WYETH et al v. MEDTRONIC, INC. et al
Filing
263
MEMORANDUM OPINION. Signed by Magistrate Judge Tonianne J. Bongiovanni on 5/2/2011. (gxh)
NOT FOR PUBLICATION
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
WYETH, et al.,
Civil Action No. 08-1021 (JAP)
Plaintiffs,
v.
MEMORANDUM OPINION
MEDTRONIC, INC., et al.,
Defendants.
This matter comes before the Court upon Plaintiffs Wyeth and Cordis Corporation’s
(“Plaintiffs”) motion to amend their Complaint in order to substitute Medtronic Vascular, Inc. for
Medtronic AVE, Inc. (“Medtronic AVE”) and to add Medtronic USA, Inc. (“Medtronic USA”)
as a defendant. Defendants Medtronic, Inc. and Medtronic AVE (collectively, “Medtronic”) do
not oppose Plaintiffs’ request to substitute Medtronic Vascular, Inc. for Medtronic AVE.
However, Medtronic does oppose the addition of Medtronic USA as a defendant. The Court has
fully reviewed and considered all arguments made in support of and in opposition to Plaintiffs’
motion. The Court considers Plaintiffs’ motion without oral argument pursuant to FED .R.CIV .P.
78. For the reasons set forth more fully below, Plaintiffs’ motion is GRANTED.
I.
Background and Procedural History
This is a patent infringement case dealing with United States Patent Nos. 5,516,781 (the
“‘781 patent”), 5,563,146 (the “‘146 patent”) and 5,665,728 (the “‘728 patent”) (collectively, the
“Morris patents” or the “patents-in-suit”). The Morris patents are directed to the use of
rapamycin to treat the re-closure of coronary arteries, known as restenosis, following an
angioplasty procedure. Plaintiffs sell a drug-eluting stent known as the CYPHER stent, which
they claim is covered by the Morris patents. Plaintiffs further claim that Defendants use of the
XIENCE V stent (Abbott) and ENDEAVOR stent (Medtronic) infringes upon the patents-in-suit.
At issue in the current motion, is Plaintiffs’ request to add Medtronic USA, the Medtronic entity
that apparently sells the allegedly infringing ENDEAVOR stent in the United States, as a
defendant in this matter.1
Plaintiffs argue that even though their request to add Medtronic USA was made after the
deadline for filing motions to amend had past, there is good cause to permit their amendment
under FED .R.CIV .P. 16. Plaintiffs also claim that the addition of Medtronic USA as a defendant
is warranted under FED .R.CIV .P. 15.
Plaintiffs argue that their failure to seek to add Medtronic USA to this litigation earlier
did not result from a lack of diligence, but instead stems from the fact that it was not until
January 5, 2011, when Medtronic responded to one of Plaintiffs’ interrogatories, that Plaintiffs
learned that Medtronic USA sold the ENDEAVOR stent in the United States. In this regard,
Plaintiffs claim that Medtronic never previously identified Medtronic USA in its discovery
responses, despite being obligated to do so.
For example, Plaintiffs argue that Medtronic did not list Medtronic USA as an entity
likely to have discoverable information in its initial disclosures. Plaintiffs claim that while Rule
26(a)(1)(A)(I) only requires a party to identify “individual[s] likely to have discoverable
information[,]” not entities, Rule 26(a)(1)(A)(ii) requires a party to either provide “a copy – or a
description by category and location – of all documents, electronically stored information, and
1
As noted above, Plaintiffs also seek to substitute Medtronic Vascular, Inc. for Medtronic
AVE. Medtronic does not oppose this aspect of Plaintiffs’ motion. As a result, this portion of
Plaintiffs’ motion is granted.
2
tangible things that the disclosing party has in its possession, custody, or control and may use to
support its claims or defenses . . . .” Plaintiffs note that Medtronic chose to identify the
information detailed in Rule 26(a)(1)(A)(ii) by “category and location” rather than providing a
copy of same. Plaintiffs, however, claim that Medtronic “hid the ball” with respect to
information regarding which entity sold the ENDEAVOR stent in the United States by merely
disclosing that “[f]inancial documents relating to the Endeavor stent” were available at
“Medtronic’s facilities, including Santa Rosa, California, and Minneapolis, Minnesota;” instead
of “candidly revealing that sales documents were maintained by . . . Medtronic USA[.]” (Pl.
Reply Br. at 4 (internal quotation marks and citations omitted)). Plaintiffs also argue that in
identifying individuals likely to have discoverable information, Medtronic generally identified
the individuals as Medtronic employees and did not identify them as employees of Medtronic
USA.
In addition, Plaintiffs argue that Medtronic never claimed that it did not infringe the
Morris patents because it did not sell the ENDEAVOR stent in the United States despite the fact
that Plaintiffs propounded an interrogatory on Medtronic on August 17, 2009 that requested
Medtronic to “‘set forth in detail the complete legal and factual bases for your allegation that you
have not infringed the claims of the patents in suit.” (Pl. Br. at 2 (quoting Weiner Decl. Ex. C,
Plaintiffs’ First Set of Interrogatories to Defendants at Interrogatory No. 1)). Plaintiffs note that
Medtronic has never supplemented its response to the aforementioned interrogatory to add such a
defense even though Medtronic USA sells the ENDEAVOR stent in the United States.
Further, Plaintiffs contend that they attempted to conduct discovery regarding which
Medtronic entity sold the ENDEAVOR stent in the United States. For example, Plaintiffs argue
3
that they deposed Dr. Josiah Wilcox, the individual identified by Medtronic in its initial
disclosures as being knowledgeable about Medtronic’s “‘business and company history.’” (Pl.
Reply Br. at 3 (quoting Weiner Decl. Ex. B at 8)). Plaintiffs claim that when they asked Dr.
Wilcox which entity sold the ENDEAVOR stent in the United States, he incorrectly responded
that “it was ‘the Medtronic AVE, Inc. company that’s changed its name to Medtronic
CardioVascular.’” (Id. (quoting Vaghani Decl. Ex. 1, 11/23/10 Wilcox Dep. at 21:1-8)).
Plaintiffs note that no efforts were made by Medtronic to correct this testimony. Indeed,
Plaintiffs specifically point out that they “have, to date, received no errata sheet.” (Id.) Plaintiffs
also point to their deposition of Mark Gaterud, a Vice President of Medtronic Vascular, Inc. and
the fact that when Gaterud was asked “‘who sells the Endeavor stent: Medtronic, Inc., Medtronic
AVE, Inc., or its successor or perhaps both of them?[,]’” he responded “‘I don’t know the legal
structure at all. I know that we, Medtronic, sell it.’” (Id. (quoting Vaghani Decl. Ex. 2, 12/08/10
Gaterud Dep. at 62:9-12; 62:13-15)).
Plaintiffs also argue that there was nothing in Medtronic’s public filings that identified a
connection between Medtronic USA and the ENDEAVOR stent. Instead, Plaintiffs claim that
the only reference to Medtronic USA in Medtronic’s 10-K filings occurs at the very end of the
10-K where Medtronic USA is referenced in a list of over 150 subsidiaries of Medtronic.
Similarly, Plaintiffs contend that there is nothing in the Instructions for Use for the Endeavor
stent that reference Medtronic USA. Instead, the Instructions for Use list Medtronic, Inc.
Likewise, Plaintiffs claim that their past litigation history with Medtronic USA did not
put it on notice that Medtronic USA sold the ENDEAVOR stent in the United States. Plaintiffs
argue that while they have been involved in three lawsuits with Medtronic USA, none of those
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prior suits gave Plaintiffs notice of Medtronic USA’s role with respect to the ENDEAVOR stent.
In this regard, Plaintiffs claim that two of the three litigations were filed before 2008, which is
when the ENDEAVOR stent was first sold in the United States. As a result, Plaintiffs claim that
no one was selling the ENDEAVOR stent in the United States at the time those litigations were
filed and, as such, they could not put Plaintiffs on notice of Medtronic USA’s role with respect to
the ENDEAVOR stent. As for the third lawsuit, Plaintiffs contend that that matter did nothing to
inform them about Medtronic USA’s role with respect to the ENDEAVOR stent. Plaintiffs note
that the third litigation,, which named both Cordis Corporation (“Cordis”) and Medtronic USA,
among others, as defendants, was voluntarily dismissed two months after it was filed and before
any of the defendants filed answers or other responses. Moreover, Plaintiffs claim that the
Complaint in that litigation contained very little information about Medtronic USA and no
information about the ENDEAVOR stent.
As a result, Plaintiffs claim that it was not until January 5, 2011, when Medtronic
responded to Plaintiffs’ interrogatories served on November 24, 2010, that they learned that
Medtronic USA sells the ENDEAVOR stent in the United States. Plaintiffs argue that
immediately upon obtaining this information from Medtronic, they sought Medtronic’s consent
to adding Medtronic USA as a defendant. Plaintiffs claim that when they learned that
Medtronic’s consent would not be forthcoming they promptly filed the instant motion. For these
reasons, Plaintiffs argue that there is good cause to permit the addition of Medtronic USA under
Rule 16 and that the addition of Medtronic USA as a defendant is further warranted under Rule
15(a) as Plaintiffs did not unduly delay in seeking the proposed amendment.
Plaintiffs also claim that the addition of Medtronic USA is also appropriate under Rule
5
15(a) because neither Medtronic nor Medtronic USA will be prejudiced by Medtronic USA’s
addition as a defendant. In this regard, Plaintiffs argue that because Medtronic USA is a
subsidiary of Medtronic Inc., very little additional discovery will be needed. Indeed, Plaintiffs
claim that, at this juncture, they do not intend to depose any of Medtronic USA’s employees.
Instead, prior to the liability stage of trial, which is set to take place in September 2011, Plaintiffs
claim that they will just seek to obtain supplemental interrogatory answers from Medtronic USA.
Medtronic opposes Plaintiffs’ motion to add Medtronic USA as a defendant. Medtronic
claims that Plaintiffs have failed to establish good cause to permit their proposed amendment at
this stage of the proceedings. In this regard, Medtronic argues that, given Plaintiffs’ litigation
history with Medtronic USA, Plaintiffs have known since 2003 that Medtronic USA sells
Medtronic’s stent products in this United States. To support this contention, Medtronic cites to
three cases that involved both Medtronic USA and Cordis. The first case was filed by Medtronic
AVE on June 5, 2003. In that case, Medtronic AVE sued Cordis for patent-infringement and
state-based claims. In December 2003, Medtronic USA was added as a plaintiff and the Second
Amended Complaint alleged that “‘Medtronic and Medtronic USA sell stent delivery systems in
the United States.’” (Medtronic Opp. Br. at 2 (quoting Mathie Decl. Ex. 1, Second Amended
Complaint, ¶ 4)). The second matter was filed by Medtronic USA and other Medtronic entities
on June 11, 2007. In that matter, Medtronic USA and other related entities again sued Cordis for
patent infringement. Medtronic contends that in this case, Medtronic disclosed the corporate
relationship between Medtronic and Medtronic USA. The third litigation was filed on June 6,
2008 by Cardio Access. The case involved a patent infringement claim by Cardio Access against
both Cordis and Medtronic USA.
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In addition, Medtronic argues that contrary to Plaintiffs’ claims, its discovery responses
were proper and made in good faith. With respect to its initial disclosures, Medtronic notes that
Rule 26(a)(1)(A)(I) does not require the disclosure of corporate entities, but instead only requires
parties to identify individuals likely to have discoverable information. Medtronic claims that it
did this and specifically disclosed five individuals with knowledge regarding Medtronic’s sales
information. Medtronic claims that it is not its fault that Plaintiffs did not depose these
individuals.
Further, regarding its response to Plaintiffs’ Interrogatory No. 1 served on September 1,
2009, Medtronic argues that this interrogatory did not ask it to identify Medtronic USA as the
party who sells Medtronic stents in the United States. Instead, Medtronic claims that this
interrogatory, which was not directed to Medtronic USA specifically or any non-party generally,
asked Medtronic to provide Plaintiffs with a claim chart. Medtronic claims that it both objected
to Plaintiffs’ Interrogatory No. 1 and provided the requested claim chart. Medtronic contends
that it was not until over 2 ½ years after Plaintiffs filed this litigation, that Plaintiffs requested
information from Medtronic regarding the corporate entity that sold ENDEAVOR in the United
States. Medtronic claims that it promptly responded to this inquiry2 and identified Medtronic
USA as the entity who sells the ENDEAVOR stent in the United States.
As a result, Medtronic claims that there is no good cause to permit Plaintiffs’ belated
request to add Medtronic USA as a defendant. In addition, for these reasons, Medtronic argues
that Plaintiffs’ proposed amendment is the product of undue delay. As such, Medtronic claims
2
Medtronic notes that it did request an extension of time to respond to Plaintiffs’
interrogatory, but that the extension it requested and obtained was only 1 week long and was
sought because Medtronic’s responses were due the week between Christmas and New Year.
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that Plaintiffs’ motion, as it pertains to the addition of Medtronic USA, should be denied.
Medtronic also argues that Plaintiffs’ request to add Medtronic USA as a defendant
should be denied because permitting this amendment would unfairly prejudice Medtronic. In this
regard, Medtronic argues that if Medtronic USA is added as a defendant, then a number of
Medtronic USA employees would be added into “the mix of persons with knowledge of
discoverable information and potential trial witnesses[.]” (Medtronic Opp. Br. at 8). As such,
Medtronic argues that it would likely have to present a number of Medtronic USA’s employees
for deposition. Medtronic claims that “[t]his is unduly prejudicial to Medtronic after the deadline
has passed for fact discovery and in the midst of exchanging expert reports.” (Id.)
II.
Analysis
Plaintiffs seek to amend their Complaint in order to add Medtronic USA as a defendant in
this matter. Because Plaintiffs motion was filed after the December 6, 2010 deadline for filing
motions to amend the pleadings, Plaintiffs must meet the “good cause” standard set forth in Rule
16(b) for modifying a scheduling order before they will be permitted to amend their Complaint.
The Court has broad “discretion in determining what kind of showing the moving party must
make in order to satisfy Rule 16(b)’s good cause requirement.” Phillips v. Greben, Civil No. 045590 (GEB), 2006 WL 3069475, *6 (D.N.J. Oct. 27, 2006). Whether good cause exists depends
on the diligence of the moving party. Rule 16(b) advisory committee’s note; Hutchins v. United
Parcel Service, Inc., No. 01-CV-1462 WJM, 2005 WL 1793695, *3 (D.N.J. July 26, 2005). The
movant may establish good cause by demonstrating that “their delay in filing the motion to
amend stemmed from ‘any mistake, excusable neglect or any other factor which might
understandably account for failure of counsel to undertake to comply with the Scheduling
8
Order.’” Phillips, 2006 WL 306945, at *6 (quoting Newton v. Dana Corp. Parish Div., No. CIV.
A. 94-4958, 1995 WL 368172, *1 (E.D.Pa. June 21, 1995) (internal quotation marks and citation
omitted)). Further, in making this determination the Court “must consider F.R.Civ.P. 16(b)’s
requirement that scheduling orders only be modified for ‘good cause’ in conjunction with Rule
15(a)’s directive that leave to amend a complaint be ‘freely given.’” Reynolds v. Borough of
Avalon, 799 F.Supp. 442, 450 (D.N.J. 1992).
Pursuant to FED .R.CIV .P. 15(a)(2), leave to amend the pleadings is generally given freely.
See Foman v. Davis, 371 U.S. 178, 182 (1962); Alvin v. Suzuki, 227 F.3d 107, 121 (3d Cir.
2000). Nevertheless, the Court may deny a motion to amend where there is “undue delay, bad
faith or dilatory motive on the part of the movant, repeated failure to cure deficiencies by
amendments previously allowed, undue prejudice to the opposing party by virtue of allowance of
the amendment, [or] futility of the amendment.” Id. However, where there is an absence of
undue delay, bad faith, prejudice or futility, a motion for leave to amend a pleading should be
liberally granted. Long v. Wilson, 393 F.3d 390, 400 (3d Cir. 2004).
In deciding whether to grant leave to amend under Rule 15(a)(2), “prejudice to the nonmoving party is the touchstone for the denial of the amendment.” Bechtel v. Robinson, 886 F.2d
644, 652 (3d Cir. 1989) (quoting Cornell & Co., Inc. v. Occupational Health and Safety Review
Comm’n, 573 F.2d 820, 823 (3d Cir. 1978)). To establish prejudice, the non-moving party must
make a showing that allowing the amended pleading would (1) require the non-moving party to
expend significant additional resources to conduct discovery and prepare for trial, (2)
significantly delay the resolution of the dispute, or (3) prevent a party from bringing a timely
action in another jurisdiction. See Long, 393 F.3d at 400. Delay alone, however, does not justify
9
denying a motion to amend. See Cureton v. Nat’l Collegiate Athletic Ass’n, 252 F.3d 267, 273
(3d Cir. 2001). Rather, it is only where delay becomes “‘undue,’ placing an unwarranted burden
on the court, or . . . ‘prejudicial,’ placing an unfair burden on the opposing party” that denial of a
motion to amend is appropriate. Adams v. Gould Inc., 739 F.2d 858, 868 (3d Cir. 1984).
Moreover, unless the delay at issue will prejudice the non-moving party, a movant does not need
to establish a compelling reason for its delay. See Heyl & Patterson Int’l, Inc. v. F. D. Rich
Housing of Virgin Islands, Inc., 663 F.2d 419, 426 (3d Cir. 1981).
Here Plaintiff claims that good cause exists to permit the proposed addition of Medtronic
USA as a defendant because, despite their diligent efforts, Plaintiffs did not learn that Medtronic
USA was the Medtronic entity that sold the allegedly infringing ENDEAVOR stent in the United
States until January 5, 2011. For this reason, Plaintiffs also claim that they did not unduly dely in
seeking the proposed amendment. In contrast, Medtronic argues that Plaintiffs’ proposed
amendment is not supported by good cause and that Plaintiffs unduly delayed in seeking to add
Medtronic USA as a defendant. In support of this argument, Medtronic relies on Cordis’ past
litigation history with Medtronic USA as well as Plaintiffs’ alleged failure to conduct discovery
that would have disclosed Medtronic USA’s role with respect to the ENDEAVOR stent.
The Court first examines Medtronic’s claim that Cordis’ prior litigation history with
Medtronic USA put Plaintiffs on notice of Medtronic USA’s role concerning the sale of the
ENDEAVOR stent in the United States. As an initial matter, the Court notes that none of the
matters referenced by Medtronic involved the ENDEAVOR stent. In fact, the first two cases
were filed before the ENDEAVOR stent was even offered for sale in the United States. Further,
there is nothing in Medtronic’s opposition which suggests that the second and third litigations
10
even involved stent products. Instead, with respect to the second litigation, Medtronic merely
claims that that case “disclosed the corporate relationship between Medtronic and Medtronic
USA.” (Medtronic Opp. Br. at 3). With respect to the third, Medtronic simply notes that
“Cardio Access, a patent holder, sued Medtronic USA and Cordis for patent infringement in the
same lawsuit.” (Id.) The Court finds the disclosure of the corporate relationship between
Medtronic and Medtronic USA as well as the fact that Medtronic USA and Cordis were codefendants insignificant in relation to the question of whether Plaintiffs were on notice of
Medtronic USA’s role in selling the ENDEAVOR stent in the United States.
The best case presented by Medtronic as evidence of Plaintiffs’ notice of Medtronic
USA’s role in selling the ENDEAVOR stent in the United States is the first matter referenced by
Medtronic in its opposition. That matter was filed on June 5, 2003 by Medtronic AVE against
Cordis (the “2003 matter”). In that case, the Second Amended Complaint included a specific
allegation that “‘Medtronic and Medtronic USA sell stent delivery systems in the United
States[,]’” an allegation that Cordis admitted “on information and belief in their answer.” (Id. at
2 (quoting Mathie Decl. ¶ 2 Ex. 1, Second Amended Complaint, ¶ 4)). However, as noted above,
the 2003 matter did not involve the ENDEAVOR stent. Indeed, the ENDEAVOR stent was not
offered for sale in the United States until approximately 5 years after the 2003 matter was filed.
Moreover, in the 2003 matter, Medtronic did not allege that Medtronic USA exclusively sold
Medtronic’s stent delivery systems in the United States. Instead, Medtronic conceded that
Medtronic also sold those products. As such, while the 2003 matter may have given Cordis some
notice that Medtronic USA had some involvement in the sale of certain stent delivery systems, it
certainly did not put Plaintiffs on notice that Medtronic USA sold the ENDEAVOR stent in the
11
United States. As a result, the Court shall not bar Plaintiffs from amending their Complaint to
add Medtronic USA as a defendant based on Cordis’ prior litigation history with Medtronic
USA.
Further, the Court finds that Plaintiffs were reasonably diligent in their efforts to attain
information regarding which Medtronic entity sold the Endeavor stent in the United States.
While Plaintiffs did not depose four individuals who were identified in Medtronic’s initial
disclosures as being knowledgeable regarding “[f]inancial information regarding the Endeavor
stent” and one individual who was identified as being knowledgeable concerning “[s]ales
information regarding the Endeavor stent[,]” Plaintiffs did question other witnesses about the
Medtronic entity that sold the Endeavor stent. For example, Plaintiffs questioned Dr. Josiah
Wilcox, who was identified in Medtronic’s initial disclosures as being knowledgeable about the
“[o]peration, design, development, and use of the Endeavor device; [and] business and company
history[,]” about Medtronic’s sale of the Endeavor stent in the United States. Specifically,
Plaintiffs asked Dr. Wilcox: “Do you happen to know who sells the Endeavor stent in the U.S.?”
(Wilcox Tr. 21:1-2). Dr. Wilcox responded that “[o]ur sales reps from the coronary peripheral
division of Medtronic CardioVascular” sold the Endeavor stent in the United States. (Id. at 21:34). Dr. Wilcox also confirmed that Medtronic CardioVascular used to be known as Medtronic
AVE. Despite the fact that Dr. Wilcox’s testimony was plainly inaccurate, Medtronic made no
effort to correct the testimony not even by way of a deposition errata sheet.
While in retrospect Plaintiffs may have gotten better information regarding which
corporate entity sold the ENDEAVOR stent by deposing one or more of the individuals
specifically identified by Medtronic as being knowledgeable about financial or sales information
12
regarding the ENDEAVOR stent, the Court is aware that parties are not permitted to take an
unlimited number of depositions. As such, parties must pick and choose who to depose based on
the information available to them. Plaintiffs obviously thought they could obtain the information
they needed from other witnesses and attempted to do so. Under the circumstances of this case,
where none of the five witnesses identified by Medtronic as being specifically knowledgeable of
financial and sales information pertaining to the ENDEAVOR stent were identified as being
associated with Medtronic USA, the Court does not believe that Plaintiffs’ decision to forego
their depositions in favor of others was unreasonable.3
The Court also finds that Plaintiffs were reasonably diligent in their other efforts to
discover information relevant to the sale of the ENDEAVOR stent in the United States. In
reaching this conclusion, the Court notes that there was nothing in Medtronic’s initial disclosures
that would put Plaintiffs on notice of Medtronic USA’s role selling the ENDEAVOR stent in the
United States. While Medtronic correctly notes that Rule 26(a)(1)(A)(I) only requires parties to
identify individuals likely to have discoverable information, not corporate entities, there is
nothing in that Rule which prevents parties from identifying corporate entities likely to have
discoverable information as well. In fact, while Medtronic chose not to identify Medtronic USA
in its Rule 26(a)(1)(a)(I) disclosures, it did specifically identify “Cordis Corporation” and
“Wyeth” in its Rule 26(a)(1)(a)(I) list of “Individuals Likely to Have Knowledge of
Discoverable Facts.” (Weiner Decl. ¶3, Ex. B., Defendant Medtronic Inc. and Medtronic AVE,
Inc.’s Initial Disclosures at 2,3 (emphasis in original)).
3
As discussed in further detail below, the five individuals referenced by Medtronic were
identified in Medtronic’s initial disclosures with addresses belonging to “Medtronic.” In the
initial disclosures, the term “Medtronic” is used explicitly to refer to “Medtronic, Inc.”
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Further, in describing the location of its “[f]inancial documents relating to the Endeavor
stent[,]” as required by Rule 26(a)(1)(A)(ii), Medtronic referred to “Medtronic’s facilities,
including Santa Rosa, California, and Minneapolis, Minnesota.” (Id. at 9). Plaintiffs claim that
by “vaguely” referring to “‘Medtronic’s facilities’” in their initial disclosures, Medtronic
purposefully “hid the ball” regarding Medtronic USA’s involvement with the sale of the
ENDEAVOR stent in the United States. (Pl. Reply Br. at 4). The Court, however, disagrees;
though this disagreement does not behoove Medtronic. The Court, in fact, finds nothing vague
about Medtronic’s reference to “Medtronic’s facilities.” In its initial disclosures, Medtronic used
the term “Medtronic” to refer specifically to Medtronic, Inc. (Id. at 1).4 Having given it this
definition, the term “Medtronic” can have no other meaning within Medtronic’s initial
disclosures. As such, the phrase “Medtronic’s facilities” can only reasonably be understood to
mean Medtronic, Inc.’s facilities. There would, therefore, be no reason for Plaintiffs to think that
any of the aforementioned financial documents would be housed in a Medtronic, USA facility
because no such facility was included in Medtronic’s description of the location of that category
of documents. As a result, nothing about Medtronic’s location description put Plaintiffs on
notice of Medtronic USA’s involvement with the sale of the ENDEAVOR stent in the United
States. If Medtronic intended otherwise, then their initial disclosures plainly hid the ball.
In addition, while Plaintiffs sought to obtain discovery from Medtronic regarding its
claims and defenses, Medtronic never raised a claim of non-infringement based on the fact that
Medtronic USA, not Medtronic, sold the accused ENDEAVOR stent in the United States.
4
As a reminder, the Court uses the term “Medtronic” to refer to both Defendant
Medtronic, Inc. and Medtronic AVE, Inc. throughout this opinion.
14
Further, nothing in Medtronic’s 10-K filings identified a connection between Medtronic USA
and the ENDEAVOR stent and even the Instructions for Use associated with the ENDEAVOR
stent referred to Medtronic, Inc., not Medtronic USA.
The Court is mindful of the fact that it was not until November 24, 2010 that Plaintiffs
served an interrogatory that specifically asked Medtronic to identify the corporate entity
responsible for selling the ENDEAVOR stent in the United States. The Court, however, is also
mindful of the fact that based on the information available to them (i.e., Medtronic’s initial
disclosures, Medtronic’s 10-Ks, the Instructions for Use associated with the Endeavor Stent,
etc.), Plaintiffs had substantially no reason to believe that any entity other than Medtronic, Inc. or
Medtronic AVE would be listed in response to this question. Under these circumstances, the
Court finds that Plaintiffs were reasonably diligent in seeking to make the proposed amendments.
As a result, the Court finds that good cause exists to permit Plaintiffs to amend their Complaint
to add Medtronic USA as a defendant. For the same reasons, the Court finds that Plaintiffs did
not unduly delay in seeking to add Medtronic USA as a defendant.
Therefore, the sole question left for the Court then is whether Medtronic would be
unfairly prejudiced by Plaintiffs’ proposed amendment. The Court finds that it would not as the
addition of Medtronic USA will not require Medtronic to expend significant additional resources
to conduct discovery or prepare for trial; nor will it significantly delay these proceedings. While
Medtronic contends that the addition of Medtronic USA will likely result in several Medtronic
USA employees needing to be made available for deposition given their potential to be called as
trial witnesses, Plaintiffs contend that no additional depositions will be required prior to the
liability stage of trial, which is set to occur in September 2011. Instead, Plaintiffs merely seek
15
permission to obtain supplemental interrogatory responses. In light of the limited amount of
additional discovery that will be required by Medtronic USA’s addition and the fact that adding
Medtronic USA as a defendant will not delay the trial of these proceedings, the Court shall
permit Plaintiffs to add Medtronic USA as a defendant in this matter. The Court shall also
permit Plaintiffs to obtain supplemental interrogatory answers from Medtronic USA on
interrogatories that Plaintiffs have already propounded on Medtronic. At this time, no additional
discovery shall be permitted.
III.
Conclusion
For the reasons stated above, Plaintiffs’ motion to amend their Complaint is GRANTED.
An appropriate Order follows.
Dated: May 2, 2011
s/ Tonianne J. Bongiovanni
HONORABLE TONIANNE J. BONGIOVANNI
UNITED STATES MAGISTRATE JUDGE
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