
Motion to Compel Plaintiff to Provide a Complete Answer to Interrogatory No. 16 (Doc.
81). Bonutti has filed its opposition to the motion (Doc. 93), and the dispute is ripe for
resolution.
Plaintiff Bonutti Skeletal Innovations LLC brings this patent infringement action
based upon Defendants ConMed Corporation and its wholly-owned subsidiary,
Linvatec Corporation’s alleged infringement of 9 patents directed to improved suture
anchors, devices for inserting suture anchors, and surgical techniques to improve
suture retention and the speed of surgery. (Doc. 83, p. 5-6). Bonutti alleges 134
separate claims of infringement. (Doc. 95, p. 7). ConMed and Linvatec have
answered and counterclaimed for declaratory judgments of non-infringement and
invalidity of the patents-in-suit. (Doc. 52).
The parties have filed their claim construction briefs and the claim construction
hearing is currently scheduled for January 24, 2014. (Docs. 44, 83, 95). May 23,
2014 is the deadline for the completion of fact discovery. The party bearing the
burden of proof on an issue must disclose its expert reports by June 27, 2014, and
rebuttal expert reports are due by July 25, 2014. (Doc. 44). The deadline for
dispositive and Daubert motions is October 3, 2014. (Id.).
On October 17, 2013, Linvatec propounded Interrogatory No. 16 asking Bonutti
to:
Identify all factual and legal bases to support, on a claim-by-claim
and limitation-by-limitation basis, Your contention, if any, that the
asserted claims of the Patents-in-Suit are not invalid. Your answer
should identify what specific element(s) You contend are required
by the asserted claims of the Patents-in-Suit but are not disclosed or
taught by the Prior Art identified in Defendants’ Invalidity
Contentions (including an explanation of what you believe the Prior
Art discloses instead of any missing element(s)). Your answer
should also identify which, if any, of the items of Prior Art identified
in Defendant’s Invalidity Contentions, You contend are not Prior Art
to the Patents-in-Suit, and you should identify all evidence
(including persons) that You rely on in support of your contention.
(Doc. 82-1).
Bonutti’s November 21, 2013 answer states:
In addition to and without waiver of the General Objections, which
are fully incorporated here to the extent applicable, Bonutti Skeletal
objects to this Interrogatory to the extent it seeks disclosure of
attorney-client communications and attorney-work product, and/or
confidential information. Bonutti Skeletal also objects to this
Interrogatory as being overbroad and unduly burdensome at least
for the reasons that it seeks “all factual and legal bases” and “all
evidence.” Bonutti Skeletal objects to this Interrogatory as vague
and ambiguous at least to the extent it seeks “an explanation of
what you believe the Prior Art discloses instead of any missing
element(s).” Bonutti Skeletal also objects to this Interrogatory as
being premature and properly the subject of expert discovery.
Bonutti Skeletal also objects to this Interrogatory as being
premature because the Court has not yet issued a claim
construction order. Bonutti Skeletal also objects to this Interrogatory
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because it is the subject of ongoing discovery, including potential
third-party discovery regarding third party products alleged by
Defendants to be prior art.
(Doc. 81, p. 3).
Counsel met and conferred, but were unable to resolve Bonutti’s objections.
(Id., p. 8-9). Now, Linvatec seeks a Court order compelling Bonutti to answer
Interrogatory No. 16 fully and specifically. (Id.).
“The overall purpose of discovery under the Federal Rules is to require the
disclosure of all relevant information so that the ultimate resolution of disputed issues
in any civil action may be based on a full and accurate understanding of the true facts,
and therefore embody a fair and just result.” Oliver v. City of Orlando, No. 6:06-cv1671-Orl-31DAB, 2007 WL 3232227 * 2 (M.D. Fla. Oct. 31, 2007) (citing United States
v. Proctor & Gamble Co., 356 U.S. 677, 682, 78 S.Ct. 983, 2 L.Ed.2d 1077 (1958)).
Discovery is intended to operate with minimal judicial supervision unless a dispute
arises and one of the parties files a motion requiring judicial intervention. S.L.
Sakansky & Associates, Inc. v. Allied American Adjusting Co. of Florida, LLC, No.
3:05-cv-708-J-32MCR, 2007 WL 2010860, *1 (M.D. Fla. Jul. 6, 2007).
Under Federal Rule of Civil Procedure 33, any party can serve on any other
party written interrogatories pertaining to matters within the scope of Fed. R. Civ. P.
26(b). The scope of discovery under Rule 26(b) is broad and includes “discovery
regarding any matter, not privileged, which is relevant to the claims or defense of any
party involved in the pending action.” Hickman v. Taylor, 329 U.S. 495, 507-08, 67
S.Ct. 385, 91 L.Ed. 451 (1947). “The obvious and overall purpose of discovery under
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the Federal Rules is to require the disclosure of all relevant information, so that the
ultimate resolution of disputed issues in any civil action may be based on a full and
accurate understanding of the true facts, and therefore embody a fair and just result.”
Busch Ranch, Inc. v. E.I. Du Pont De Nemours and Co., 918 F.Supp. 1524, 1542
(M.D. Ga. 1995) rev’d on other grounds, 99 F.3d 363 (11th Cir. 1996).
The party upon whom interrogatories are served has 30 days to respond, either
by filing answers or objections to the interrogatories. Fed. R. Civ. P. 33(b). If the
party propounding the interrogatories does not receive a response, then it may
request an order compelling disclosure. Fed. R. Civ. P. 37(a). The party resisting
discovery carries the burden to show specifically how the objected-to request is
unreasonable or otherwise unduly burdensome. See Fed. R. Civ. P. 33(b)(4); Panola
Land Buyers Ass’n v. Shuman, 762 F.2d 1550, 1559 (11th Cir. 1985); Gober v. City of
Leesburg, 197 F.R.D. 519, 521 (M.D. Fla. 2000). Motions to compel discovery under
Rule 37(a) are committed to the sound discretion of the trial court. Commercial Union
Ins. Co. v. Westrope, 730 F.2d 729, 731 (11th Cir.1984).
Interrogatory No. 16 is what is commonly known as a contention interrogatory.
Contention interrogatories may ask a party to state what it contends, or to provide all
the facts on which it bases it contentions, or to identify all the evidence on which it
bases its contentions, or to explain how the law applies to the facts of the case. See
Monsanto Co. v. E.I. Du Pont De Nemours and Co., No. 4:09-cv-686 ERW, 2012 WL
27936 * 2 (E.D. Mo. Jan. 5, 2012). “An interrogatory is not objectionable merely
because it asks for an opinion or contention that relates to fact or the application of
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law to fact, but the court may order that the interrogatory need not be answered until
designated discovery is complete, or until a pretrial conference or some other time.”
Fed. R. Civ. P. 33(a)(2).
The Federal Circuit has observed that contention interrogatories are “useful in
narrowing and sharpening the issues, which is a major purpose of discovery,” and
they allow parties to “pin down [the other’s] theories of liability [and] theories of
defense, thus confining discovery and trial preparation to information that is pertinent
to the theories of the case.” O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467
F.3d 1355, 1365 (Fed. Cir. 2006) (citing Hickman v. Taylor, 329 U.S. 495, 501 (1947)).
When they are used correctly, contention interrogatories are “useful in narrowing and
sharpening the issues.” Hendricks v. Mirabilis Ventures, Inc., No. 3:07-cv-661-T17EAJ, 2008 WL 423566 * 1 (M.D. Fla. Feb. 13, 2008).
Still, the Middle District Discovery handbook cautions that:
Interrogatories that generally require the responding party to state the
basis of particular claims, defenses, or contentions in pleadings or
other documents should be used sparingly and, if used, should be
designed (1) to target claims, defenses, or contentions that the
propounding attorney reasonably suspects may be the proper subject
of early dismissal or resolution or (2) to identify and narrow the scope
of unclear claims, defenses, and contentions. Interrogatories that
purport to require a detailed narrative of the opposing parties’ case
are generally improper because they are overbroad and oppressive.
Middle District Discovery (2001) at 16.
Linvatec argues that it properly propounded Interrogatory No. 16 to clarify
Bonutti’s position on the validity of the asserted claims. Linvatec maintains that this
information is needed now, to assist the Court in making claim constructions that
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will better posture the case for summary judgment, and so that Linvatec can
respond to Bonutti’s contentions during the process of claim construction. Linvatec
reasons that compelling Bonutti to answer Interrogatory No. 16 now, in advance of
the upcoming claim construction hearing, “will allow the Court to adjust its
constructions to more fully address the disputes between the parties, thus placing
the parties in a better position for summary judgment.” (Doc. 81, p. 1).
Bonutti argues that the procedure proposed by Linvatec is backwards. It
asserts that validity analysis is not a regular part of claims construction, that claims
construction should occur first, and then the parties should analyze the invalidity
claims. Bonutti posits that Linvatec is attempting to create an artificial sense of
urgency by conflating claims construction with an early motion for summary
judgment on the issues of invalidity and non-infringement. It argues that its answer
to Interrogatory No. 16 is premature until Linvatec narrows the 156 prior art
references it has identified. Bonutti suggests that as this litigation progresses, the
list of prior art references Linvatec asserts will narrow, thereby reducing its burden
in answering the interrogatory. It also says that once it receives Linvatec’s expert
witness report on invalidity, that report will almost certainly alter how it analyzes
Linvatec’s positions. For these reasons, Bonutti argues that if it is compelled to
answer Interrogatory No. 16 now, it will be required to address references to prior
art that in the future, will cease to be an issue, and that it will have to revise its
answers after expert witness reports are exchanged.
The Court is persuaded that Bonutti’s answer to Interrogatory No. 16 is not
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required for claims construction. Patent claims are interpreted in view of the
intrinsic evidence including claim language, specification, and prosecution history.
Phillips v. AWH Corp., 415 F.3d 1303, 1313-14, 1320-21 (Fed. Cir. 2005) ( en
banc). As the Phillips court observed, “we have certainly not endorsed a regime in
which validity analysis is a regular component of claim construction.” Id. at 1327.
Here, the Court finds no good reason why a statement of the legal and factual
bases for Bonutti’s contention that the patents-in-suit are not invalid is required
prior to claim construction.
The Court also finds that at this stage of the litigation, Interrogatory No. 16 is
premature, oppressive and overbroad. The interrogatory does not target specific
claims Linvatec believes are unclear, or which might be subject to early resolution.
Instead, it is all-encompassing. Interrogatory No. 16 is precisely the sort of
contention interrogatory discouraged by the Middle District Discovery handbook. It
asks Bonutti to provide a detailed explanation of a substantial part of its case
before expert discovery on these issues has taken place. Once the expert opinions
on invalidity are disclosed and analyzed, the invalidity issues may well narrow and
change. Accordingly, requiring Bonutti to answer Interrogatory No. 16 now is likely
to result in a waste of time and resources. With the benefit of the expert witness
opinions, Bonutti should be able to more efficiently and meaningfully answer the
interrogatory. See IP Innovation, LLC et al. v. Sharp Corp., 219 F.R.D. 427, 42930 (N.D. Ill. 2003), Tel-Tron Technologies Corp. v. Stanley Security Solutions, Inc.,
No. 6:11-cv-1448-Orl-26TBS, 2012 WL 3522659 * 2-3 (M.D. Fla. Aug. 14, 2012);
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Carson Optical, Inc. v. Prym Consumer USA, Inc., No. CV 11-3677(SJF)(ARL),
2012 WL 7997611 * 1 (E.D.N.Y. Sept. 7, 2012); Monsanto Co. v. E.I. Du Pont De
Nemours and Co., No. 4:09-cv-686-ERW, 2012 WL 27936 * 2 (E.D. Mo., Jan. 5,
2012); Martin Marietta Materials, Inc. v. Bedford Reinforced Plastics, Inc., No.
3:2003-57, 2007 WL 1300772 * 4 (W.D. Pa. May 2, 2007). In the meantime,
Linvatec, can, if it wishes, file an early motion for summary judgment and put the
burden on Bonutti to respond.
For these reasons, Defendant Linvatec’s Motion to Compel Plaintiff to
Provide a Complete Answer to Interrogatory No. 16 (Doc. 81) is D ENIED without
prejudice to its reassertion no sooner than thirty days after the parties have
disclosed all of their expert witness reports on invalidity.
DONE AND ORDERED in Orlando, Florida, on January 16, 2014.
Copies to all Counsel
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