United States District Court, D. Massachusetts
ORDER ON ABIOMED'S MOTION TO COMPEL DISCOVERY OF
MAQUET'S REBUTTAL VALIDITY CONTENTIONS
Dennis Saylor, IV United States District Judge.
an action for patent infringement. Defendant Maquet
Cardiovascular, LLC owns six patents directed to guidable
intravascular blood pumps and related methods. Plaintiff
Abiomed, Inc. (“Abiomed”) filed this action
seeking declaratory judgment that it does not infringe those
patents and that they are invalid.
has filed a motion to compel discovery of Maquet's
rebuttal validity contentions. For the reasons described
below, that motion will be granted in part and denied in
served its infringement contentions on May 25, 2017, in which
it asserted 98 claims against four of Abiomed's products.
On September 8, 2017, Abiomed served its noninfringement and
invalidity contentions as to all 98 of those claims, citing
to 84 prior-art references.
November 29, 2017, pursuant to the Court's narrowing
order, Maquet selected 35 claims to move forward with in this
days after the Court issues its Markman order,
Maquet will further limit its asserted claims to 18. Thirty
days after Maquet limits its claims, Abiomed will narrow its
list of primary prior-art references to 12.
February 21, 2017, and September 8, 2017, respectively,
Abiomed served Maquet with the following interrogatories:
9. For each claim of the Patents-in-Suit that Maquet contends
is valid under 35 U.S.C. § 112, on a claim-by-claim
basis, state how a person of ordinary skill in the art at the
time of the priority date would have found such claim to have
sufficient written description and enabling disclosure,
including identifying any support in the specification of the
patent by column and line number or in the prior art.
16. If Maquet disagrees with any of the bases for invalidity
set forth in in Abiomed's Invalidity Contentions, state
each disagreement and the basis for that disagreement,
including identifying any fact that supports Maquet's
position, including any person with knowledge of that fact
and each document that refers or relates to that fact,
identifying the support in the specification of each
Patent-in-Suit that supports any disagreement related to any
35 U.S.C. § 112 position stated in Abiomed's
Invalidity Contentions, identifying the basis for any
position that any cited prior art patent, publication,
reference or system is not prior art under any statutory
provision, and identifying any claim limitation that Maquet
contends is absent from any prior art reference analyzed in
Abiomed's Invalidity Charts.
(Logsdon Decl. Ex. 1 at 14; Ex. 2 at 2).
objected to those interrogatories as overly broad, unduly
burdensome, and premature, contending that it should not have
to respond before the Abiomed has narrowed its primary
prior-art references to 12. Abiomed filed the present motion
to compel Maquet to respond within 30 days of the Court's
order granting its motion.
Standard of Review
interrogatory may relate to any matter that may be inquired
into under Rule 26(b). An interrogatory is not objectionable
merely because it asks for an opinion or contention that
relates to fact or the application of law to fact, but the
court may order that the interrogatory need not be answered
until the designated discovery ...