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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`
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`NUVASIVE, INC.,
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`
`
`v.
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`ALPHATEC HOLDINGS, INC., ET
`AL.,
`
` Case No.: 18-cv-0347-CAB-MDD
`
`Plaintiff,
`ORDER ON JOINT MOTON FOR
`DETERMINATION OF
`DISCOVERY DISPUTE
`
`[ECF NO. 117]
`
`
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`Defendant.
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`
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`Before the Court is the Joint Motion of the parties for determination of
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`a discovery dispute filed on October 19, 2018. (ECF No. 117). This is a
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`patent case and the joint motion presents Defendant Alphatec’s motion to
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`compel further responses to eleven requests for production of documents and
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`three interrogatories.
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`LEGAL STANDARD
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`The Federal Rules of Civil Procedure authorize parties to obtain
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`discovery of “any nonprivileged matter that is relevant to any party’s claim or
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`defense and proportional to the needs of the case . . . .” Fed. R. Civ. P.
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`26(b)(1). “Information within the scope of discovery need not be admissible in
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`1
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`18-cv-0347-CAB-MDD
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`

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`evidence to be discoverable.” Id. District courts have broad discretion to
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`limit discovery where the discovery sought is “unreasonably cumulative or
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`duplicative, or can be obtained from some other source that is more
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`convenient, less burdensome, or less expensive.” Fed. R. Civ. P. 26(b)(2)(C).
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`An interrogatory may relate to any matter that may be inquired of
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`under Rule 26(b). Fed. R. Civ. P. 33(a)(2). The responding party must
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`answer each interrogatory by stating the appropriate objection(s) with
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`specificity or, to the extent the interrogatory is not objected to, by
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`“answer[ing] separately and fully in writing under oath.” Rule 33(b). The
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`responding party has the option in certain circumstances to answer an
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`interrogatory by specifying responsive records and making those records
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`available to the interrogating party. Rule 33(d).
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`Similarly, a party may request the production of any document within
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`the scope of Rule 26(b). Fed. R. Civ. P. 34(a). “For each item or category, the
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`response must either state that inspection and related activities will be
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`permitted as requested or state an objection to the request, including the
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`reasons.” Rule 34(b)(2)(B). If the responding party chooses to produce
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`responsive information, rather than allow for inspection, the production must
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`be completed no later than the time specified in the request or another
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`reasonable time specified in the response. Id. An objection must state
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`whether any responsive materials are being withheld on the basis of that
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`objection. Rule 34(b)(2)(C). An objection to part of a request must specify the
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`part and permit inspection or production of the rest. Id. The responding
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`party is responsible for all items in “the responding party’s possession,
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`custody, or control.” Rule 34(a)(1). Actual possession, custody or control is
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`not required. Rather, “[a] party may be ordered to produce a document in the
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`possession of a non-party entity if that party has a legal right to obtain the
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`document or has control over the entity who is in possession of the
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`document.” Soto v. City of Concord, 162 F.R.D. 603, 620 (N.D. Cal. 1995).
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`DISCUSSION
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`A. REQUESTS FOR PRODUCTION (“RFPs”)
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`1.
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`RFP No. 1
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`Alphatec requests the production of all information produced by
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`Plaintiff NuVasive in any opposition, litigation, patent office or other
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`proceedings relating to the validity, enforceability, infringement and other
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`aspects of the patents-in-suit. NuVasive’s objection that the term “produced”
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`is vague, is frivolous. NuVasive responded that it has responsive information
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`but only in electronic format and has invited Alphatec to meet and confer
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`regarding that information.
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` This Court subscribes to the view expressed in Principle No. 6 of the
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`Sedona Principles:
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`Responding parties are best situated to evaluate the procedures,
`methodologies, and technologies appropriate for preserving and
`producing their own electronically stored information.
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`The Sedona Principles, Third Edition, 19 SEDONA CONF. J. 1, Principle 6,
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`118 (2018). The Court also subscribes to Principles 1 and 3 which provide
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`that electronic discovery is generally subject to the same discovery
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`requirements as other relevant information and that the parties should seek
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`to reach agreement regarding production of electronically stored information.
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`Id. at 56, 71.
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`The parties refer to the Court’s Model Order Governing Discovery of
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`Electronically Stored Information in Patent Cases appended to the Patent
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`Local Rules. Although the applicability of the Model Order was discussed in
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`the parties’ Joint Discovery Plan, no version of the Order, or any Order
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`governing ESI production, appears to have been filed or granted by the Court.
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`Accordingly, the provisions of the Model Order are not relevant.
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`The result is that NuVasive is obligated to search its data, collect and
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`produce relevant, non-privileged information even without input from
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`Alphatec. NuVasive cannot delay production because Alphatec declines to
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`offer search terms. Alphatec, on the other hand, runs the risk that by not
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`participating in the process, any challenge it may raise to the reasonableness
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`of NuVasive’s search may be viewed with some skepticism. NuVasive’s
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`objections are overruled.
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`2.
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`RFP No. 2
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`Alphatec seeks production of information regarding any transfer of
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`rights, assignment, license, proposed license, offer to assign or license, sale,
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`offer to sell, request for license, grants of rights, covenants not to sue,
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`indemnities, agreements not to assert patent rights, or settlements NuVasive
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`entered into the field of spinal fusion surgery, including but not limited to,
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`with respect to any of the patents-in-suit, any patent application leading to
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`the patents-in-suit, any related patent applications and patents, any foreign
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`counterparts, and/or any embodying product.
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`NuVasive, in response, has agreed to produce all executed patent
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`license agreements in the field of spinal fusion surgery and to produce
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`executed agreements, “however titled, responsive to this request that related
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`to the patents-in-suit or related patents.” (ECF No. 117 at 22).1 Alphatec
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`believes that it is entitled to more and that the information is relevant to
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`damages. The Court finds that NuVasive’s agreement is sufficient to provide
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`
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`1 The Court will refer to page numbering supplied by CM/ECF rather than original
`pagination throughout.
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`4
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`Alphatec what it needs. The Court finds that draft offers and draft licenses
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`need not be produced. The Court is not convinced of the relevance of draft
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`documents nor convinced that the effort of finding them is proportional to the
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`needs of the case.
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`NuVasive also has agreed to contact third parties implicated by these
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`disclosures to the extent that the agreements to be produced have
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`confidentiality clauses. Issues regarding such disclosures are not properly
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`before the Court at this time. Alphatec’s motion to compel a further
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`response, beyond NuVasive’s agreement is denied. To the extent this
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`information is stored electronically, NuVasive is not relieved of its obligation
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`to collect, analyze and produce such information that is responsive, relevant
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`and non-privileged.
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`3.
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`RFP No. 3
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`This RFP is related to RFP No. 2. Alphatec seeks production of
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`documents reflecting payments made by sale or royalty for the agreements
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`produced in connection with RFP No. 2. NuVasive has agreed to produce this
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`information consistent with its agreement to produce the underlying
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`agreements. Alphatec complains that NuVasive intends to produce this
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`information in a summary format as opposed to the actual transaction
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`documents. The Court finds that a summary production is sufficient at this
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`time. If Alphatec, after receipt and review of the summary documents is
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`unsatisfied, the parties must meet and confer and agree on a number of
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`transactions for which NuVasive will produce the underlying documentation
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`to verify that the summary provided is accurate. NuVasive also has agreed
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`to contact third parties implicated by these disclosures to the extent that the
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`agreements to be produced have confidentiality clauses. Issues regarding
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`such disclosures are not properly before the Court at this time. To the extent
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`this information is stored electronically, NuVasive is not relieved of its
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`obligation to produce such information.
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`4.
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`RFP No. 5
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`Alphatec requests that NuVasive produce all documents,
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`communications, and things concerning NuVasive’s retention of, agreements
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`with, and/or payments to surgeons in the field of spinal fusion surgery,
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`including but not limited to the surgeons NuVasive identified in its
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`preliminary injunction briefing and supporting declarations in this case.
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`NuVasive objects primarily for relevance but has agreed to produce executed
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`agreements with surgeons identified in its preliminary injunction briefing.
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`The Court has reviewed the operative First Amended Complaint (ECF
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`No. 110), the Answer to the First Amended Complaint (ECF No. 114),
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`Alphatec’s Amended Counterclaims (ECF No. 125), and the relevant
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`preliminary injunction briefing (ECF No. 77). The Court finds that Alphatec
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`has not demonstrated the relevance of the requested documents to any claim
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`or defense currently extant. NuVasive did refer to certain surgeon
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`agreements in its preliminary injunction briefing. NuVasive’s agreement to
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`produce the agreements with these surgeons is sufficient, considering that
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`the preliminary injunction was denied by the Court. At this point, the case
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`involves allegations of patent infringement and responsive claims of
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`invalidity. There are no claims regarding contractual interference with
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`surgeons. Alphatec’s motion to compel a further response, beyond that
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`promised by NuVasive, is denied.
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`5.
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`RFP No. 6
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`Alphatec requests that NuVasive produce all documents regarding the
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`Society of Lateral Access Surgery. Alphatec claims that these documents are
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`relevant to issues regarding why surgeons use NuVasive products. NuVasive
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`6
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`18-cv-0347-CAB-MDD
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`asserts objections primarily based upon relevance. NuVasive agrees that it
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`must produce, in connection with other RFPs, documents reflecting
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`marketing and outreach, but assert that all documents regarding the Society
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`is hopelessly overbroad. The Court agrees that Alphatec has not adequately
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`demonstrated relevance and, in any event, requesting production of “all
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`documents,” without any obvious connection to any claim or defense and only
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`a tenuous connection to damages, is overbroad.
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`6.
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`RFP No. 7
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`Alphatec requests that NuVasive produce all documents,
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`communications, and things concerning any government investigation of
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`NuVasive regarding sales, marketing, and/or payments to surgeons in the
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`field of spinal fusion surgery. NuVasive objects for relevance. Alphatec has
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`not demonstrated the relevance of a 2015 government investigation of
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`NuVasive’s sales and marketing practices to the claims and defenses in this
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`case. Alphatec’s allegedly infringing products were not introduced into
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`commerce until years later. NuVasive’s relevance objection is sustained.
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`7.
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`RFP No. 8
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`Alphatec requests that NuVasive produce all documents,
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`communications, and things concerning the ownership, including any
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`assignments, of the patents-in-suit. NuVasive asserts that it has produced
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`all ownership documents regarding the patents-in-suit, including patent
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`assignments and has nothing else to produce. Alphatec is unsatisfied with
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`that response but has not identified anything specific that may be missing.
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`No further response is required from NuVasive.
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`8.
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`RFP No. 11
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`Alphatec requests that NuVasive produce all documents,
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`communications, and things concerning NuVasive’s analysis or projections
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`regarding the financial impact and duration on NuVasive’s business of the
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`alleged infringement of each of the patents-in-suit by Alphatec.
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`To some extent, this dispute is similar that addressed by the Court
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`regarding RFP No. 1. The information is relevant. NuVasive cannot decline
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`to produce relevant, non-privileged information in its possession because it is
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`electronically stored or because Alphatec has not suggested a custodian or
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`search terms. It is up to NuVasive to identify relevant custodians and use a
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`reasonable method to search its data for responsive information. And, to the
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`extent NuVasive produces summary information, and Alphatec expresses a
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`legitimate concern regarding its accuracy, the parties should agree on the
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`production of certain underlying data to verify the summary data provided.
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`9.
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`RFP No. 12
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`Alphatec requests that NuVasive produce all documents,
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`communications, and things concerning or comprising any financial
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`documents, including but not limited to, budget forecasts and competitive
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`analyses, concerning the patents-in-suit, any accused product, any embodying
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`product, or any competing product. This RFP presents virtually identical
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`issues as addressed in connection with RFP No. 11, above. The same
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`analysis and rulings holds here.
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`10. RFP Nos. 14 and 15
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`Alphatec requests that NuVasive produce all materials that have been
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`made by, reviewed by, or provided to any witness who has provided testimony
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`in or may be called to testify as a witness in this case and all materials
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`relating to facts or data considered by any witness who has provided
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`testimony in or will testify in this case. NuVasive has agreed to produce all
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`documents referenced by any witness in any filing in this case but otherwise
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`argues that the requests are overbroad. The Court agrees. Disclosure of
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`facts and data relied upon by expert witnesses is governed by Rule
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`26(a)(2)(B)(ii), Fed. R. Civ. P., and the Court expects full compliance in that
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`regard. Otherwise, the requests are overbroad and not enforceable.
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`B. INTERROGATORIES
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`1.
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`Interrogatory No. 6
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`Alphatec asks NuVasive, for each asserted claim of the patents-in-suit,
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`to identify and describe any investigations, evaluations, or opinions relating
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`to the validity, patentability, and/or enforceability of such claim, whether
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`performed by NuVasive or any other entity; identify all persons with
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`knowledge of such investigations, evaluations, or opinions; identify the
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`persons most knowledgeable regarding such investigations, evaluations, or
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`opinions; and identify all documents concerning the results, whether
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`preliminary, interim, or final, of such investigations, and/or containing such
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`evaluations or opinions.
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`The primary dispute here is over NuVasive’s assertions that it has
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`provided all investigations, evaluations or opinions relating to validity,
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`patentability and enforceable that have been specifically commissioned or
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`undertaken by NuVasive or on its behalf. Alphatec asserts that the phrasing
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`suggests that NuVasive is hiding something. Without more, the Court finds
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`NuVasive’s response sufficient in that regard.
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`A secondary dispute is over NuVasive’s use of Rule 33(d) to respond, in
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`part, to this Interrogatory. Although the reference is lengthy, Alphatec’s
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`challenge appears perfunctory and NuVasive’s explanation regarding the
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`sufficiency of the Rule 33(d) references adequate. To the extent that relevant
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`documents may be publicly available, a party is not relieved of the
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`requirement of producing such documents as may be in the party’s
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`possession. If NuVasive has copies of the relevant documents, they must be
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`produced.
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`A tertiary dispute is that NuVasive did not specifically identify “all
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`persons” with knowledge of the investigations, and identify “persons most
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`knowledgeable” about the investigations. The request to identify “all” of
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`anything, under these circumstances, is overbroad on its face. And,
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`NuVasive’s response that the persons identified in the Rule 33(d) documents
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`are those with knowledge, is sufficient.
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`2.
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` Interrogatory No. 7
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`Alphatec asks NuVasive to identify all prior art and documents,
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`communications, or things potentially constituting prior art of which
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`NuVasive is aware for each of the patents-in-suit, any patent application
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`leading to the patents-in-suit, any related patent applications and patents,
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`and any foreign counterparts; identify all persons with knowledge regarding
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`such prior art and potential prior art; and identify the persons most
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`knowledge regarding such prior art and potential prior art.
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`NuVasive asserts that it has identified all prior art of which it is aware.
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`The dispute is over the way NuVasive said it to Alphatec – that it had not
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`intentionally withheld any prior art from the U.S. Patent and Trademark
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`Office. With NuVasive’s current clarification, there appears no real dispute
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`here. Alphatec challenges NuVasive’s use of Rule 33(d) but without specifics
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`and challenges NuVasive’s direction that relevant documents are publicly
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`available in the patent proceedings of the relevant patents. The fact that
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`documents may be publicly available does not relieve a party of producing
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`such documents as may be in the party’s possession. If NuVasive has copies
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`of the relevant documents, they must be produced. The Court also finds that
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`NuVasive need not respond to the Interrogatory to the extent it calls for the
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`identification of “all persons” with knowledge of the prior art or most
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`Case 3:18-cv-00347-CAB-MDD Document 134 Filed 12/13/18 PageID.16220 Page 11 of 11
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`knowledgeable about it. Prior art can be, and this case most likely is, rather
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`extensive and it is an undue burden for a party to have to determine who, in
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`the wide world of spinal fusion surgery, may have knowledge of or be “most
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`knowledgeable” about that art.
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`CONCLUSION
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`Defendant’s motion to compel further responses to Requests for
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`Production 1-3, 5-8, 11, 12, 14, and 15, and Interrogatories 6 and 7, as
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`presented in this Joint Motion, is GRANTED IN PART AND DENIED IN
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`PART. To the extent that the Court has ordered further responses, Plaintiff
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`must serve such responses no later than 30 days after the filing of this Order,
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`absent a contrary agreement of the parties or further Order of the Court.
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`Dated: December 13, 2018
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