establishing that the information it seeks in Document Request 35 is relevant and therefore has not
shown that the benefit of discovery outweighs the burdensomeness of the request. Cook’s motion
to compel BSC to respond to Document Request 35 is denied.

Third-Party Distribution and Licensing Agreements

Cook’s Interrogatory 5 and Document Requests 18, 19, and 33 ask for documents and
information relating to BSC’s distribution and/or licensing agreements with third parties.
Interrogatory 5 and Document Request 18 seek information dating back ten years, and Interrogatory
S and Document Requests 18 and 19 seek information relating to every BSC product, not just drug-
coated stent products.*

BSC objects to these requests, arguing that documents relating to products other than the one
at issue in the litigation are irrelevant and commercially sensitive, and that it would be unduly
burdensome to produce them. BSC also objects to producing documents created prior to July 7,
1996, claiming that they are irrelevant.

At oral argument, Cook claimed that third-party agreements are relevant to show the custom
and usage of the term “distribute” in the Angiotech Agreement. BSC claims that “distribute” means
the parties to the contract are not allowed to delegate the distribution task. Cook argues that it should
be able to test BSC’s definition of “distribute” and discover whether BSC has entered into prior
licensing and/or distribution agreements in which it has delegated product distribution

In support of its request, Cook submits Cibro Petroleum Prods., Inc. v. Sohio Alaska

Petroleum Co., 602 F. Supp. 1520 (N.D.N.Y. 1985). In Cibro, the district court held that, under

“BSC represented to the Court that it currently markets around 3000 products in
approximately 150 countries by itself and through its several domestic and international
subsidiaries. In the past ten years, BSC has marketed an additional 5000 products.

4


effective date ranging from July 7, 1996 to the date of this action; (3) to which BSC is a signatory;
and (4) which contain a provision or provisions allowing and/or requiring any party to the contract
to “distribute” the product at issuc in the contract. The list must include the names of all partics to
the contract; the product(s) involved in the contract; and the language of the distribution provision(s),
with as much additional language as is necessary to put the distribution provision into context.

The Court is mindful of BSC’s concern that Cook’s discovery requests seek commercially
sensitive information and believes that the concern is alleviated by the limited nature of the discovery
ordered in this opinion. If BSC remains concerned about the disclosure of confidential in formation,
it may present the Court with a carefully drafted protective order.

Third-Party Clinical Studies Agreements

Document Requests 36-38 seek to discover arrangements between BSC and any other
company regarding clinical studies of BSC’s products. Cook’s counsel has represented to the Court
that Cook does not wish to discover any raw data from clinical studies, only documents reflecting
the “interface” between BSC and those performing the studies. Requests 36 and 37 are limited to
drug-coated stent products, but Request 38 seeks information about clinical studies for all BSC
products sold after 1995. Requests 36 and 38 involve clinical studies that were actually performed
and/or for which BSC had executed contracts; Request 37, however, seeks documents relating to
proposed agrecments or proposed arrangements to perform clinical studies. BSC argues that
information regarding clinical studies of products other than the products at issuc in this litigation
is irrelevant and commercially sensitive.

Cook has shown that certain documents related to clinical studies are relevant to some of its

claims and defenses, but the scope of discovery is not unlimited. As discussed above, Cook has not


Cook submitted to the Court three cases that it apparently believes are relevant to this issue.”
None of the cases, however, supports Cook’s motion to compel a response to Document Request 35.
First, Cook presents Jones v. Benefit Trust Life Ins. Co., 800 F.2d 1397 (Sth Cir. 1986), which held
that a district court did not abuse its discretion by admitting evidence of a different policy issued by
the defendant insurer for the purpose of impeaching its witnesses on the issue of whether the
language of the plaintiff's policy was ambiguous. Jd. at 1400-01. This case does not support Cook’s
claim at oral argument that prior legal positions taken by a corporate entity can be used to impeach
testifying witnesses.

Second, Cook submits United States v. Int'l Bus. Machs. Corp., 66 F.R.D. 180 (S.D.N.Y.
1974), an antitrust case that held a defendant who claims the relevant market is broader than the
plaintiff does must provide discovery related to that broader market. /d. at 184-85. Unlike the
plaintiff in /BM, however, Cook is not secking documents related to the broader markct as defined
by BSC; Cook seeks documents relating to prior instances in which BSC has defined the relevant
market. /BM does not support Cook’s request.

Finally, Cook offers Kozlowski v. Sears, Roebuck & Co., 73 F.R.D. 73 (D. Mass. 1976),
which states that under Michigan law, records of similar product liability complaints arc discoverable
in a product liability action. Jd. at 75. Even setting aside the fact that Kozlowski is a product liability
action and the present case is not, Kozlowski lends no support to Cook’s claim that it should discover
not only prior complaints against BSC but that it is entitled to “any allegations or references of any

kind to antitrust violations made by or asserted against BSC.” Cook has offered no authority

‘Cook submitted four cases to the Court but did not designate which case supported each
interrogatory or document request. Three of the cases are arguably relevant to Document
Request 35.


Rule 406 of the Federal Rules of Evidence, contracts with third parties may be admissible to show
custom and usage and help to interpret an agreement’s terms. /d. at 1551. The issue here, however,
is not what kind of evidence a party can use to show custom and usage. The more fundamental
inquiry, which neither party addresses, is whether any extrinsic evidence of the contract’s terms will
be admissible in the first place.’

The Seventh Circuit has considered this issue, finding that Illinois courts do not hold rigidly
to the “four corners rule,” which forbids the use of extrinsic evidence unless a contract is
“intrinsically ambiguous,” meaning that the agreement is ambiguous or inconsistent on its face. See
Home Ins. Co. y. Chicago & Northwestern Transp. Co., 56 F.3d 763, 767-68 (7th Cir. 1995).
Instead, Illinois recognizes the doctrine of “extrinsic ambiguity,” which may exist when a contract
appears to be clear and unambiguous on its face, but “anyone who understood the circumstances in
which the contract had been intended to apply would know that it does not mean what it seems to
mean.” /d. at 768; accord Pierce v. Atchison, Topeka & Santa Fe Ry. Co., 65 F.3d 562, 568 (7th Cir.

1995). In such a case extrinsic evidence may be admitted “‘on a provisional basis’” in order for the
Court to determine whether the contract in fact contains an ambiguity. Home, 56 F.2d at 768
(citation omitted).

Not all extrinsic evidence is admissible to show an extrinsic ambiguity. “Subjective”

evidence -- the parties’ own testimony about the meaning of a contract ~ is “invariably self-serving,

inherently difficult to verify and thus, inadmissible.” /d. Objective evidence “is evidence of

Cook correctly points out that under Fed. R. Civ. P. 26, information need not be
admissible to be discoverable; it only has to be “reasonably calculated to lead to the discovery of
admissible evidence.” However, because Cook has not explained how inadmissible evidence
about an unrelated third-party contract could lead to the discovery of admissible evidence, the
admissible/discoverable distinction is immaterial.

5


demonstrated the relevance of third-party agreements related to products not involved in this
litigation. Moreover, Cook has not shown that it is entitled to discovery of prospective agreements
as well as executed contracts. The Court therefore grants Cook’s motion in part and orders BSC to
produce the names of companies that performed or are performing clinical studies on any drug-
coated stent product from July 7, 1996 to the date of this action and to describe the operative terms
of any such clinical study agreement.
CONCLUSION
For the reasons set forth above, Cook’s Motion to Compel is GRANTED in part and

DENIED in part.

ENTER:

Nan R, Nolan
United States Magistrate Judge

pated: Mabel 14, dooa


Minute Order Form (06197)

United States District Court, Northern District of Dlinois

Name of Assigned Judge Charles P. Kocoras Sitting Judge if Other Nan R. Nolan
or Magistrate Judge than Assigned Judge
CASE NUMBER 01 C 9479 DATE 3/14/2002
CASE Cook, Inc. vs. Boston Scientific Corp.
TITLE
[In the foilowing box (a) indicate the party filing the motion, e.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
MOTION: of the motion being presented.}
DOCKET ENTRY:
(1) a Filed motion of [ use listing in “Motion” box above.]
(2) ia Brief in support of motion due
(3) qa Answer brief to motion due. . Reply to answer brief due
(4) oO Ruling/Hearing on set for at
(5) (a) Status hearing[held/continued to] [set for/re-set for] on setfor at __
(6) o Pretrial conference[held/continued to} [set for/re-set for] on set for at
(7) Oo Trial[set for/re-set for] on at
(8) a [Bench/Jury trial] [Hearing] held/continued to at
(9) ia This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]
OFRCP4(m) O General Rule 21 OFRCP41(a)(1) OO FRCP41(a)(2).
(io) «x [Other docket entry] | Enter Memorandum Opinion and Order: Plaintiff Cook’s Motion to Compel
is granted in part and denied in part.
(lil) (For further detail see order attached to the original minute order.]
No notices required, advised in open court. Document
Number
No notices required.
ov | Notices mailed by judge’s staff.
Notified counsel by telephone. sate docketed
Docketing to mail notices Fa .
Mail AO 450 form. yess eq Aye oD 2).
SY | Copy to judge/magisrarctotge— : a,
courtroom ! fed
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wh... Dateftime received in
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ambiguity ‘that can be supplied by disinterested third parties,’ such as custom or usage of the trade.”
Id. Objective evidence is admissible because it is difficult to fabricate such evidence and because
the evidence will not be presented to a jury unless the judge first determines that the evidence
establishes the existence of “a genuine ambiguity.” Jd. at 768-69.

Cook has not expressly alleged that the Angiotech Agreement contains an extrinsic
ambiguity, but such a claim can be inferred from Cook’s expressed intention to use evidence of
custom and usage to show that the contract term “distribute” may have a broader meaning than that
claimed by BSC. Whether or not the district court would find such evidence admissible, this Court
finds that it is discoverable.

The scope of that discovery will be limited, however, to objective evidence of agreements
that closely parallel the Angiotech Agreement. Third-party agreements should be admitted to show
customary practice only when the agreements are strongly analogous to the contract at issuc. See
Cibro, 602 F. Supp. at 1521 (“Subsidiary evidence of parallelism must be strong and convincing
when dealing with third party situations, and there is every reason to believe that standards of
admissibility should be higher than when dealing with transactions between the same partics.’”)
(citation omitted). Moreover, Cook has not established that documents relating to BSC’s distribution
agreements ten years ago are relevant, nor has Cook explained why documents involving products
not closely related to the Paxitaxel-coated stent product at issue in the case are relevant, particularly
considering that it would be a substantial burden for BSC to produce them.

Therefore, this Court grants Cook’s motion to compel responses to Interrogatory 5 and
Document Requests 18, 19, and 33 in part and orders BSC to produce to Cook a list of any and all

licensing and/or distribution agreements: (1) that involve drug-coated stent products; (2) having an


IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION
COOK, INC. ) .
)
)
Plaintiff, ) No. 01 C 9479
)
v. )
) District Judge Charles P. Kocoras
BOSTON SCIENTIFIC CORP. ) we
) aan
) Magistrate Judge Nan R. Nolan
Defendant. )
)
)

MEMORANDUM OPINION AND ORDER

Cook, Inc. (“Cook”) brings this action against Boston Scientific Corp. (“BSC”), secking
a declaratory judgment and alleging violations of the Lanham Act and the Sherman Act. BSC
answered and asserted counterclaims for breach of contract and breach of the implied covenant of
good faith and fair dealing. On February 28, 2002, Judge Kocoras granted BSC’s motion to dismiss
Cook’s Lanham Act claim, and he granted Cook’s motion to dismiss the counterclaim for breach of
the implied covenant of good faith and fair dealing.’

This matter is now before this Court on Cook’s Motion to Compel. Cook’s motion secks to

compel BSC to respond more fully to three interrogatories and nine document requests.’ The Court

'The parties’ allegations and claims are fully set forth in Judge Kocoras’s opinion. See
Cook, Inc. y. Boston Scientific Corp., No. 01 C 9479, 2002 WL 335314 (N.D. Ill. Feb. 28, 2002)

*As reflected in a March 12, 2002 letter from BSC, the parties have resolved their
disputes concerning two Interrogatorics, numbers 4 and 6; and two Document Requests, numbers
20 and 34. In addition, Cook has narrowed the scope of Document Requests 36-38.

1



has considered the parties’ briefs, oral arguments, and supplemental submissions. For the reasons
that follow, Cook’s motion is GRANTED in part and DENIED in part.
DISCUSSION

Rule 26 of the Federal Rules of Civil Procedure provides that “[p]arties may obtain discovery
regarding any matter, not privileged, that is relevant to the claim or defense of any party
Relevant information need not be admissible at the trial if the discovery appears reasonably
calculated to lead to the discovery of admissible evidence.” Fed. R. Civ. P. 26(b)(1). Discovery may
be limited ifthe Court determines it is “unreasonably cumulative or duplicative,” or if “the burden
or expense of the proposed discovery outweighs its likely benefit.” Fed. R. Civ. P. 26(b)(2).

The disputed discovery requests involve documents relating to antitrust issues; BSC’s
licensing and/or distribution agreements with third parties; and third-party clinical studies. Each of
these disputed categories will be discussed in turn.

Antitrust Documents

Cook’s Document Request 35 seeks “Documents sufficient to identify any lawsuits, or
threatened lawsuits, involving claims of antitrust violations, whether made by or asserted against
BSC, or any allegations or references of any kind to antitrust violations made by or asserted against
BSC.” At oral argument, the Court questioned Cook about the relevance of this request. Cook’s
counsel asserted that the request sought documents in which BSC has defined the relevant product
market in the context of a Sherman Act claim. Cook argued that BSC’s prior claims about the
relevant market could be used to impeach testifying witnesses if they take inconsistent positions in
the present action. The Court gave Cook an opportunity to submit case law in support of this

argument.