3:24-cv-01021
S.D. Cal.May 28, 2025Background
- Plaintiffs 4WEB, Inc. and 4WEB, LLC allege that NuVasive’s Modulus spinal implant products infringe nine of 4WEB’s patents related to 3D-printed, titanium interbody fusion devices.
- Plaintiffs served Interrogatory No. 6, seeking detailed financial information on accessory products sold with the accused implants ("bundled" sales) to calculate damages based on the reasonable royalty theory under the Georgia-Pacific factors.
- NuVasive objected, arguing the interrogatory was vague, overbroad, unduly burdensome, and disproportionate, and that much of the accessory equipment was not sold but consigned to surgeons.
- After a discovery conference and narrowed request, the court considered whether NuVasive must provide accessory sales data, focusing particularly on invoices for accused products to identify any associated accessory products actually sold.
- The court analyzed the relevance to the reasonable royalty damages theory and whether the burden and proportionality concerns raised by NuVasive justified denying or narrowing discovery.
- The court ultimately granted in part 4WEB’s motion, ordering NuVasive to produce invoices for the accused products, finding this approach sufficiently targeted and proportional.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Relevance of accessory sales data to damages | Accessory product sales data is relevant for reasonable royalty damages under Georgia-Pacific convoyed sales theory | Accessory products are not functionally related and are not relevant; most are consigned, not sold | 4WEB showed sufficient relevance for discovery on this theory |
| Proportionality and burden of responding | Information is within NuVasive’s control and proportional given the case’s value | Producing the information is highly burdensome and would require significant manual review of invoices across systems | General burden assertions were unsupported; providing invoices is proportional |
| Sufficiency and clarity of plaintiff’s accessory product categories | Categories mirror those used by NuVasive in prior litigation and are sufficiently specific | Categories are not clear or specific enough to support targeted discovery | Categories deemed sufficiently clear for purpose of this discovery |
| Timing and distinction between discovery and trial admissibility | Relevance bar for discovery is lower than for trial; admissibility arguments are premature | Only accessories with no independent use are relevant, and most can be used without accused products | Admissibility is for trial; preliminary showing of relevance is enough for discovery |
Key Cases Cited
- Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625 (9th Cir. 2005) (district courts have broad discretion in determining relevancy for discovery)
- Am. Seating Co. v. USSC Grp., Inc., 514 F.3d 1262 (Fed. Cir. 2008) (defining convoyed sales and their relationship to patent damages)
- Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970), aff’d, 446 F.2d 295 (2d Cir. 1971) (reasonable royalty factors for patent damages)
- Warsaw Orthopedic, Inc. v. NuVasive, Inc., 778 F.3d 1365 (Fed. Cir. 2015) (functional relationship requirement for convoyed sales in patent damages)