XY, LLC v. Trans Ova Genetics, LC

Filing 523

ORDER. Defendant's Objections (ECF Nos. 350 & [495-1]) are OVERRULED. Judge Wang's October 2, 2018 Recommendation (ECF No. 341 ) is ADOPTED in its entirety. Judge Wang's November 29, 2021 Recommendation (ECF No. 490 ) is ADOPTED in its entirety. Plaintiffs' Motion to Exclude New Invalidity Arguments Under D.C.COLO.LPtR 16(b)(5) (ECF No. 170 ) is GRANTED IN PART and DENIED IN PART as set forth herein. Defendant's Motion to Supplement the Preliminary Invalidity Contentions (ECF No. 84 ) is GRANTED IN PART and DENIED IN PART as set forth herein. Defendant is DIRECTED to file its Amended Final Invalidity Contentions on or before June 3, 2022. SO ORDERED by Judge William J. Martinez on 5/20/2022.(trvo, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge William J. Martínez
Civil Action No. 17-cv-0944-WJM-NYW
XY, LLC,
BECKMAN COULTER, INC., and
INGURAN, LLC d/b/a STGENETICS,
Plaintiffs,
v.
TRANS OVA GENETICS, LC,
Defendant.
ORDER OVERRULING PARTIES’ OBJECTIONS AND
ADOPTING THE RECOMMENDATIONS OF THE MAGISTRATE JUDGE
This matter is before the Court on the October 2, 2018 Recommendation of
United States Magistrate Judge Nina Y. Wang (“Recommendation 1”) (ECF No. 341)
that the Court grant in part and deny in part Plaintiffs Plaintiff XY, LLC (“XY”) and
Inguran, LLC d/b/a STGentics’s (“Inguran”) (jointly, “Plaintiffs”) Motion to Exclude New
Invalidity Arguments Under D.C.COLO.LPtR 16(b)(5) (“Motion to Exclude”) (ECF No.
170). Recommendation 1 is incorporated herein by reference. See 28 U.S.C. §
636(b)(1)(B); Fed. R. Civ. P. 72(b).
Defendant Trans Ova Genetics, LC (“Trans Ova” or “Defendant”) filed its
Objections to Recommendation 1 (“Objections to Recommendation 1”) on October 12,
2018. (ECF No. 350.) Thereafter, Plaintiffs filed their response to Defendant’s
Objections to Recommendation 1 on October 26, 2018. (ECF No. 362.)
Also before the Court is Judge Wang’s November 29, 2021 Recommendation

(“Recommendation 2”) 1 (ECF No. 490) that the Court grant in part and deny in part: (1)
Defendant’s Motion to Supplement Preliminary Invalidity Contentions (“Motion to
Supplement”) (ECF No. 84); and (2) Plaintiffs’ Motion to Exclude. 2 Recommendation 2
is incorporated herein by reference. See 28 U.S.C. § 636(b)(1)(B); Fed. R. Civ. P.
72(b).
Defendant filed its Objections to Recommendation 2 (“Objections to
Recommendation 2”) on December 13, 2021. (ECF No. 495-1.) Thereafter, Plaintiffs
filed their response to Defendant’s Objections to Recommendation 2 on May 4, 2022. 3
(ECF No. 522.)
When a magistrate judge issues a recommendation on a dispositive matter,
Federal Rule of Civil Procedure 72(b)(3) requires that the district judge “determine de
novo any part of the magistrate judge’s [recommendation] that has been properly
objected to.” An objection to a recommendation is properly made if it is both timely and
specific. United States v. 2121 East 30th St., 73 F.3d 1057, 1059–60 (10th Cir. 1996).
An objection is sufficiently specific if it “enables the district judge to focus attention on
those issues—factual and legal—that are at the heart of the parties’ dispute.” Id. at
1059. In conducting its review, “[t]he district judge may accept, reject, or modify the
[recommendation]; receive further evidence; or return the matter to the magistrate judge
The Court will refer to the Objections to Recommendation 1 and Objections to
Recommendation 2 jointly as the “Objections.”
1

As Judge Wang notes, Recommendation 2 addresses Count XII of the Fourth
Amended Complaint associated with U.S. Patent No. RE46,559 and is intended to be
considered in conjunction with Recommendation 1 as a supplemental recommendation
regarding the Motion to Exclude. (ECF No. 490 at 2 n.3.)
2

This action was stayed on December 14, 2021, prior to Plaintiffs’ deadline to file their
response to Objections to Recommendation 2 (ECF No. 498); after the stay was lifted, the Court
set a new response date of May 4, 2022 (ECF No. 508).
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with instructions.” Fed. R. Civ. P. 72(b)(3).
As an initial matter, the Court considers the effect of the parties’ dismissal of
Count V (the ‘422 Patent) on the Recommendations. (ECF No. 506.) As the parties
note in their Joint Status Report Regarding Dismissal of Count V, “the dismissal of
Count V and the associated counterclaims (ECF 506) moots only the portion of TOG’s
Objections to the Recommendation of the Magistrate Judge (ECF 495-1) that concerns
[Defendant’s] request to supplement its prior art-based invalidity contentions regarding
the ’422 Patent.”4 (ECF No. 516 at 1.) Accordingly, the Court overrules as moot that
portion of Defendant’s Objections to Recommendation 2 relating to the ’422 Patent.
The Court has fully considered all of the parties’ remaining arguments set forth in
the briefing on the Motion to Exclude and Motion to Supplement, the Objections, and
Plaintiffs’ responses to the Objections. Upon conducting a de novo review, the Court
finds that Judge Wang’s analysis in Recommendation 1 and Recommendation 2 was
thorough and well-reasoned. Accordingly, the Court adopts the reasoning set forth in
Recommendation 1 and Recommendation 2 and overrules the Defendant’s Objections.
For the reasons set forth above, the Court ORDERS as follows:
1.

Defendant’s Objections (ECF Nos. 350 & 495-1) are OVERRULED;

2.

Judge Wang’s October 2, 2018 Recommendation (ECF No. 341) is ADOPTED in
its entirety;

3.

Judge Wang’s November 29, 2021 Recommendation (ECF No. 490) is
ADOPTED in its entirety;

In Recommendation 2, Judge Wang recommended that Defendant’s Motion to
Supplement as to the ‘422 Patent be denied. (ECF No. 490 at 16.)
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4.

Plaintiffs’ Motion to Exclude New Invalidity Arguments Under D.C.COLO.LPtR
16(b)(5) (ECF No. 170) is GRANTED IN PART and DENIED IN PART;
a.

As to the ‘590 Patent, Defendant’s arguments related to written
description and enablement of “light emission material,” “between
about 5 micrometers and about 10 micrometers,” “fluid stream
generator,” “flow cytometer,” “particle differentiation apparatus,” or
“particles” are STRICKEN;

b.

As to the ‘590 Patent, Defendant’s arguments related to written
description and enablement of “capable of altering an operating
voltage,” “range of nearly 0 volts to below 400 volts,” and “analyzer”
are PERMITTED;

c.

As the ‘559 Patent, Defendant’s arguments with respect to the
Summit software and Leary References are STRICKEN;

d.

As the ‘559 Patent, Defendant’s arguments related to the
Hollinshead Thesis and written description/enablement are
PERMITTED; and

e.

All other relief requested by Plaintiffs’ Motion to Exclude New
Invalidity Arguments Under D.C.COLO.LPtR 16(b)(5) is DENIED as
MOOT;

5.

Defendant’s Motion to Supplement the Preliminary Invalidity Contentions (ECF
No. 84) is GRANTED IN PART and DENIED IN PART;
a.

As to the ‘116 Patent, the Motion is GRANTED insofar as it relates
to Defendant’s lack of written description and/or enablement

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arguments and is DENIED in all other respects;
b.

As to the ‘769 Patent, the Motion is DENIED;

c.

As to the ‘590 Patent, the Motion is GRANTED as to “capable of
altering an operating voltage,” “range of nearly 0 volts to below 400
volts,” and “analyzer,” and the Motion is DENIED in all other
respects;

d.

As to the ‘559 Patent, the Motion is GRANTED; and

e.

As to the ‘422 Patent, the Motion is DENIED as MOOT in light of
the parties’ dismissal of Claim V; and

6.

Defendant is DIRECTED to file its Amended Final Invalidity Contentions on or
before June 3, 2022.

Dated this 20th day of May, 2022.
BY THE COURT:

______________________
William J. Martínez
United States District Judge

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