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The Regents of University of California v. Affymetrix, Inc.

United States District Court, S.D. California

February 23, 2018

THE REGENTS OF THE UNIVERSITY OF CALIFORNIA; and BECTON, DICKINSON and COMPANY, Plaintiffs,
v.
AFFYMETRIX, INC.; and LIFE TECHNOLOGIES CORP., Defendants.

          (1) ORDER GRANTING JOINT MOTION TO AMEND SCHEDULE; AND [DOC. NO. 103.] (2) AMENDED SCHEDULING ORDER

          MARILYN L.HUFF, DISTRICT JUDGE UNITED STATES DISTRICT COURT.

         On July 10, 2017, Plaintiffs the Regents of the University of California and Becton, Dickinson and Company filed a complaint for patent infringement against Defendants Affymetrix, Inc. and Life Technologies Corp., alleging infringement of U.S. Patent No. 9, 085, 799, U.S. Patent No. 8, 110, 673, and U.S. Patent No. 8, 835, 113 (the “Original Patents”). (Doc. No. 1, Compl.) On September 8, 2017, Defendants filed an answer to Plaintiffs' complaint. (Doc. No. 37.)

         On October 6, 2017, the Court issued a scheduling order. (Doc. No. 55.) On November 20, 2017, the Court denied Plaintiff Becton, Dickinson's motion for a preliminary injunction without prejudice. (Doc No. 69.) In the order, the Court invited the parties to submit a joint proposal to advance the claim construction hearing and related dates in the action. (Id. at 12.) On November 30, 2017, the Court issued an amended scheduling order. (Doc. No. 76.)

         On February 7, 2018, the Court granted the parties' joint motion for leave for Plaintiff to file a first amended complaint and to modify the scheduling order. (Doc. No. 100.) In the order, the Court continued the trial date to Tuesday, May 14, 2019 and ordered the parties to submit a proposed amended schedule by February 20, 2018. (Id.) On February 9, 2018, Plaintiffs filed an amended complaint: (1) adding Sirigen, Inc. and Sirigen II Limited as additional Plaintiffs and adding claims that Defendants' products infringe four Sirigen patents, U.S. Patent No. 9, 547, 008, U.S. Patent No. 9, 139, 869, U.S. Patent No. 8, 575, 303, and U.S. Patent No. 8, 455, 613 (the “Structure Patents”); (2) adding infringement allegations against Defendants' Super Bright 780 and Super Bright Staining Buffer products as additional accused products; and (3) adding allegations of induced infringement against Defendants. (Doc. No. 101.)

         On February 20, 2018, the parties filed a joint motion to amend the scheduling order. (Doc. No. 103.) For good cause shown, the Court grants the joint motion, and the Court issues the following amended scheduling order:[1]

         1. Prior to the filing of any discovery related motion, the parties must meet and confer regarding the discovery dispute, and then provide the district judge with a summary of the discovery dispute through a joint phone call or through a one-page joint filing.

         2. Completion of Claim Construction Discovery for the Original Patents.

         On February 9, 2018, the parties must complete all discovery, including depositions of any percipient or expert witnesses, that they intend to use in the Claim Construction Hearing for the '799 patent, the '673 patent, and the '113 patent. Federal Rule of Civil Procedure 30 applies to depositions taken pursuant to Patent Local Rule 4.3 except as to experts. An expert witness identified in a party's Joint Hearing Statement pursuant to Patent Local Rule 4.2(d) may be deposed on claim construction issues. The identification of an expert witness in the Joint Hearing Statement may be deemed good cause for a further deposition on all substantive issues.

         3. Amended and Final Invalidity Contentions for the Original Patents.[2]

         a. As a matter of right, a party opposing a claim of patent infringement may serve “Amended Invalidity Contentions” for the '799 patent, the '673 patent, and the '113 patent no later than the Completion of Claim Construction Discovery, February 21, 2018. Thereafter, absent undue prejudice to the opposing party, a party opposing infringement may only amend its invalidity contentions:

1. if a party claiming patent infringement has served Amended Infringement Contentions, and the party opposing a claim of patent infringement believes in good faith that the Amended Infringement Contentions so require;
2. if, not later than fifty (50) days after service of the Court's Claim Construction Ruling, the party opposing infringement believes in good faith that amendment is necessitated by a claim construction that differs from that proposed by such party; or
3. upon a timely motion showing good cause.

         4. Claim Construction Briefs for the Original Patents.

         a. On February 23, 2018, the parties will simultaneously file and serve opening briefs and any evidence supporting their claim constructions for the '799 patent, the '673 patent, and the '113 patent.

         b. On March 9, 2018, the parties will simultaneously file and serve briefs responsive to the opposing party's opening brief and any evidence directly rebutting the supporting evidence contained in the opposing party's opening brief for the '799 patent, the '673 patent, and the '113 patent.

         5. Claim Construction Hearing for the Original Patents.

         On Friday, March 23, 2018, at 10:00 a.m., the Honorable Marilyn L. Huff will conduct a Claim Construction Hearing for the '799 patent, the '673 patent, and the '113 patent in San Diego, California.

         6. Disclosure of Asserted Claims and Infringement Contentions for the Structure Patents.

         On or before March 5, 2018, Plaintiffs must serve on Defendants a “Disclosure of Asserted Claims and Infringement Contentions” for the '008 patent, the'869 patent, the '303 patent, and the '613 patent. The Disclosure of Asserted Claims and Infringement Contentions must contain the following information:

a. Each claim of each patent in the suit that is allegedly infringed by Defendants;
b. Separately for each asserted claim, each of Defendants' accused apparatus, product, device, process, method, act, or other instrumentality (“Accused Instrumentality”) of which the party is aware. This identification must be as specific as possible. Each product, device and apparatus must be identified by name or model number, if known. Each method or process must be identified by name, if known, or by any product, device, or apparatus which, when used, allegedly results in the practice of the claimed method or process;
c. A chart identifying specifically where each element of each asserted claim is found within each Accused Instrumentality, including for each element that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function;
d. For each claim which is alleged to have been indirectly infringed, an identification of any direct infringement and a description of the acts of the alleged indirect infringer that contribute to or are inducing that direct infringement. Insofar as alleged direct infringement is based on joint acts of multiple parties, the role of each such party in the direct infringement must be described;
e. Whether each element of each asserted claim is claimed to be literally present and/or present under the doctrine of equivalents in the Accused Instrumentality;
f. For any patent that claims priority to an earlier application, the priority date to which each asserted claim allegedly is entitled;
g. If a party claiming patent infringement asserts or wishes to preserve the right to rely, for any purpose, on the assertion that its own apparatus, product, device, process, method, act, or other instrumentality practices the claimed invention, the party must identify, separately for each asserted claim, each such apparatus, product, device, process, method, act, or other instrumentality that incorporates or reflects that particular claim;
h. If a party claiming patent infringement alleges willful infringement, the basis for such allegation; and
i. Identify the timing of the point of first infringement, the start of claimed damages, and the end of claimed damages.

         7. Document Production Accompanying Disclosure.

         With the Disclosure of Asserted Claims and Infringement Contentions, the party claiming patent infringement must produce to Defendants or make available for inspection and copying, the following documents in the possession, custody or control of that party:

a. Documents (for example, contracts, purchase orders, invoices, advertisements, marketing materials, offer letters, beta site testing agreements, and third party or joint development agreements) sufficient to evidence each discussion with, disclosure to, or other manner of providing to a third party, or sale of or offer to sell, the claimed invention prior to the date of application for the patent in suit. A party's production of a document as required within these rules does not constitute an admission that such document evidences or is prior art under 35 U.S.C. § 102;
b. All documents evidencing the conception, reduction to practice, design, and development of each claimed invention, that were created on or before the date of application for the patent in suit or the priority date identified pursuant to Patent Local Rule 3.1(f), whichever is earlier;
c. A copy of the file history for each patent in suit and each application to which a claim for priority is made under Patent Local Rule 3.1(f);
d. Documents sufficient to evidence ownership of the patent rights by the party asserting patent infringement;
e. If a party identifies instrumentalities pursuant to Patent Local Rule 3.1(g), documents sufficient to show the operation of any aspects or elements of such instrumentalities the patent claimant relies upon as embodying any asserted claims;
f. All agreements, including licenses, transferring an interest in any patent-in-suit;
g. All agreements that the party asserting infringement contends are comparable to a license that would result from a hypothetical reasonable royalty negotiation;
h. All agreements that otherwise may be used to support the party asserting infringement's damages case;
i. If a party identifies instrumentalities pursuant to Patent Local Rule 3.1(g), documents sufficient to show marking of such embodying accused instrumentalities and if it wants to preserve the right to recover lost profits based on such products, sales, revenues, ...

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