United States District Court, N.D. California, San Francisco Division
R. Puknys (SBN 190926) M. Paul Barker (SBN 243986) FINNEGAN,
HENDERSON, FARABOW, GARRETT & DUNNER, LLP Attorneys for
CUTLER PICKERING HALE AND DORR LLP Robert J. Gunther, Jr.
Attorney for Defendant F. Hoffmann-La Roche Ltd.
HUBBARD & REED LLP Stephen S. Rabinowitz Attorney for
Defendant Roche Molecular Systems, Inc.
JOINT REQUEST TO CONTINUE CASE MANAGEMENT CONFERENCE;
Cepheid filed this declaratory judgment action on August 21,
2012, seeking, inter alia, a declaration that the
claims of U.S. Patent Nos. 5, 804, 375 (“the '375
patent”) and 6, 127, 155 (“the '155
patent”) are not infringed, are invalid, and are
otherwise unenforceable. Defendant Roche Molecular Systems,
Inc. moved to stay Counts I and II related to the '375
patent pending final resolution of a Swiss arbitration
between the parties and moved to dismiss Counts III and IV
related to the '155 patent for lack of subject matter
jurisdiction. On January 17, 2013, the Court issued its Order
Granting Defendant's Motion to Stay and Motion to Dismiss
(“Order”). ECF No. 68. The Court stayed Counts I
and II until further order of this Court and dismissed Counts
III and IV for lack of subject matter jurisdiction. With
respect to Counts I and II, the Court directed the parties to
“update this Court within 30 days of the issuance of
the Arbitral Tribunal's decision on the issue of
jurisdiction.” Id. at 8.
to the Order, the parties notified the Court that on August
1, 2013, the International Chamber of Commerce (ICC)
International Court of Arbitration issued a letter notifying
the parties that the Arbitral Tribunal had rendered a Partial
Award on arbitral jurisdiction, dated July 30, 2013. ECF No.
77. The Partial Award included an order concerning
jurisdiction, in which the Arbitral Tribunal concluded that
it has jurisdiction to decide on the relief sought by the
claimants (i.e., Roche Molecular Systems, Inc. and F.
Hoffmann-La Roche Ltd). Cepheid appealed the Arbitral
Tribunal's jurisdictional decision. Id. On
February 28, 2014 the Swiss Federal Court dismissed
Cepheid's appeal in its entirety. On April 20, 2016 the
Arbitral Tribunal issued a second Partial Award on liability
issues. The Arbitration is proceeding in accordance with the
schedule set by the Arbitral Tribunal.
the Court issued its January 2013 Order, the parties have
jointly filed several stipulations to continue the Initial
Case Management Conference and the Court has entered those
stipulations. Specifically, on March 11, 2013, the Court
reset the Case Management Conference from March 14, 2013 to
June 20, 2013 (ECF Nos. 72, 73); on June 7, 2013 the Court
reset the Case Management Conference from June 20, 2013 to
October 10, 2013 (ECF Nos. 74, 75); on September 23, 2013 the
Court reset the Case Management Conference from October 10,
2013 to March 6, 2014 (ECF Nos. 77, 78); on February 26, 2014
the Court reset the Case Management Conference from March 6,
2014 to November 13, 2014 (ECF Nos. 81, 82); on November 7,
2014 the Court reset the Case Management Conference from
November 13, 2014 to March 26, 2015 (ECF Nos. 84, 85); on
March 13, 2015 the Court reset the Case Management Conference
from March 26, 2015 to September 24, 2015 (ECF Nos. 86, 87),
), which was reset sua sponte to September 23, 2015
(ECF No. 88); on September 16, 2015, the Court reset the Case
Management Conference from September 23, 2015 to April 21,
2016 (ECF Nos. 89, 90), on April 14, 2016, the Court reset
the Case Management Conference from April 21, 2016 to October
27, 2016 (ECF Nos. 92, 93), which the Court then rescheduled
sua sponte to November 8, 2016 (ECF No. 94); on
November 3, 2016 the Court reset the Case Management
Conference from November 8, 2016 to June 15, 2017 (ECF Nos.
96, 97); on June 8, 2017 the Court reset the Case Management
Conference from June 15, 2017 to November 16, 2017 (ECF Nos.
99, 100, 101); and on November 9, 2017 the Court reset the
Case Management Conference from November 16, 2017 to March 1,
2018 (ECF Nos. 102, 103).
this time, the parties continue to believe that it is not
appropriate to lift the Court's stay. Specifically,
although the Arbitral Tribunal has issued its Final Award,
the parties are in discussions that potentially can resolve
the parties respectfully request that the Initial Case
Management Conference, currently scheduled for March 1, 2018,
be continued until June 7, 2018, or any other date that the
Court deems appropriate. The parties will contact the Court
before then if anything of substance occurs in the
arbitration that may affect the status of this case.
signature below, Counsel for Plaintiff certifies that Counsel
for Defendants concur in the filing of this notice.
to the stipulation of the parties and good cause appearing
is reset from 3/1/18 to 6/7/18 at 9:30 a.m. A joint CMC
statement shall be filed by 5/31/18.