Cordis Corp. v. Scimed Life Systems, Inc.

• Decision Date: 15 September 1997
• Docket Number: Civ. No. 4-96-261 (JRT/RLE)
• Citation: 982 F.Supp. 1358
• Parties: CORDIS CORPORATION, Plaintiff, v. SCIMED LIFE SYSTEMS, INC., Defendant.
• Court: U.S. District Court — District of Minnesota

982 F.Supp. 1358

CORDIS CORPORATION, Plaintiff, v. SCIMED LIFE SYSTEMS, INC., Defendant.

Civ. No. 4-96-261 (JRT/RLE)

United States District Court, D. Minnesota.

September 15, 1997.

Chris Lind, David Berten, and Mary Moore, Chicago, IL, for plaintiff.

Dominic E. Massa, Boston, MA, for defendant.

MEMORANDUM ORDER

ERICKSON, United States Magistrate Judge.

I. Introduction

This matter came before the undersigned United States Magistrate Judge pursuant to a general assignment, made in accordance with the provisions of Title 28 U.S.C. § 636(b)(1)(A), upon the Defendant's Motion to Compel Production of Patent Applications.

A Hearing on the Motion was conducted on July 17, 1997, at which time the Plaintiff appeared by Chris Lind, David Berten, and Mary Moore, Esqs., and the Defendant appeared by Dominic E. Massa, Esq.

For reasons which follow, we grant the Motion, in part.

II. Factual and Procedural Background

In this action for patent infringement, the Plaintiff has alleged that the Defendant manufactured and sold a balloon catheter device, which assertedly infringes upon three of the Plaintiff's United State patents — specifically, Patent No. 5,156,612, which is entitled "Balloons for Medical Devices and Fabrication Thereof" ("the '612 Patent"); No. 5,304,197, which is also entitled "Balloons for Medical Devices and Fabrication Thereof" ("the '197 Patent"); and No. 5,449,371, which is entitled "Balloons for Medical Devices" ("the '371 Patent"). The Defendant represents, without contradiction from the Plaintiff, that each of these Patents-in-suit shares the same patent specification,¹ but presents differing patent claims.

In Request No. 8 of its First Requests for Production of Documents, the Defendant sought the production of "[t]he complete file history of any patent application owned or prosecuted by Cordis which includes claims directed, in whole or in part, to balloon materials or methods of making balloons." The Plaintiff objected to this Request insofar as it sought the production of file histories which related to pending patent applications, arguing that those applications were confidential, and that production of their file histories would unfairly provide the Defendant with a competitive advantage. Following informal inquiry, the Plaintiff has identified one pending United States patent application, which it has denominated as "the '095 Application".² As related by the Plaintiff, the '095 Application is a file wrapper continuation of an abandoned application — which has been designated as "the '530 Application".³ The '530 Application, in turn, is a continuation of the '371 Patent which, as noted, is one of the three Patents-in-suit. Accordingly, the '095 Application, and its abandoned parent — the '530 Application — are the Applications which are at issue in this Motion, as the Defendant seeks the production of these Applications and their file histories.

III. Discussion

A. Standard of Review. It is well-settled that the secrecy of pending and abandoned United States patent applications should be preserved whenever possible. See, e.g., Avery Dennison Corp. v. UCB SA, 1996 WL 633986 * 1 (N.D.Ill., October 29, 1996); Central Sprinkler Co. v. Grinnell Corp., supra at 227; Fischer Imaging Corp., v. Lorad Corp., 148 F.R.D. 273, 274 (D.Colo.1993); PPG Indus., Inc. v. Libbey-Owens-Ford Co., 1991 WL 159133 * 2 (N.D.Ill., August 14, 1991); Paper Converting Machine Co. v. Magna-Graphics Corp., 207 U.S.P.Q. 1136 (E.D.Wis.1980); Ideal Toy Corp. v. Tyco Indus., Inc., 478 F.Supp. 1191, 1193 (D.Del. 1979); Wolowitz v. United States, 185 U.S.P.Q. 155, 156 (Ct.Cl.1975); Struthers Scientific & Internat'l Corp. v. General Foods Corp., 45 F.R.D. 375, 381 (S.D.Tex. 1968). Indeed, the United States Patent and Trademark Office ("PTO") is commanded by statute to maintain the confidentiality of such patent applications, see, Title 35 U.S.C. § 122, and, while this mandate is not similarly binding upon the Courts, it is, nonetheless, entitled to some deference. See, Avery Dennison Corp. v. UCB SA, supra at * 1; Central Sprinkler Co. v. Grinnell Corp., supra at 227; Fischer Imaging Corp. v. Lorad Corp., supra at 274; Paper Converting Machine Co. v. Magna-Graphics Corp., supra at 1136; Ideal Toy Corp. v. Tyco Indus,, Inc., supra at 1192.

Accordingly, the Courts have generally applied a balancing test to decide whether to compel discovery of pending or abandoned applications. Avery Dennison Corp. v. UCB SA, supra at * 2; Central Sprinkler Co. v. Grinnell Corp., supra at 227; Fischer Imaging Corp. v. Lorad Corp., supra at 274; PPG Indus., Inc. v. Libbey-Owens-Ford Co., supra at * 2; Paper Converting Machine Co. v. Magna-Graphics Corp., supra at 1136; Ideal Toy Corp. v. Tyco Indus., Inc., supra at 1193; Cleo Wrap Corp. v. Elsner Engineering Works, Inc., 59 F.R.D. 386, 388 (M.D.Pa.1972); Struthers Scientific & Internat'l Corp. v. General Foods Corp., supra at 381-82; Great Lakes Carbon Corp. v. Continental Oil Co., 23 F.R.D. 33, 35 (W.D.La.1958). This balancing test has been aptly summarized, as follows:

[T]he question of whether disclosure should be ordered requires a balancing of competing policy and litigation interests. Disclosure of file wrappers of pending and abandoned applications should be ordered when the necessity for disclosure outweighs the desirability of maintaining the secrecy of data in the file wrapper, especially if protective measures can be fashioned to minimize the intrusion or to prevent excessive dissemination of the revealed material. Conversely, if the need to examine the file wrapper is less than the interest served in protecting secrecy, or if confidentiality could not be effectively protected by other means, disclosure should not be ordered.

Ideal Toy Corp. v. Tyco Indus., Inc., supra at 1193.⁴ Or, stated differently, "[d]irect relevancy weighs on disclosure's side, whereas direct competition in the relevant market-place by the parties weighs on secrecy's side." Central Sprinkler Co. v. Grinnell Corp., supra at 227.

B. Legal Analysis. Here, the Defendant urges that the materials which comprise the file histories of the '095 and '530 Applications could prove relevant because they could contain certain admissions which counter the Plaintiff's assertion that the Defendant's product infringes upon the Patents-in-suit. In so urging, the Defendant relies upon the decisions of those Courts which have accepted that pending or abandoned applications of counterpart patents "may contain information or admissions that clarify, define or interpret the claims of the patent in suit." Avery Dennison Corp. v. UCB SA, supra at* 1; see also, Central Sprinkler Co. v. Grinnell Corp., supra at 229; B. Braun Medical Inc. v. Abbott Laboratories, 155 F.R.D. 525, 528 (E.D.Pa.1994); Bott v. Four Star Corp., 675 F.Supp. 1069, 1075 (E.D.Mich.1987) ("Information as to pending patent applications is important in patent litigation; such applications may contain admissions."); Scovill Mfg. Co. v. Sunbeam Corp., 61 F.R.D. 598, 602 (D.Del.1973).

For its part, the Plaintiff attacks the Defendant's proffer of relevance on two levels. First, it dismisses the Defendant's relevancy argument as little more than an attempt to justify a blind "fishing trip" through the file histories of its pending and abandoned applications, in a quest for admissions. We do not, however, share such a jaundiced view of the Defendant's statement of relevancy. In this respect, the Defendant asserts that its allegedly infringing product is a "copolymer" balloon, which is made from a "polyamide elastomer". It further underscores the presence of what it considers to be significant admissions, which are contained in the patent descriptions of certain of the Plaintiff's other balloon medical devices, and which are not the subject of the Patents-in-suit. In particular, the Defendant states that the description of the Plaintiff's balloon device, which is covered by United States Patent No. 5,342,386, contains statements which reflect that the inventors of the device did not intend the Patent's coverage to encompass balloons which are made from a polyamide elastomer — the same substance of which the Defendant's allegedly infringing product is composed. In addition, the Defendant highlights certain statements, which were offered as part of the Plaintiff's application in support of a European patent for one of its other balloon devices, and specifically, statements which distinguish the device as being a "homopolymer," rather than a co-polymer device. As noted, the Defendant's product is a copolymer balloon catheter.

It is the Defendant's contention that the existence of these statements tends to detract from the Plaintiff's assertion that its Patents-in-suit have been infringed by the Defendant's balloon catheter, since the statements arguably demonstrate that the Plaintiff's related products are meaningfully distinct from the Defendant's device. Reasoning somewhat by analogy, the Defendant stresses the possibility that the file histories of the '095 and '530 Applications — which, as noted, are directly derived from the '371 Patent, that is one of the Patents-in-suit — could contain similar admissions which counter or detract from the Plaintiff's allegations of infringement.

Admittedly, this argument is heavily reliant upon hypothesis but, nevertheless, within this context, the proponent of discovery inescapably is caused to rely upon some measure of supposition, as the contents of the soughtafter application can only be theorized, when framing a production request. See, Avery Dennison Corp, v. UCB SA, supra at * 1 ("The court does not agree that UCB, who has not had access to the application files, should be required to point out specific evidence that it expects to obtain from disclosure."); Central Sprinkler Co. v. Grinnell Corp., supra at 229 ("[I]t is unimportant that Defendants cannot point to specific evidence in the applications[;] Defendants do...