Case 1:16-cv-01163-CFC-CJB Document 635 Filed 05/19/21 Page 1 of 5 PageID #: 28490
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`BOSTON SCIENTIFIC CORP. and
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`BOSTON SCIENTIFIC
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`NEUROMODULATION CORP.,
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`Plaintiffs and Counter-
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`Defendants,
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`v.
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`NEVRO CORP.,
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`Defendant and
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`Counterclaimant.
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`Civil Action No. 16-1163-CFC-CJB
`CONSOLIDATED
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`MEMORANDUM ORDER
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`At Wilmington, Delaware this 19th day of May, 2021.
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`WHEREAS, the Court has reviewed the parties’ joint motion regarding discovery
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`disputes, (D.I. 615),1 as well as the briefing related to Plaintiffs Boston Scientific Corp. and
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`Boston Scientific Neuromodulation Corp.’s (“BSC”) request that the Court “compel [Defendant]
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`Nevro Corp. [“Nevro”] to exercise its contractual right to facilitate discovery [i.e., gathering
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`relevant documents from and facilitating a virtual deposition of] Andre Walker[,]” the named
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`inventor of Nevro’s asserted United States Patent No. 9,002,461 (“the '461 patent”) who now
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`lives in Thailand and no longer works for Nevro, or alternatively that the Court sanction Nevro
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`for failing to facilitate discovery from Mr. Walker, (D.I. 601 at 1; see also D.I. 601; D.I. 607;
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`D.I. 619);2
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`1
`This consolidated case has been referred to the Court to hear and resolve
`discovery disputes and protective order disputes. (Aug. 7, 2020 Docket Entry; Civil Action No.
`18-644-CFC-CJB, D.I. 51 at 9)
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`While Nevro’s infringement counterclaims have recently been stayed pending
`inter partes review and any appeal, because BSC’s request relates in part to a non-stayed portion
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`Case 1:16-cv-01163-CFC-CJB Document 635 Filed 05/19/21 Page 2 of 5 PageID #: 28491
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`NOW, THEREFORE, IT IS HEREBY ORDERED as follows:
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`1.
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`Nevro argues that BSC’s request for discovery from Mr. Walker should be denied
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`for three reasons: (1) it does not have a contractual right to compel Mr. Walker to appear for
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`another deposition; (2) BSC has failed to demonstrate that Mr. Walker has any “unique
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`knowledge”; and (3) BSC has already deposed Mr. Walker twice (once in this case). (D.I.
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`607) Reasons (2) and (3) are easily disposed of.
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`2.
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`As to reason (2), BSC is not required to show that Mr. Walker has “unique
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`knowledge” to obtain discovery from him, only that he has relevant knowledge. Beyond that,
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`Mr. Walker surely would be expected to have both relevant and unique knowledge about his own
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`personal contributions to the '461 patent, (D.I. 601, ex. 1 at 7, 10, 17-18; D.I. 607 at 2); Amgen,
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`Inc. v. Ariad Pharms., Inc., Civil Action No. 06-259-MPT, 2007 WL 1425854, at *3 (D. Del.
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`May 14, 2007) (“Obviously, each inventor’s contribution to the invention or the patent is
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`relevant.”), and it seems like he would also have some relevant knowledge about BSC’s trade
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`secret misappropriation claims, (D.I. 601, exs. 3-5, 7). Moreover, Mr. Walker’s testimony about
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`the '461 patent could be particularly important, since his only co-inventor, Jon Parker, had almost
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`no recollection at deposition of how the '461 patent came to be. (Id., ex. 2 at 201-07)
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`3.
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`And as to reason (3), at the time of Mr. Walker’s last deposition, the '461 patent
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`was not asserted in this case and BSC’s trade secret misappropriation claim was not at issue. So
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`the fact that Mr. Walker has been deposed before in this case is no barrier here.
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`4.
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`As for reason (1), Nevro has at least two relevant agreements with Mr.
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`Walker: an Assignment Agreement and a Separation Agreement. (D.I. 607, exs. A-B) While
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`of the case (i.e., BSC’s misappropriation of trade secrets claim), the Court will decide the issue
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`2
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`Case 1:16-cv-01163-CFC-CJB Document 635 Filed 05/19/21 Page 3 of 5 PageID #: 28492
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`these agreements do not contain an express reference to an obligation for Mr. Walker to “testify”
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`in legal proceedings, the Assignment Agreement requires him to “do such additional acts as
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`[Nevro] deems necessary or desirable to . . . conduct proceedings regarding the ['461 patent]
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`Rights, including any litigation [] proceedings[,]” (id., ex. A), and the Separation Agreement
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`requires him to “give reasonable cooperation, at [Nevro’s] request, in any pending or future
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`litigation . . . with such cooperation to be at mutually convenient times[,]” (id., ex. B at 8). The
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`Court has no difficulty in concluding that this broad language would enable Nevro to compel Mr.
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`Walker to provide it with any relevant documents in his possession or to sit for a virtual
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`deposition regarding the claims in this litigation (a litigation that, after all, is in part about
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`Nevro’s assertion of a patent on which Mr. Walker is an inventor). See (D.I. 619 at 1); see also
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`Rensselaer Polytechnic Inst. v. Apple Inc., Civil Action No. 1:13-CV-0633 (DEP), 2014 WL
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`12586845, at *3-4 (N.D.N.Y. Apr. 21, 2014) (concluding that an assignment agreement between
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`plaintiff and a non-party, Thailand-based inventor that “did not specifically reference the
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`obligation to testify” but that required the inventor to “do anything possible which [plaintiff]
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`shall consider desirable for aiding in securing and maintaining proper patent protection for [the
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`patent-in-suit]” required that the plaintiff produce the inventor for a deposition in the case);
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`Murata Mfg. Co. v. Bel Fuse, Inc., 242 F.R.D. 470, 478-80 (N.D. Ill. 2007) (finding that a
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`foreign-based non-party inventor was required to testify at a deposition, even though his
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`assignment agreement with the plaintiff did not include the word “testify,” because the
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`agreement at issue provided that the inventor “covenant [ed] and agree[d] ... with [plaintiff and]
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`... its legal representatives ... that ... [he] w[ould], whenever counsel of [plaintiff] ... shall advise
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`that ... any proceeding in connection with [the patent-in-suit] in any country ... is lawful and
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`3
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`Case 1:16-cv-01163-CFC-CJB Document 635 Filed 05/19/21 Page 4 of 5 PageID #: 28493
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`desirable ... take all lawful oaths, and do all acts necessary or required to be done for the ...
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`enforcement and defense of [the Patent.]”) (internal quotation marks and citations omitted).
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`5.
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`Thus, with regard to BSC’s requests for the production of documents, Mr.
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`Walker’s documents would be considered to be under the “control” of Nevro for purposes of
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`Federal Rule of Civil Procedure 34. See Integra LifeSciences Corp. v. HyperBranch Med. Tech.,
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`Inc., Civil Action No. 15-819-LPS-CJB, 2016 WL 675553, at *1 (D. Del. Feb. 12, 2016) (citing
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`cases); Rensselaer Polytechnic Inst., 2014 WL 12586845, at *2. Therefore, Nevro is ORDERED
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`to produce any such responsive, non-privileged documents in a timely fashion.
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`6.
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`With regard to a deposition, the Court is a little unsure as to whether the
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`contractual obligations at issue would render Mr. Walker akin to a party employee for purposes
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`of a deposition that could be ordered pursuant to Federal Rule of Civil Procedure 30. See
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`Rensselaer Polytechnic Inst., 2014 WL 12586845, at *2-3; Amgen, 2007 WL 1425854, at
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`*2. But Nevro does not argue that, under these circumstances, Rule 30’s language precludes the
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`Court from ordering that Mr. Walker’s deposition occur (nor does it argue that the Court would
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`not otherwise have the discretion to order that the deposition occur). Therefore, the Court
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`ORDERS that Mr. Walker’s virtual deposition should occur at an appropriate time in this case.3
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`7.
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`Lastly, as to BSC’s request for sanctions, it would be inappropriate to order that
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`any sanctions be imposed before providing Nevro and Mr. Walker the opportunity to comply
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`with their obligations in light of this Memorandum Order. So that request is DENIED without
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`prejudice to renew.
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`3
`The parties shall further meet and confer about the appropriate timing of the
`deposition, in light of the stay.
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`4
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`Case 1:16-cv-01163-CFC-CJB Document 635 Filed 05/19/21 Page 5 of 5 PageID #: 28494
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`8.
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`Because this Memorandum Order may contain confidential information, it has
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`been released under seal, pending review by the parties to allow them to submit a single, jointly
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`proposed, redacted version (if necessary) of the document. Any such redacted version shall be
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`submitted by no later than May 24, 2021 for review by the Court, along with a motion for
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`redaction that includes a clear, factually detailed explanation as to why disclosure of any
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`proposed redacted material would “work a clearly defined and serious injury to the party seeking
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`closure.” Pansy v. Borough of Stroudsburg, 23 F.3d 772, 786 (3d Cir. 1994) (internal quotation
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`marks and citation omitted). The Court will subsequently issue a publicly-available version of
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`its Memorandum Order.
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`____________________________________
`Christopher J. Burke
`UNITED STATES MAGISTRATE JUDGE
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