BOSTON SCIENTIFIC CORPORATION ET AL V. COOK GROUP INCORPORATED ET AL

Filing 542

ORDER: Defendants' Motion to Compel 502 is GRANTED. Plaintiffs shall designate a witness to testify on their behalf regarding Topics 25, 26, and 29 pursuant to Fed. R. Civ. P. 30(b)(6). *SEE ORDER.* Signed by Magistrate Judge Mark J. Dinsmore on 12/28/2021. (GD)

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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION

BOSTON SCIENTIFIC CORPORATION, et al.,
Plaintiffs,
v.
COOK GROUP INCORPORATED, et al.,
Defendants.

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No. 1:17-cv-03448-JRS-MJD

ORDER ON DEFENDANTS' MOTION TO COMPEL

This matter is before the Court on Defendants' Motion to Compel Plaintiffs to Designate
a Witness. [Dkt. 502.] For the reasons set forth below, the Court GRANTS Defendants' motion.
I. Background
Plaintiffs Boston Scientific Corp. and Boston Scientific Scimed, Inc., are "developers,
manufacturers, and suppliers of medical devices." [Dkt. 19 at 3.] One of their products, the
Resolution Clip, is "an endoscopic hemostasis clip that is intended to, among other things, stop
bleeding in the gastrointestinal tract" by allowing "medical care professions to more precisely
position the clip and securely lock the clip in place." [Dkt. 19 at 3.] Defendants Cook Group Inc.,
and Cook Medical, LLC, are competitors in the endoscopic hemostatic clip market. [Dkt. 19 at
4.] Plaintiffs initially filed suit against Defendants on October 27, 2015, alleging multiple claims
of patent infringement with regard to the Resolution Clip. [Dkt. 1.]

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On August 5, 2021, Plaintiffs served Defendants with a Supplemental Rule 30(b)(6)
Deposition Notice. [Dkt. 531-2.] Within that Notice, Topic 44(c) sought testimony regarding the
following:
Your [(Defendants')] document collection efforts and production of
documents in this matter, including . . . [y]our search, collection and
production of documents in response to Boston Scientific's discovery
requests, including but not limited to supplementing your production of
documents.
[Dkt. 531-2 at 10.] Defendants refused to designate a witness to testify to Topic 44(c) on
September 10, 2021. [Dkt. 531-3 at 50.] The parties subsequently conferred, and Plaintiffs
"proposed a stipulation: if [Defendants] refrained from seeking such testimony, then [Plaintiffs]
would do the same and withdraw this deposition topic." [Dkt. 531 at 4.] On October 1, 2021,
Defendants stipulated the following in an email correspondence:
Topic No. 44 – You mentioned during our meet and confer that [Plaintiffs] would
be willing to forego a witness on subtopic "c" if [Defendants were] likewise willing
to forego deposing [Plaintiffs] on this same subtopic. [Defendants are] agreeable to
proceeding in this manner.
[Dkt. 532 at 3.]
On November 8, 2021, Defendants served Plaintiffs with a Supplemental Rule 30(b)(6)
Deposition Notice. [Dkt. 503-2.] That Notice contains the three topics currently at issue:
Topic 25:

Whether, as of March 30, 2016, early design documentation, testing, or test
results for the Resolution Clips were not reasonably accessible to the extent
the work was performed using or maintained on obsolete systems, as
Plaintiffs represented in their Initial ESI Disclosures dated March 30, 2016,
and if so, an identification of the information not reasonably accessible and
corresponding obsolete systems, if any.

[Dkt. 503-2 at 11.]
Topic 26:

Whether e-mails and electronically stored information relating to the
Resolution Clips are unavailable, as Plaintiffs' counsel represented to the
Court (see February 15, 2017 Hearing Transcript at pages 97-98), and, if so,

2

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the reasons why such e-mails and electronically stored information are
unavailable.
[Dkt. 503-2 at 11.]
Topic 29:

Whether Plaintiffs did or did not produce complete and accurate copies of
each and every lab notebook associated with the following named inventors
on the Patents-In-Suit: Mark L. Adams, Russell F. Durgin, Vincent
Turturro, Justin Grant, Norman May, Roy H. Sullivan, William C. Mers
Kelly, Lance Alan Wolf, Brian Keith Wells, Vasily P. Abramov, and
Gregory R. Furnish, which relates to any ideas described in the Patents-InSuit, and to the extent Plaintiffs assert that they did produce such lab
notebooks, an identification of each such lab notebook.

[Dkt. 503-2 at 12.]
On November 22, 2021, Plaintiffs refused to designate witnesses to testify with regard to
Topics 25, 26, and 29, on the grounds that such topics were contrary to the October 1, 2021
stipulation. [Dkt. 503-3 at 30-31, 33-34.] Following unsuccessful attempts to meet and confer,
Defendants filed the instant Motion to Compel on December 13, 2021. [Dkt. 502.]
II. Discussion
Defendants ask the Court to order Plaintiffs to designate a witness or witnesses to testify
regarding Topics 25, 26, and 29 set forth in Defendants' Rule 30(b)(6) Deposition Notice. [Dkt.
502.] Plaintiffs object to the motion, arguing that the topics at issue fall within the scope of the
parties' October 1, 2021, stipulation. [Dkt. 531.] Under that stipulation, the parties agreed to
forego deposing a witness regarding the "document collection efforts and production of
documents in this matter." 1 [Dkt. 531-2 at 10.] Federal Rule of Civil Procedure 29 provides that
parties are entitled to limit discovery via stipulation. Fed. R. Civ. P. 29(b). The parties' October

1

The remaining language of the stipulation—"including . . . [y]our search, collection and
production of documents in response to Boston Scientific's discovery requests, including but not
limited to supplementing your production of documents"—is subordinate to the scope of
"document collection efforts and production of documents in this matter."
3

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1, 2021, written stipulation is therefore valid and enforceable; as Plaintiffs highlight, "only its
scope is in dispute." [Dkt. 531 at 5.]
The plain language of Topic 44(c) applies to testimony regarding the means and methods
of discovery. By explicitly referencing the "document collection efforts and production of
documents in this matter," the parties chose to forgo deposing witnesses regarding, e.g., what
search terms were used when responding to discovery, when those searches took place, and how.
In other words, the parties agreed not to seek testimony on "discovery about discovery." See
Hon. Craig B. Shaffer, Deconstructing "Discovery About Discovery," 19 Sedona Conf. J. 215,
215 (2018) (defining "discovery about discovery" as "discovery about an opponent's e-discovery
processes and the manner in which a party preserves, identifies, collects, searches, and produces
ESI").
With this understanding of the stipulation's scope in mind, the Court will address Topics
25 and 26 together before concluding with Topic 29.
A. Topics 25 and 26
Topics 25 and 26 clearly fall outside the scope of the stipulation because they are not
requesting testimony pertaining to the means and methods of discovery. Rather, Topics 25 and
26 seek confirmation and clarifications of representations previously made by Plaintiffs "to the
extent [Defendants] wish[] to rely on them at trial." [Dkt. 504 at 5.]
Indeed, in their March 30, 2015, Initial ESI Disclosures, Plaintiffs stated that "[e]arly
design documentation, testing, or test results" regarding the Resolution Clip were not reasonably
accessible because "the work was performed using or maintained on now-obsolete systems."
[Dkt. 503-1 at 5.] Through Topic 25, Defendants seek testimony to confirm this statement in
addition to "identification of the information not reasonably accessible and corresponding

4

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obsolete systems, if any." [Dkt. 503-2 at 11.] Similarly, during a February 15, 2017, discovery
hearing in the District of Delaware, 2 Plaintiffs stated that emails and ESI regarding the
Resolution Clip were unavailable due to turnover within the companies. [Dkt. 503-5 at 5-6.]
Through Topic 26, Defendants again seek testimony to confirm this statement in addition to "the
reasons why such e-mails and electronically stored information are unavailable." [Dkt. 503-2 at
11.] Defendants assert that these representations are relevant to their "prosecution laches
defense" which requires them to show that, "due to the delay in obtaining the patents-in-suit,
information relating to [Plaintiffs'] Resolution Clip . . . is no longer reasonably accessible." [Dkt.
504 at 2-3.] As such, these inquiries simply do not pertain to the "search, collection and
production of documents"—especially since no documents were actually collected or produced.
The stipulation is therefore inapplicable to Topics 25 and 26, and Defendants are entitled to the
clarifications and explanations they seek.
Accordingly, Defendants' Motion to Compel [Dkt. 502] is GRANTED with respect to
Topics 25 and 26 and Plaintiffs shall designate a witness to testify to those topics.
B. Topic 29
While Topics 25 and 26 are clearly not inquiring into the "search, collection and
production of documents," Topic 29 refers to Plaintiffs' production of lab notebooks and it is
therefore a closer call as to whether Topic 29 is included in the scope of the parties' October 1,
2021, stipulation.
Courts interpret the federal discovery rules broadly because "[d]iscovery is a search for
the truth." Shapo v. Engle, 2001 WL 629303, at *2 (N.D. Ill. May 25, 2001); see Rackemann v.
Lisnr, Inc., 2017 WL 11614560, at *1 (S.D. Ind. Oct. 31, 2017) ("The broad scope of discovery

2

This action was originally filed in the District of Delaware.
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permitted by Rule 26 is based on the principle that access to all relevant information promotes
the search for the truth"). Limitations curtailing the discovery process are therefore in derogation
of the search for truth and should be narrowly construed. Cf. Valero Energy Corp. v. United
States, 569 F.3d 626, 630 (7th Cir. 2009) (explaining that privileges are "construe[d] narrowly
because they are in derogation of the search for truth") (citing United States v. Evans, 113 F.3d
1257, 1461 (7th Cir. 1997)); Rackemann, 2017 WL 11614560, at *1 ("As the attorney-client
privilege and work product protection restrict the flow of relevant information, they are narrowly
construed by courts to minimize their impact upon the discovery process") (citing In re Walsh,
623 F.2d 489, 493 (7th Cir. 1980)). Understanding this, the Court finds it appropriate to view
stipulations limiting the scope of discovery in the same light because, although permitted by
Rule 29, such agreements nonetheless seek to curb the generally broad scope of discovery.
In narrowly construing the parties' stipulation, the Court finds it inapplicable to Topic 29.
Topic 29 is not strictly asking about Plaintiffs' means and methods of producing the lab
notebooks, nor their process of searching, collecting, and producing the lab notebooks. Instead,
as Defendants argue, Topic 29 seeks "a witness to identify the inventors' lab notebooks that were
produced, and the notebooks that were not produced." [Dkt. 504 at 5.] This, it appears, is not
"discovery about discovery" so much as it is asking Plaintiffs to unequivocally identify any
responsive materials that have been withheld or unavailable, as they are otherwise required to do
by Fed. R. Civ. P. 34(b)(2)(C). Therefore, Topic 29 falls outside the scope of the parties'
stipulation because it does not pertain to the means and methods of discovery. 3

3

An argument could also be made that narrowly interpreting the stipulation makes clear its
inapplicability to Topic 29 for the reason that the stipulation, read literally, unilaterally applies to
the "search, collection and production of documents in response to Boston Scientific's
discovery requests." [Dkt. 531-2 at 10] (emphasis added). Therefore, because Topics 25, 26,
and 29 address discovery requests made by Cook, not Boston Scientific, the plain language of
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Accordingly, Defendants' Motion to Compel [Dkt. 502] is GRANTED with respect to
Topic 29 and Plaintiffs shall designate a witness to testify to that topics.
III. Conclusion
For the reasons set forth above, Defendants' Motion to Compel, [Dkt. 502], is
GRANTED. Plaintiffs shall designate a witness to testify on their behalf regarding Topics 25,
26, and 29 pursuant to Fed. R. Civ. P. 30(b)(6).
SO ORDERED.

Dated: 28 DEC 2021

Distribution:
Service will be made electronically
on all ECF-registered counsel of record via
email generated by the Court's ECF system.

the stipulation reveals its inapplicability. Indeed, Defendants agreed "to forego deposing
[Plaintiffs] on this same subtopic," [Dkt. 532 at 3 (emphasis added)], that subtopic being
responses made to Plaintiffs' discovery requests. However, Defendants do not ask the Court to
read the stipulation in this way, so it will not.
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