October 22, 2015
from United States District Court for the District of
Minnesota - Minneapolis.
Andover Healthcare, Inc., Petitioner - Appellant: Scott
Benson, BRIOL & ASSOCIATES, Minneapolis, MN; David Brafman,
Patricia M. Carlson, AKERMAN, LLP, West Palm Beach, FL.
Company, Respondent - Appellee: Felicia Boyd, BARNES &
THORNBURG, Minneapolis, MN; William Woodford, FISH &
RICHARDSON, Minneapolis, MN.
LOKEN, MURPHY, and COLLOTON, Circuit Judges.
COLLOTON, Circuit Judge.
Healthcare, Inc., appeals an order of the district
court denying Andover's petition under
28 U.S.C. § 1782 for discovery to be used in a
patent-infringement suit in Germany. We conclude that the
district court did not abuse its discretion, and we therefore
affirm the order.
Healthcare, Inc., and 3M Company both make cohesive,
latex-free bandages. Andover holds patents on its bandages in
both the United States and Europe. In 2013, Andover filed a
patent-infringement suit in the District of Delaware,
alleging that 3M had infringed Andover's patent with its
line of Coban bandages. Andover also sued 3M in Germany,
asserting that 3M violated Andover's related European
patent. This appeal concerns an effort to discover
information for use in the German suit.
one of Andover's European patent describes " a
cohesive product comprising . . . an inherently crystalline
elastomer and at least one tackifying agent in an amount
effective to disrupt the crystalline structure of the
elastomer and maintain the elastomer in a partial
polycrystalline state." In support of its defense [118
U.S.P.Q.2d 1261] in the German case, 3M submitted an expert
report stating that 3M's raw " elastomer materials
are not present in a crystalline . . . state." The
report further observed that " [s]ince no crystallinity
could be detected in the elastomer right from the beginning,
it can therefore not be disrupted by specifically adding
tackifiers." 3M argued before the German court that
because its polychloroprene elastomer material is not
crystalline or maintained in a partial polycrystalline state,
its products did not infringe Andover's European patent.
believes that 3M's test results cannot be correct and
seeks to conduct its own testing on 3M's polychloroprene
and 3M's polychloroprene and tackifying agent mixture. 3M
has refused, however, to reveal to Andover its specific type
of polychloroprene or its formula for making the bandages. 3M
asserts that this information implicates highly sensitive
disclose the disputed information, under a protective order,
in the Delaware infringement suit. Andover first sought
permission from the Delaware court to use the information in
the parallel German proceeding. The Delaware court denied
Andover's request, citing the sensitivity of the
information and the availability of other mechanisms in
Germany and in the United States to obtain the information.
Andover then sought the same discovery from the German court,
but the German court has not yet ruled on the request. While
pursuing these discovery requests, Andover also conducted
testing on 3M's commercially available ...