Verinata Health, Inc. et al v. Sequenom, Inc. et al

Filing 228

ORDER, Motions terminated: #226 STIPULATION WITH PROPOSED ORDER Regarding Case Schedule filed by Verinata Health, Inc., The Board of Trustees of the Leland Stanford Junior University. Final Pretrial Conference set for 2/10/2015 03:30 PM in Courtroom 10, 19th Floor, San Francisco. Jury Selection set for 2/23/2015 08:30 AM in Courtroom 10, 19th Floor, San Francisco before Hon. Susan Illston. Jury Trial set for 2/23/2015 08:30 AM in Courtroom 10, 19th Floor, San Francisco before Hon. Susan Illston. Motion Hearing set for 11/14/2014 09:00 AM in Courtroom 10, 19th Floor, San Francisco before Hon. Susan Illston.. Signed by Judge Susan Illston on 2/25/14. (tfS, COURT STAFF) (Filed on 7/28/2014)

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WEIL, GOTSHAL & MANGES LLP
Edward R. Reines (135960)
([e-mail])
Silicon Valley Office
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]

KAYE SCHOLER LLP
Michael J. Malecek (171034)
([e-mail])
Two Palo Alto Square
3000 El Camino Real, Suite 400
Palo Alto, California 94306
Telephone:
[phone]
Facsimile:
[phone]

Attorneys for Plaintiffs and CounterclaimDefendants
VERINATA HEALTH, INC. and
THE BOARD OF TRUSTEES OF THE
LELAND STANFORD JUNIOR UNIVERSITY

Attorneys for Defendants and CounterclaimPlaintiffs
SEQUENOM, INC. and
SEQUENOM CENTER FOR MOLECULAR
MEDICINE LLC

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FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
Robert F. McCauley (162056)
Stanford Research Park
3300 Hillview Avenue
Palo Alto, CA 94304
Telephone:
[phone]
Facsimile:
[phone]

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Attorneys for Defendant
THE CHINESE UNIVERSITY OF HONG
KONG

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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VERINATA HEALTH, INC., and THE BOARD
OF TRUSTEES OF THE LELAND STANFORD
JUNIOR UNIVERSITY,

Plaintiffs,

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THE CHINESE UNIVERSITY OF HONG
KONG,

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Defendant,

Hon. Susan Illston

and
SEQUENOM, INC., and SEQUENOM CENTER
FOR MOLECULAR MEDICINE, LLC,

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Defendants/CounterclaimPlaintiffs,

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PROPOSED STIPULATED CASE
SCHEDULE; [PROPOSED] ORDER

v.

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CASE NO. 3:12-cv-00865-SI

v.
[PROPOSED] STIPULATED CASE SCHEDULE

Case No. 3:12-cv-00865-SI

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VERINATA HEALTH, INC., and THE BOARD
OF TRUSTEES OF THE LELAND STANFORD
JUNIOR UNIVERSITY,
Counterclaim-Defendants,

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and
ISIS INNOVATION LIMITED,
Nominal CounterclaimDefendant.

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[PROPOSED] STIPULATED CASE SCHEDULE

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CASE NO. 3:12-cv-00865-SI

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Further to the Court’s May 14, 2014 Order permitting the filing of the First Supplemental

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Complaint, the parties Verinata Health, Inc. (“Verinata”), The Board of Trustees of the Leland

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Stanford Junior University (“Stanford”), Sequenom, Inc. and Sequenom Center for Molecular

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Medicine LLC (together “Sequenom”), and The Chinese University of Hong Kong (“CUHK”)

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jointly submit this statement and stipulation regarding the case schedule and future conduct of the

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case.

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I.

PRELIMINARY STATEMENT

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The parties in this action have met and conferred, and have agreed to the case schedule and

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future conduct of the case presented below. The parties respectfully request that the Court modify

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the current pretrial and trial schedule to take into account new party CUHK and the new issues

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raised in the First Supplemental Complaint. The parties propose that the § 146 issues be tried in a

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bench trial by the Court (if necessary)1 before the jury trial.

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The parties agree that the sole issue to be tried during the § 146 proceeding is whether

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Stanford’s U.S. Patent No. 8,008,018 and U.S. Patent Application No. 12/393,833 satisfy the written

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description requirement for Stanford’s claims. In the event CUHK prevails on this issue, the parties

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agree the Court will order that the judgments entered in Interference Nos. 105,920, 105,923, and

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105,924 are affirmed. In the event Verinata and Stanford prevail on this issue, the parties agree that

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the Court will order priority of invention in favor of Quake for the subject matter of the Counts in

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the interferences. The parties also agree that under either outcome they will not seek remand to the

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U.S. Patent and Trademark Office for consideration of additional issues raised in the interferences,

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and they further agree that the Court’s decision in the § 146 proceeding shall be appealable.

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The parties respectfully request that the Court vacate the currently scheduled dates and order

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the revised schedule proposed herein by the parties. The parties respectfully request that the Court

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set February 23, 2015 (the date previously scheduled for trial in Verinata Health, Inc. et al. v. Ariosa

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Diagnostics, Inc. et al. Case No. 12-cv-05501) as the date for the bench trial (if required) or the jury

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The parties acknowledge the possibility that the court may resolve the § 146 issue on
summary judgment.
[PROPOSED] STIPULATED CASE SCHEDULE

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CASE NO. 3:12-cv-00865-SI I

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trial for all remaining claims. In the event that a bench trial is needed, the parties respectfully

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request that the jury trial follow immediately after the bench trial. The parties respectfully propose

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that the time/deadlines for pretrial preparation would be extended consistent with the new trial dates.

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The parties have agreed and propose that the Court order as follows:

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I.

With respect to the § 146 issues, the parties agree and respectfully request the Court

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to order that:

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a.

There will be no new fact discovery regarding the § 146 issues absent good

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cause shown. In the event that good cause is shown and further fact discovery

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is taken, the schedule set forth below may need to be extended accordingly.

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b.

The records from Interference Nos. 105,920, 105,923, and 105,924 will be

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entered into evidence in this action and may also be utilized for the purposes

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of the § 146 issues (“the PTAB Record”).

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c.

CUHK may submit an expert report in support of its positions on the § 146

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issues, and Verinata/Stanford may submit a rebuttal report. After reviewing

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Stanford/Verinata’s rebuttal report, CUHK may decide to submit a rebuttal

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report to Stanford/Verinata’s rebuttal report.

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discovery previously scheduled or taken in this matter may be utilized for the

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purposes of the § 146 issues.

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II.

Fact and expert witness

CUHK and Verinata/Stanford have further agreed that in consideration for agreeing

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to proceed as set out herein, and if their agreement is approved by the Court, CUHK

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will consent to personal jurisdiction in this District for purposes of the § 146 action.

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In further consideration, Verinata/Stanford will dismiss without prejudice Action No.

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1:14-cv-688 filed on June 9, 2014 in the Eastern District of Virginia relating to the

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§ 146 issues.

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III.

Unless Sequenom and/or CUHK successfully obtain a summary judgment of

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invalidity of U.S. Patent No. 8,008,018, the § 146 issues will be tried to the Court in a

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bench trial (before the jury trial) scheduled for February 23, 2015. Subject to the

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outcome of motions for summary judgment, any remaining issues of infringement,
[PROPOSED] STIPULATED CASE SCHEDULE

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CASE NO. 3:12-cv-00865-SI

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CERTIFICATION

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I, Derek C. Walter, am the ECF User whose identification and password are being used to

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file this Stipulation. In compliance with General Order 45.X.B, I hereby attest that all signatories

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listed and on whose behalf the filing is submitted, have concurred in this filing.

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/s/ Derek C. Walter
Derek C. Walter

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IT IS SO ORDERED.

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7/25/14
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Dated:
Honorable Susan Illston
United States District Court Judge

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[PROPOSED] STIPULATED CASE SCHEDULE

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CASE NO. 3:12-cv-00865-SI