Warsaw Orthopedic, Inc., v. Nuvasive, Inc., No. 12cv2738-CAB (MDD), slip op. (S.D. Cal. Sept. 4, 2013).
The Warsaw Orthopedic court offers a common sense solution to a discovery dispute: When truly comparable licenses related to the specific technology at issue are produced, there is no need to cast a wider net for licenses that may be only marginally comparable.
Plaintiff sued defendant for infringing patents related to lateral spine surgery. Id. at 1. When Defendant sought discovery of Plaintiff’s entire portfolio of licenses related to spinal surgery, Plaintiff produced licenses related only to lateral spine surgery and objected to producing the rest. Id. Defendant moved to compel, arguing all of Plaintiff’s licenses related to spine surgery were relevant as “comparable” licenses to determine royalty damages. Id.
The parties jointly submitted their dispute to the court. The court sided with Plaintiff, reasoning:
- Plaintiff produced a wide range of licenses related to the technology at issue.
- This was not a case where there were no licenses for the patents-in-suit or related technology. Were it otherwise, Defendant’s argument might resonate.
- Given the facts, there was no reason to require Plaintiff to produce its entire portfolio of spine surgery licenses. Such licenses simply were not relevant. Id. at 2.