Cepheid v. Roche Molecular Systems, Inc. et al

Filing 97

STIPULATION AND ORDER re 96 STIPULATION WITH PROPOSED ORDER Joint Request to Continue Case Management Conference. Case Management Statement due by 6/8/2017. Initial Case Management Conference reset for 6/15/2017 09:30 AM in Courtroom 5, 17th Floor, San Francisco. Signed by Judge Edward M. Chen on 11/3/16. (bpfS, COURT STAFF) (Filed on 11/3/2016)

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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 CONTINUE 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. The Arbitration is proceeding in accordance with the schedule set by the Arbitral

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Tribunal.

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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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(ECF Nos. 77, 78); on February 26, 2014 the Court reset the Case Management Conference from
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JOINT REQUEST TO CONTINUE CMC
CASE NO. 3:12-CV-04411-EMC

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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), and 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).

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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 Arbitral Tribunal has issued its Partial Award on liability and briefing on quantum

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issues is ongoing, with a final decision expected in May/June 2017.

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

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currently scheduled for November 8, 2016, be continued until June 13, 2017, 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 the arbitration 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: November 3, 2016

FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
/s/ Erik R. Puknys
Erik R. Puknys
Attorney for Plaintiff Cepheid
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

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/s/ Stephen S. Rabinowitz
Stephen S. Rabinowitz
Attorney for Defendant Roche Molecular Systems, Inc.

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

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Pursuant to the stipulation of the parties and good cause appearing therefore;
CMC reset for 6/15/17 at 9:30 a.m.
filed by 6/8/17.
11/3/2016
IT IS SO ORDERED.

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____________________________________

DERED
SO ORDistrict Judge
United
IT IS States IFIED
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AS MO

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dward
Judge E

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RT

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NO

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M. Che

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Dated: _________________________

UNIT
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An updated joint CMC statement shall be

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[PROPOSED] ORDER

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D IS T IC T O
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JOINT REQUEST TO CONTINUE CMC
CASE NO. 3:12-CV-04411-EMC