Geron Corporation v. Viacyte, Inc.

Filing 33

STIPULATION AND ORDER RESETTING FURTHER CMC AND MOTION TO DEFINE SCOPE FROM 4/4/13 TO 12/5/13 AT 1:30 P.M. MEDIATION DEADLINE EXTENDED TO 2/28/14 re 32 [to Enlarge Time Pursuant to Civil L.R. 6-2] filed by Geron Corporation Case Manage ment Statement due by 11/28/2013. Further Case Management Conference set for 12/5/2013 01:30 PM in Courtroom 5, 17th Floor, San Francisco. Motion Hearing set for 12/5/2013 01:30 PM in Courtroom 5, 17th Floor, San Francisco before Hon. Edward M. Chen.. Signed by Judge Edward M. Chen on 1/24/13. (bpf, COURT STAFF) (Filed on 1/24/2013)

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MCDERMOTT WILL & EMERY LLP
WILLIAM G. GAEDE, III (136184)
[e-mail]
JUDITH S.H. HOM (203482)
[e-mail]
275 Middlefield Road, Suite 100
Menlo Park, CA 94025
Telephone: [phone]
Facsimile:
[phone]

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Attorneys for Geron Corporation

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BARTKO, ZANKEL, TARRANT & MILLER
Benjamin K. Riley (112007)
[e-mail]
Jayne Laiprasert (256930)
[e-mail]
900 Front Street, Suite 300
San Francisco, California 94111
Telephone: [phone]
Facsimile: [phone]

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ATTORNEYS AT LAW

M C D ERMOTT W ILL & E MERY LLP

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ROTHWELL, FIGG, ERNST & MANBECK, P.C.
R. Danny Huntington (pro hac vice)
[e-mail]
Sharon E. Crane (pro hac vice)
[e-mail]
Seth E. Cockrum (pro hac vice)
[e-mail]
607 14th Street, N.W., Suite 800
Washington, D.C. 2005
Telephone: [phone]
Facsimile: [phone]

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Attorneys for ViaCyte, Inc.

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IN THE UNITED STATES DISTRICT COURT

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IN AND FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION
GERON CORPORATION, a Delaware
corporation,
Plaintiff,

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v.
VIACYTE, INC., a Delaware corporation,

Case No. C-12-4813 EMC
STIPULATED REQUEST FOR ORDER
ENLARGING TIME PURSUANT TO
CIVIL L.R. 6-2 AND DECLARATION
OF WILLIAM G. GAEDE, III, IN
SUPPORT THEREOF; [PROPOSED]
ORDER

Defendant.

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DM_US 40657886-2.091700.0011

STIPULATED REQUEST FOR ORDER ENLARGING
TIME AND DECLARATION IN SUPPORT THEREOF
CASE NO. C-12-4813 EMC

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WHEREAS, on September 13, 2012, Plaintiff Geron Corporation (“Geron” or “Plaintiff”)

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filed the complaint in this action against Defendant ViaCyte, Inc. (“ViaCyte” or “Defendant”)

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pursuant to 35 U.S.C. § 146 (D.I. 1);

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WHEREAS, on January 3, 2013, a Case Management Conference was held on this case

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and the Court ordered that mediation was to be completed by June 30, 2013, that Defendant was

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to file a motion to define the scope of the case and discovery by February 21, 2013, that Plaintiff

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was to file its opposition by March 7, 2013, that Defendant was to file its reply by March 14,

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2013, that discovery is limited to written discovery focused on those issues which were decided

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by the Patent Appeals Board, and that hearing on the preceding motion and a further Case
Management Conference was set for April 4, 2013 (D.I. 31);
WHEREAS, on January 7, 2013, Geron publicly announced that it had entered into an

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ATTORNEYS AT LAW

M C D ERMOTT W ILL & E MERY LLP

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Asset Contribution Agreement, dated January 4, 2013, with BioTime, Inc. and BioTime

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Acquisition Corporation, providing for the divestiture of Geron’s stem cell assets, including the

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intellectual property at issue in this 35 U.S.C. § 146 appeal, to BioTime Acquisition Corporation

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(the “Transaction”) upon the closing of the Transaction;

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WHEREAS, under the Asset Contribution Agreement, the closing of the Transaction is
contemplated to occur no later than September 30, 2013;

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WHEREAS, upon the closing of the Transaction, BioTime Acquisition Corporation will

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substitute in as plaintiff in this action as the owner of the Geron intellectual property at issue in

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this action. Further, under the Asset Contribution Agreement, Geron may not settle this action

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without BioTime, Inc.’s consent. Accordingly, the parties have conferred and are interested in

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conducting settlement discussions before a mediator through the Court’s Alternative Dispute

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Resolution procedures between Defendant ViaCyte, Inc. and new owners BioTime, Inc. and

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BioTime Acquisition Corporation, upon the closing of the Transaction;

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WHEREAS, the undersigned counsel have met, conferred and agreed that dates for

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mediation, Motion to Define the Scope of this Case and Discovery, Opposition to the Motion to

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Define the Scope, Reply to the Motion to Define the Scope, and the Case Management

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DM_US 40657886-2.091700.0011

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STIPULATED REQUEST FOR ORDER ENLARGING
TIME AND DECLARATION IN SUPPORT THEREOF
CASE NO. C-12-4813 EMC

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Conference be extended until the earlier of (a) 30 days after the close of the Transaction or (b) 31

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days after September 30, 2013, as follows:
Event

Old Dates

New Dates

February 21, 2013

October 31, 2013

Opposition to Motion to Define Scope

March 7, 2013

November 14, 2013

Reply to Motion to Define Scope

March 21, 2013

November 21, 2013

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Motion to Define Scope

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Case Management Conference

April 4, 2013

December 5, 2013

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Mediation Completion (ADR L.R. 6-3)

June 30, 2013

February 28, 2014

Counsel further agree that all discovery should be stayed until ordered by the Court after

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the next Case Management Conference.

NOW THEREFORE, IT IS STIPULATED, AGREED AND ORDERED that the date for

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WHEREAS, no other dates for this case have been set by the Court.

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ATTORNEYS AT LAW

M C D ERMOTT W ILL & E MERY LLP

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filing the Motion to Define Scope and Discovery shall be October 31, 2013; the date for filing the

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Opposition to the Motion to Define Scope and Discovery shall be November 14, 2013; that the

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date for filing the Reply to the Opposition to the Motion to Define Scope and Discovery shall be

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November 21, 2013; that the date for the hearing and Case Management Conference shall be

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December 5, 2013; and that the date for Mediation to be completed by be extended to no later

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than February 28, 2014. Discovery shall be stayed until further Court Order. Should the

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Transaction close prior to September 30, 2013, the parties shall so inform the Court and submit a

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revised Scheduling Order consistent with this Order that provides for a filing date of the

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contemplated Motion at 30 days following closure of the Transaction.
SO STIPULATED this 16th day of January 2013.

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MCDERMOTT WILL & EMERY LLP

BARTKO, ZANKEL, TARRANT & MILLER
ROTHWELL, FIGG, ERNST & MANBECK PC

By:

By:

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/s/ William G. Gaede, III
William G. Gaede, III

/s/ Benjamin K. Riley
Benjamin K. Riley

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Attorneys for Geron Corporation

Attorneys for ViaCyte Inc.

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DM_US 40657886-2.091700.0011

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STIPULATED REQUEST FOR ORDER ENLARGING
TIME AND DECLARATION IN SUPPORT THEREOF
CASE NO. C-12-4813 EMC

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-oOo-

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SIGNATURE ATTESTATION

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Pursuant to General Order 45.X(B), I hereby attest that concurrence has been obtained
from Benjamin K. Riley indicated by a “conformed” signature (/s/) within this e-filed document.

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_________/s/ William G. Gaede, III_______
William G. Gaede, III

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-oOo-

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[PROPOSED] ORDER

1/24/13
DATED: ____________________

____________________________________
HON. EDWARD M. RED
CHEN
Judge of theS SO ORDE District Court
United States
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J

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RN
DECLARATION OF WILLIAM G. GAEDE, III

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I, William G. Gaede, III, state and declare as follows:

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1.

R NIA

. Chen

ward M
udge Ed

NO

-oOo-

FO

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IT

LI

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S DISTRICT
TE
C
TA

A

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S

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PURSUANT TO STIPULATION, IT IS SO ORDERED.

UNIT
ED

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ATTORNEYS AT LAW

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RT
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M C D ERMOTT W ILL & E MERY LLP

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F
D IS T IC T O
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I am a partner with McDermott Will & Emery LLP and counsel of record for

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Geron Corporation (“Geron”), in the above-captioned matter. I have knowledge of the following,

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and if called as a witness, could and would testify competently to the contents herein. Pursuant to

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Civil L.R. 6-2(a) I hereby submit this declaration in support of enlarging time.

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2.

This is an action arising out of an appeal from two Interferences. Geron is the

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assignee of U.S. Patent Application Serial No. 11/960,477 (the “‘477 Application”) listing

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Gregory J. Fisk and Margaret S. Inokuma as inventors. ViaCyte, Inc. (“ViaCyte”) is the assignee

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of U.S. Patent No. 7,510,876, granted March 31, 2009, based on application 11/021,618 (the
DM_US 40657886-2.091700.0011

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STIPULATED REQUEST FOR ORDER ENLARGING
TIME AND DECLARATION IN SUPPORT THEREOF
CASE NO. C-12-4813 EMC

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“‘876 Patent”), listing Kevin Allen D’Amour, Alan D. Aguilnick and Emmanuel E. Baetge as

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inventors.

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The Board of Patent Appeals and Interferences declared Interference 105,734 on

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December 10, 2009. Fisk et al. (Geron) were designated as the senior party and D’Amour et al.

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(ViaCyte) were designated as the junior party. Claims 10-36 of the ‘477 Application were

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designated as corresponding to the single Count of the Interference. Claims 1-58 of the ‘876

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Patent were designated as corresponding to the Count.

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4.

As part of the Interference process, the parties filed motions that do not

Fisk (Geron). Based thereon, the Board on July 16, 2012, determined that it was appropriate to

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Motions, its Decision on Fisk Motion 5, and its Decision on Fisk Motion 9, that were adverse to

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specifically address priority. On July 16, 2012, the Board entered its Decisions on Non-Priority

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M C D ERMOTT W ILL & E MERY LLP

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enter judgment against Fisk (Geron) and that claims 10-36 of Geron’s ‘477 Application were

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finally refused under 35 U.S.C. § 135(a).

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5.

Geron is also the assignee of U.S. Patent Application Serial No. 12/543,875 (the

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“‘875 Application”) listing Gregory J. Fisk and Margaret S. Inokuma as inventors. ViaCyte is the

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assignee of the ‘876 Patent, listing Kevin Allen D’Amour, Alan D. Aguilnick and Emmanuel E.

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Baetge as inventors. The Board declared Interference 105,827 on October 3, 2011. Geron was

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designated as the junior party and ViaCyte was designated as the senior party. Claims 19-39 of

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the ‘875 Application were designated as corresponding to the single Count of the Interference.

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Claims 1-58 of the ‘876 Patent were designated as corresponding to the Count. As with the ‘734

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Interference, the parties filed motions and/or had leave to file motions in the ‘827 Interference.

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6.

On August 15, 2012, the Board entered its “Decision – Interlocutory Motions – 37

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CFR § 41.125(b)” in which the Board granted ViaCyte’s Miscellaneous Motion 1 to have the

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parties bound by the Board’s decision in Interference 105,734.

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7.

Geron timely filed this action under 35 U.S.C. § 146 for this Court to review and

address all issues raised in the foregoing Interferences.
8.

Geron is a pioneer in stem cells technology, and amassed considerable assets over

the years in this area, including intellectual property, among which are the foregoing patent
DM_US 40657886-2.091700.0011

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STIPULATED REQUEST FOR ORDER ENLARGING
TIME AND DECLARATION IN SUPPORT THEREOF
CASE NO. C-12-4813 EMC

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applications at issue in the interferences and this action. Geron entered into an agreement with

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BioTime, Inc. to divest all of Geron’s stem cell assets, including the intellectual property at issue

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in this action and the rights to prosecute this action, to BioTime Acquisition Corporation, a

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wholly-owned subsidiary of BioTime, Inc. This Agreement was executed on January 4, 2013,

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and publicly announced on January 7, 2013 (the “Transaction”). A true copy of the Geron press

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release entitled “Geron to Divest Stem Cell Assets” is attached hereto as Exhibit 1.

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Following this public announcement, I am informed that the Chief Executive

BioTime Acquisition Corporation had acquired the assets. This would also allow for potentially

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productive settlement discussions with the BioTime Acquisition Corporation, which will become

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that it would be in the business interests of both companies to defer prosecution of the matter until

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Officer of Geron and the Chief Executive Officer of ViaCyte spoke to each other, and they agreed

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M C D ERMOTT W ILL & E MERY LLP

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the owner of the Geron assets at issue in this action. Indeed, Geron may not settle this action

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without BioTime’s consent while the asset purchase is pending.

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10.

There have been no time modifications in the case, whether by stipulation or by

Court Order. See Civil L.R. 6-2(1)(a)(2).
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The effect of this enlargement will be to defer resolution on the scope of this

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action by moving the filing date of the motion on this issue until 30 days after close of the

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Transaction, which is contemplated to occur no later than by September 30, 2013 and no later

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than 31 days after September 30, 2013. The opening of discovery will also be deferred until the

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scope of the action is resolved by way of the contemplated motion. Nonetheless, no trial date has

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been set in this matter, and the parties estimate that only five days will be necessary for this bench

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trial. Moreover, the record from the Interference will form part of the record in this action, and

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neither party contemplates the need for additional discovery beyond that presumptively provided

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for in the Federal Rules. Further, as a 35 U.S.C. § 146 appeal, the case is not subject to the

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contention and disclosure requirements under the Patent Local Rules.

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opening this matter until the Transaction is complete will not unduly delay resolution of this

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patent matter, and still provides more than sufficient time for this matter to be resolved within the

Therefore, deferring

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STIPULATED REQUEST FOR ORDER ENLARGING
TIME AND DECLARATION IN SUPPORT THEREOF
CASE NO. C-12-4813 EMC

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typical times in this District on patent cases. In fact, granting this enlargement may expedite

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resolution by way of settlement once BioTime Acquisition Corporation has acquired the assets.

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I declare under penalty of perjury under the laws of the United States that the foregoing is

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true and correct and that this declaration was executed in Menlo Park, California, on January 16,

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2013.

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_____________________________
William G. Gaede III

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M C D ERMOTT W ILL & E MERY LLP

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STIPULATED REQUEST FOR ORDER ENLARGING
TIME AND DECLARATION IN SUPPORT THEREOF
CASE NO. C-12-4813 EMC

EXHIBIT
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Geron: Investor Relations: Press Release

Page 1 of 4

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Press Release
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Geron to Divest Stem Cell Assets
MENLO PARK, Calif., January 7, 2013 -- Geron Corporation (Nasdaq: GERN) today
announced that on January 4, 2013, it entered into an Asset Contribution Agreement (the
"Agreement") with BioTime, Inc. (NYSE: BTX) and BioTime's recently formed subsidiary,
BioTime Acquisition Corporation ("BAC"). The Agreement provides for the divestiture of
Geron's stem cell assets to BAC upon the closing of the transaction, which is expected to
occur no later than September 30, 2013.
Under the terms of the Agreement, upon closing of the transaction, Geron will contribute to
BAC its intellectual property, cell lines and other assets related to Geron's discontinued
human embryonic stem cell programs, including the Phase 1 clinical trial in patients with
acute spinal cord injury, as well as its autologous cellular immunotherapy program. Geron will
receive approximately 6.5 million shares of Series A Common Stock of BAC. BioTime will
contribute to BAC $5 million in cash, approximately 8.9 million shares of BioTime common
stock to be held by BAC, five-year warrants to purchase eight million shares of BioTime
common stock at an exercise price of $5.00 per share (the "BioTime Warrants"), rights to use
certain human embryonic stem cell lines, and minority stakes in two of BioTime's subsidiaries.
BioTime will receive approximately 21.8 million shares of Series B Common Stock of BAC
and three-year warrants to purchase 3.15 million shares of Series B Common Stock of BAC
at an exercise price of $5.00 per share (the "BAC Warrants"). BAC will also pay royalties to
Geron on the sale of products that are commercialized, if any, in reliance upon Geron patents
acquired by BAC.
Following the closing of the transaction, Geron will distribute the Series A BAC Common
Stock received from BAC to Geron's stockholders on a pro rata basis (other than with respect
to fractional shares and stockholders in certain to-be-determined excluded jurisdictions, which
will instead receive cash on a pro rata basis). Following the distribution by Geron to its
stockholders of the Series A BAC Common Stock, BAC will then distribute the BioTime

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Geron: Investor Relations: Press Release

Page 2 of 4

Warrants on a pro rata basis to the holders of Series A BAC Common Stock. Following these
distributions, it is anticipated that Geron stockholders would own approximately 21% of BAC,
BioTime would own approximately 72%, and a private investor would own approximately 7%
after an additional $5 million investment in BAC. The BAC Warrants will enable BioTime to
increase its ownership in BAC by approximately 2%, which would dilute the Geron
stockholders' ownership in BAC to approximately 19%.
The closing of the transaction is subject to certain approvals by BioTime's shareholders, the
effectiveness of certain registration statements to be filed by BioTime and BAC with the
Securities and Exchange Commission (the "SEC") with respect to the securities to be
distributed as contemplated by the Agreement, and other negotiated closing conditions. The
transaction is expected to close no later than September 30, 2013.
Stifel Nicolaus Weisel acted as financial advisor and provided Geron's Board of Directors with
a fairness opinion regarding the transaction. Weil, Gotshal & Manges LLP has been acting as
legal counsel to Geron in connection with the divestiture of Geron's stem cell assets.
About Geron
Geron is a biopharmaceutical company developing first-in-class therapies for cancer,
including its telomerase inhibitor, imetelstat. For more information about Geron, visit
www.geron.com.
Use of Forward-Looking Statements
Except for the historical information contained herein, this press release contains forwardlooking statements made pursuant to the "safe harbor" provisions of the Private Securities
Litigation Reform Act of 1995. Investors are cautioned that statements in this press release
regarding Geron's plans or expectations for or of: closing of a transaction entered into under
the Asset Contribution Agreement regarding a divestiture of the Company's stem cell assets,
including without limitation: certain approvals by BioTime's shareholders, the effectiveness of
certain registration statements to be filed by BioTime and BAC with the SEC with respect to
the securities to be distributed as contemplated by the Agreement, other negotiated closing
conditions and closing no later than September 30, 2013, and statements related thereto,
constitute forward-looking statements. These statements involve risks and uncertainties that
can cause actual results to differ materially from those in such forward-looking statements.
These risks and uncertainties, include, without limitation: (i) the ability of the parties to close
the proposed transaction by September 30, 2013, or at all; (ii) satisfaction of all the conditions
precedent to closing the proposed transaction, including without limitation the ability of

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Geron: Investor Relations: Press Release

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BioTime to secure approval of BioTime's shareholders, the effectiveness of registration
statements to be filed by BioTime and BAC with the SEC, and the other negotiated closing
conditions; (iii) the possibility of litigation (including related to the transaction itself); (iv) the
ability of Geron to protect and maintain the assets to be contributed to BAC, including Geron's
intellectual property rights and the continuation of in-licenses; (v) Geron's intellectual property
licensors' refusal to transfer intellectual property rights from Geron to any third party; and (vi)
other risks described in Geron's and BioTime's SEC filings. Additional information and factors
that could cause actual results to differ materially from those in the forward-looking
statements are contained in Geron's periodic reports filed with the SEC under the heading
"Risk Factors," including Geron's quarterly report on Form 10-Q for the quarter ended
September 30, 2012. Undue reliance should not be placed on forward-looking statements,
which speak only as of the date they are made, and the facts and assumptions underlying the
forward-looking statements may change. Except as required by law, Geron disclaims any
obligation to update these forward-looking statements to reflect future information, events or
circumstances.
Additional Information and Where to Find It
BioTime intends to file with the SEC a proxy statement in connection with the proposed
transaction. The definitive proxy statement will be sent or given to the stockholders of
BioTime and will contain important information about the proposed transaction and related
matters. SECURITY HOLDERS ARE URGED TO READ THE PROXY STATEMENT
CAREFULLY WHEN IT BECOMES AVAILABLE. The proxy statement and other relevant
materials (when they become available), and any other documents filed by BioTime with the
SEC, may be obtained free of charge at the SEC's web site, at www.sec.gov. In addition,
security holders will be able to obtain free copies of the proxy statement and other relevant
documents (when available) from BioTime by directing a request by mail or email to
BioTime's Chief Financial Officer at 1301 Harbor Bay Parkway, Alameda, California 94502 or
[e-mail].
Participants in the Solicitation
Geron and BioTime, and their respective directors and executive officers, may be deemed to
be participants in the solicitation of proxies from BioTime's stockholders in connection with
the proposed transaction. Information about BioTime's directors and executive officers is set
forth in BioTime's proxy statement for its 2012 Annual Meeting of Stockholders, which was
filed with the SEC on April 30, 2012. The proxy statement and other relevant documents
(when available) filed with the SEC are available free of charge at the SEC's web site at
www.sec.gov, and from BioTime by directing a request by mail or email to BioTime's Chief

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Geron: Investor Relations: Press Release

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Financial Officer at 1301 Harbor Bay Parkway, Alameda, California 94502 or
[e-mail], or by going to BioTime's Investor Relations page on its corporate
web site at www.biotimeinc.com. Information about Geron's directors and executive officers is
set forth in Geron's proxy statement for its 2012 Annual Meeting of Stockholders, which was
filed with the SEC on April 24, 2012. The proxy statement and other relevant documents
(when available) filed with the SEC are available free of charge at the SEC's web site at
www.sec.gov, and from Geron by contacting Investor Relations by mail at Geron Corporation,
149 Commonwealth Drive, Suite 2070, Menlo Park, California 94025, Attn: Investor Relations
Department, or by going to Geron's Investor Relations page on its corporate web site at
www.geron.com. Additional information regarding the interests of participants in the
solicitation of proxies in connection with the transaction will be included in the proxy
statement that BioTime intends to file with the SEC.
CONTACT:
Anna Krassowska, Ph.D.
Investor and Media Relations
650-473-7765
[e-mail]
[e-mail]
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HUG#1668427

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