Marcus, Christy —
I wanted to flag an issue that came in this morning. I received a letter yesterday evening (dated October 28, 2024) from Derek Loomis at Hargrove, Tate & Bennington LLP (900 North King Street, Suite 1200, Wilmington, DE 19801), sent on behalf of Apex Surgical Innovations, Inc. The letter states that Apex intends to file a motion to compel in *Apex Surgical Innovations, Inc. v. Solstice Biomedical, Inc.*, Case No. 1:24-cv-00587-RGA, before Chief Judge Richard G. Andrews unless Solstice supplements its discovery responses and produces additional documents by November 11, 2024.
Specifically, Apex is raising deficiency complaints regarding the following:
**Interrogatories:** Nos. 4, 7, and 12 from Apex's First Set of Interrogatories (18 interrogatories total, served August 5, 2024). Apex contends that Solstice's responses are incomplete or evasive.
**Document Production — Three Categories:** 1. Internal design files and CAD drawings for the PrecisionEdge™ PE-5000, PE-12000, and PE-15000 Series predating the accused product launch; 2. Communications between Solstice engineering and Niamh Cassidy (VP, Regulatory & IP) regarding freedom-to-operate analysis; and 3. Solstice's internal competitive intelligence reports on Apex products.
By way of background, Solstice served its Responses and Objections to Apex's First Set of Interrogatories and First Set of Requests for Production on September 16, 2024, and completed its document production on September 30, 2024. On our end, Solstice served its own Second Set of RFPs to Apex on October 14, 2024, and I completed my review and Key Document Analysis memorandum on Apex's production (31,450 documents, Bates Nos. APEX-000001 through APEX-031450, produced October 7, 2024) on October 21, 2024.
My initial observations: some of Apex's complaints may have merit with respect to interrogatory supplementation — particularly on prior art (Interrogatory No. 7), given the additional references Kendrick & Lau identified after our initial responses went out. That said, the document production demands appear overbroad, and the request for the FTO-related communications with Niamh Cassidy is a clear reach into privileged territory.
How would you like to proceed? Should we loop in Eamon Rourke at Solstice at this stage?
I've attached the HTB deficiency letter (dated October 28, 2024) for your review.
Thanks, Peter
Peter Vassiliev Associate Calderwood & Harkness LLP Direct: (302) 555-4218 pvassiliev@calderwoodharkness.com
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CONFIDENTIALITY NOTICE: This email and any attachments are privileged and confidential, intended only for the named recipient(s). This communication constitutes attorney-client privileged information and/or attorney work product. If you have received this message in error, please notify the sender immediately and delete all copies. Any unauthorized review, use, disclosure, or distribution is prohibited. *Apex Surgical Innovations, Inc. v. Solstice Biomedical, Inc.*, Case No. 1:24-cv-00587-RGA (D. Del.) — C&H Matter No. 10294.0017.
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From: Christy Bauer (cbauer@calderwoodharkness.com) To: Marcus Delgado (mdelgado@calderwoodharkness.com) Cc: Peter Vassiliev (pvassiliev@calderwoodharkness.com) Date: Wednesday, October 30, 2024, 2:15 PM EDT Subject: RE: Apex Motion to Compel — Response Strategy [C&H Matter No. 10294.0017] [PRIVILEGED & CONFIDENTIAL — ATTORNEY WORK PRODUCT]
Marcus —
I've reviewed the HTB deficiency letter Peter flagged this morning (from Victoria Stanton, dated October 28) and spent the last couple of hours pulling together my analysis. Below is a detailed breakdown of where we stand and my recommendations.
**I. Background**
HTB is threatening to file a motion to compel if Solstice does not supplement its interrogatory responses (Solstice's Responses and Objections to Apex's First Set of Interrogatories, served September 16, 2024) and produce additional documents within 10 business days. The letter identifies three interrogatories and three document production categories as purportedly deficient.
**II. Interrogatory Analysis**
**Interrogatory No. 4** — *Solstice's knowledge of Apex's patents prior to the accused product design:* I've gone back through our response. The answer as served is factually accurate, but it is somewhat sparse on the timeline of events. I recommend we supplement with a more detailed chronology. We can do so without waiving any positions or making damaging admissions — this is really a matter of fleshing out what was already disclosed. Supplementation here should take the sting out of any motion practice on this interrogatory.
**Interrogatory No. 7** — *Prior art known to Solstice:* This is the one where they have the strongest argument. As Peter noted, Dr. Jonathan Kendrick's team at Kendrick & Lau LLP completed a supplemental prior art search in early October that identified three additional prior art references not cited in our original response. Under our ongoing duty to supplement under Rule 26(e), we should update this response. I recommend we coordinate closely with Kendrick & Lau to ensure the supplemental response accurately reflects the current state of the prior art landscape without overcommitting on invalidity theories ahead of the Markman hearing.
**Interrogatory No. 12** — *Identification of all persons with knowledge of the design and development of the PrecisionEdge™ products:* Apex claims our response is incomplete. Frankly, they may be partially right. During my review of Apex's document production (APEX-000001 through APEX-031450, produced October 7, 2024), I identified two additional Solstice engineers — Rajesh Anand and Maria Volkov — who appear on internal design review correspondence and were not listed in our original response. I recommend adding them. This is a low-risk supplementation that eliminates a legitimate complaint.
**III. Document Production Analysis**
As background, Solstice produced 48,217 documents (Bates Nos. SBD-000001 through SBD-048217) on September 30, 2024. DataVault Litigation Solutions, LLC processed 1.2 TB of ESI under the TAR protocol we agreed upon. In total, 312,000 documents were reviewed. The TAR validation metrics are strong — recall exceeding 85% and precision exceeding 90% — which puts us in a defensible position if the adequacy of the review methodology is challenged.
Apex's specific demands break down as follows:
**(a) CAD Files / Internal Design Files (PE-5000, PE-12000, PE-15000 Series):** The vast majority of responsive design files have already been produced. There may be a small number of additional CAD files that were not captured in the initial collection — I've asked Peter to coordinate with DataVault to run a targeted search. My sense is that any remaining files are either outside the reasonable scope of discovery or were appropriately excluded under the TAR protocol. We may be able to offer a targeted supplemental production here as a good-faith gesture without significant risk.
**(b) FTO Communications with Niamh Cassidy:** This is the category I'm most concerned about from an advocacy standpoint — not because our position is weak, but because Apex is clearly probing for a fight on privilege. These communications involve both Kendrick & Lau LLP (serving as patent prosecution and FTO counsel) and Solstice's in-house IP counsel. They are squarely within the attorney-client privilege and the work product doctrine — the FTO analyses were prepared either in anticipation of litigation or at the direction of counsel for the purpose of rendering legal advice. Our privilege log currently covers approximately 340 documents in this category. I believe we should hold firm here. These entries are properly logged and our privilege assertions are well-founded.
**(c) Competitive intelligence Reports on Apex Products:** We produced a number of these in our September 30 production. Apex's demand for more appears overbroad. Many of the additional reports they seem to want are either cumulative of what has already been produced or are general market analysis documents that are not proportional to the needs of this case under Fed. R. Civ. P. 26(b)(1). I recommend we conduct a targeted review to confirm we haven't missed anything clearly responsive, but push back on the breadth of this request.
**IV. Procedural Posture**
One important point: under the Joint discovery Plan filed July 15, 2024, the parties agreed to a meet-and-confer requirement before filing any discovery motion. HTB's October 28 letter does not indicate that they have satisfied this obligation — it reads as a demand letter, not as a meet-and-confer communication. I recommend we promptly propose a meet-and-confer date. This serves two purposes: it demonstrates our good faith, and it creates a record that any motion filed without a proper meet-and-confer is procedurally deficient.
**V. Timing Concerns**
The timing here is not great. The Proposed Claim Constructions were just exchanged on October 22, and the Joint Claim Construction Brief is due November 4. The Markman Hearing is set for November 18. A contested motion to compel at this juncture would be a significant distraction and resource drain heading into what is the most consequential pre-trial proceeding. I suspect HTB knows this and is using the threat of motion practice as leverage.
**VI. Recommendation**
In sum, I recommend the following approach:
1. **Supplement** Interrogatory Nos. 4, 7, and 12 where we can do so defensibly and without prejudice to our litigation positions; 2. **Hold firm** on the privilege assertions for the FTO communications with Niamh Cassidy — these are properly logged and clearly protected; 3. **Offer a targeted supplemental production** of any non-privileged CAD files not previously captured by the TAR process; 4. **Push back** on the competitive intelligence reports as overbroad and disproportionate under Rule 26(b)(1); and 5. **Propose a meet-and-confer** promptly to get ahead of any motion filing and to create a favorable record.
Happy to discuss when you have a chance. I can have a more detailed strategy memo ready by end of week if that would be helpful.
Best, Christy
Christy Bauer Senior Associate Calderwood & Harkness LLP Direct: (302) 555-3891 cbauer@calderwoodharkness.com
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CONFIDENTIALITY NOTICE: This email and any attachments are privileged and confidential, intended only for the named recipient(s). This communication constitutes attorney-client privileged information and/or attorney work product. If you have received this message in error, please notify the sender immediately and delete all copies. Any unauthorized review, use, disclosure, or distribution is prohibited. *Apex Surgical Innovations, Inc. v. Solstice Biomedical, Inc.*, Case No. 1:24-cv-00587-RGA (D. Del.) — C&H Matter No. 10294.0017.
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From: Marcus Delgado (mdelgado@calderwoodharkness.com) To: Christy Bauer (cbauer@calderwoodharkness.com); Peter Vassiliev (pvassiliev@calderwoodharkness.com) Cc: Catherine Bloom (cbloom@calderwoodharkness.com) Date: Wednesday, October 30, 2024, 4:47 PM EDT Subject: RE: RE: Apex Motion to Compel — Response Strategy [C&H Matter No. 10294.0017] [PRIVILEGED & CONFIDENTIAL — ATTORNEY WORK PRODUCT]
Christy, Peter —
Thank you both for the thorough and prompt work on this. Christy, your analysis is exactly what I needed. Let me lay out how I'd like us to proceed.
**General Assessment**
I agree this is posturing by Victoria Stanton and Hargrove, Tate & Bennington — the deficiency letter has the hallmarks of a pre-motion pressure campaign rather than a genuine effort to resolve a discovery dispute cooperatively. That said, we need to take it seriously. The Scheduling Order deadlines are tight, claim construction briefing is actively underway (Proposed Claim Constructions exchanged October 22; Joint Claim Construction Brief due November 4; Markman Hearing November 18), and Chief Judge Andrews does not look favorably on parties who let discovery disputes fester. We need to be proactive.
**1. Interrogatory Supplementation**
I agree with Christy's recommendation to supplement Solstice's responses to Interrogatory Nos. 4, 7, and 12 from Apex's First Set. On each:
- **No. 4 (knowledge of Apex patents):** Flesh out the timeline as Christy suggests. Keep it factual and tight — no editorializing. - **No. 7 (prior art):** This is the one that requires the most care. The supplementation on prior art contentions needs to be coordinated directly with Dr. Jonathan Kendrick at Kendrick & Lau LLP, who conducted the prior art searches and prosecution history reviews. The three additional references his team identified in early October need to be included, but I want to make sure the supplemental response doesn't inadvertently narrow our invalidity theories before claim construction. **Peter — please schedule a call with Kendrick & Lau this week.** Ideally Thursday or Friday. I want to be on that call, and Christy should join as well. - **No. 12 (persons with knowledge):** Add Rajesh Anand and Maria Volkov. Straightforward.
**2. Document Production — Scope of Dispute**
Apex's demands through HTB target three categories beyond our September 30 production of 48,217 documents (Bates Nos. SBD-000001 through SBD-048217). Here is how I want to handle each:
**(a) Internal Design Files / CAD Drawings (PrecisionEdge™ PE-5000, PE-12000, PE-15000 Series):** The vast majority of responsive files have been produced. To the extent any additional CAD files exist that were not captured, they are either outside the reasonable scope of discovery or were appropriately handled under the TAR protocol we agreed upon with DataVault Litigation Solutions, LLC. That said, I'm fine with running a targeted supplemental search to confirm completeness — this costs us very little and demonstrates good faith. If we identify a small number of additional files, we produce them. If we don't, we have a strong record showing we were thorough.
**(b) FTO Communications (Niamh Cassidy / Kendrick & Lau):** We hold firm. Period. These are privileged attorney-client communications and work product prepared in anticipation of litigation and/or at the direction of counsel. The freedom-to-operate analyses were conducted by Kendrick & Lau at the direction of in-house IP counsel. The communications between Solstice engineering and Niamh Cassidy on this topic were made for the purpose of obtaining and facilitating legal advice. They are properly logged on the privilege log, and they stay there.
That said — and this is critical — **Christy, I need you to go through the privilege log and ensure that the protocol memorandum dated August 1, 2024 has been fully implemented.** Every log entry for the FTO-related communications must be sufficiently detailed to withstand scrutiny. If Apex pushes this to a motion to compel, there is a real possibility Chief Judge Andrews orders in camera review. Our log entries need to be airtight — proper descriptions of the communication, the participants, the legal purpose, and the basis for the privilege claim. No boilerplate. I'd also like you to confirm that the 340-document count is current and complete.
On a related note, DataVault processed 1.2 TB of ESI through the TAR protocol. The validation metrics Christy cited (recall > 85%, precision > 90%) are strong, but I want the TAR methodology thoroughly documented in a defensible format in case the Court inquires about the adequacy of our review. If we don't already have a TAR validation report from DataVault, let's request one this week.
**(c) Competitive intelligence Reports on Apex Products:** We've produced what's responsive and proportional. I'm willing to conduct a targeted review to confirm we haven't missed anything obviously responsive, but many of the additional reports Apex is seeking are cumulative of what has already been produced. We push back on this as overbroad and not proportional to the needs of the case under Rule 26(b)(1).
**3. Meet-and-Confer**
Christy, please reach out to Victoria Stanton and Derek Loomis at HTB and propose a meet-and-confer call before they formally move to compel. I agree with your observation that their October 28 letter does not satisfy the meet-and-confer requirement in the Joint discovery Plan filed July 15, 2024. We should get out in front of this — I'd much prefer to resolve the dispute without Court intervention, particularly with the Markman hearing on November 18. Propose dates early next week.
If Apex ultimately files a motion to compel, we should be prepared to file a cross-motion for protective order on the FTO communications. Christy, please begin outlining the protective order arguments so we're not starting from scratch if it comes to that.
**4. Client Communication**
**Peter — please prepare a short update memo for Eamon Rourke, General Counsel at Solstice,** summarizing the dispute and our recommended approach. Keep it concise — two pages maximum. Eamon should also loop in Niamh Cassidy to confirm that all custodial holds are current and that no additional responsive documents have been identified since the September 30 production. If there are any new documents sitting on a custodian's system that haven't been collected, we need to know about it now, not after a motion is filed.
**5. Insurance / Budget**
One note for the file: defense costs associated with opposing any motion to compel are covered under the Halcyon Specialty Insurance Co. policy (Policy No. HSI-IP-2023-04891). The $250,000 self-insured retention has already been exhausted, so there should be no budget concern on the client side for this work. I'm copying Catherine Bloom so she has visibility on the insurance piece from a billing perspective.
**6. Next Steps**
I'd like a revised response strategy memo from both of you by **end of day Friday, November 1.** The memo should incorporate the analysis above, lay out our supplementation plan for the three interrogatories, detail our positions on each of the three document categories, and outline our meet-and-confer talking points and protective order framework.
Let's stay ahead of this. Good work so far.
Marcus
Marcus Delgado Partner Calderwood & Harkness LLP Direct: (302) 555-7104 mdelgado@calderwoodharkness.com
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CONFIDENTIALITY NOTICE: This email and any attachments are privileged and confidential, intended only for the named recipient(s). This communication constitutes attorney-client privileged information and/or attorney work product. If you have received this message in error, please notify the sender immediately and delete all copies. Any unauthorized review, use, disclosure, or distribution is prohibited. *Apex Surgical Innovations, Inc. v. Solstice Biomedical, Inc.*, Case No. 1:24-cv-00587-RGA (D. Del.) — C&H Matter No. 10294.0017.