Motion to Compel Licensing and Royalty Agreements Denied

August 4, 2015 – The Southern District of California denied Defendant NuVasive its motion to compel the production of documents “relating to the determination of the Internal Revenue Service that certain licensing and royalty agreements between Medtronic, a company related to Plaintiff Warsaw, and its Puerto Rican subsidiary were not arms-length transactions.”  NuVasive asserted that Warsaw has relied in the past and will rely again on licensing and royalty agreements with its related companies to inform a reasonable royalty determination in the case.  However, the Court held “that evidence regarding the royalty rates paid by Plaintiff’s affiliates to Plaintiff on other technologies and evidence regarding the decision by the IRS that the rates paid on those technologies was not the product of arms-length negotiations is not relevant in this case.”

The case is captioned Warsaw Orthopedic, Inc. v. NuVasive, Inc., 08-CV-1512-CAB (MDD), in the Southern District of California.  The patents-at-issue relate to spinal implants, and methods and instruments for performing spinal surgery.

By:  Christopher J. Stankus

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