On October 27, 2014, Chief ALJ Charles E. Bullock issued the public version of Order No. 20 (dated October 7, 2014) in Certain Hemostatic Products and Components Thereof (Inv. No. 337-TA-913).
By way of background, this investigation is based on a complaint filed by Baxter International Inc., Baxter Healthcare Corporation, and Baxter Healthcare SA (collectively, "Baxter") alleging violation of Section 337 by Ethicon, Inc. ("Ethicon") and Ferrosan Medical Devices A/S ("Ferrosan") in the importation into the U.S. and sale of certain hemostatic products that infringe one or more claims of U.S. Patent Nos. 8,303,981; 8,512,729; 6,066,325; 8,357,378; and 8,603,511 (collectively, the "Asserted Patents"). See our March 5, 2014 and April 4, 2014 posts for more details on the complaint and Notice of Investigation, respectively.
According to the Order, Ferrosan moved to compel Baxter to Answer Ethicon's Interrogatory No. 48 and to produce a communication related to the abandonment of the '969 application. Ferrosan argued that the date when Baxter first considered whether the Accused Products infringed the Asserted Patents was relevant to its claims and defenses. Specifically, Ferrosan argued that the information was relevant to its defenses of prosecution laches, waiver/equitable estoppel, and patent misuse. Ferrosan also asserted that the dates at issue were not privileged because privilege only extends to communications and not to facts. With respect to the communication regarding the '969 application described in the deposition of Mr. Finkelstein, Ferrosan claimed that the document was relevant to its claim of inequitable conduct, was not privileged, and that even it were privileged, the privilege was waived because Mr. Finkelstein talked about the document's contents.
Regarding Interrogatory No. 48, Baxter argued that it had already sufficiently responded and that Ferrosan's request was broader than Interrogatory No. 48. As such, Baxter asserted that what Ferrosan was seeking was irrelevant and protected by the attorney-client privilege and/or work product immunity. With respect to the document referenced by Mr. Finkelstein, Baxter represented that it does not exist.
ALJ Bullock found Baxter's arguments to be persuasive, finding that Interrogatory No. 48 is different from what Ferrosan was requesting and that Baxter had sufficiently answered Interrogatory No. 48. Additionally, ALJ Bullock noted that Baxter represented that the document described in Mr. Finkelstein's declaration does not exist. Accordingly, ALJ Bullock denied Ferrosan's motion.