Applera Corporation - Applied Biosystems Group v. Illumina, Inc. et al

Filing 302

ORDER RE RULINGS ON MOTIONS IN LIMINE AT FINAL PRETRIAL CONFERENCE. Signed by Judge Alsup on September 23, 2008. (whalc1, COURT STAFF) (Filed on 9/23/2008)

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BRYAN WILSON (CA SBN 138842) ERIC C. PAI (CA SBN 247604) MORRISON & FOERSTER LLP 755 Page Mill Road Palo Alto, California 94304-1018 Telephone: [phone] Facsimile: 650.494.0792 E-Mail: [e-mail] [e-mail] DAVID C. DOYLE (CA SBN 70690) STEVEN E. COMER (CA SBN 154384) BRIAN M. KRAMER (CA SBN 212107) MORRISON & FOERSTER LLP 12531 High Bluff Drive, Suite 100 San Diego, California 92130-2040 Telephone: [phone] Facsimile: 858.720.5125 E-Mail: [e-mail] [e-mail] [e-mail] Attorneys for Plaintiff APPLERA CORPORATION ­ APPLIED BIOSYSTEMS GROUP

KEVIN M. FLOWERS (pro hac vice) THOMAS I. ROSS (pro hac vice) JEFFREY H. DEAN (pro hac vice) JOHN R. LABBÉ (pro hac vice) CULLEN N. PENDELTON (pro hac vice) MARK H. IZRAELEWICZ (pro hac vice) MARSHALL, GERSTEIN & BORUN LLP 6300 Sears Tower 233 South Wacker Drive Chicago, IL 60606-6357 Telephone: [phone] Facsimile: 312.474.0448 Email: [e-mail] [e-mail] [e-mail] [e-mail] [e-mail] [e-mail] Attorneys for Defendants ILLUMINA, INC., SOLEXA, INC., AND STEPHEN C. MACEVICZ

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

APPLERA CORPORATION ­ APPLIED BIOSYSTEMS GROUP, a Delaware corporation, Plaintiff, v. ILLUMINA, INC., a Delaware corporation, SOLEXA, INC., a Delaware corporation, and STEPHEN C. MACEVICZ, an individual, Defendants.

Case No.

C07 02845 WHA

[JOINT PROPOSED] ORDER RE RULINGS ON MOTIONS IN LIMINE AT FINAL PRETRIAL CONFERENCE

[JOINT PROPOSED] ORDER RE MIL RULINGS AT FINAL PRETRIAL CONFERENCE Case No. C07 02845 WHA pa-1281564

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This order summarizes the Court's rulings on the parties' motions in limine at the Final Pretrial Conference held on September 8, 2008 as follows: AB MOTION IN LIMINE NO. 1 (ONE-BASE DAMAGES) GRANTED. Defendants will not be permitted to seek damages for any alleged infringement of the '341 or '597 patents by the one-base encoding system or process. AB MOTION IN LIMINE NO. 2 (WILLFULNESS) WITHDRAWN. AB withdrew this motion at the pretrial conference after Defendants stipulated that their allegation of willful infringement is directed only at the conduct of Agencourt Personal Genomics ("APG") before it was acquired by AB, not at AB's conduct. AB MOTION IN LIMINE NO. 3 (TWO HYPOTHETICAL NEGOTIATIONS) The Court reserves judgment on this motion. Dr. Siuta may submit a supplemental report of 5 pages or less by FRIDAY, SEPTEMBER 12, 2008, solely on infringement damages for the '119 patent against APG. AB may take a 2-hour deposition of Dr. Siuta, and AB may submit a rebuttal report of 5 pages or less. DEFENDANTS' MOTION IN LIMINE NO. 1 (DISGORGEMENT DAMAGES) DENIED IN PART, GRANTED IN PART. AB may not recover damages or restitution from Macevicz. AB will not be permitted to seek attorneys' fees as part of a damages award by the jury. All other damages theories with respect to stock options or punitive damages remain for trial. DEFENDANTS' MOTION IN LIMINE NO. 2 (MACEVICZ AS FIDUCIARY OF AB) DENIED. AB will be permitted to refer to Macevicz as a fiduciary of AB. DEFENDANTS' MOTION IN LIMINE NO. 3 (NON-INFRINGING ALTERNATIVES) GRANTED IN PART. Kevin McKernan's testimony regarding non-infringing alternatives will be limited to the two-base encoding system. Dr. Cox may rely only on the two-base encoding system as an alternative that does not infringe the '341 and '597 patents.

[JOINT PROPOSED] ORDER RE MIL RULINGS AT FINAL PRETRIAL CONFERENCE Case No. C07 02845 WHA pa-1281564

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DEFENDANTS' MOTION IN LIMINE NO. 4 (CARR PATENT) GRANTED IN PART. The Carr patent may not be shown to the jury. The Court reserves judgment on whether it will consider the Carr patent as a legal limitation on the doctrine of equivalents for the '119 patent. DEFENDANTS' MOTION IN LIMINE NO. 5 (MAG + BRENNAN ) The Court reserves judgment on this motion. Each side may file a supplemental brief of 5 pages or less by NOON ON FRIDAY, SEPTEMBER 12, 2008 on whether nondisclosure in AB's invalidity contentions of the combination of the Mag and Brennan references as rendering obvious claim 1 of the '119 patent was harmless, pursuant to FRCP 37(c).

Dated: September 19, 2008

MORRISON & FOERSTER LLP

By:

/s/ Bryan Wilson Bryan Wilson Attorneys for Plaintiff APPLERA CORPORATION ­ APPLIED BIOSYSTEMS GROUP

Dated: September 19, 2008

MARSHALL, GERSTEIN & BORUN LLP

By:

/s/ John R. Labbé John R. Labbé Attorneys for Defendants ILLUMINA, INC., SOLEXA, INC., AND STEPHEN C. MACEVICZ
UNIT ED

IT IS SO ORDERED. Dated: September 23, 2008.

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ISTRIC ES D TC AT T

WILLIAM H. ALSUP ER United States District Judge C
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[JOINT PROPOSED] ORDER RE MIL RULINGS AT FINAL PRETRIAL CONFERENCE Case No. C07 02845 WHA pa-1281564

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I, Bryan Wilson, am the ECF User whose ID and password are being used to file this [JOINT PROPOSED] ORDER RE RULINGS ON MOTIONS IN LIMINE AT FINAL PRETRIAL CONFERENCE. In compliance with General Order 45, X.B., I hereby attest that John R. Labbé has concurred in this filing. Dated: September 19, 2008 /s/ Bryan Wilson Bryan Wilson

[JOINT PROPOSED] ORDER RE MIL RULINGS AT FINAL PRETRIAL CONFERENCE Case No. C07 02845 WHA pa-1281564

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