Genentech, Inc. v. Trustees of the University of Pennsylvania

Filing 216

Tentative Order Regarding Leave to Amend and Setting Case Management Conference to Follow May 12, 2011 Hearing. Signed by Judge Lucy H. Koh on 5/10/2011. (lhklc2, COURT STAFF) (Filed on 5/10/2011)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

United States District Court
For the Northern District of California

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GENENTECH, INC.,
Plaintiff,

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v.
THE TRUSTEES OF THE UNIVERSITY OF
PENNSYLVANIA, a Pennsylvania non-profit
corporation,

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Defendant.

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Case No.: 10-CV-02037-LHK

TENTATIVE ORDER REGARDING
LEAVE TO AMEND AND SETTING
CASE MANAGEMENT CONFERENCE

Plaintiff Genentech, Inc. (Genentech) has moved to amend its complaint and answer to

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assert a claim for declaratory judgment of unenforceability and an additional affirmative defense

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(“Motion,” Dkt. No. 163). Genentech’s amendments assert that defendant Trustees of the

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University of Pennsylvania (U Penn) committed inequitable conduct while prosecuting U.S. Patent

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No. 6,733,752 (the ’752 Patent). U Penn opposed the motion, and Genentech filed a reply brief. U

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Penn moved for leave to file a sur-reply to Genentech’s reply on May 6, 2011. Genentech opposed

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U Penn’s request for leave, and in the alternative asked for leave to file a sur-sur-reply on May 9,

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2011.

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The parties are ordered not to file any additional briefing relating to the Motion. The Court

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has reviewed the papers submitted and tentatively finds that Genentech should be given leave to

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amend regarding the first asserted basis of inequitable conduct (alleged misrepresentation of the

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number of mice who survived 90 weeks of “high dose” treatment with no tumors). Accordingly,
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Case No.: 10-CV-02037-LHK
TENTATIVE ORDER REGARDING LEAVE TO AMEND

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the Court asks that the parties focus their arguments at the May 12, 2011 hearing on the other

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asserted bases of Genentech’s request for leave to amend.

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In light of the May 9, 2011 filing of the Order Construing Disputed Claim Terms of the

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’752 Patent, the Court believes the case schedule is set pursuant to the December 8, 2010 Case

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Management Order, as follows:

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United States District Court
For the Northern District of California

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Event
Production of Discovery relating to advice of counsel
(PLR 3-7)
Fact Discovery Cutoff
Opening Expert Reports by Party with Burden
Rebuttal Expert reports
Close of Expert Discovery
Opening briefs on Dispositive Motions
Oppositions to Dispositive Motions
Replies on Dispositive Motions
Hearing on Dispositive Motions
Pretrial conference
Trial (5-10 days)

Date
June 28, 2011
Sept. 6, 2011
Sept. 27, 2011
Oct. 18, 2011
Nov. 7, 2011
Nov. 21, 2011
Dec. 12, 2011
Dec. 23, 2011
Formerly Jan. 6, 2012; hereby reset for Jan. 12, 2011 at
1:30 p.m.
March 28, 2012 at 2 p.m.
Formerly April 5, 2011; hereby reset for April 16,
2012 at 9 a.m.

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In lieu of the pretrial deadlines set in the December 8, 2010 Case Management Order, the
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parties shall comply with the Court’s Standing Order regarding civil jury trials for all pretrial
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deadlines. The Court hereby sets a Case Management Conference to follow the May 12, 2011
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hearing on the Motion. No Joint Case Management Statement is required. However, if the parties
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wish to raise particular case management issues, they may file a Joint Case Management Statement
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limited to those issues by Wednesday, May 11, 2011 at 5 p.m.
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IT IS SO ORDERED.
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Dated: May 10, 2011
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_________________________________
LUCY H. KOH
United States District Judge

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Case No.: 10-CV-02037-LHK
TENTATIVE ORDER REGARDING LEAVE TO AMEND