Cepheid v. Roche Molecular Systems, Inc. et al

Filing 107

STIPULATION AND ORDER re 106 Joint Request to Continue Case Management Conference; Proposed Order filed by Cepheid. Case Management Statement due by 9/20/2018. Initial Case Management Conference set for 9/27/2018 09:30 AM in San Francisco, Courtroom 05, 17th Floor. Signed by Judge Edward M. Chen on 6/1/18. (bpfS, COURT STAFF) (Filed on 6/1/2018)

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Erik R. Puknys (SBN 190926)
[e-mail]
M. Paul Barker (SBN 243986)
[e-mail]
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
3300 Hillview Avenue
Palo Alto, California 94304
Telephone:
[phone]
Facsimile:
[phone]

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Attorneys for Plaintiff Cepheid

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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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CEPHEID,

CASE NO. 3:12-CV-04411-EMC

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Plaintiffs,
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v.

JOINT REQUEST TO CONTINUE
CASE MANAGEMENT
CONFERENCE; [PROPOSED] ORDER

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ROCHE MOLECULAR SYSTEMS, INC. and
F. HOFFMANN-LA ROCHE LTD.,
Defendants.

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JOINT REQUEST TO C ONTINUE CMC
CASE NO. 3:12-CV-04411-EMC

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Plaintiff Cepheid filed this declaratory judgment action on August 21, 2012, seeking, inter

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alia, a declaration that the claims of U.S. Patent Nos. 5,804,375 (“the ’375 patent”) and 6,127,155

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(“the ’155 patent”) are not infringed, are invalid, and are otherwise unenforceable. Defendant Roche

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Molecular Systems, Inc. moved to stay Counts I and II related to the ’375 patent pending final

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resolution of a Swiss arbitration between the parties and moved to dismiss Counts III and IV related

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to the ’155 patent for lack of subject matter jurisdiction. On January 17, 2013, the Court issued its

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Order Granting Defendant’s Motion to Stay and Motion to Dismiss (“Order”). ECF No. 68. The

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Court stayed Counts I and II until further order of this Court and dismissed Counts III and IV for

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lack of subject matter jurisdiction. With respect to Counts I and II, the Court directed the parties to

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“update this Court within 30 days of the issuance of the Arbitral Tribunal’s decision on the issue of

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jurisdiction.” Id. at 8.

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Pursuant to the Order, the parties notified the Court that on August 1, 2013, the International

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Chamber of Commerce (ICC) International Court of Arbitration issued a letter notifying the parties

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that the Arbitral Tribunal had rendered a Partial Award on arbitral jurisdiction, dated July 30, 2013.

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ECF No. 77. The Partial Award included an order concerning jurisdiction, in which the Arbitral

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Tribunal concluded that it has jurisdiction to decide on the relief sought by the claimants (i.e., Roche

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Molecular Systems, Inc. and F. Hoffmann-La Roche Ltd). Cepheid appealed the Arbitral Tribunal’s

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jurisdictional decision. Id. On February 28, 2014 the Swiss Federal Court dismissed Cepheid’s

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appeal in its entirety. On April 20, 2016 the Arbitral Tribunal issued a second Partial Award on

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liability issues. On July 31, 2017 the Arbitral Tribunal issued its Final Award. On November 17,

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2017 the Arbitral Tribunal issued a Decision in response to a request for clarification of the Final

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Award.

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Since the Court issued its January 2013 Order, the parties have jointly filed several

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stipulations to continue the Initial Case Management Conference and the Court has entered those

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stipulations. Specifically, on March 11, 2013, the Court reset the Case Management Conference

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from March 14, 2013 to June 20, 2013 (ECF Nos. 72, 73); on June 7, 2013 the Court reset the Case

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Management Conference from June 20, 2013 to October 10, 2013 (ECF Nos. 74, 75); on September

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23, 2013 the Court reset the Case Management Conference from October 10, 2013 to March 6, 2014
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JOINT REQUEST TO C ONTINUE CMC
CASE NO. 3:12-CV-04411-EMC

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(ECF Nos. 77, 78); on February 26, 2014 the Court reset the Case Management Conference from

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March 6, 2014 to November 13, 2014 (ECF Nos. 81, 82); on November 7, 2014 the Court reset the

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Case Management Conference from November 13, 2014 to March 26, 2015 (ECF Nos. 84, 85); on

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March 13, 2015 the Court reset the Case Management Conference from March 26, 2015 to

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September 24, 2015 (ECF Nos. 86, 87), ), which was reset sua sponte to September 23, 2015 (ECF

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No. 88); on September 16, 2015, the Court reset the Case Management Conference from September

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23, 2015 to April 21, 2016 (ECF Nos. 89, 90), on April 14, 2016, the Court reset the Case

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Management Conference from April 21, 2016 to October 27, 2016 (ECF Nos. 92, 93), which the

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Court then rescheduled sua sponte to November 8, 2016 (ECF No. 94); on November 3, 2016 the

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Court reset the Case Management Conference from November 8, 2016 to June 15, 2017 (ECF Nos.

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96, 97); on June 8, 2017 the Court reset the Case Management Conference from June 15, 2017 to

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November 16, 2017 (ECF Nos. 99, 100, 101); on November 9, 2017 the Court reset the Case

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Management Conference from November 16, 2017 to March 1, 2018 (ECF Nos. 102, 103); and on

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February 28, 2018 the Court reset the Case Management Conference from March 1, 2018 to June 7,

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2018 (ECF Nos. 104, 105).

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As of this time, the parties continue to believe that it is not appropriate to lift the Court’s stay.

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Specifically, the parties are discussing a resolution of their dispute that would include dismissal of

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this action with prejudice.

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Accordingly, the parties respectfully request that the Initial Case Management Conference,

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currently scheduled for June 7, 2018, be continued until September 6, 2018, or any other date that

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the Court deems appropriate. The parties will contact the Court before then if anything of substance

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occurs in this matter that may affect the status of this case.

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By his signature below, Counsel for Plaintiff certifies that Counsel for Defendants concur in
the filing of this notice.

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Dated: May 30, 2018

FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
/s/ Erik R. Puknys
Erik R. Puknys
Attorney for Plaintiff Cepheid
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JOINT REQUEST TO C ONTINUE CMC
CASE NO. 3:12-CV-04411-EMC

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WILMER CUTLER PICKERING HALE AND
DORR LLP
/s/ Robert J. Gunther, Jr
Robert J. Gunther, Jr.
Attorney for Defendant F. Hoffmann-La Roche Ltd.

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HUGHES HUBBARD & REED LLP
/s/ Stephen S. Rabinowitz
Stephen S. Rabinowitz
Attorney for Defendant Roche Molecular Systems, Inc.

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JOINT REQUEST TO C ONTINUE CMC
CASE NO. 3:12-CV-04411-EMC

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[PROPOSED] ORDER
Pursuant to the stipulation of the parties and good cause appearing therefore;

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Judge E

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Chen

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United States District Judge

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IT IS SO ORDERED. CMC is reset from 6/7/18 to 9/27/18 at 9:30 a.m.
Updated joint CMC statement shall be filed by
9/20/18.
6/1/2018
S DISTRICT
Dated: _________________________
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JOINT REQUEST TO C ONTINUE CMC
CASE NO. 3:12-CV-04411-EMC