United States District Court, D. New Jersey
MEMORANDUM OPINION AND ORDER
DOUGLAS E. ARPERT, Magistrate Judge.
This matter comes before the Court on two Motions: (1) a Motion by Petitioners Biomet, Inc. and Biomet Manufacturing Corporation (collectively "Biomet") seeking an order compelling Howmedica Ostenics Corporation ("Howmedica") to comply with Biomet's September 9, 2014 subpoena [Dkt. No. 1]; and (2) a Cross-Motion by Howmedica seeking the entry of a Protective Order [Dkt. No. 10]. Howmedica opposes Biomet's Motion to compel [Dkt. No. 10]. Biomet does not oppose Howmedica's Cross-Motion for the entry of a Protective Order. For the reasons set forth below, Biomet's Motion to compel the production of discovery by Howmedica [Dkt. No. 1] is GRANTED and Howmedica's Cross-Motion for the entry of a Protective Order [Dkt. No. 10] is GRANTED.
The facts and procedural history of this matter are well known to the parties and need not be recited at length. The present Motions arise out of a separate action which is currently pending in the United States District Court for the Northern District of Indiana (the "Indiana Action"). See Biomet, Inc. v. Bonutti Skeletal Innovations LLC, Civ. Action. No. 13-0176 N.D. Ind. The Indiana Action was initiated by Biomet's filing of a declaratory relief action seeking a determination of invalidity and non-infringement as to ten patents (the "Asserted Patents"). In response, Bonutti Skeletal Innovations, LLC ("Bonutti Skeletal") filed a Counterclaim asserting patent infringement against Biomet. The Asserted Patents relate to surgical methods and instruments for implanting prosthetic knees, hips and spinal components.
Biomet seeks documents and testimony related to Howmedica's involvement with Dr. Peter Bonutti, the named inventor of the Asserted Patents. On July 24, 2014, prior to serving Howmedica with the subpoena currently at issue, Biomet served a subpoena duces tecum on Stryker Corporation ("Stryker"). Dkt. No. 1 at p. 6. According to Biomet, Stryker responded to the subpoena with "generalized, boilerplate objections" and stated that it was not in possession or control of any documents relating to Howmedica's involvement with Dr. Bonutti. Id. at p. 7. Biomet addressed Stryker's objections and provided Stryker with "five, narrowed document categories and supporting documentation showing Stryker was likely in possession of responsive documents." Id . In response to Biomet's narrowed request, Stryker again refused to produce any document and represented that Howmedica was the entity in possession and control of documents responsive to the subpoena. Id.
On September 9, 2014, Biomet served Howmedica with a subpoena duces tecum (the "Subpoena") seeking the information originally requested from Stryker, which is the subject of Biomet's present Motion. Id . Howmedica objected to the Subpoena with the same general objections given by Stryker and refused to produce any documents. Id. at p. 8. Biomet then limited its request and Howmedica again objected and refused to produce any documents. Although Biomet originally sought to compel the production of nine categories of documents, Biomet has since limited its request to seven categories of documents:
1. Dr. Bonutti's consulting activities for Howmedica on minimally invasive knee surgery;
2. Surgical techniques and marketing brochures for specifically identified Howmedica knee and hip implant products published or distributed before 2003;
3. Product brochures, surgical techniques or technical drawings published or distributed before 2003 naming or identifying Dr. Bonutti;
4. Documents related to Howmedica's involvement in the patents asserted in the Indiana Action;
5. Presentations and training materials prepared by Dr. Bonutti for Howmedica or on Howmedica's behalf;
6. Sales records showing what Howmedica knee and hip products were used by Dr. Bonutti in orthopedic surgeries before 2003; and
7. Communications between Dr. Bonutti and ten identified Howmedica employees concerning topics related to the filing, obtaining and prosecuting the Asserted Patents.
Id. at p. 2. According to Biomet, the subpoena served on Howmedica seeks information which is directly relevant to Biomet's defenses and relates to: (1) the validity of the Asserted Patents; (2) Bonutti Skeletal's rights in the Asserted Patents; and (3) damages in the Indiana Action. Howmedica has refused to provide Biomet with any of the requested information. Accordingly, Biomet filed the instant Motion to compel Howmedica's compliance with the Subpoena. ...