Agilent Technologies Inc., v. Affymetrix, Inc.

Filing 91

ORDER AS MODIFIED BY THE COURT Continuing Case Management Conference and Setting Hearing re 90 Case Management Statement. Motion Hearing set for 3/22/2010 09:00 AM in Courtroom 8, 4th Floor, San Jose. Joint Case Management Conference Statement due 3/12/2010. Case Management Conference set for 3/22/2010 10:00 AM. Signed by Judge James Ware on 12/8/2009. (ecg, COURT STAFF) (Filed on 12/8/2009)

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Thomas H. Jenkins (Pro hac vice) [e-mail] Tina E. Hulse (CA Bar No. 232936) [e-mail] FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. Stanford Research Park 3300 Hillview Avenue Palo Alto, California 94304-1203 Telephone: [phone] Facsimile: [phone] Attorneys for Plaintiff AGILENT TECHNOLOGIES, INC. Barbara A. Caulfield (CA Bar No. 108999) [e-mail] Michael J. Malecek (CA Bar No. 171034) [e-mail] Stephen C. Holmes (CA Bar No. 200727) [e-mail] DEWEY & LEBOEUF 1950 University Avenue, Suite 500 East Palo Alto, California 94303-2225 Telephone: [phone] Facsimile: [phone] Attorneys for Defendant AFFYMETRIX, INC.

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UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

AGILENT TECHNOLOGIES, INC. Plaintiff, v. AFFYMETRIX, INC. Defendant.

CASE NO. C 06-05958 JW (PVT) JOINT CASE MANAGEMENT STATEMENT AND [PROPOSED] ORDER Date: December 14, 2009 Time: 10:00 a.m. Courtroom: 8, 4th Floor Judge: Hon. James Ware

JOINT CASE MANAGEMENT STATEMENT AND [PROPOSED] ORDER CASE NO. C 06-05958 JW (PVT)

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In its Order of November 3, 2009 (Dkt. 89), the Court continued the Case Management Conference until December 14, 2009, in light of the parties' settlement negotiations. In its Order, the Court stated that the Joint Case Management Statement shall include the parties' proposed schedule on how the case should proceed and an update on the parties' settlement efforts. While settlement negotiations are on-going, the parties jointly submit this Case Management Statement and Proposed Order. DESCRIPTION OF THE HISTORY OF THE CASE The present case is a suit under 35 U.S.C. § 146 filed by Plaintiff Agilent Technologies, Inc. ("Agilent") against Defendant Affymetrix, Inc. ("Affymetrix") on September 26, 2006. Agilent appeals the decision of the United States Patent and Trademark Office ("USPTO") Board of Patent Appeals and Interferences ("the Board") in Patent Interference No. 105,285 ("the Interference"), entitled "Carol T. Schembri, Junior Party v. Donald M. Bessemer, Virginia W. Goss, and James L. Winkler, Senior Party." Agilent is the owner of all right, title, and interest in U.S. Patent No. 6,513,968, which issued on February 4, 2003 ("the Schembri patent"). Affymetrix is the owner of U.S. patent application number 10/619,224, filed on July 12, 2003, by Besemer, Goss, and Winkler ("the Besemer application"). To provoke an interference, Affymetrix copied claims of the Schembri patent into the Besemer application. On January 27, 2004, Affymetrix requested a declaration of interference between the Schembri patent and the Besemer application. The Interference was declared by the USPTO on February 16, 2005. In the Interference, Agilent filed a motion contending that claims 66-70 and 73-78 of the Besemer application are unpatentable because they are not supported by an adequate written description, as required under 35 U.S.C. § 112, ¶ 1. After briefing and a hearing, the Board denied Agilent's motion. It also found that Agilent could not prevail on the question of priority because the priority date accorded to Agilent was after that accorded to Affymetrix and Agilent did not assert an earlier date of invention. Accordingly, the Board canceled claims 20-26 and 30-35 of the Schembri patent. Although Affymetrix filed motions attacking the involved claims of the Schembri patent under 35 U.S.C. § 102(b) and 102(e), the Board dismissed those motions as moot. 1
JOINT CASE MANAGEMENT STATEMENT AND [PROPOSED] ORDER CASE NO. C 06-05958 JW (PVT)

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Agilent contended that the Board erroneously determined that claims 66-70 and 73-78 of the Besemer application were supported by an adequate written description, and that the Board erroneously canceled claims 20-26 and 30-35 in the Schembri patent as a result. Affymetrix contended that the Board was correct in its decision. On appeal to this Court, the parties submitted cross-motions for summary judgment on the written description issue. Following a joint claim construction and summary judgment hearing held April 25, 2008, the Court construed the Besemer claims in light of the Besemer specification, found sufficient written description support for the claims, and entered judgment in Affymetrix's favor. Agilent appealed the Court's decision to the Federal Circuit, which reversed. In its decision, the Federal Circuit held that when a party challenges written description support for an interference count or a copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language. The Federal Circuit therefore construed the Besemer claims in light of the Schembri patent specification. After construing the key limitations of the claims, the Federal Circuit held there was no dispute of material fact that the Besemer application does not satisfy the written description requirement for the claims at issue. Accordingly, the Federal Circuit held the Court erred in granting Affymetrix's summary judgment motion and reversed this Court's denial of Agilent's summary judgment motion. Affymetrix filed a petition for rehearing en banc, which the Federal Circuit denied. The Federal Circuit then issued its mandate on September 25, 2009, and entered judgment in favor of Agilent. DISPOSITION OF THE CASE IN LIGHT OF THE REMAND In its Order, the Court specifically asked the parties to address their respective positions with respect to how the case should proceed. The parties' positions are below: Agilent's Position: The only issue that the Board substantively decided was whether the Besemer claims have written description support. The Board did not consider any of Affymetrix's additional motions, instead dismissing the motions as moot in light of the decision on written description. Accordingly, on appeal, the only issue that this Court and the Federal Circuit considered was the written description issue. If Affymetrix asserts that its substantive motions should be considered at all, 2
JOINT CASE MANAGEMENT STATEMENT AND [PROPOSED] ORDER CASE NO. C 06-05958 JW (PVT)

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Agilent requests that the Court reverse the Board's decision and remand the case to the Board so that the Board may decide how to proceed with the interference in the first instance. In the alternative, if the Court would find it to be helpful, Agilent proposes that the parties brief the issue of the disposition of the case according to the schedule below. Affymetrix's Position: Affymetrix's motions in the Interference challenging the validity of the Schembri patent claims 20-26 and 30-35 remain to be decided in this case. This Court has already ruled in its Order dated September 13, 2007, that "these issues qualify for consideration in this action." Order on Motions Re: Standard of Review, Scope of Review, and Examination of Specifications, Docket No. 47, dated September 13, 2007 at p. 7. Affymetrix also agrees to brief the issue of the disposition of the case if the Court would find it helpful. SCHEDULE If the Court would find briefing the issue of the disposition of the case helpful, the parties' proposed schedule going forward is set forth below: EVENT Opening brief on the disposition of the case Responsive brief on the disposition of the case Hearing on the disposition of the case DUE DATE January 25, 2010 February 8, 2010 March 22, 2010 at 9 a.m. March 1, 2010

Pursuant to General Order No. 45 X.B, the electronic filer of this document attests under penalty of perjury that she has the concurrence of each of the signatories to this Joint Case Management Statement.

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JOINT CASE MANAGEMENT STATEMENT AND [PROPOSED] ORDER CASE NO. C 06-05958 JW (PVT)

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Dated: December 4, 2009 Dated: December 4, 2009

Respectfully submitted, FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.

By:

/s/ Tina E. Hulse Tina E. Hulse

Thomas H. Jenkins (Admitted Pro hac vice) [e-mail] FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. 901 New York Avenue Washington, D.C. 20001-4413 Telephone: [phone] Facsimile: [phone] Tina E. Hulse (CA Bar No. 232936) [e-mail] FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. 3300 Hillview Avenue Palo Alto, CA 94304-1203 Telephone: [phone] Facsimile: [phone] Attorneys for Plaintiff AGILENT TECHNOLOGIES, INC. AFFYMETRIX, INC.

By:

/s/ Stephen Holmes Stephen Holmes

Barbara A. Caulfield (CA Bar No. 108999) [e-mail] Michael J. Malecek (CA Bar No. 171034) [e-mail] Stephen C. Holmes (CA Bar No. 200727) [e-mail] DEWEY & LEBOEUF 1950 University Avenue, Suite 500 East Palo Alto, California 94303-2225 Telephone: [phone] Facsimile: [phone] Attorneys for Defendant AFFYMETRIX, INC.

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JOINT CASE MANAGEMENT STATEMENT AND [PROPOSED] ORDER CASE NO. C 06-05958 JW (PVT)

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[PROPOSED] CASE MANAGEMENT ORDER The Case Management Statement and [Proposed] Order is hereby adopted by the Court as the Case Management Order for the case and the parties are ordered to comply with this Order. The Court also sets a Further Case Management Conference following the March 22, 2010 hearing at 10 a.m. On or before March 12, 2010, the parties shall file a Joint Case Management Dated: _____________, 2009 Statement. The Statement shall include an update on theHonorable James Ware The parties' settlement efforts. United States District Court Judge

Dated: December 8, 2009

___________________________ JAMES WARE United States District Judge

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JOINT CASE MANAGEMENT STATEMENT AND [PROPOSED] ORDER CASE NO. C 06-05958 JW (PVT)