Illumina, Inc. v. Natera, Inc.

Filing 153

ORDER RE: JOINT DISCOVRY DISPUTE LETTER NO. 5 152 (Illston, Susan) (Filed on 10/4/2019)

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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 ILLUMINA, INC., Plaintiff, 8 ORDER RE JOINT DISCOVERY DISPUTE LETTER NO. 5 9 v. 10 NATERA, INC., United States District Court Northern District of California 11 Case No. 18-cv-01662-SI Re: Dkt. No. 152 Defendant. 12 13 On September 23, 2019, the parties filed their fifth discovery dispute letter regarding 14 Natera’s special interrogatory asking Illumina for information about the inventiveness of its ‘831 15 patent. This order follows. 16 On May 17, 2018, Natera filed a motion to dismiss Illumina’s complaint, arguing that 17 Illumina’s asserted ‘831 patent was ineligible under Alice/§101. Dkt. No. 24. In its June 26, 2018 18 order denying the motion to dismiss, the Court concluded Ilumina’s ‘831 patent is directed towards 19 a patent ineligible concept – namely, a natural phenomenon. The Court then had to determine if the 20 ‘831 patent included an inventive concept, thus saving it from ineligibility. The Court found “the 21 factual record [was] not sufficient … to conclude whether there [was] an inventive concept,” and 22 on that basis denied the motion “without prejudice to renew on a fuller record.” Dkt. No. 41 at 7. 23 The parties’ instant dispute arises from Natera’s special interrogatory (“SROG”) number 18, 24 requesting Illumina to “[d]escribe in detail all factual bases and identify all supporting documents 25 for any contention [] that the claims of the ‘831 Patent contain an inventive concept sufficient for 26 patent eligibility under 35 U.S.C. § 101[.]” Dkt. No. 152-1 at 8. Illumina’s response to SROG 18 27 states: (1) Natera has failed to make a prima facie claim for invalidity under § 101, presumably 28 because the Court denied Natera’s motion to dismiss on § 101 grounds; (2) directs Natera to the 1 arguments Illumina made in opposition to the motion to dismiss (Dkt. No. 32); and (3) directs Natera 2 to the USPTO Appeal Board’s decision denying inter partes review. Dkt. No. 152-1 at 8. 3 The Court’s June 26, 2018 order makes clear that inventiveness is a fact issue of significant 4 importance for discovery. Natera’s request is narrowly tailored and properly directed to the exact 5 issue framed by the Court and it is entitled to a comprehensive response. Therefore, the Court orders 6 that if Illumina wishes to supplement its response to SRGO 18, it must do so on or before October 7 14, 2019 with any non-expert information. Absent a showing of good cause, Illumina will not be 8 able to use any evidence in support of its inventiveness argument beyond what is included in its 9 response to SROG 18, disclosed through its experts or provided by depositions of fact witnesses 10 first deposed after October 14, 2019.. United States District Court Northern District of California 11 12 13 14 15 IT IS SO ORDERED. Dated: October 4, 2019 ______________________________________ SUSAN ILLSTON United States District Judge 16 17 18 19 20 21 22 23 24 25 26 27 28 2

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