Geron Corporation v. Viacyte, Inc.

Filing 38

ORDER GRANTING STIPULATED REQUEST TO ENLARGE TIME re 37 STIPULATION WITH PROPOSED ORDER. Motion to Define Scope to be filed by 10/31/2013. Responses due by 11/14/2013. Replies due by 11/21/2013. Motion Hearing on Motion to Define Scope set for 1 2/11/2013 02:00 PM in Courtroom 2, 17th Floor, San Francisco before Hon. William H. Orrick. Case Management Conference set for 1/7/2014 02:00 PM in Courtroom 2, 17th Floor, San Francisco. Signed by Judge William H. Orrick on 08/06/2013. (jmdS, COURT STAFF) (Filed on 8/6/2013)

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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, BUNZEL & MILLER
Benjamin K. Riley (112007)
[e-mail]
Jayne Laiprasert (256930)
[e-mail]
One Embarcadero Center, Suite 800
San Francisco, California 94111
Telephone: [phone]
Facsimile: [phone]

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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

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GERON CORPORATION, a Delaware
corporation,
Plaintiff,
v.
VIACYTE, INC., a Delaware corporation,
Defendant.

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CASE NO. C-12-4813 WHO

Case No. C-12-4813 WHO
ORDER GRANTING STIPULATED
REQUEST TO ENLARGE TIME
PURSUANT TO CIVIL L.R. 6-2

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WHEREAS, on September 13, 2012, Plaintiff Geron Corporation (“Geron” or “Plaintiff”)
filed the complaint in this action against Defendant ViaCyte, Inc. (“ViaCyte” or “Defendant”)
pursuant to 35 U.S.C. § 146 (D.I. 1);
WHEREAS, on January 3, 2013, a Case Management Conference was held in this case
before Judge Edward M. Chen and the Court ordered that mediation was to be completed by June
30, 2013, that Defendant was to file a motion to define the scope of the case and discovery by
February 21, 2013, that Plaintiff was to file its opposition by March 7, 2013, that Defendant was
to file its reply by March 14, 2013, that discovery is limited to written discovery focused on those
issues which were decided 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
Asset Contribution Agreement, dated January 4, 2013, with BioTime, Inc. and BioTime
Acquisition Corporation, now Asterias Biotherapeutics, Inc. (“Asterias”), providing for the
divestiture of certain Geron stem cell assets, including the intellectual property at issue in this 35
U.S.C. § 146 appeal, to Asterias (the “Transaction”) upon the closing of the Transaction;
WHEREAS, under the Asset Contribution Agreement, the closing of the Transaction is
contemplated to occur on or about September 30, 2013. Conditions to the closing include the
requirement that Asterias and BioTime seek to obtain the effectiveness of certain registration
statements filed by each of them. The effectiveness of such registration statements is subject to
review and approval by the United States Securities and Exchange Commission (the “SEC”), and
none of Asterias, BioTime, or Geron controls the timing or course of SEC review or approval;
WHEREAS, upon the closing of the Transaction, Asterias will substitute in as plaintiff in
this action as the owner of the Geron intellectual property at issue in this action. Further, under
the Asset Contribution Agreement, Geron may not settle this action without Asterias’ consent.
Accordingly, the parties have conferred and are interested in conducting settlement discussions
before a mediator through the Court’s Alternative Dispute Resolution procedures between
Defendant ViaCyte, Inc. and Asterias, upon the closing of the Transaction;

CASE NO. C-12-4813 WHO

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WHEREAS, prior to reassignment of this case to the undersigned, counsel met, conferred
and agreed that dates for mediation, Motion to Define the Scope of this Case and Discovery,
Opposition to the Motion to Define the Scope, Reply to the Motion to Define the Scope, and the
Case Management Conference be extended until the earlier of (a) 30 days after the close of the
Transaction or (b) 31 days after September 30, 2013, as follows:
Event

Dates

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Motion to Define Scope

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Opposition to Motion to Define Scope

November 14, 2013

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Reply to Motion to Define Scope

November 21, 2013

Case Management Conference

December 5, 2013

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

February 28, 2014

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October 31, 2013

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WHEREAS, the parties had jointly filed a Stipulated Request for Order Enlarging Time
Pursuant to Civ. L.R. 6-2 (D.I. 32) on January 16, 2013, and Judge Edward M. Chen granted said
request on January 24, 2013 (D.I. 33);

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WHEREAS, the present case was reassigned to the Honorable William H. Orrick on June
27, 2013;

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WHEREAS, the Reassignment Order and Order Requiring Submission of Case
Management Statement dated June 27, 2013 vacated the above previously granted dates with the
exception of the Mediation Completion date of February 28, 2014;

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WHEREAS, the Court has scheduled a Case Management Conference for August 22,
2014;
WHEREAS, the undersigned counsel have met, conferred and agreed that the previously
ordered dates by Judge Chen for mediation, filing the Motion to Define the Scope of this Case
and Discovery, Opposition to the Motion to Define the Scope, and Reply to the Motion to Define
the Scope, be maintained. These dates are intended to extend deadlines until the later of (a) 30
days after the close of the Transaction, or (b) 31 days after September 30, 2013, or (c) later dates
at the Court’s convenience. The chart below summarizes these dates in accordance with option

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(b). The parties are proposing an additional date of December 11, 2013 to hear the Motion to
Define Scope, which was not previously set and resetting the date for the Case Management
Conference.
Event

Dates

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File Motion to Define Scope

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Opposition to Motion to Define Scope

November 14, 2013

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Reply to Motion to Define Scope

November 21, 2013

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Proposed Hearing for Motion to Define
Scope

December 11, 2013

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Proposed Case Management
Conference

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October 31, 2013

January 7, 2014

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

February 28, 2014

Counsel further agree that all discovery should be stayed until ordered by the Court after
the next Case Management Conference.
WHEREAS, no other dates for this case have been set by the Court.
NOW THEREFORE, IT IS STIPULATED, AGREED AND ORDERED that the date for
filing the Motion to Define Scope and Discovery shall be the later of (a) 30 days after the close of
the Transaction or (b) October 31, 2013. Should the date for Motion to Define Scope and
Discovery be October 31, 2013, then the following agreed to dates apply.
Event

Dates

File Motion to Define Scope

October 31, 2013

Opposition to Motion to Define Scope

November 14, 2013

Reply to Motion to Define Scope

November 21, 2013

Hearing for Motion to Define Scope

December 11, 2013

Case Management Conference
Mediation Completion (ADR L.R. 6-3)

January 7, 2014
February 28, 2014

Should the Transaction close after September 30, 2013, the parties shall so inform the Court, and
within one week of closure of the Transaction the parties shall submit a revised proposed
Scheduling Order consistent with this Order that provides for a filing date of the contemplated

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Motion to Define Scope and Discovery at 31 days following closure of the Transaction and a
revised schedule consistent with this Order.
SO STIPULATED this 5th day of August 2013.
MCDERMOTT WILL & EMERY LLP

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

By:

By:

/s/ Judith S.H. Hom
Judith S.H. Hom
Attorneys for Geron Corporation

/s/ Benjamin K. Riley
Benjamin K. Riley
Attorneys for ViaCyte Inc.

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SIGNATURE ATTESTATION
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/ Judith S.H. Hom_______
Judith S.H. Hom

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ORDER

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PURSUANT TO STIPULATION, IT IS SO ORDERED.

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DATED: August 6, 2013

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HON. WILLIAM H. ORRICK
Judge of the United States District Court

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CASE NO. C-12-4813 WHO

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