Ais Gmbh Aachen Innovative Solutions; Abiomed Europe Gmbh v. Thoratec LLC.

NOT FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
AIS GMBH AACHEN INNOVATIVE
SOLUTIONS; ABIOMED EUROPE
GMBH,
Petitioners-Appellees,
v.
THORATEC LLC.,
Respondent-Appellant.
No. 17-16539
D.C. No. 5:16-mc-80094-EJD
MEMORANDUM*
Appeal from the United States District Court
for the Northern District of California
Edward J. Davila, District Judge, Presiding
In re: THORATEC LLC.,
______________________________
THORATEC LLC.,
Petitioner,
v.
UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF
CALIFORNIA, SAN JOSE,
No. 17-71297
D.C. No. 5:16-mc-80094-HRL
* This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
FILED
MAR 13 2019
MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS

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Respondent,
AIS GMBH AACHEN INNOVATIVE
SOLUTIONS; ABIOMED EUROPE
GMBH,
Real Parties in Interest.
Petition for Writ of Mandamus
Argued and Submitted December 20, 2018
San Francisco, California
Before: CALLAHAN, N.R. SMITH, and MURGUIA, Circuit Judges.
Appellees, AIS GmbH Aachen Innovative Solutions and Abiomed Europe
GmbH (collectively, Abiomed), filed an application in the district court under 28
U.S.C. § 1782 for issuance of a subpoena in aid of proceedings in a foreign
tribunal. In proceedings in Germany, Abiomed sued appellant, Thoratec LLC, for
infringing German and European patents relating to certain heart pumps. A
magistrate judge granted the § 1782 application and ordered Thoratec to produce
for inspection three samples of its heart pump. Because the magistrate judge
ordered Thoratec to comply with the order prior to the district court reviewing
Thoratec’s challenge to it, Thoratec petitioned for a writ of mandamus and we
granted a temporary stay. After the district court upheld the magistrate judge’s
decision, Thoratec appealed and the appeal and mandamus petition were
consolidated. Whether under 28 U.S.C. § 1291 or under 28 U.S.C. § 1651, we

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have jurisdiction to address Thoratec’s challenge to the order compelling discovery
under 28 U.S.C. § 1782.1 We decline to disturb the district court’s ruling.
1. “We review the district court’s decision under 28 U.S.C. § 1782 for abuse
of discretion.” Four Pillars Enters. Co. v. Avery Dennison Corp., 308 F.3d 1075,
1078 (9th Cir. 2002). Thoratec argues that the magistrate judge’s standing order
deprived it of a meaningful opportunity to be heard. We disagree. Although the
standing order placed significant restrictions on the briefing, Thoratec could have
done more than it did. For example, Thoratec could have sought leave to file a
noticed motion to quash or to file a longer joint statement or exhibits. Thoratec has
not shown an abuse of discretion.
2. Thoratec argues that the district court abused its discretion in applying
the factors from Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 (2004).
Thoratec essentially reargues the Intel factors. Although Thoratec makes a rational
case for denying discovery, our review—whether on appeal or by mandamus—is
not de novo. District courts have “broad discretion” whether, and to what extent,
to allow discovery under 28 U.S.C. § 1782, Four Pillars, 308 F.3d at 1078, and
1 Abiomed argues we lack appellate jurisdiction over the appeal under
In re Letters Rogatory from City of Haugesund, Norway, 497 F.2d 378 (9th Cir.
1974). Thoratec argues Haugesund was wrongly decided and that it is
distinguishable. There is no need, however, to revisit Haugesund’s holding or to
determine if it applies here because—as Abiomed rightly conceded at oral
argument—even if we lack jurisdiction over the appeal, we would still have the
power to address Thoratec’s challenge in its mandamus petition.

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Thoratec has failed to show an abuse of discretion.
3. We issued an order asking the parties to be prepared to discuss at oral
argument whether we should reach an issue not addressed in the parties’ briefs:
whether a decision on an application under 28 U.S.C. § 1782 is dispositive within
the meaning of 28 U.S.C. § 636(b)(1) and Federal Rule of Civil Procedure 72.
Because Thoratec did not argue this issue either in the district court or in its
appellate briefs, we are satisfied that the issue has not been adequately presented
for our review.
For the foregoing reasons, Thoratec has failed to show an abuse of
discretion, let alone clear legal error. We thus deny the petition for writ of
mandamus. See In re Bozic, 888 F.3d 1048, 1052 (9th Cir. 2018) (“Clear legal
error is necessary . . . for issuance of the writ.”). Because we deny the petition on
the merits and the issues in the appeal are identical, the appeal is moot regardless
of whether we have appellate jurisdiction.2
Petition Denied; Appeal Dismissed.
2 To be clear, if there were no mandamus petition and we had appellate
jurisdiction in the appeal, we would affirm for the reasons stated in this
memorandum. But there is a mandamus petition, and in denying the petition on
the merits, we reject Thoratec’s contentions raised in its appeal. So whether or not
we have appellate jurisdiction over the appeal, the result is the same: dismissal of
the appeal (either for lack of appellate jurisdiction or for mootness).

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