XY, LLC v. Trans Ova Genetics, LC

Filing 490

RECOMMENDATION OF UNITED STATES MAGISTRATE JUDGE by Magistrate Judge Nina Y. Wang on 11/29/2021. For the reasons set forth herein, this court respectfully RECOMMENDS that: Defendant Trans Ova Genetics, LC's Motion to Supplement Preliminary Inv alidity Contentions be GRANTED IN PART and DENIED IN PART; Plaintiffs' Motion to Exclude New Invalidity Arguments Under D.C.COLO.LPtR 16(b)(5) be GRANTED IN PART and DENIED IN PART as to the '559 Patent; and To the extent the presiding judge, the Honorable William J. Martinez, finds that any of the invalidity arguments should be stricken, Trans Ova be ORDERED to file Amended Final Invalidity Contentions no later than fourteen (14) days after Judge Martinez's Order. (alave, )

Case 1:17-cv-00944-WJM-NYW Document 490 Filed 11/29/21 USDC Colorado Page 1 of 24

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Civil Action No. 17-cv-00944-WJM-NYW
XY, LLC,
INGURAN, LLC, d/b/a STGENETICS, and
BECKMAN COULTER, INC.,
Plaintiffs,
v.
TRANS OVA GENETICS, LC,
Defendant.
RECOMMENDATION OF UNITED STATES MAGISTRATE JUDGE
Magistrate Judge Nina Y. Wang
This matter comes before the court on the following:
(1)

Defendant Trans Ova Genetics, LC’s (“Defendant” or “Trans Ova”) Motion
to

Supplement

Preliminary 1

Invalidity

Contentions

(“Motion

to

Supplement”) [Doc. 84, filed November 17, 2017]; 2
(2)

Plaintiffs’

Motion

to

Exclude

New

Invalidity

Arguments

Under

D.C.COLO.LPtR 16(b)(5) (“Motion to Exclude”) filed by Plaintiffs XY, LLC
(“XY”), Beckman Coulter, Inc. (“Beckman”), and Inguran, LLC d/b/a

The Local Patent Rules do not name the first set of Invalidity Contentions, and this court
has previously referred to them in this action and others as “Preliminary” Infringement
Contentions. The term “Preliminary,” however, may leave the (mis)impression that these
first set of Invalidity Contentions are necessarily incomplete and require and/or permit
amendment. Accordingly, this court now uses “Initial” to refer to this first set of Invalidity
Contentions, except when referring to the precise language used by the Parties.
1

This court uses the convention [Doc. __] to refer to the docket entry number assigned
by the court’s Electronic Court Filing (“ECF”) system. In this case, [Doc. 170] refers to
the publicly available, redacted version of Plaintiffs’ Motion to Exclude.
2

1

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STGenetics (“ST”) (collectively, “Plaintiffs”) (“Motion to Exclude”) [Doc.
170, Doc. 171, filed May 21, 2018]. 3
These Motions were referred to the undersigned Magistrate Judge pursuant to 28 U.S.C.
§ 636(b), the Order Referring Case dated April 19, 2017 [Doc. 17], and the Memoranda
dated November 20, 2017 [Doc. 85]; December 11, 2017 [Doc. 99]; and May 22, 2018
[Doc. 172].

This court has reviewed the Motions and related briefing, 4 and has

concluded that oral argument will not materially assist in their respective resolutions.
Accordingly, based on the record before the court and the applicable legal authority, this
court respectfully RECOMMENDS that Trans Ova’s Motion to Supplement the
Preliminary Infringement Contentions be GRANTED IN PART AND DENIED IN PART
and the Motion to Exclude be GRANTED IN PART AND DENIED IN PART.
BACKGROUND
The background of this action was discussed in the Original Recommendation
[Doc. 341], as well as other court orders, see, e.g., [Doc. 164], and therefore the court will

With respect to the Motion to Exclude, this Recommendation addresses Count XII of the
Fourth Amended Complaint associated with U.S. Patent No. RE46,559 (“the ’559
Patent”), and is intended to be considered in conjunction with the Recommendation dated
October 2, 2018 (“Original Recommendation”) [Doc. 341], Defendants’ Objection to that
Recommendation dated October 12, 2018 [Doc. 350], and Plaintiffs’ Response to the
Objection [Doc. 362]. Consistent with the Original Recommendation, [Doc. 170] refers to
the redacted, publicly available version of the Motion to Exclude. This court will refer to
that entry for purposes of this Recommendation.
3

Defendant filed a Motion for Leave to File Reply in Support of Motion to Supplement
Preliminary Invalidity Contentions (“Motion for Reply”) on December 8, 2017. [Doc. 98].
Upon review of the briefing, this court granted the Motion for Reply on November 8, 2021,
with the expectation that any arguments not appropriately raised on Reply could be
disregarded. [Doc. 487]. See also Cahill v. American Family Mut. Ins. Co., 610 F.3d
1235, 1239 (10th Cir. 2010) (citing Hill v. Kemp, 478 F.3d 1236, 1250–51 (10th Cir. 2007))
(arguments first raised in a reply brief come too late); Ulibarri v. City & County of Denver,
742 F. Supp. 2d 1192, 1218 (D. Colo. 2010) (argument first raised in reply brief may be
disregarded).

4

2

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be focused on the remaining issue that is subject to this Recommendation.

On

December 6, 2016, XY initiated this action against Trans Ova in the United States District
Court for the Western District of Texas, alleging infringement of four patents: (1) United
States Patent Nos. 9,145,590 (“’590 Patent”), 7,723,116 (“’116 Patent”), 9,365,822
(“’822 Patent”), and 7,208,265 (“’265 Patent”) as well as trade secret misappropriation
and unfair competition violations under the Defend Trade Secrets Act and state law.
[Doc. 5]. By Amended Complaint, XY then added allegations of infringement of two
additional United States Patent Nos. 6,372,422 (“’422 Patent”), and 8,652,769 (“’769
Patent”). [Doc. 6]. On April 5, 2017, the Western District of Texas transferred the action
here. [Doc. 1].
Following the transfer of this action to this District, XY filed a Second Amended
Complaint adding co-plaintiff Beckman Coulter and an additional patent, United States
Patent No. 9,134,220 (“’220 Patent”) on April 21, 2017. [Doc. 24]. XY subsequently filed
Third and Fourth Amended Complaints without objection from Trans Ova. [Doc. 51, filed
July 26, 2017; Doc. 74, filed October 18, 2017]. The Third Amended Complaint added
another co-plaintiff, Inguran, an exclusive licensee to the ’590, ’116, ’822, ’265, ’422, and
’769 Patents (referred to collectively with XY and Beckman Coulter, Inc. as “Plaintiffs”).
[Doc. 50-1]. The currently operative Fourth Amended Complaint replaced the ’220
Patent with a reissued patent, United States Patent No. RE46,559 (“’559 Patent”)
(collectively with the ’590, ’116, ’265, ’422, and ’769 Patents, “Patents-in-Suit”). 5

The ’559 Patent is a reissue of United States Patent No. 9,134,220 (“’220 Patent”) that
was introduced to this action through the Second Amended Complaint. [Doc. 24]. The
Fourth Amended Complaint replaced the ’220 Patent with the ’559 Patent. [Doc. 73; Doc.
74; Doc. 83]. A reissued patent corrects errors in the original patent, but may not
introduce new matter. 35 U.S.C. § 251. In addition, the United States District Court for
5

3

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Relevant here, on May 5, 2017, this court set a schedule in this case that set
deadlines for infringement and invalidity contentions and supporting documentation.
[Doc. 35 at 2]. On July 25, 2017, Trans Ova served its Initial Invalidity Contentions on
Plaintiffs. [Doc. 90-1; Doc. 170-2]. Then, on November 17, 2017, Trans Ova filed the
instant Motion to Supplement, which was opposed by XY. [Doc. 84; Doc. 90]. On
January 11, 2018, the presiding judge, the Honorable William J. Martinez, dismissed
Counts II, IV, V, VI, VII, VIII, IX, X, and XI of the Fourth Amended Complaint under claim
preclusion principles. [Doc. 120]. Specifically, Judge Martinez dismissed the asserted
claims of the ’116, ’265, ’422, and ’769 Patents with prejudice, leaving the asserted
claims of the ’590, ’822, and ’559 Patents at issue. [Doc. 120]. In light of Judge
Martinez’s ruling, this court ordered the Parties to submit a Joint Status Report to
address, inter alia, the status of Trans Ova’s Motion to Supplement. [Doc. 132]. In that
Status Report, Trans Ova withdrew its request to supplement its invalidity contentions
challenging the ’116, ’265, ’422, and ’769 Patents. [Doc. 133 at 3]. Plaintiffs also
withdrew infringement contentions for claims 13–20, 17, 22, 39, 40–46 of the ‘590 Patent
and Trans Ova thus withdrew its invalidity challenges for those claims. [Id. at 2]. Based
on the Status Report, this court denied the Motion to Supplement as moot. [Doc. 134].
Discovery and other pretrial proceedings progressed, including with respect to
the ’559 Patent which is entitled “Enhancing Flow Cytometry Discrimination with
Geometric Transformation,” see, e.g., [Doc. 138 at 1]. Trans Ova then filed a Second
Motion to Supplement its Initial Invalidity Contentions [Doc. 135, filed February 16, 2018]

the Western District of Wisconsin invalidated the sole asserted claim of the ‘822 Patent,
and thus, XY will dismiss the cause of action with respect to the ’822 Patent in this action.
[Doc. 424 at 2].
4

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seeking to supplement its Initial Invalidity Contentions, and served Supplemental
Invalidity Contentions on Plaintiffs, [Doc. 135-1]. By Order dated May 14, 2018, this
court permitted the Supplemental Invalidity Contentions, but reserved ruling on whether
any proposed amendments between the Initial Invalidity Contentions and Final Invalidity
Contentions were supported by good cause. [Doc. 168]. Trans Ova’s Final Invalidity
Contentions were served on April 30, 2018. [Doc. 170-1]. The court also extended the
time for Plaintiffs to file the Motion to Exclude to May 21, 2018. [Doc. 168 at 21–22; Doc.
170].
Plaintiffs originally filed the instant Motion to Exclude on May 21, 2018 that was
directed toward certain invalidity contentions associated with two of the Patents-in-Suit,
’590 Patent and the ’559 Patent. [Doc. 170; Doc. 171]. While the Motion to Exclude
was pending, the presiding judge, the Honorable William J. Martinez issued an Order
dismissing the ’559 Patent as ineligible subject matter pursuant to 35 U.S.C. § 101 on
August 9, 2018. [Doc. 262]. Thus, when this court issued the Original Recommendation
with respect to the Motion to Exclude, it did not include any analysis with respect to the
’559 Patent. See [Doc. 341].
Having dismissed all the counts of the operative Fourth Amended Complaint 6 but
Counts I and III, Judge Martinez then issued an Order to Show Cause as to why the
court should not enter Rule 54(b) judgment on all but those counts so that Plaintiffs could

Judge Martinez’s August 8, 2018 Order also denied Plaintiffs’ Motion for Leave to File a
Fifth Amended Complaint. [Doc. 262]. Count IV, which alleged infringement of the ’265
Patent, was dismissed and not subject to appeal. [Doc. 120; Doc. 408; Doc. 411; Doc.
455 at 11:10–13]. Since the remand of the case, the Parties have also stipulated that
Plaintiffs will not sue Defendant with respect to the U.S. Patent No. 9,625,367 (“’367
Patent”) and U.S. Patent No. 9,835,541 (“’541 Patent”). [Doc. 441]. Thus, the Fourth
Amended Complaint remains operative. [Doc. 74].
6

5

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appeal the court’s various rulings to the United States Court of Appeals for the Federal
Circuit (“Federal Circuit”) and stay the remainder of the case. [Doc. 383]. After reviewing
the Parties’ responses to his Order to Show Cause [Doc. 386, Doc. 387], Judge Martinez
entered Final Judgment as to Counts II, IV, V, VI, VII, VIII, IX, X, XI, and XII. [Doc. 389].
Plaintiffs appealed the Final Judgment, including the dismissal of the ’559 Patent on §
101 grounds. [Doc. 391].
On appeal, the Federal Circuit reversed the district court’s judgment that the
asserted claims of the ’559 Patent were ineligible under § 101, and vacated the district
court’s claim-preclusion judgment as to the ’116, ’422, and ’769 Patents. XY, LLC v.
Trans Ova Genetics, LC, 968 F.3d 1323 (Fed. Cir. 2020); [Doc. 408]. On September 8,
2020, the Federal Circuit issued its Mandate [Doc. 411], and the stay was lifted. Thus,
there are five remaining Patents-in-Suit: ’590 Patent (Count I); ’116 Patent (Count II);
’422 patent (Count V); ’769 Patent (Count VI); and ’559 Patent (Count VII).
Relevant here, this court ordered and the Parties filed a Status Report that
addressed, inter alia, Trans Ova’s invalidity contentions. [Doc. 424]. In the Status
Report, Trans Ova indicated that it would dismiss the previously asserted “burying”
inequitable conduct counterclaim against the ’759 and ’116 Patents, but would seek to
add inequitable conduct as a defense to the ’559 Patent and add new prior art to the
’116 invalidity analysis. [Id. at 18]. It also sought to reinstate the Motion to Supplement
[Doc. 84], while Plaintiffs sought to reinstate their arguments with respect to Motion to
Exclude [Doc. 170].
Recommendation

as

See [Doc. 424 at 16–20].
to

the

Motion

to

Recommendation as to the Motion to Exclude.

6

Thus, this court now turns to its

Supplement,

and

a

supplemental

Case 1:17-cv-00944-WJM-NYW Document 490 Filed 11/29/21 USDC Colorado Page 7 of 24

LEGAL STANDARDS
I.

Colorado Local Patent Rules
As previously discussed, see, e.g., [Doc. 168], the Colorado Local Patent Rules

contemplate two sets of Invalidity Contentions. An initial set of Invalidity Contentions
(“Initial Invalidity Contentions”) are required early in the case, typically within sixty days
of the Scheduling Conference. See D.C.COLO.LPtR 4, 8 and D.C.COLO.LPtR Sched.
Ord. Then, a final set of Invalidity Contentions (“Final Invalidity Contentions”) are served
in response to a final set of the Infringement Contentions after claim construction. See
D.C.COLO.LPtR 16. A party seeking to amend contentions between the Initial and Final
Invalidity

Contentions

must

provide

a

separate

statement

of

good

cause.

D.C.COLO.LPtR 16(a)(3), 16(b)(3). The court notes that the specific language of Local
Patent Rule 16(b)(3) only refers to the identification of “additional prior art,” but does not
address additional invalidity theories. D.C.COLO.LPtR 16(b)(3). A party may move to
exclude amendments between the Initial and Final Invalidity Contentions on the grounds
that good cause for the amendment does not exist. D.C.COLO.LPtR 16(a)(4), 16(b)(4).
A party may not present invalidity theories that are not properly disclosed.
D.C.COLO.LPtR 16(b)(2); Crocs., Inc. v. Effervescent, Inc., No. 06-cv-00605-PAB-KMT,
2015 WL 5171332, at *2 (D. Colo. Nov. 8, 2017).
The purpose of the Initial Invalidity Contentions is to facilitate robust disclosure of
the Parties’ respective positions, as the party asserting infringement is required to
respond to the Initial Invalidity Contentions. See D.C.COLO.LPtR 10. Contentions are
intended to ensure that parties “crystalize their theories of the case early in litigation so
as to prevent the shifting sands approach” to the case. Wyers Prods. Group, Inc. v.

7

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Cequent Performance Prods., Inc., No. 12-cv-02640-REB-KMT, 2015 WL 3494718, at *2
(D. Colo. Jun. 2, 2015) (citation omitted). As with any pretrial disclosure, Initial and Final
Invalidity Contentions are intended to aid the court in the efficient administration of justice,
by guiding the parties in framing the appropriate scope of discovery and eliminating unfair
surprise. Cf. Jama v. City and Cty. of Denver, 304 F.R.D. 289, 295 (D. Colo. 2014)
(observing that mandatory disclosure serves several purposes, including giving the
opposing party information about the identification and locations of knowledgeable
individuals to determine whether an individual should be deposed during discovery).
Accordingly, consistent with its prior Recommendation, see [Doc. 341 at 7], this court
construes the requirement to show good cause with respect to amendments between the
Initial and Final Invalidity Contentions to also include amendment to non-prior art
arguments, including invalidity theories based on lack of written description, enablement,
and indefiniteness. This is because a patent’s specification and claims do not ordinarily
change between the time of the Initial and Final Invalidity Contentions.
II.

Good Cause
Good cause is not defined by the Local Patent Rules, but the Rules do provide for

examples of good cause, e.g., discovery of previously undiscovered information or an
unanticipated claim-construction ruling. See D.C.COLO.LPtR 16. The Federal Circuit
has found that “good cause” requires a showing of diligence. See O2 Micro Intern. Ltd.
v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006). This is consistent
with the Tenth Circuit’s interpretation of “good cause” under Rule 16(b)(4), which requires
a movant to establish that scheduling deadlines cannot be met despite diligent efforts.
See Gorsuch, Ltd. B.C. v. Wells Fargo Nat’l Bank Ass’n, 771 F.3d 1230, 1240 (10th Cir.

8

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2014). Another judicial officer in this District has recently held that good cause is satisfied
when a party seeking to amend infringement contentions demonstrated that the
amendment arose from discovery that was not available at the time of the Initial
contentions. See Brandt v. Von Honnecke, Civil Action No. 15-cv-02785-RM-NYW, 2018
WL 4385284 (D. Colo. Sept. 14, 2018) (denying Defendant’s Motion to Exclude/Strike
Plaintiffs’ Supplemental Infringement Contentions).
ANALYSIS
I.

Motion to Supplement
In its Motion to Supplement, Trans Ova seeks to amend its Initial Invalidity

Contentions to include additional prior art and additional indefiniteness arguments. See
generally [Doc. 84]. But as observed by Plaintiffs in their Response, Trans Ova’s Motion
to Supplement did not identify any specific amendments that it sought to make. See [id.;
Doc. 90 at 1]. For the reasons stated in its prior Recommendation [Doc. 341], this court
reaffirms its conclusion that the District’s Local Patent Rules require good cause to
support amendments made to invalidity contentions. Thus, to the extent that Trans Ova
contends that it may freely amend its Invalidity Contentions between the Initial Invalidity
Contentions and Final Invalidity Contentions, this court respectfully disagrees that such
conclusion is consistent with the spirit and intent of the District’s Local Patent Rules.
And while this court respectfully agrees that a patent holder may not simply
“preemptively challenge a defendant’s proposal to supplement its invalidity contentions
but rather must move to exclude the amendment after the amended contentions are
served,” see [Doc. 84 at 15], this court observes that a party seeking to amend its Initial
Invalidity Contentions should be mindful of the court’s consideration of diligence in

9

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determining the appropriate timing for propounding Supplemental Invalidity Contentions.
On Reply, Trans Ova includes, for the first time, its Supplemental Invalidity
Contentions. These additional invalidity contentions include Section 103 (obviousness)
arguments based on additional prior art and Section 112 (indefiniteness, written
description, and/or enablement) arguments related to the asserted claims of the ’136
Patent. [Doc. 98-1 at 4; Doc. 98-2]. Arguments made for the first time on Reply are
generally disregarded. See Cahill v. American Family Mut. Ins. Co., 610 F.3d 1235,
1239 (10th Cir. 2010) (citing Hill v. Kemp, 478 F.3d 1236, 1250–51 (10th Cir. 2007)
(arguments first raised in a reply brief come too late)); Ulibarri v. City & Cty. of Denver,
742 F. Supp. 2d 1192, 1218 (D. Colo. 2010) (argument first raised in reply brief may be
disregarded). There is no explanation as to why Trans Ova could not have provided its
proposed Supplemental Invalidity Contentions in its affirmative Motion particularly given
its arguments that Plaintiffs were already on notice. See [Doc. 84]. Ordinarily, “[t]o
consider evidence or arguments first raised in a reply brief would be manifestly unfair to
plaintiff who, under our rules, has no opportunity for a written response and it would also
be unfair to the court itself, which, without the benefit of a response to a late-blooming
argument, would run the risk of an improvident or ill-advised opinion, given our
dependence as a[ ] [ ] court on the adversarial process for sharpening the issues for
decision.” Pinnacle Packaging Co., Inc. v. One Equity Partners (Eur.) GmbH, No. 12CV-537-JED-TLW, 2016 WL 6638621, at *1 (N.D. Okla. May 4, 2016) (internal quotation
marks omitted) (citing Headrick v. Rockwell Int’l Corp., 24 F.3d 1272, 1278 (10th Cir.
1994)). However, given the lack of clarity of the appropriate procedure for considering
supplementation and of the applicable standards, this court finds that it is consistent with

10

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the principles set forth in Rule 1 of the Federal Rules of Civil Procedure to consider
whether the proposed amendments are supported by good cause. 7
’116 Patent.

Trans Ova seeks to supplement its prior art-based invalidity

contentions with argument and evidence set forth in its requests to the United States
Patent and Trademark Office (“USPTO”) Patent Trial and Appeal Board (“PTAB”) for
inter partes review (“IPR”), 8 IPR Requests IPR2018-00247 and IPR2018-00248 and
supporting exhibits. [Doc. 98-2 at 4]. In doing so, Trans Ova “does not attach duplicate
copies herewith.” [Id.]. Failure to do so, however, is fatal to its attempt to amend its
invalidity contentions in this action as this court has no basis to consider whether
amendment to include these additional arguments and references in this action after the
filing of the Initial Invalidity Contentions are supported by good cause. Indeed, while
both IPR Requests IPR2018-00247 and IPR2018-00248 and supporting exhibits, as well
as the PTAB’s decisions, are publicly available, this court declines to speculate as to
any good cause arguments, particularly given that Trans Ova has been represented by
able counsel since the inception of this action. See United States v. Davis, 622 Fed.
App’x 758, 759 (10th Cir. 2015) (“[I]t is not this court’s duty, after all, to make arguments
for a litigant that he has not made for himself.”); Phillips v. Hillcrest Med. Ctr., 244 F.3d
790, 800 n.10 (10th Cir. 2001) (observing that the court has no obligation to make
arguments or perform research on behalf of litigants). In addition, given the ruling of the
PTAB as to IPR2018-00248, the invalidity arguments related to claims 42–59, 65–67,

The court does not address the arguments with respect to the ’265 Patent, as it has
been dismissed from this action. [Doc. 120; Doc. 455 at 11:11–12].

7

An IPR is an administrative procedure that allows private parties to challenge previously
issued patent claims in an adversarial process before the USPTO that mimics civil
litigation. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1352, 200 L. Ed. 2d 695 (2018).

8

11

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and 69 of the ’116 Patent are moot, given the PTAB’s cancellation of those claims and
their corresponding withdrawal in this action. See [Doc. 454 at 2 (citing Doc. 454-1)].
With respect to Trans Ova’s arguments regarding the lack of written description
and/or enablement, this court notes that Trans Ova’s arguments are not actually new.
Instead, Trans Ova’s supplements appear to simply be rebuttals to XY’s responses. See
[Doc. 98-2 at 5].

Thus, consistent with the principles articulated in the Original

Recommendation, see [Doc. 341 at 12], this court finds that good cause is not necessary
to support Trans Ova’s supplementation of lack of written description and/or enablement
arguments with respect to the ’116 Patent. Thus, this court respectfully RECOMMENDS
that the Motion to Supplement as to the ’116 Patent be GRANTED insofar as it relates
to Trans Ova’s lack of written description and/or enablement arguments and DENIED as
to any other arguments.
’769 Patent. Trans Ova also seeks to supplement its prior art-based invalidity
contentions as to the ’769 Patent with its IPR request, IPR 2018-00250. [Doc. 98-2 at
5]. As with the IPR requests associated with the ’116 Patent, Defendant elected not to
include a copy of IPR 2018-00250, which precludes this court from finding good cause.
See supra. In addition, the court may take judicial notice of PTAB filings. See CANVS
Corp. v. United States, 118 Fed. Cl. 587, 591 n.3 (2014) (citing Fed. R. Evid. 201(b)(2),
(c)(1) (judicial notice); Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 497 n.1
(Fed.Cir.1997) (PTAB filings)). This court takes judicial notice of the PTAB’s Final
Decision that Trans Ova “has not proven by a preponderance of the evidence that claims
1–16 [of the ’769 Patent] are unpatentable.” See Trans Ova Genetics, LC v. XY, LLC,
No. IPR2018-00250, 2019 WL 2621923, at *10 (P.T.A.B. June 26, 2019). Thus, it

12

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appears that Trans Ova is estopped from raising those (and potential other) invalidity
arguments based on printed publications in this action pursuant to 35 U.S.C. § 315(e)(1)
(“The petitioner in an inter partes review of a claim in a patent under this chapter that
results in a final written decision under section 318(a), or the real party in interest or privy
of the petitioner, may not request or maintain a proceeding before the Office with respect
to that claim on any ground that the petitioner raised or reasonably could have raised
during that inter partes review.”).
As to Trans Ova’s supplemental contentions that the asserted claims of the ’769
Patent are invalid based on indefiniteness, Trans Ova directs this court to its Opening
Claim Construction Brief and supporting declarations and exhibits. [Doc. 98-2 at 5–6].
As an initial matter, the Federal Rules of Civil Procedure do not contemplate such
incorporation by reference. Rule 10(c) provides that “[a] statement in a pleading may be
adopted by reference elsewhere in the same pleading or in any other pleading or
motion.” Fed. R. Civ. P. 10(c). A pleading is defined as “(1) a complaint; (2) an answer
to a complaint; (3) an answer to a counterclaim designated as a counterclaim; (4) an
answer to a crossclaim; (5) a third-party complaint; (6) an answer to a third-party
complaint; and (7) if the court orders one, a reply to an answer.” Fed. R. Civ. P. 7(a).
Under the plain language of Rule 10(c), incorporation by reference only extends to
incorporating matters in the context of a pleading. Trans Ova does not cite (nor could
the court find) any authority that extends Rule 10(c) to incorporation of a prior brief into
a later filing. Even if this court looks to Trans Ova’s Opening Claim Construction brief
[Doc. 91], there is no articulation of good cause.

Thus, this court respectfully

RECOMMENDS that Trans Ova’s Motion to Supplement as to the ’769 Patent be

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DENIED.
’590 Patent. With respect to Trans Ova’s supplemental contentions based on
the lack of written description and/or enablement of the ’590 Patent, consistent with its
Original Recommendation, this court is not persuaded – particularly given the prior
litigation – that Trans Ova could not have developed its supplemental arguments with
respect to written description, enablement, and indefiniteness as to “light emission
material,” “between about 5 micrometers and about 10 micrometers,” “fluid stream
generator,” “flow cytometer,” “particle differentiation apparatus,” or “particles” prior to the
deadline for the Initial Invalidity Contentions. See [Doc. 341]. As to the supplemental
arguments related to “capable of altering an operating voltage,” “range of nearly 0 volts
to below 400 volts,” and “analyzer,” this court would permit such arguments to go forward
because they are not appropriately considered “new.” See [id.]. Finally, as to Trans
Ova’s new lack of written description, enablement and/or indefiniteness arguments
based on “droplet generator” or “stain,” this court observes that such arguments primarily
rely upon and can be developed from information on the contents of the patent and its
prosecution history itself, rather than a search for prior art that might reasonably develop
as discovery progresses. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc) (observing that a patentee’s written description must clearly
allow persons of ordinary skill in the art to recognize that the inventor invented what is
claimed); In re Cortright, 165 F.3d 1353, 1356 (Fed. Cir. 1999) (observing that lack of
enablement results when the patent’s specification fails to disclose to one ordinarily
skilled in the art how to use the invention without undue experimentation); Nautilus, Inc.
v. Biosig Instruments, Inc., 572 U.S. 898, 901, 134 S. Ct. 2120, 2124, 189 L. Ed. 2d 37

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(2014) (holding that “a patent is invalid for indefiniteness if its claims, read in light of the
specification delineating the patent, and the prosecution history, fail to inform, with
reasonable certainty, those skilled in the art about the scope of the invention”). While
this court does not subscribe to a viewpoint that all supplemental arguments based on §
112 are per se precluded, see [Doc. 341 at 14], this court is not persuaded that Trans
Ova has established good cause to support amendment. Thus, this court respectfully
RECOMMENDS that Trans Ova’s Motion to Supplement as to the ’590 Patent be
GRANTED as to “capable of altering an operating voltage,” “range of nearly 0 volts to
below 400 volts,” and “analyzer,” and DENIED in all other respects.
’559 Patent. 9 Trans Ova’s proposed supplementation of its invalidity contentions
with respect to the ’559 Patent arise from additional arguments with respect to the lack
of written description and/or enablement. [Doc. 98-2 at 11–12]. In comparing the Initial
Invalidity Contentions based on the lack of written description and/or enablement [Doc.
90-1 at 28–31] with its Supplemental Invalidity Contentions [Doc. 98-2 at 11–12], this
court concludes Trans Ova originally articulated its written description and enablement
arguments broadly enough to include the arguments reflected in its Supplemental
Invalidity Contentions such that these additional arguments are not sufficiently “new” to
require a showing of good cause. Thus, this court respectfully RECOMMENDS that
Trans Ova’s Motion to Supplement as to the 559 Patent be GRANTED.
’422 Patent. Trans Ova also seeks to supplement its prior art-based invalidity
contentions as to the ’422 Patent with its IPR request, IPR 2018-00249. [Doc. 98-2 at

Though identified as contentions associated with the ’220 Patent, this court identifies
this section using the ’559 Patent because amendments to the invalidity contentions
associated with the ’220 Patent are now applicable to the ’559 Patent.
9

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16]. As with the IPR requests associated with the ’116 Patent, Defendant elected not to
include a copy of IPR 2018-00249, which precludes this court from finding good cause. 10
See supra.
With respect to Defendant’s supplemental arguments that the asserted claims of
the ’422 Patent are invalid as lacking written description support, see [Doc. 98-2 at 17–
18], this court is not persuaded that Trans Ova has established its diligence in identifying
these contentions. As discussed above, arguments arising from lack of sufficient written
description and/or enablement can generally be ascertained from the four corners of the
patent itself. Ariad, 598 F.3d at 1351; In re Cortright, 165 F.3d at 1356. Thus, this court
respectfully RECOMMENDS that Trans Ova’s Motion to Supplement as to the ’422
Patent be DENIED.
II.

Motion to Exclude: Supplemental Recommendation
As discussed above, this court’s Original Recommendation [Doc. 341] analyzed

Plaintiff’s Motion to Exclude as to the ’590 Patent.

Thus, this Supplemental

Recommendation is limited to considering the arguments made in the Motion to Exclude
as to the ’559 Patent, the reissue of the ’220 Patent. In its Final Invalidity Contentions,
Trans Ova argues that claims 1, 3–4, 7–8, 12–16, and 18–21 of the ’559 Patent are
anticipated by the manufacture, use, public disclosure, sale, or offer for sale of the
Summit software with CyTrack, versions 3.1, 3.2, 3.3, 3.3.1, or 4.0, that was
manufactured and sold by the predecessor of Beckman. [Doc. 170-1 at 18–19, 23–24].
Defendant further contends that earlier versions of the Summit software were described

It is not clear to this court what was the outcome of IPR2018-00249 or whether any
such outcome would have preclusive effects upon Defendant’s invalidity printedpublication prior art arguments in this action.
10

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in a printed publication, the Hollinshead Thesis, bearing a copyright date of October
2003, before the earliest invention date of the asserted claims of ’559 Patent in 2004.
[Id. at 19–23]. Trans Ova also identifies two articles from James Leary. [Doc. 170 at 5;
Doc. 170-1 at 23–26]. Finally, Trans Ova asserts additional bases for lack of written
description and enablement as to four terms: “at least n detectors” (Claim 1); “at least
two populations of particles” (Claim 1); “to cause a display device to display the ndimensional parameter data” (Claims 13–14); and “to cause the display device to
display: (a) the first signal on a first axis; and (b) the second signal on a second axis”
(Claim 15). [Doc. 170-1 at 26–28; 170 at 6].
Plaintiff moves to strike these additional contentions, arguing that there is no good
cause to support them. [Doc. 170; Doc. 171]. Specifically, XY contends that Trans Ova
has long been aware of the Summit software and its relationship to this case, as
evidenced by discovery responses and the stipulation of infringement, but did not include
them in its Initial Invalidity Contentions. 11 [Doc. 170 at 8]. Plaintiff argues that it thus
follows that Trans Ova has failed to demonstrate diligence as to raising its new
anticipation arguments with respect to the Summit software as well as the Hollinshead
Thesis that refers to some unidentified version of Summit. 12 [Id. at 8–10]. Similarly,
Plaintiff contends that Trans Ova’s obviousness arguments based on the two Leary

The Initial Invalidity Contentions were directed, inter alia, at the ’220 Patent, of which
the ’559 Patent is a reissue. This court construes the Initial Invalidity Contentions directed
at the ’220 Patent as equally applicable to the ’559 Patent.
11

XY further contends that any amendment is futile because these pieces of prior art
cannot be anticipatory because of their relationship to the inventors of the ’559 Patent.
This substantive argument appears misplaced in the context of this instant Motion to
Exclude, which is focused on whether Trans Ova has demonstrated good cause to
deviate from its Initial Invalidity Contentions in its Final Invalidity Contentions, not whether
the invalidity arguments will be ultimately successful.

12

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references are precluded because there is no good cause as to why these references
were not identified in the Initial Invalidity Contentions.

[Id. at 13–14].

XY further

contends that Trans Ova’s additional invalidity arguments based on flaws in the written
description or enablement of the ’559 Patent lack good cause because such arguments
are based on the ’559 Patent itself, and were not triggered by any discovery including
but not limited to the deposition of Ryan Christensen, Inguran’s Chief Intellectual
Property Counsel. [Id. at 11–12].
In support of these additional invalidity arguments and in opposition to the Motion
to Strike, Trans Ova argues that it has been diligent in adding these bases for invalidity;
the need for input from technical experts; and the timing of the assertions of infringement
related to the ’541 and ’367 Patents. [Doc. 170-3; Doc. 185]. In doing so, Trans Ova
argues that patent defendants cannot “reasonably be charged with having perfect
knowledge of all discoverable prior art or the ability to immediately discern every
invalidity position.” [Doc. 185 at 8 (emphasis in original)]. Specifically, Defendant
contends that its supplementation of its written description and enablement positions are
not “new,” but rather simply expand upon the arguments already made by Trans Ova.
In addition, as to the two additional Leary references from 2001 and 2002, Trans Ova
contends that it only became aware of those references after its technical expert
reviewed the ’541 and ’367 Patents and then promptly supplemented its invalidity
contentions in February 2018 to reflect them. [Doc. 185 at 10–11]. Trans Ova similarly
contends that XY never disclosed either “What’s New in v.3.1” document that suggested
that even pre-4.0 versions of Summit could perform the claimed “rotate,” “scale,” and
“translate” features of the ’559 patent or the Hollinshead thesis – despite the connection

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between XY and Beckman to such documents. [Id. at 12–13]. Finally, Trans Ova
contends that Plaintiffs have had a full and fair opportunity to respond to all the invalidity
arguments and examine Trans Ova’s expert on them. [Id. at 13].
On Reply, XY argues that Trans Ova improperly focuses upon its diligence in
disclosing new invalidity arguments after their identification but has not shown diligence
in identifying additional invalidity arguments. [Doc. 207 at 4–5].
Though this court found no specific authority as to what constitutes diligence in
support of good cause in the context of supplementation of invalidity contentions, in
analogous contexts, this District has found that good cause must be supported by the
articulation of “specific facts that demonstrate: (i) a new fact or change in circumstance
since the [the original filing] that requires a change in position, (ii) appropriate diligence
in attempting to ascertain the existence of the facts affecting the theory or claim before
the [original filing], and (iii) that the new fact or change in circumstance could not
reasonably have been anticipated at the time of the [original filing].” Sentegra, LLC v.
Asus Computer Int’l, No. 16-cv-00132-MSK, 2016 WL 11693773, at *1 (D. Colo. Aug. 4,
2016) (finding no good cause to permit modification of the asserted patent claims). Thus,
this court tends to agree with XY that “[a] proper showing of diligence requires providing
details about specific search efforts that were undertaken in framing invalidity
contentions.” [Doc. 207 at 4].
Summit Software. Trans Ova focuses upon its diligence upon the discovery of
the prior art. [Doc. 185 at 13]. As noted above, Trans Ova does not dispute that it knew
of the Summit software well before the deadline for Initial Invalidity Contentions, but
argues that it did not have information regarding Beckman’s predecessor’s disclosure

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and sale of versions of the software embodying the ’559 Patent before the patent’s
effective filing date. [Id.].
First, to Trans Ova’s point that the Local Patent Rules do not require perfect
prescience, this court finds that the number of asserted patent claims is a factor, though
not dispositive, that the court should consider when determining whether a party could
not reasonably have anticipated the invalidity argument. But the court respectfully
disagrees with Trans Ova’s premise that diligence after discovery (regardless of whether
a party was diligent in uncovering the prior art) is sufficient. The very purpose of the
Initial Invalidity (and Infringement) Contentions is to require the parties to come forward
with their respective arguments toward the beginning of the action so that discovery and
other pretrial matters may proceed in an efficient and orderly fashion – much like Initial
Disclosures under Rule 26(a)(1).

Cf. United States v. Hopkins, No. 11-CV-0416

JB/SMV, 2012 WL 7829995, at *4 (D.N.M. Dec. 28, 2012), report and recommendation
adopted, No. CIV 11-0416 JB/WPL, 2013 WL 684650 (D.N.M. Feb. 11, 2013) (“‘A major
purpose’ of initial disclosures ‘is to accelerate the exchange of basic information about
the case and to eliminate the paperwork involved in requesting such information.’ Thus,
it makes sense that the Federal Rules would penalize parties for failing to make their
initial disclosures and necessitating formal requests and perhaps even court
intervention.” (citing Fed. R. Civ. P. 26 advisory committee’s note to 1993 amendments)).
While the court accepts the representations of counsel – as officers of the court
– with respect to the course of discovery as true, the evidence in the record reflects that
“[w]hen Trans Ova bought their very first MoFlo, and when anybody buys a MoFlo or
MoFlo SX, DakoCytomation provides them with a preloaded computer and with an

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additional backup CD in case the preloaded computer should go down.” [Doc. 207-2 at
68:2–9]. And Todd Cox, Trans Ova’s former technical services manager, testified that
for each of the MoFlo SXs he built for Trans Ova, he used the original backup CD that
Trans Ova obtained from its very first MoFlo XS sorter purchase that was before 2007.
[Id. at 68:10–25]. Further, as of April 21, 2017, Plaintiffs had identified the use of the
Summit software as “capable of rotationally altering data, to sort sperm cells on the
MoFlo SX instruments made by TOG,” and as infringing at least claim 1 of the ’220
Patent. [Doc. 24 at ¶ 99]. The claims of the ’220 Patent and the ’559 Patent are identical.
[Doc. 74 at ¶ 102; Doc. 75 at 13 ¶ 102]. There is no assertion, let alone evidence, by
Trans Ova to suggest that it could not have developed its argument with respect to the
Summit software from the information contained on the backup CD. And Plaintiffs’
arguments with respect to lack of prejudice do not establish good cause. Cf. Tesone v.
Empire Mktg. Strategies, 942 F.3d 979, 988 (10th Cir. 2019) (observing, in the context
of good cause of amending a scheduling order, that although “the existence or degree
of prejudice to the party opposing the modification might supply additional reasons to
deny a motion, the focus of the inquiry is upon the moving party’s reasons for seeking
modification” (emphasis added) (citation omitted)). Based on this record, this court finds
that Trans Ova has not carried its burden of establishing good cause in support of its
amendment with respect to the Summit software. Cf. Colorado Visionary Acad. v.
Medtronic, Inc., 194 F.R.D. 684, 688 (D. Colo. 2000) (finding that, in the context of good
cause for amending a scheduling order, “failure earlier in the case to do the research
necessary to recognize the applicability of the defense they seek to add” did not satisfy
good cause).

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Leary References.

This court is similarly not persuaded that Trans Ova

exercised the requisite diligence in identifying the two additional Leary References,
Leary 2001 and Leary 2002. Trans Ova concedes that the ’541 and ’367 Patents have
“near identical overlap in scope” with the ’559 Patent. [Doc. 185 at 10]. Trans Ova
further admits that the ’559 Patent and the ’220 Patent share the same claims. [Doc. 74
at ¶ 102; Doc. 75 at 13 ¶ 102]. The ’220 Patent has been part of this action since the
filing of the Second Amended Complaint on April 21, 2017. As discussed above, Trans
Ova’s diligence since the discovery of the Leary 2001 and Leary 2002 references is not
dispositive, and Trans Ova simply offers no explanation as to why it (or its expert, J. Paul
Robinson, Ph.D) could not have identified these references prior to its Initial Invalidity
Contentions – particularly given that it appears that Dr. Robinson was an invalidity expert
for Trans Ova in the prior case, XY, LLC v. Trans Ova LC, Case No. 13-cv-00876-WJMNYW, [ECF No. 301 at 20, 47].
Hollinshead Thesis. However, the court does not draw the same conclusion as
to the Hollinshead Thesis. There is no argument from Plaintiffs about the Hollinshead
Thesis in their Reply that Trans Ova had access to it prior to its Initial Invalidity
Contentions or that the Hollinshead Thesis was easily ascertainable. See generally
[Doc. 207]. Without reaching the merits of whether the Hollinshead Thesis will ultimately
be determined to be invalidating prior art, the Federal Circuit has recognized that student
theses may present issues of asymmetrical knowledge. Cf. Centripetal Networks, Inc.
v. Cisco Sys., Inc., 847 F. App’x 869, 878 (Fed. Cir. 2021), cert. denied, No. 21-193,
2021 WL 4508660 (U.S. Oct. 4, 2021) (observing that “the only people who knew how
to find the student thesis [were] the ones who created it”) (internal quotation marks

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omitted). By extension, finding student theses may present challenges beyond finding
other prior art. In light of Trans Ova’s representation that Plaintiffs had not produced the
Hollinshead Thesis despite XY’s inventor Mike Evans being prominently cited and
thanked throughout it, see [Doc. 185 at 12], and the lack of rebuttal to this assertion by
Plaintiffs, [Doc. 207], this court finds good cause to support this amendment.
Written Description/Enablement. Consistent with its determination above, this
court finds that Trans Ova’s lack of written description and/or enablement contentions
with respect to the ’559 Patent are not sufficiently “new” to require a showing of good
cause. See supra p. 14.
Accordingly, this court supplementally RECOMMENDS that the Motion to
Exclude be GRANTED IN PART and DENIED IN PART.
CONCLUSION
For the reasons set forth herein, this court respectfully RECOMMENDS that:
(1)

Defendant Trans Ova Genetics, LC’s Motion to Supplement Preliminary

Invalidity Contentions be GRANTED IN PART and DENIED IN PART;
(2)

Plaintiffs’

Motion

to

Exclude

New

Invalidity

Arguments

Under

D.C.COLO.LPtR 16(b)(5) be GRANTED IN PART and DENIED IN PART as to the ‘559
Patent; and
(3)

To the extent the presiding judge, the Honorable William J. Martinez, finds

that any of the invalidity arguments should be stricken, Trans Ova be ORDERED to file
Amended Final Invalidity Contentions no later than fourteen (14) days after Judge

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Martinez’s Order. 13

DATED: November 29, 2021

BY THE COURT:

Nina Y. Wang
United States Magistrate Judge

Within fourteen days after service of a copy of this Recommendation, any party may
serve and file written objections to the magistrate judge’s proposed findings of fact, legal
conclusions, and recommendations with the Clerk of the United States District Court for
the District of Colorado. 28 U.S.C. § 636(b)(1); Fed. R. Civ. P. 72(b); Griego v. Padilla
(In re Griego), 64 F.3d 580, 583 (10th Cir. 1995). A general objection that does not put
the district court on notice of the basis for the objection will not preserve the objection for
de novo review. “[A] party’s objections to the magistrate judge’s report and
recommendation must be both timely and specific to preserve an issue for de novo review
by the district court or for appellate review.” United States v. 2121 East 30th Street, 73
F.3d 1057, 1060 (10th Cir. 1996). Failure to make timely objections may bar de novo
review by the district judge of the magistrate judge’s proposed findings of fact, legal
conclusions, and recommendations and will result in a waiver of the right to appeal from
a judgment of the district court based on the proposed findings of fact, legal conclusions,
and recommendations of the magistrate judge. See Vega v. Suthers, 195 F.3d 573, 57980 (10th Cir. 1999) (holding that the district court’s decision to review magistrate judge’s
recommendation de novo despite lack of an objection does not preclude application of
“firm waiver rule”); Int’l Surplus Lines Ins. Co. v. Wyo. Coal Refining Sys., Inc., 52 F.3d
901, 904 (10th Cir. 1995) (finding that cross-claimant waived right to appeal certain
portions of magistrate judge’s order by failing to object to those portions); Ayala v. United
States, 980 F.2d 1342, 1352 (10th Cir. 1992) (finding that plaintiffs waived their right to
appeal the magistrate judge’s ruling by failing to file objections). But see MoralesFernandez v. INS, 418 F.3d 1116, 1122 (10th Cir. 2005) (holding that firm waiver rule
does not apply when the interests of justice require review).
13

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