Massachusetts Patent Litigation Wrap-Up —€“ October 2017

This post is part of a monthly series summarizing notable activity in patent litigation in the District of Massachusetts, including short summaries of substantive orders issued in pending cases.

Ethicon Endo-Surgery, Inc. v. Covidien LP, 2017 U.S. Dist. LEXIS 163269, 16-cv-12556-LTS (D. Mass, Oct. 2, 2017)

• Order on Motion for Preliminary Injunction – DENIED

Ethicon sued Covidien seeking a declaratory judgment that Ethicon's most recent sealing instrument, the Enseal X1 Large Jaw device, did not infringe one of Covidien's patents directed to endoscopic bipolar forceps. Covidien counterclaimed alleging infringement and moved for a preliminary injunction barring Ethicon from marketing and selling the X1 device. The court denied Covidien's motion because it was unable to show (1) a likelihood of success on the merits of its infringement claim, because the expert evidence proffered by Covidien was deemed to be speculative with respect to how the X1 device would actually be used in surgery; and (2) irreparable harm, as Covidien failed to show the nexus between the claimed harm and Ethicon's alleged infringement.

Abiomed Inc. v. Maquet Cardiovascular LLC, 16-cv-10914-FDS (D. Mass, Oct. 6, 2017)

• Order on Abiomed’s Motion to Compel Deposition —€“ DENIED
• Order on Abiomed’s Motion to Compel Production of Documents —€“ GRANTED IN PART; DENIED IN PART
• Order on Maquet’s Motion to Compel Production of Documents — GRANTED IN PART; DENIED IN PART

Abiomed sued Maquet seeking a declaratory judgment that its line of heart pumps, sold under the name Impella, did not infringe Maquet's patents. Abiomed contended that Maquet's parent company, Getinge AB, was in control of the litigation and sought discovery on the relationship between Getinge and Maquet and ultimately moved in separate motions to compel (1) the deposition of Getinge's General Counsel and (2) the production of documents regarding the relationship between Maquet and its parent company.

The court denied Abiomed's motion to compel Maquet to produce Getinge's General Counsel for a deposition. Following the test laid out in Shelton v. American Motors Corp., 805 F.2d 1323, 1327 (8th Cir. 1986), the court found that deposing in-house counsel was unwarranted because Abiomed did not argue that Getinge's General Counsel was the only individual involved, and Maquet had proposed an alternative non-lawyer substitute. The court also denied Abiomed's motion to compel documents, as Abiomed had not yet reviewed the over 500,000 pages already produced by Maquet in response to the request.

Maquet also moved to compel Abiomed to produce all documents and things relating to the accused Impella heart pumps. Abiomed opposed the request as irrelevant and overly burdensome because it extended beyond the accused features. The court granted the motion in part, but limited the number of the accused products and limited the request to specific types of documents.

SiOnyx, LLC et al v. Hamamatsu Photonics K.K. et al., 1:15-CV-13488 (D. Mass, Oct. 13, 2017)

–        Order on Motion to Compel —€“ GRANTED IN PART; DENIED IN PART

–        Order on Motion for Protective Order relating to Notices of Deposition —€“ GRANTED IN PART; DENIED IN PART

SiOnyx and the President and Fellows of Harvard College (together "SiOnyx") sued Hamamatsu Photonics, Hamamatsu Corporation, and Ocean Optics (together "HPK") asserting claims for correction of patent inventorship, patent infringement, and breach of contract. SiOnyx moved to compel Hamamatsu to produce information related to the identity of their customers, sales data, and their inventors. The court granted the motion to compel in part and denied it in part, determining that interrogatories pertaining to customer information were relevant to identify HPK's customers in the United States, but found interrogatories directed to communications with third parties other than customers, potential customers, and distributors were overbroad. In addition, the court narrowed the interrogatories seeking information about each named inventor's contribution to the specifications and drawings for the disputed patents, finding the request overly burdensome.

In addition, HPK moved for a protective order preventing SiOnyx from taking 30(b)(6) depositions on topics that HPK deemed irrelevant. The court denied the motion with respect to (1) the information concerning the conception and reduction to practice of the patents at issue, (2) the value of the Japanese patent applications, and (3) any patentability, validity, enforceability, or prior art searches, studies, or analyses relating to the Japanese patent applications or disputed patents, but granted the motion with respect to topics related to (4) HPK's policies for determining when a Japanese patent application should be filed and when a PCT application should be filed, and (5) communications with customers or potential customers regarding the Japanese patent applications or the disputed patents.

Authors: Matthew C. Berntsen, Claire Collins