Caliper Technologies Corp. v. Molecular Devices Corp., No. C 02-1837 JSW (JL) (N.D. Cal. 3/10/2003), C 02-1837 JSW (JL).
| Decision Date | 10 March 2003 |
| Docket Number | No. C 02-1837 JSW (JL).,C 02-1837 JSW (JL). |
| Parties | CALIPER TECHNOLOGIES CORPORATION, et al., Plaintiffs, v. MOLECULAR DEVICES CORPORATION, et al., Defendants. |
| Court | U.S. District Court — Northern District of California |
This is a suit for patent infringement. Caliper Technologies Corporation ("Caliper") is the holder of U.S. Patent Number 6,287,774 (the `774 patent"). The parties are competitors in the area of developing and marketing analytical tests and equipment for conducting automated biological experiments. Both companies offer competing versions of tests for certain enzymes that are appealing to potential customers in the pharmaceutical industry because the tests do not require expensive antibodies or the use of radioactive material. Caliper claims products sold by Molecular Devices Corporation ("MDC") infringe the `774 patent. MDC claims the patent is invalid and unenforceable. On October 29, 2002, Caliper amended its complaint to add claims under U.S. Patent Number 6,472,141, ("the `141 patent"). On January 14, 2003 this case was reassigned for all proceedings to Hon. Jeffrey S. White. The parties stipulated to exchange Preliminary Patent Claims Construction Statements March 12, 2003 and to submit their Joint Claims Construction and Prehearing Statement April 1, 2003. Caliper moved for a preliminary injunction which is scheduled to be heard on May 16, 2003.
On December 23, 2002 the parties submitted to this court a joint statement regarding their discovery disputes. The court found the matter suitable for decision without a hearing as provided by Civil Local Rule 7-1(b).
Caliper moves for an order compelling additional responses from MDC to the following discovery requests:
Interrogatory 4: Identify each component of MDC's IMAP system
MDC responded by producing business records, as permitted by FRCP 33(d). Caliper demands a narrative response, claiming that the documents cited by MDC provide no guidance on the physical and chemical relationships between each component, nor do they describe the process by which each IMAP system is manufactured. MDC claims the information is in the documents, that Caliper's request is vague but that the documents, including materials MDC used when it presented its technology at an industry conference, explain how the IMAP systems work.
MDC is obliged only to give the information to Caliper, not to explain it. Caliper's request is denied.
Interrogatory 5 — For each element of each claim of the `774 patent, that MDC claims is not met by any MDC IMAP system, identify any such IMAP system, and describe how each purportedly missing element is not present.
Caliper claims MDC invalidly delayed its response until December 23, 2002, relying on Patent Local Rule 2-5. MDC says its noninfringement contentions are predicated on its claim construction position which was not due until December 23. MDC admits that it relied on the rule permitting it to wait until the parties' mutual exchange of their claim construction positions. MDC claims Caliper is trying to obtain an unfair advantage by eliciting this information from MDC without giving anything in return, defeating the intent of the rules that the exchange be mutual.
The court assumes that this has been resolved.
Request for Production No. 6 — 10 representative 1.0 ml samples of IMAP binding reagent obtained from twelve different lots of IMAP binding reagent.
Request for Production No. 7 — Four representative samples of each type of IMAP system sold or offered for sale by MDC, including any product insert or literature.
Caliper seeks samples of the allegedly infringing products for testing and analysis. MDC refuses, at first demanding that Caliper pay the retail value of the kits. MDC eventually agreed to give Caliper fewer samples, but at MDC's cost.
Caliper rejoins that the profit on the products is distinct from the cost to MDC of production. Caliper did not offer to pay anything, but reduced its request to two samples of each IMAP kit and two samples of each binding reagent used in those kits.
MDC responded that the kits cost about $1600 each, and that 2 of each of 18 kits retail for $57,600. MDC asks the court to restrict Caliper to "a more reasonable subset of the possible IMAP kits," without specifying what that might be. MDC says that its cost per Explorer kit is approximately $450, including $250 in royalties, per kit. MDC claims that an order of 36 kits could affect its ability to fill its customers' orders, especially at the end of a quarter. Nevertheless, MDC is willing to produce 2 of each of its 18 IMAP kits at a cost of $500 per kit.
Normally, the producing party bears the cost of production but this situation is different from production of documents which have no value to anyone other than the parties. The court sees no justification to order Caliper to pay the retail cost of the kits but at the same time MDC is being deprived of its profit for each kit. The court orders that MDC produce 2 of each of its IMAP kits and that Caliper pay $500 for each of them.
Interrogatory No. 1 — Identify by product name, common name, product number, identification number and other identifying criteria for internal or external use each MDC IMAP system that MDC has ever offered for sale, sold, made or used, and include the date first made, used, sold or offered for sale, the identity of the actual or prospective customer, the volume of sale (in the event of actual sales), the price, any agreements associated with the sale or offer for sale, and the date of any such agreement.
Caliper claims this information is central to its claim for damages. The documents produced by MDC give no information about license agreements. MDC offered to supplement its response by January 30 to provide license agreements.
If MDC supplemented its response by January 30, 2003, then this request by Caliper is moot.
Request for Production No. 20 — All documents that constitute, refer, or relate to actual or projected prices, sales, and/or market share for any invention, method, apparatus or technology that does not use antibodies or radioactive isotopes, including but not limited to MDC's IMAP system.
The parties substantially resolved their dispute with respect to request No. 20 (and No. 23) — with one exception. Caliper wants sales and sales-related documents for all MDC enzyme assay technology that does not use antibodies or radioactive isotopes. Caliper wants to know if MDC is selling other products which infringe its patent besides the IMAP kits.
MDC is only willing to produce documents related to IMAP, since IMAP is the product which Caliper claims infringes its patent. MDC claims this is an overbroad request, and that Caliper offers no explanation why "all assays that don't use antibodies or radioactive isotopes" are relevant to any claim or defense of a party in this case.
A party may not obtain documents in order to discover whether it has a cause of action. Caliper's request is denied for failure to show relevance.
Request For Production No. 21 — All documents (including but not limited to studies, projections, plans or analyses) evidencing, reflecting, describing, or relating to any attempt by MDC, either alone or with any other entity, to develop, produce, sell or market any device capable of using MDC's IMAP system, including but not limited to MDC's Analyst platform.
Request for Production No. 22 — All documents that constitute, refer, or relate to actual or projected prices, sales, and/or market share for any invention, method, apparatus, or technology that is capable of using MDC's IMAP system, including but not limited to MDC's Analyst platform.
Caliper claims this information is relevant to its damage claim, to the extent that these devices function in concert with the products at issue. See Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538, 1549-50 (Fed. Cir. 1995) (); Paper Converting Machine Co. v. Magna Graphics Corp., 745 F.2d 11, 22-23 (Fed. Cir. 1984) () Caliper claims that it is entitled to discover information which may bolster its theory that it would have sold more units of devices that run enzyme assays had MDC not bolstered sales of its devices with its infringing IMAP assay kits. Caliper seeks to discover facts which may support its theory.
MDC contends that its "Analyst" is a large expensive scientific machine, like a fancy microscope, which can be used in different modes to see different kinds of results: one of these is the fluorescence polarization or "FP" assay, such as IMAP. But the Analyst is also used to read the results of other assays, including various luminescence and absorbance tests. The entire market rule applies only when patented and unpatented things are "analogous to components of a single assembly," "parts of a complete machine" or "a functional unit." Rite-Hite Corp., 56 F.3d at 1550. The rule provides for recovery of damages based on the entire combination, not just the patented parts. MDC says that rule does not apply to this case. An Analyst machine and an IMAP kit together are not a product. To suggest that they are is as illogical — like a microscope and a specimen to be examined are a product — so that the maker of the specimen would be liable for the sales of microscopes.
The Analyst and the IMAP kits together do not qualify for consideration under the entire market rule, as described by the court in the Rite-Hite case, so discovery regarding the Analyst is not relevant to damages. Caliper's request is denied.
Request for Production No. 33 — All documents comprising, reflecting, describing, or relating to any analysis or evaluation of whether MDC's IMAP system infringes the `774 patent, including but not...
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