Cornell University et al v. Illumina Inc.

Filing 206

REPORT AND RECOMMENDATIONS re 172 MOTION for Summary Judgment on Defendant's Covenant Not to Sue Defense, 184 MOTION to Strike 179 Brief (Combined Answering and Reply), 167 MOTION for Summary Judgment filed by Illumina Inc. Please note that when filing Objections pursuant to Federal Rule of Civil Procedure 72(b)(2), briefing consists solely of the Objections (no longer than ten (10) pages) and the Response to the Objections (no longer than ten (10) pages). No further briefing shall be permitted with respect to objections without leave of the Court. Objections to R&R due by 7/12/2013. Signed by Judge Mary Pat Thynge on 6/25/13. (cak)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

CORNELL UNIVERSITY, CORNELL
RESEARCH FOUNDATION, INC., LIFE
TECHNOLOGIES CORPORATION, and
APPLIED BIOSYSTEMS, LLC,
Plaintiffs,
v.
ILLUMINA, INC.,
Defendant.

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C. A. No. 10-433-LPS-MPT

REPORT AND RECOMMENDATION
I. INTRODUCTION
On May 10, 2010, Cornell University, Cornell Research Foundation, Inc.
(collectively, “Cornell”), Life Technologies Corporation (“Life Technologies”), and
Applied Biosystems, LLC (“Applied Biosystems”) (collectively, “plaintiffs”) brought this
action against Illumina, Inc. (“defendant”), alleging infringement of eight patents.1
Defendant answered on August 23, 2010, asserting counterclaims seeking declaratory
judgment of invalidity and non-infringement of each patent.2 Defendant did not initially
plead any affirmative defenses or counterclaims concerning a covenant not to sue.3 On
October 4, 2010, defendant amended its answer to include that plaintiffs’ claims are
barred, as to Life Technologies and Applied Biosystems, based on a “grant of a

1

D.I. 1.
D.I. 13 at 16-18.
3
Id. at 15-18.
2

covenant not to sue [defendant].”4
Thereafter, defendant filed a motion to bifurcate the covenant issue, and stay the
patent infringement case, pursuant to FED. R. CIV. P. 42(b).5 While that motion was
pending, plaintiffs amended their complaint to add claims of infringement for three
additional patents.6 On October 20, 2011, the court granted defendant’s motion to
bifurcate and stay.7
Subsequently, defendant filed its amended answer and counterclaims to
plaintiffs’ first amended complaint.8 In this pleading, defendant added a counterclaim for
breach of the same contract that served as the basis for its covenant not to sue
affirmative defense.9 On May 23, 2012, a Report and Recommendation was issued
granting plaintiffs’ motion to dismiss defendant’s breach of contract counterclaim, under
FED. R. CIV. P. 12(b)(6), for failure to state a claim upon which relief can be granted, and
denying defendant’s request to file an amended counterclaim, pursuant to FED. R. CIV.
P. 15(a).10 The Report and Recommendation was adopted by the Honorable Leonard

4

D.I. 15 at 15, ¶ 6.
D.I. 26. The supporting brief is found at D.I. 27.
6
D.I. 63. As a result, the patents-in-suit include: U.S. Patent Nos. 6,797,470
(the “‘470 patent”); 7,083,917 (the “‘917 patent”); 7,166,434 (the “‘434 patent”);
7,312,039 (the “‘039 patent”); 7,320,865 (the “‘865 patent”); 7,332,285 (the “‘285
patent”); 7,364,858 (the “‘858 patent”); 7,429,453 (the “‘453 patent”); 7,892,746 (the
“‘746 patent”); 7,892,747 (the “‘747 patent”); and 7,893,233 (the “‘233 patent”).
According to plaintiffs, the ‘747 patent, “asserted only against a product line that Illumina
concedes is not covered by the covenant not to sue (D.I. 88 [“Stipulation”]), is not at
issue in the bifurcated proceedings.” D.I. 173 at 4 n.3.
7
D.I. 82 (Transcript of Oral Argument Hearing) at 48:7-11.
8
D.I. 92.
9
Id. at 25, ¶¶ 34-40.
10
D.I. 157.
5

2

P. Stark on June 29, 2012.11 Presently before the court are the defendant’s12 and
plaintiffs’13 cross-motions for summary judgment on the covenant not to sue issue, and
plaintiffs’ motion to strike.14 The parties’ cross-motions for summary judgment are
directed to a covenant not to sue contained in a settlement and cross license agreement
(“Settlement Agreement”) between Applera Corporation (“Applera”) and defendant
Illumina.15 Before considering the parties’ respective arguments in their cross-motions
for summary judgment, however, the court must address plaintiffs’ motion to strike.
II.

Motion To Strike
A.

Summary of Arguments

In their motion to strike, plaintiffs argue:16
(1) Defendant’s reply brief17 relies on inadmissible evidence from an incomplete
record on the parties’ settlement negotiations, including the negotiation history, draft
settlement agreements, and correspondence.

11

D.I. 165.
D.I. 167. The briefs and supporting documents are found at D.I. 168
(defendant’s opening brief) and D.I. 169 (declaration of David G. Hanson, counsel for
Illumina).
13
D.I. 172. The briefs and supporting documents are found at D.I. 173 (plaintiffs’
consolidated opening brief and answering brief), D.I. 174 (appendix A), and D.I. 175
(appendix B).
14
D.I. 184. The briefs and supporting documents are found at D.I. 185 (plaintiffs’
opening brief), D.I. 186 (plaintiffs’ appendix), D.I. 195 (defendant’s answering brief), D.I.
196 (declaration of Jessica Hutson Polakowski, counsel for Illumina), and D.I. 199
(plaintiffs’ reply brief).
15
See D.I. 169, Ex. 3 (Settlement Agreement). After executing the Settlement
Agreement, Applera went through a series of business transactions/mergers and name
changes, the consequences of which are at the root of the parties’ summary judgment
arguments.
16
D.I. 185 at 3.
17
D.I. 179.
12

3

(2) Defendant’s reply brief contains arguments and alleged facts that were not
included in defendant’s opening brief.
B.

Discussion

Plaintiffs move to strike portions of defendant’s response to plaintiffs’ motion for
summary judgment and reply in support of defendant’s motion for summary judgment.18
Plaintiffs contend defendant’s arguments violate the parties’ confidentiality agreements,
the California mediation privilege,19 and this court’s Local Rules governing the form and
contents of briefs, memoranda of points and authorities, and appendices.20 More
specifically, they argue defendant’s reply brief relies on inadmissible evidence from an
incomplete, and therefore, inaccurate record of the parties’ settlement negotiations, and
contains arguments and facts not included in defendant’s opening brief.21 Defendant
notes motions to strike under FED. R. CIV. P. 12(f)22 are “generally disfavored, unless the
matter is clearly irrelevant to the litigation or will prejudice the adverse party.”23
Additionally, “[w]hen ruling on a motion to strike, the [c]ourt must construe all facts in
favor of the nonmoving party and deny the motion if the defense is sufficient under law.
Further, a court should not grant a motion to strike a defense unless the insufficiency of
the defense is clearly apparent.”24

18

D.I. 179.
Cal. Evid. Code § 1119 (2012).
20
D. Del. LR 7.1.3(c)(2).
21
D.I. 185 at 3.
22
“The court may strike from a pleading an insufficient defense or any redundant,
immaterial, impertinent, or scandalous matter.” FED. R. CIV. P. 12(f).
23
Seidel v. Lee, 954 F. Supp. 810, 812 (D. Del. 1996).
24
Symbol Techs., Inc. v. Aruba Networks, Inc., 609 F. Supp. 2d 353, 356 (D. Del.
2009) (internal quotations and citations omitted).
19

4

1.

Inadmissible Evidence - Settlement Negotiations and
Settlement Agreement Drafts

Plaintiffs contend defendant’s reply brief relies on inadmissible evidence from the
parties’ settlement negotiations. For the following reasons, plaintiffs’ motion to strike
inadmissible evidence from the settlement negotiations is granted.
a.

Negotiation Record

Plaintiffs note defendant and Applera25 entered into a confidentiality agreement
where “any information discussed, exchanged, or disclosed” during negotiations “will be
used only for settlement purposes” and not for “discovery or at trial or for any other
purpose in any proceeding or litigation.”26 Thus, they argue defendant cannot rely on
the negotiation history to clarify the terms “Defined Product,” “Blocking Patents,” and
“necessarily infringed.”27 Defendant counters, by relying on material covered by the
confidential agreements in their opening brief, plaintiffs “opened the door to the use of
the ‘negotiation record,’ and equity requires that [defendant] also be allowed to rely on
this evidence.”28
As to defendant’s argument, plaintiffs contend they objected to defendant’s
evidence as inadmissible, and cited a settlement related document should the evidence
be admitted.29 Plaintiffs maintain such an “evidentiary proffer is a well-accepted tool of
trial, and eliminates the unfairness of having an incomplete record should the objection

25

As discussed below, Applera is the predecessor of plaintiff, Applied
Biosystems.
26
D.I. 175, Confidentiality Agreement at B144-47.
27
D.I. 185 at 4.
28
D.I. 195 at 5 (citing D.I. 173 at 9).
29
D.I. 185 at 6.
5

about admissibility turn out to be wrong.”30
While defendant does not cite any authority to support its proposition, evidence
from the settlement agreement can be used if “offered for a purpose other than to prove
the specific details of a negotiated claim.”31 “Evidence of agreements in general, or a
policy of making a particular type of agreement may be relevant and not prohibited by
Rule 408 as long as it ‘does not extend to the terms of those licenses granted in
settlement of litigation.’”32 Even if plaintiffs “opened the door,” that door should remain
closed where plaintiffs’ references to the settlement agreement were inappropriate, and
neither parties’ evidence would be admissible.
Plaintiffs maintain defendant’s arguments on pages nineteen to twenty-two of its
reply brief,33 based on the parties’ settlement negotiations, are inadmissible. Because
defendant relies upon settlement negotiations to prove the specific details or terms, the
arguments based upon the parties’ settlement negotiations contained in pages nineteen
to twenty,34 and twenty-one to twenty-two,35 of defendant’s reply brief are inadmissible.36
30

Id.; see also FED. R. EVID. 103(a)(2).
Inline Connection Corp. v. AOL Time Warner Inc., 470 F. Supp. 2d 435, 440
(D. Del. 2007).
32
Id. (citation omitted).
33
D.I. 179.
34
Specifically, the inadmissible language is from “[e]vidence from the parties’
negotiations of the Agreement conclusively shows that ‘Defined Products’ was intended
to cover both BeadChip and SAM” to “[a]ccordingly, the Court should reject Plaintiffs’
attempt to limit the definition of ‘an Illumina BeadArray’ to a single product (fiber-optic
based SAMs), instead of the broader meaning agreed to by the parties.” D.I. 186, Ex. A
at 19-20.
35
Id., Ex. A at 21-22.
36
The court’s conclusion equally applies to plaintiffs’ argument regarding
defendant’s opening brief (“[t]he Parties’ negotiations demonstrate that ‘Defined
Product’ includes SAM and BeadChip,” and “[t]he parties’ negotiations support
[defendant’s] interpretation” of “necessarily infringed.”) D.I. 179 at 19-22. Plaintiffs also
31

6

b.

California Mediation Privilege

The California mediation privilege bars the admissibility, discovery, and
disclosure of any evidence, including writings and communications, “prepared for the
purpose of, in the course of, or pursuant to, a mediation or a mediation consultation.”37
An exception to § 1119 exists if the parties expressly agree in writing to waive the
protection. Plaintiffs represent no such consent exists here.38 Defendant contends a
private contract cannot constrain the court’s ability to admit or exclude relevant
evidence,39 and “[a]n appropriate protective order can alleviate problems and concerns
regarding both confidentiality and scope of the discovery material produced in a
particular case.”40
Plaintiffs point out when there is a question of general contract interpretation, the

contend even if defendant had raised these arguments at the proper time, plaintiffs
would have had difficulty responding because defendant blocked discovery on the
negotiations. D.I. 185 at 9. Likewise, they allege they would also have difficulty
responding to defendant’s other arguments that “Illumina negotiated for and secured
broader freedom by requiring inclusion of more, not fewer, amplification methods,” and
defendant’s contention that the Settlement Agreement’s to “an Illumina BeadArray” is
“broader” than the earlier language. Id. at 9-10 (citing D.I. 179 at 22). Again, the
negotiation history is inadmissible.
37
Cal. Evid. Code § 1119 (2012).
38
Id. § 1122.
39
D.I. 195 at 5-8; see also FED. R. EVID. 402; Pearson v. Miller, 211 F.3d 57, 66
(3d Cir. 2000) (“when there are federal law claims in a case also presenting state law
claims, the federal rule favoring admissibility, rather than any state law privilege, is the
controlling rule” (citation omitted)). Defendant argues because plaintiffs breached the
confidentiality agreements first, they cannot now enforce the agreements. See Durrell
v. Sharp Healthcare, 108 Cal. Rptr. 3d 682, 697 (2010) (“[I]t is elementary that one party
to a contract cannot compel another to perform while he himself is in default.” (alteration
in original) (citation omitted)). As discussed, the negotiation history is inadmissible.
40
USAA Cas. Ins. Co. v. Smith, C.A. No. 1:10CV115, 2012 WL 967368, at *6
(N.D. W. Va. Mar. 21, 2012) (citation omitted).
7

court looks to applicable state law.41 “[I]n a civil case, state law governs privilege
regarding a claim or defense for which state law supplies the rule of decision.”42
Plaintiffs argue that presently, “the only issues ripe for decision by the Court are
contract interpretation issues governed by state law.”43 Since the law to be applied at
this stage is state law, that is, California law, which specifically addresses the use of
writings and communications in mediation, the previously noted arguments contained in
pages twenty-one to twenty-two44 of defendant’s reply brief are inadmissible.
c.

Incomplete Record

Plaintiffs maintain defendant “created an incomplete factual record and blocked
discovery on the very negotiations it relies on in its reply brief,” and should not be
allowed to rely on the negotiation history.45 By such conduct, plaintiffs argue defendant
“has used the confidentiality agreements and the California mediation privilege as a
shield against discovery and, therefore, should not be allowed to use self-serving parts
of the negotiation history as a sword in its motion for judgment.”46
Defendant counters, because plaintiffs did not agree to waive any rights under
41

St. Clair Intellectual Prop. Consultants, Inc. v. Palm, Inc., C.A. No. 06-404 JJFLPS, 2009 WL 1220546, at *8 (D. Del. May 4, 2009); Texas Instruments Inc. v. Tessera,
Inc., 231 F.3d 1325, 1329 (Fed. Cir. 2000) (applying California state law to interpret
license agreement).
42
FED. R. EVID. 501.
43
D.I. 199 at 2-3.
44
D.I. 186, Ex. A at 21-22.
45
D.I. 185 at 4-5; see also D.I. 186, Ex. B (plaintiffs’ subpoena to produce
documents); id., Ex. C (objecting to subpoena pursuant to California mediation privilege
and the confidentiality agreements); id., Ex. D (offering to produce requested
information if “clients (specifically, Applied Biosystems) waive any rights they may have
under the September 18, 2003 confidentiality agreement”); id., Ex. E (refusing to waive
rights).
46
D.I. 185 at 5.
8

the September 18, 2003 confidentiality agreement in return for production of
documents, “it was Plaintiffs, not Illumina, who blocked discovery of this information.”47
As such, it alleges “[p]laintiffs should not be entitled to use the parties’ negotiation
history as both a shield and a sword, presenting partial evidence of the parties’
negotiation history, and, at the same time, preventing Illumina from offering its evidence
of the negotiation history, which would provide a complete and accurate record.”48
Nevertheless, for the reasons discussed above, because information disclosed during
negotiations is inadmissible for discovery or at trial or for any other purpose in any
proceeding or litigation, the incomplete record issue is moot.
2.

Inadmissible Evidence - New Arguments and Alleged Facts

Plaintiffs point out a party may not “reserve material for the reply brief which
should have been included in a full and fair opening brief.”49 They contend defendant’s
reply brief “raised numerous new arguments and cited new evidence that could have,
and should have, been raised in its opening brief.”50 Defendant argues its “reply” brief
was actually a “reply in support of its own motion for summary judgment, combined with
a response to Plaintiffs’ own motion for summary judgment” pursuant to the briefing
schedule.51 As such, the arguments and evidence in defendant’s brief were “either
explicitly contained within Illumina’s initial brief or directly responsive to an argument
47

D.I. 195 at 8.
Id. at 9.
49
D. Del. LR 7.1.3(c)(2); see also Ad Hoc Comm. of Equity Holders of Tectonic
Network, Inc. v. Wolford, 554 F. Supp. 2d 538, 562 n.168 (D. Del. 2008); Rockwell
Techs., LLC. v. Spectra-Physics Lasers, Inc., C.A. No. 00-589 GMS, 2002 WL 531555,
at *3 (D. Del. Mar. 26, 2002).
50
D.I. 185 at 7.
51
D.I. 195 at 9.
48

9

raised by Plaintiffs.”52 Plaintiffs note while defendant was given twenty pages for its
answering brief to oppose plaintiffs’ cross motion,53 and ten pages in its reply brief to
address plaintiffs’ answering brief,54 through its conflated answering and reply brief,
defendant reserved material for its reply brief which should have been in its opening
brief.55
Plaintiffs state:
Illumina moved for summary judgment on the following three discrete
issues addressed in its opening brief: (1) that the lawsuit is barred by the
covenant not to sue in the 2004 Agreement (based on the definitions of
“Defined/Modified Defined Product,” “Blocking Patents,” and “Excluded
Patent Claims”); (2) that the Cornell Plaintiffs and Applied Biosystems lack
standing; and (3) that Life Technologies and Applied Biosystems are
bound by the covenant not to sue.56
Further:
Plaintiffs answered Illumina’s motion and opened on their cross-motion,
moving on the following four independent grounds: (1) that Life
Technologies is not bound by the covenant not to sue; (2) that the Cornell
Plaintiffs are not bound by the covenant not to sue; (3) that the Cornell
Patents are not “owned or licensed by Applera” and therefore are not
“Blocking Patents” covered by the covenant; and (4) that the Cornell
Patents are not “necessarily infringed[”] by the “Defined Product” and,
therefore, are not “Blocking Patents.”57
At first blush, many of the aforementioned issues overlap. Defendant’s brief
does not clearly delineate where its answering or reply briefs begin and end.58 Despite
these concerns, the court will address defendant’s combined brief, and plaintiff’s claims
52

Id. at 10.
D.I. 173.
54
Id.
55
D.I. 199 at 7-8; see also D. Del. LR 7.1.3.
56
Id. at 7 (citing D.I. 168).
57
Id. at 7-8 (citing D.I. 173).
58
D.I. 168.
53

10

of new arguments and new alleged facts.59
a.

New Arguments

For the following reasons, plaintiffs’ motion to strike new arguments is granted in
part and denied in part.
i.

Evasion of the Covenant

Plaintiffs contend defendant merely speculates that they “shifted patent license
rights to evade the Covenant, in derogation of Illumina’s rights.”60 Defendant counters
that no new argument exists in its combined brief, and plaintiffs are merely contorting
the facts regarding the mergers and acquisitions to avoid their obligations under the
Settlement Agreement, including the covenant.61 Despite each side’s spin, and, even if
defendant’s comment is mere conjecture, the court agrees this is not a new argument.
ii.

Readers

Plaintiffs maintain defendant argues, for the first time in its reply brief, that
“Illumina’s readers, used to practice GoldenGate and DASL, also fall within the
definition of Defined Products.”62 They point out defendant’s opening brief only argued
“Illumina’s GoldenGate™ and DASL™ assays, performed using BeadChip arrays,
‘SAM’ or VeraCode beads – are Defined and Modified Defined Products, respectively.”63
59

D. Del. LR 5.1.2.
D.I. 179 at 4 n.5, 17; see also D.I. 174 at A087-88, Jay Flatley, Illumina’s CEO,
Deposition at 160:17-161:4, 161:13-20 (admitting nothing is improper or unfair about a
reverse triangular merger).
61
D.I. 168 at 5 (stating, in defendant’s opening brief, “[p]laintiffs’ attempts to
contort the mergers and acquisitions described above in order to evade their obligations
flout the letter and spirit of the Agreement”).
62
D.I. 179 at 17.
63
D.I. 168 at 1. Plaintiffs also argue even if defendant’s reliance on the
negotiation history is not improper, defendant should have included in its opening brief
60

11

Defendant contends because plaintiffs argued genuine material factual issues exist
regarding whether the accused assays, Bead-Based products and readers fall within
“Defined Products,” it is allowed to respond to plaintiffs’ arguments.64 The court finds
defendant, in its combined brief,65 merely responds to arguments raised in plaintiffs’
answering brief on the issue of readers and Defined Products, and is not improperly
raising new argument.66
iii.

“Essentially Identical” And “Exactly The Same”

Plaintiffs contend defendant’s argument that “Illumina’s GoldenGate and DASL
assays performed using VeraCode Beads are Modified Defined Products”67 is premised
on the assertion in defendant’s opening brief that “[t]he chemistry of the GoldenGate or
DASL assay performed using VeraCode Beads is essentially identical to the chemistry
used to perform steps one through four of Exhibit 1 using SAM and BeadChip as of
August 2004.”68 In its reply brief, defendant alleges “[t]he GoldenGate and DASL
assays are performed in exactly the same manner, using the same steps of Exhibit 1.”69
Plaintiffs maintain omitting this argument in defendant’s opening brief precludes raising

the reference concerning the parties’ negotiations as evidence that “‘Defined Product’
includes SAM and BeadChip.” D.I. 179 at 19-20. Plaintiffs clearly argue in their
opening brief that SAM and BeadChip are defined products. D.I. 168 at 11-12.
64
D.I. 195 at 11 (citing D.I. 173 at 22-25) (emphasis added).
65
D.I. 179.
66
Norman v. Elkin, 726 F. Supp. 2d 464, 468 n.2 (D. Del. 2010) (denying motion
to strike because plaintiff did not reserve material for the reply brief which should be
included in a full and fair opening brief, but responded to arguments raised in
defendants’ answering brief).
67
D.I. 179 at 20.
68
D.I. 168 at 12 (emphasis added).
69
D.I. 179 at 20 (emphasis added).
12

it now,70 and “to the extent that [defendant] believed that [defendant’s] own documents
supported its argument that assays using VeraCode beads are ‘Modified Defined
Products,’ [defendant] should have cited that material in its opening brief.”71
Defendant counters the “in exactly the same manner” language is consistent with
the argument in its initial brief, and was merely responsive to plaintiffs’ assertions
concerning the similarities between the products.72
The parties dispute the meaning of “substantially similar” as it applies to
“Modified Defined Products.” As plaintiffs argue, there is a difference between
“essentially identical” and “exactly the same.” In its opening brief,73 defendant uses the
term “essentially identical,” but notes “minor differences,” suggesting a distinction
between its use of the terms “essentially identical” and “exactly the same.” By using a
term with a more restrictive meaning in its reply brief, defendant is essentially making a
new argument, and therefore, the material on page twenty concerning “Modified Defined
Products”74 is struck, along with defendant’s own documents cited in support of its
argument that assays are performed “in exactly the same manner.”75
iv.

PCR Method Patents

Plaintiffs point out defendant, in its opening brief, did not argue equating “Genetic
Analysis Patents [to] PCR method patents is contrary to the express purpose of the

70

D.I. 185 at 10.
Id. (citing D.I. 180, Exs. 19-22).
72
D.I. 195 at 12.
73
D.I. 186, Ex. A at 20.
74
D.I. 186, Ex. A at 20 (passage starting with “Illumina’s GoldenGate and DASL
assay”).
75
D.I. 180, Exs. 19-22.
71

13

claimed invention.”76 Defendant counters it “spent nearly three pages in its initial brief
addressing this argument.”77 The court finds defendant’s argument is not new as its
opening brief discusses that the claims at issue do not constitute “Excluded Patent
Claims” since they are not claimed inventions that are PCR methods.78
b.

New Facts

Plaintiffs contend that by referencing a 2003 Illumina press release, defendant
introduces new factual material in support of its argument that the Sentrix Array Matrix
and BeadChip are both an Illumina BeadArray.79 Defendant responds the 2003 press
release was publicly available, and was used to counter plaintiffs’ argument that
BeadChip products are not Illumina BeadArrays.80
In their response to defendant’s opening brief, plaintiffs discuss whether
BeadChip products are Illumina BeadArrays.81 Since this was not in the section relating
to plaintiffs’ opening brief, defendant is not responding to plaintiffs’ argument.82 Rather,
plaintiffs are responding to defendant’s contentions, with defendant adding factual
material in its reply brief not previously included in its opening brief. Therefore,
plaintiffs’ motion to strike new facts is granted, and the factual material on page

76

D.I. 179 at 25.
D.I. 195 at 13 (citing D.I. 168 at 18-20).
78
D.I. 168 at 18-20.
79
D.I. 185 at 12 (citing D.I. 179 at 18).
80
D.I. 195 at 14 (citing D.I. 196, Jessica Hutson Polakowski, counsel for Illumina,
Declaration at 3, ¶ 13; Id., Exs. 8, 9; D.I 173 at 24-25).
81
Id. at 22-25.
82
D.I. 168 at 11-12.
77

14

eighteen of defendant’s reply brief83 will not be considered.84
3.

Leave to File a Sur-Reply

In light of the findings herein, it is unnecessary for plaintiffs to file a sur-reply brief
to purportedly “provide a full and fair opportunity to respond to [defendant’s] newly
raised factual and legal arguments.”85 The court denies plaintiffs’ motion to strike on
three issues: (1) the evasion of covenant argument, (2) the readers argument, and (3)
the PCR method patents argument. For the evasion and PCR method patents
arguments, defendant included its position in its opening brief,86 and plaintiffs suffer no
prejudice because they had a chance to reply.87 As to the readers argument,88
defendant was responding to issues raised in plaintiffs’ answering brief.89
III.

Cross-Motions for Summary Judgment
A.

Legal Standard

Summary Judgment is appropriate if the “pleadings, the discovery and disclosure
materials on file, and any affidavits show that there is no genuine issue as to any
material fact and the movant is entitled to a judgment as a matter of law.”90 Once there
has been adequate time for discovery, Rule 56(c) mandates judgment against the party
83

D.I. 186, Ex. A at 18.
See D. Del. LR 7.1.3(c)(2) (“[t]he party filing the opening brief shall not reserve
material for the reply brief which should have been included in a full and fair opening
brief”).
85
D.I. 185 at 1 n.1.
86
See D.I. 168 at 5, 18-20.
87
Seidel v. Lee, 954 F. Supp. 810, 812 (D. Del. 1996) (stating motions to strike
under FED. R. CIV. P. 12(f) “are generally disfavored, unless the matter is clearly
irrelevant to the litigation or will prejudice the adverse party”).
88
D.I. 173 at 22-25.
89
Norman, 726 F. Supp. 2d at 468 n.2.
90
FED. R. CIV. P. 56(c)(2).
84

15

who “fails to make a sufficient showing to establish the existence of an element
essential to that party’s case, and on which that party will bear the burden of proof at
trial.”91 When a party fails to make such a showing, “there can be no ‘genuine issue as
to any material fact’ since a complete failure of proof concerning an essential element of
the nonmoving party’s case necessarily renders all other facts immaterial.”92 The
moving party is therefore entitled to judgment as a matter of law because “the
nonmoving party has failed to make a sufficient showing on an essential element of her
case with respect to which she has the burden of proof.”93 A dispute of material fact
exists where “the evidence is such that a reasonable jury could return a verdict for the
nonmoving party.”94
The moving party bears the initial burden of identifying portions of the record
which demonstrate the absence of a genuine issue of material fact.95 However, a party
may move for summary judgment with or without supporting affidavits.96 Therefore, “the
burden on the moving party may be discharged by ‘showing’ – that is, pointing out to the
district court – that there is an absence of evidence supporting the nonmoving party’s
case.”97
If the moving party has demonstrated an absence of material fact, the nonmoving
party must then “come forward with specific facts showing that there is a genuine issue

91

Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986).
Id. at 323.
93
Id.
94
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
95
Celotex, 477 U.S. at 323.
96
Id.
97
Id. at 325.
92

16

for trial.”98 If the nonmoving party bears the burden of proof at trial, he “must go beyond
the pleadings in order to survive a motion for summary judgment.”99 That party “may
not rest upon the mere allegations or denials of his pleadings, but must set forth specific
facts showing that there is a genuine issue for trial.”100 At the summary judgment stage,
the court is not to “weigh the evidence and determine the truth of the matter, but to
determine whether there is a genuine issue for trial.”101 Further, “there is no issue for
trial unless there is sufficient evidence favoring the nonmoving party for a jury to return
a verdict for that party.”102 The threshold inquiry therefore is “determining whether there
is a need for trial – whether, in other words, there are any genuine factual issues that
properly can be resolved only by a finder of fact because they may reasonably be
resolved in favor of either party.”103
This standard does not change merely because there are cross-motions for
summary judgment.104 Cross-motions for summary judgment:
are no more than a claim by each side that it alone is entitled to summary
judgment, and the making of such inherently contradictory claims does not
constitute an agreement that if one is rejected the other is necessarily justified or
that the losing party waives judicial consideration and determination whether
genuine issues of material fact exist.105
Moreover, “[t]he filing of cross-motions for summary judgment does not require the court

98

FED. R. CIV. P. 56(c).
Yeager’s Fuel, Inc. v. Pennsylvania Power & Light Co., 22 F.3d 1260, 1273 (3d
Cir. 1994).
100
Anderson, 477 U.S. at 248.
101
Id. at 249.
102
Id.
103
Id. at 250.
104
Appelmans v. City of Philadelphia, 826 F.2d 214, 216 (3d Cir. 1987).
105
Rains v. Cascade Indus., Inc., 402 F.2d 241, 245 (3d Cir. 1968).
99

17

to grant summary judgment for either party.”106
B.

Background

In 2004, in an attempt to resolve disputes following a joint development venture,
Applera and Illumina entered into a settlement and cross license agreement
(“Settlement Agreement”).107 The Settlement Agreement included a covenant not to
sue, under which “Applera . . . its Successors, or its assigns” would not bring suit
against Illumina for infringement of “the Blocking Patents by the Defined Product or
Modified Defined Product.”108 The Settlement Agreement included an integration
clause109 and a California choice of law provision.110
Subsequent to execution of the Settlement Agreement, a series of business
transactions occurred. As recited in the parties’ Stipulation of Agreed Facts:111
1) Applied Biosystems Inc. was formed on June 24, 2008 as a direct,
wholly owned subsidiary of Applera Corporation.
2) Effective July 1, 2008, Applied Biosystems Inc. merged with and into
Applera Corporation (the “Applied Biosystems Inc. – Applera Corporation
Merger”).
3) Applera Corporation continued as the surviving entity in the Applied
Biosystems Inc. – Applera Corporation Merger.
4) Applied Biosystems Inc. ceased to exist as a separate corporation as a
result of the Applied Biosystems Inc. – Applera Corporation Merger.
106

Krupa v. New Castle County, 732 F. Supp. 497, 505 (D. Del. 1990).
D.I. 168 at 2; see also D.I. 169, Ex. 3 (Settlement and Cross License
Agreement).
108
D.I. 169, Ex. 3 at ¶ 4.7. Capitalized terms, such as “Successors,” “Blocking
Patents,” “Defined Product,” and “Modified Defined Product,” are defined terms in the
Settlement Agreement.
109
Id. at ¶ 8.2.
110
Id. at ¶ 8.5.
111
D.I. 140.
107

18

5) The name of Applera Corporation changed to Applied Biosystems Inc.
as part of the Applied Biosystems Inc. – Applera Corporation Merger.
6) Atom Acquisition Corporation was formed on October 9, 2008 as a
direct, wholly owned subsidiary of Atom Acquisition, LLC.
7) Effective November 21, 2008, Atom Acquisition Corporation merged
with and into Applied Biosystems Inc. (the “Atom Acquisition Corporation –
Applied Biosystems Inc. Merger”).
8) Applied Biosystems Inc. continued as the surviving corporation in the
Atom Acquisition Corporation – Applied Biosystems Inc. Merger.
9) Atom Acquisition Corporation ceased to exist as a separate corporation
as a result of the Atom Acquisition Corporation – Applied Biosystems Inc.
Merger.
10) Atom Acquisition, LLC was formed on June 9, 2008, as a direct, wholly
owned subsidiary of Invitrogen Corporation.
11) Effective November 21, 2008 and after the merger between Atom
Acquisition Corporation and Applied Biosystems Inc., Applied Biosystems
Inc. merged with and into Atom Acquisition, LLC (the “Applied Biosystems
Inc. – Atom Acquisition, LLC Merger”).
12) Atom Acquisition, LLC continued as the surviving company in the
Applied Biosystems Inc. – Atom Acquisition, LLC Merger.
13) Applied Biosystems Inc. ceased to exist as a separate corporation as
a result of the Applied Biosystems Inc. – Atom Acquisition, LLC Merger.
14) The name of Atom Acquisition, LLC changed to Applied Biosystems,
LLC as part of the Applied Biosystems Inc. – Atom Acquisition, LLC
Merger.
15) LT Name Corporation was formed on November 6, 2008 as a direct,
wholly owned subsidiary of Invitrogen Corporation.
16) Effective November 21, 2008, LT Name Corporation merged with and
into Invitrogen Corporation (the “LT Name Corporation – Invitrogen
Corporation Merger”).
17) Invitrogen Corporation continued as the surviving corporation in the LT
Name Corporation – Invitrogen Corporation Merger.
19

18) LT Name Corporation ceased to exist as a separate corporation as a
result of the LT Name Corporation – Invitrogen Corporation Merger.
19) The name of Invitrogen Corporation changed to Life Technologies
Corporation as part of the LT Name Corporation – Invitrogen Corporation
Merger.
In 2009, Cornell granted Life Technologies a New Exclusive Licence Agreement
to the patents-in-suit (“2009 NELA”).112
C.

Summary of Arguments

In moving for summary judgment, defendant argues:113
(1) Life Technologies is bound by the covenant not to sue because it is Applera’s
Successor, Affiliate, and affiliate. Applied Biosystems is bound by the covenant not to
sue because it is Applera’s Successor, and because after merging with Applera, Applied
Biosystems stepped into Applera’s shoes and assumed Applera’s contractual
obligations as a matter of Delaware corporate law.
(2) Cornell and Applied Biosystems lack standing to sue defendant. Cornell
contractually waived its right to sue defendant for infringement by granting Life
Technologies an exclusive license to the patents-in suit and explicitly contracted away
its right to sue defendant via the 2009 NELA. Applied Biosystems has no ownership
interest in the patents-in-suit.
(3) The covenant not to sue bars plaintiffs’ infringement claims as it protects
defendant from suits alleging infringement of the “Blocking Patents” by “Defined
Products” and “Modified Defined Products.” The accused products are Defined

112
113

D.I. 169, Ex. 2, New Exclusive License Agreement.
D.I. 168 at 1-2.
20

Products and Modified Defined Products, the patents-in-suit are Blocking Patents, and
the asserted patent claims are not the “Excluded Patent Claims” exempted from the
covenant not to sue.
In their cross motion for summary judgment, plaintiffs argue:114
(1) Life Technologies is not bound by the covenant not to sue because it is not
Applera, Applera’s Successor, or Applera’s assign.
(2) Cornell is not bound by the covenant not to sue because Cornell is not
Applera, Applera’s Successor, or Applera’s assign.
(3) The covenant not to sue protects defendant from suits alleging infringement
of the “Blocking Patents” that are “owned or licensed by Applera,” and the patents-insuit are not owned or licensed by Applera.
(4) The covenant not to sue protects defendant from suits alleging infringement
of the “Blocking Patents” that “would necessarily be infringed” by the sale, manufacture,
or use of the “Defined Product,” and the patents in suit are not necessarily infringed
because the Defined Product can be used without infringing the patents.
D.

Discussion - Motion For Summary Judgment - Breadth of Covenant
Not To Sue - Parties

Plaintiffs move for summary judgment that Cornell and Life Technologies are not
bound by the covenant not to sue. Defendant moves for summary judgment that Life
Technologies and Applied Biosystems are bound by the covenant not to sue.
As noted, the Settlement Agreement is governed by California law.115

114
115

D.I. 173 at 2-3.
D.I. 169, Ex. 3 at ¶ 8.5.
21

Under California law, the fundamental goal of contract interpretation is to
give effect to the mutual intent of the parties as it existed at the time of
contracting. Because California law recognizes that the words of a written
instrument often lack a clear meaning apart from the context in which the
words are written, courts may preliminarily consider any extrinsic evidence
offered by the parties. If the court decides, after consideration of this
evidence, that the language of a contract, in the light of all the
circumstances, is fairly susceptible of either one of the two interpretations
contended for, extrinsic evidence relevant to prove either of such
meanings is admissible. If, however, the court decides that the contract is
not reasonably susceptible to more than one interpretation, the court can
reject the assertion of ambiguity.116
Further:
The words of a contract are to be understood in their ordinary and popular
sense. A contract provision is considered ambiguous when it is capable of
two or more reasonable constructions, but such provisions must be
construed in the context of the instrument as a whole and cannot be found
to be ambiguous in the abstract.117
The court may also look to dictionary definitions when determining the meaning of
words in a contract.118 “On a motion for summary judgment, a court may properly
interpret a contract as a matter of law only if the meaning of the contract is
unambiguous.”119
1.

Settlement Agreement

The preamble of the Settlement Agreement recites:
This is a Settlement and Cross Licence Agreement . . . by and between
116

Skilstaf, Inc. v. CVS Caremark Corp., 669 F.3d 1005, 1014-15 (9th Cir. 2012)
(internal quotation marks, anterations, and citations omitted).
117
Progeny Ventures, Inc. v. W. Union Fin. Servs., Inc., 752 F. Supp. 2d 1127,
1132 (C.D. Cal. 2010) (internal quotation marks and citations omitted.).
118
Dean v. United of Omaha Life Ins. Co., C.A. No. 05-6067 GHK, 2007 WL
7079558, at *4 n.2 (C.D. Cal. Aug. 27, 2007) (citing MacKinnon v. Truck Ins. Exch., 73
P.3d 1205 (Cal. 2003)).
119
Century 21 Real Estate LLC v. All Prof’l Realty, Inc., 889 F. Supp. 2d 1198,
1219 (E.D. Cal. 2012) (citation omitted).
22

(1) Applera Corporation . . . and all of its affiliates, divisions, and Affiliates
(as defined in Article 1 of this Agreement), including but not limited to
Applera Corporation – Applied Biosystems Group, an operating group of
Applera Corporation . . . (collectively, Applera Corporation and all of its
affiliates and Affiliates are “Applera”); and (Illumina, Inc. . . . and all of its
affiliates, divisions, and Affiliates (collectively, Illumina, Inc. and all of its
affiliates and Affiliates are “Illumina”).120
The covenant not to sue at issue recites:
Subject to Illumina’s payment pursuant to section 5.1, Applera covenants
that at no time during the term of this Agreement will it, its Successors, or
its assigns make any claim or commence or prosecute against Illumina, its
officers, directors, attorneys, shareholders, affiliated or related companies,
Affiliates, employees, agents, assigns, Successors, distributors,
customers (direct or indirect), or other transferees any suit, action,
arbitration, or proceeding of any kind based upon assertion of infringement
of the Blocking Patents by the Defined Product or Modified Defined
Product.121
The Settlement Agreement defines “Affiliate” as follows:
“Affiliate” means, with respect to a Party, any Person that, directly or
indirectly through one or more intermediaries, controls, is controlled by, or
is under common control with, such Party; where “control” refers to the
ownership, directly or indirectly, of the lesser of at least fifty percent (50%)
or the highest percentage permitted by applicable law of the voting
securities or other ownership interests of a Person (or Party) or otherwise
the ability to direct the management of such Person (or Party).122
“Successor” is defined as “an entity that acquires all or substantially all of the assets of
Applera or Illumina, or of one or more operating divisions thereof, or an entity that
merges into or with Applera or Illumina or any Affiliate of either.”123 The agreement also
120

D.I. 169, Ex. 3 at L0000201 (emphasis added).
Id. at ¶ 4.7(a) (emphasis added).
122
Id. at ¶ 1.7. “Party” is defined as “Applera or Illumina, according to the
appropriate context and usage. ‘Parties’ shall mean Applera and Illumina.” Id. at ¶ 1.6.
“Person” is defined as “any individual, group, corporation, partnership, limited liability
company, joint venture, association or other organization or entity (including, without
limitation, any governmental agency or political subdivision thereof). Id. at ¶ 1.8.
123
Id. at ¶ 1.9.
121

23

provides that the parties, Applera and Illumina, and their “successors and assigns” are
“irrevocably” bound to its terms.124
Initially, the parties disagree as to which entities are bound by the covenant not
to sue. Plaintiffs point to the covenant’s recitation that “Applera covenants that at no
time during the term of this Agreement will it, its Successors, or its assigns”125 as
demonstrating the covenant only covers Applera, Applera’s Successors, or Applera’s
assigns. Defendant agrees those entities are bound, but maintains the preamble
defined “Applera” as more than just “Applera Corporation”: “Applera Corporation . . .
and all of its affiliates, divisions, and Affiliates (as defined in Article 1 of this Agreement),
including but not limited to Applera Corporation – Applied Biosystems Group, an
operating group of Applera Corporation . . . (collectively, Applera Corporation and all of
its affiliates and Affiliates are ‘Applera’).”126 According to defendant, that demonstrates
the parties expanded the definition of “Applera” to include Affiliates and affiliates,127 and,
therefore, those entities are also bound by the covenant not to sue.128
Considering the Settlement Agreement as a whole, the court rejects defendant’s
position.
First, the remainder of the preamble does not support a definition of “Applera” as
including Applera’s Affiliates and affiliates. As plaintiffs note, the preamble describes

124

Id. at ¶ 8.10.
Id. at ¶ 4.7(a) (emphasis added).
126
Id. at L0000201 (emphasis added).
127
Both “Affiliates” as defined in the Settlement Agreement and any entity
qualifying as an “affiliate” under corporate common law.
128
Neither party makes arguments based upon Applera’s “assigns” (from the
covenant not to sue) or Applera’s “divisions” (from the preamble).
125

24

past actions of “Applera” and “Illumina,”129 but none of those actions was taken by the
parties’ Affiliates or affiliates. Plaintiffs assert Applera and Illumina themselves took
each of the recited actions.130
Plaintiffs also contend the covenant not to sue granted by Illumina contains
redundant and unnecessary language if defendant’s position were accepted:
Illumina covenants that at no time will it, its Successors, or its assigns
make any claim or commence or prosecute against Applera, or its officers,
directors, attorneys, shareholders, affiliated or related companies,
Affiliates, employees, agents assigns, Successors, distributors, customers
(direct or indirect), or other transferees . . . .131
Plaintiffs point to similar redundancies that would exist if the covenant provisions
describing the covenant beneficiaries: “Applera or its . . . affiliated or related
companies, Affiliates.”132 The definition of “Successor” would likewise contain
redundant and unnecessary references to Applera and its Affiliates under defendant’s
definition: “A ‘Successor’ shall mean . . . an entity that merges into or with Applera or
Illumina or any Affiliate of either.”133 Finally, plaintiffs argue the references to “Affiliates”
in the releases and cross licenses would be redundant if “Applera” included its
“Affiliates”: “Applera . . . hereby fully and forever releases Illumina and its past and

129

D.I. 169, Ex. 3 at L0000201 (1st-6th Recitals).
Defendant did not dispute this assertion.
131
D.I. 169, Ex. 3 at ¶ 4.8(a) (emphasis added).
132
Id. at ¶ 4.8(b). Cf. also id. at ¶ 4.7(a) (“Illumina, its . . . affiliated or related
companies, Affiliates”); id. at ¶ 4.7(b) (“Illumina, its . . . affiliated or related companies,
Affiliates”).
133
Id. at ¶ 1.9.
130

25

present . . . Affiliates”;134 “Illumina grants to Applera and its Affiliates . . . .”135
Because defendant’s definition would be contrary to the recitals in the preamble,
and create redundant and unnecessary language throughout the substantive portion of
the Settlement Agreement, the court rejects defendant’s position and determines the
entities bound by the covenant not to sue are: Applera, Applera’s Successors, or
Applera’s assigns. Based on this determination, the court need not address the parties’
arguments concerning an entity’s status as an Affiliate or affiliate of Applera.
2.

Cornell

Plaintiffs move for summary judgment that Cornell is not bound by the covenant
not to sue, noting defendant never argued Cornell falls within the language of the
covenant not to sue, and there is no contention Cornell was a party to the Settlement
Agreement.136 As a result, plaintiffs maintain Cornell cannot be bound by that
covenant.137 In briefing, defendant does not contest this issue. Consequently, plaintiffs’
motion for summary judgment that Cornell is not bound by the covenant not to sue is
granted.
3.

Applied Biosystems

Defendant moves for summary judgment that Applied Systems is bound by the
covenant not to sue because it is Applera’s Successor. Plaintiffs do not contest this
134

Id. at ¶ 4.1. Cf. also id. at ¶ 4.3 (“Illumina . . . hereby fully and forever
releases Applera and its past and present . . . Affiliates”).
135
Id. at ¶ 4.6. Cf. also id. at ¶ 4.5 (Applera grants to Illumina and its Affiliates
. . . . No right to sublicense is granted to Illumina or its Affiliates . . . . The license does
not convey to Illumina or its Affiliates any license to . . . .”).
136
D.I. 173 at 18.
137
E.E.O.C. v. Waffle House, Inc., 534 U.S. 279, 294 (stating “a contract cannot
bind a nonparty”).
26

issue. In fact, they make repeated references to Applied Biosystems being Applera’s
Successor in their briefs.138 Consequently, defendant’s motion for summary judgment
that Applied Biosystems is bound by the covenant not to sue is granted.
4.

Life Technologies

The parties each move for summary judgment on the question of whether Life
Technologies is bound by the covenant not to sue. Defendant asserts Life
Technologies is so bound as Applera’s Successor; plaintiffs disagree with that assertion.
Defendant argues Applied Biosystems stepped into the shoes of Applera through
the string of corporate transactions described above. Under Delaware law, the
surviving entity of a merger absorbs all rights and responsibilities of the parties to a
merger: “all debts, liabilities and duties of the respective constituent corporations shall
thenceforth attach to said surviving or resulting corporation, and may be enforced
against it to the same extent as if said debts, liabilities and duties had been incurred or
contracted by it.”139 Further, “the policy of the law is so clear that survival [of a merged
entity’s contractual obligations] should be taken as the normal course of events.”140
138

See, e.g., D.I. 173 at 13 (“Applied Biosystems, the corporate successor to
Applera . . . .”); id. (“Applera merged with and into Applied Biosystems, thereby making
Applied Biosystems the Successor to Applera.”); (“Applied Biosystems–the Successor
to Applera . . . .”); D.I. 187 at 6 n.5 (“The fact that Applied Biosystems is a Successor to
Applera is irrelevant, as no right to the Cornell Patents now flow through Applied
Biosystems . . . .”).
139
8 Del. C. § 259 (a). Section 259 “appl[ies] to mergers or consolidations
between corporations and limited liability companies.” 8 Del. C. 264(e).
140
W. Air Lines, Inc. v. Allegheny Airlines, Inc., 313 A.2d 145, 154 (Del. Ch.
1973) (citation omitted); see also Fitzsimmons v. Western Airlines, Inc., 290 A.2d 682,
685 (Del. Ch. 1972) (“It is . . . a matter of statutory law that a Delaware corporation may
not avoid its contractual obligations by merger; those duties ‘attach’ to the surviving
corporation and may be enforced against it.’ In short, the survivor must assume the
obligations of the constituent.”).
27

Consequently, defendant asserts that, by operation of law, Applied Biosystems is to be
treated as if Applied Biosystems itself had contracted the obligations of the covenant not
to sue.141
The Settlement Agreement defined “Successor” to mean “an entity that acquires
all or substantially all of the assets of Applera or Illumina, or of one or more operating
divisions thereof, or an entity that merges into or with Applera or Illumina or any Affiliate
of either.” Because Life Technologies acquired all or substantially all of the assets of
Applied Biosystems, which stepped into the shoes of Applera, it is bound by the
covenant not to sue as a Successor to Applera.142 Therefore, defendant’s motion for
summary judgment that Life Technologies is bound by the covenant not to sue is
granted, and plaintiff’s motion that it is not so bound is denied.
E.

Discussion - Motion For Summary Judgment - Breadth of Covenant
Not To Sue - Infringement

The covenant not to sue bars suits alleging infringement of “Blocking Patents”
that “would necessarily be infringed” by the manufacture, use, or sale of the “Defined
Product” and “Modified Defined Product,” but excluding “Excluded Patent Claims.” The
parties dispute whether the accused products are “Defined Products” or “Modified
141

Defendant also notes the merger agreements stated: “[f]ollowing the Merger,
the separate corporate existence of the Company shall cease, and Merger Sub shall
continue as the surviving company (the “Surviving Company”) and shall succeed to
assume all the rights and obligations of the Company in accordance with the DGCL and
the DLLCA.”).
142
Life Technologies’ 2011 annual report acknowledges the Applied Biosystems
“acquisition” occurred on November 21, 2008. D.I. 169, Ex. 17 (Life Technologies’ 2011
Annual Report) (“On November 21, 2008, Invitrogen Corporation . . . , a predecessor
company to Life Technologies, completed the acquisition of Applied Biosystems, Inc. . .
. to form a new company called ‘Life Technologies Corporation.’”); see also D.I. 140
(Stipulation of Agreed Facts).
28

Defined Products.” There is also a dispute as to whether the patents at issue are
“Blocking Patents,” and whether the asserted patent claims are “Excluded Patent
Claims.”
1.

“Defined Products”

According to the Settlement Agreement, a “Defined Product” is “Illumina’s
GoldenGate™ assay, as described in Exhibit 1, as practiced through Illumina’s products
and services.”143 The fifth step of the GoldenGate™ assay involves “[d]etection of the
amplicons on an Illumina BeadArray.”144
a.

Definition of “Illumina BeadArray”

Defendant moves for summary judgment that its Sentrix Array Matrix (“SAM”)
and BeadChip products constitute Illumina BeadArray Products.145 Plaintiffs contend
disputed issues of material fact preclude summary judgment in Illumina’s favor.
Defendant asserts that in contemporaneous, publicly-available documents, it
made clear the term BeadArray refers to both SAM and BeadChip. For instance,
defendant’s 2003 annual report stated its “BeadArray technology [has been deployed] in
two different formats, the Array Matrix and the BeadChip.”146 Further, a November 5,
2003 press release by defendant refers to BeadChip technology as BeadArray
Technology.147 Lastly, defendant’s GoldenGate™ 2004 Assay Workflow describes the
143

D.I. 169, Ex. 3 at ¶ 1.2.
Id. at L0000212.
145
D.I. 168 at 11.
146
D.I. 169, Ex. 19 (Illumina’s 2003 Annual Report) at L0009416. The Array
Matrix is described as the “first” bead based product. Id. The Array Matrix is also
referred to as the “Sentrix” Array Matrix, as the Sentrix Array Matrix is described as the
“first implementation of our BeadArray Technology.” Id. at L0009418.
147
Id., Ex. 20 at ILMN_CRN280990.
144

29

steps of the GoldenGate assay with either SAM or BeadChip arrays.148
Defendant maintains Applera knew before the Settlement Agreement was
executed that “BeadArray” included BeadChip technology. In its 2004 arbitration filings,
Applera defined defendant’s “Assembled Arrays” to include “BeadArray™, Sentrix
Array, Sentrix BeadArray, Sentrix Array Matrix, Sentrix BeadChip, Sentrix BeadChip
Platform, Sentrix Multi-Array, or Sentrix Multi-Array Platform.”149 By such admission,
defendant maintains plaintiffs “cannot now limit the term ‘an Illumina BeadArray’ to only
one of those products and not the variety of products - including both SAM and
BeadChip products - that incorporate Illumina’s fundamental BeadArray Technology.”150
Plaintiffs contend the interpretation of “an Illumina BeadArray” is disputed, and
critical for a finder of fact to determine whether the accused assays and products fall
within the scope of the covenant. For instance, plaintiffs dispute defendant’s contention
that “an Illumina BeadArray” is not a product, but rather broadly encompasses
“BeadArray technology” and any product that encompasses that technology.151 They
point out the phrase “BeadArray technology” is not used in the agreement, and no
evidence demonstrates “BeadArray technology” is synonymous with the term “Illumina
BeadArray.”152
Plaintiffs contend a genuine issue exists as to whether the accused assays that
use defendant’s BeadChip and VeraCode produces to detect amplicons are “Defined

148

Id., Ex. 4.
Id., Ex. 21 at ¶ 3.
150
D.I. 168 at 12 (emphasis in original).
151
D.I. 173 at 22.
152
Id. at 22-23.
149

30

Products.” Plaintiffs allege the parties understood the term “Illumina BeadArray” to
mean an array with tens of thousands of beads at the end of fiber optic bundles. In
support, they reference deposition testimony,153 SEC filings,154 peer reviewed journal
articles,155 scientific conferences,156 and marketing materials.157 They argue their
definition is “consistent with the parties’ mutual use of the term during the parties’
collaboration under the [joint development agreement],”158 and defendant’s
153

D.I. 175, Jason Downing Depo. at B155, 33:20-34:7 (noting combination of
“fiber optic bundles and microscopic beads”); id., Paul David Grossman Depo. at B185,
228:2-10 (stating “Illumina BeadArray” was a device that “comprised a bead, a bundle of
a bundle of fiberoptic fibers”).
154
Id. at B191, B195, B201 (noting “[t]he tens of thousands of beads at the end of
the fiber optic bundle comprise our BeadArray”).
155
Id. at B223-24 (article describing a fiber bundle with 50,000 beads); id. at 238
(article describing “BeadArray™” technology with fiber-optic bundles with beads at the
end of each fiber).
156
Id. at B251 (presentation noting “BeadArray™” features including beads and
bundles); id. at B270-72 (presentation describing “Arrays of Beads on Optical Fiber
Bundles”).
157
Id. at B314 (describing Illumina’s “BeadArray Reader” which acquires and
images data from Illumina’s “Sentrix Array Matrices”); id. at B316 (noting bundles in
“BeadArray Reader” user guide); id. at B413 (noting bundles in “BeadArray Reader”
user guide); id. at B512 (describing Illumina’s “BeadArray technology” as a fiber optic
based array system); id. at B520-21 (describing Illumina’s “BeadArray technology” with
“nearly 50,000 beads” in an array).
158
Id., Joint Development Agreement at B528 (“‘Assembled Array’ means an
array of microspheres having chemical functionality attached thereto distributed on a
patterned substrate . . . .”); id. at B565 (patent application with title of “FIBER OPTIC
SENSOR WITH ENCODED MICROSPHERES”); id. at B816 (journal passage with title
of “Bead-based Fiber-Optic Arrays”); id. at B821 (describing Bead Array™ as a “high
throughput SNP Genotypic System based on Illumina’s Bead Array technology” in
product development plan); id. at B931 (“This document covers requirements for the
hybridization fixture hardware & plate for use with an Illumina BeadArray™ matrix as
used in conjunction with the Lite Brite System. It does not cover other parts of the Lite
Brite assay process, nor does it cover use of the BeadArray™ matrix in any other
system” in document titled “Arrays Genotypic System - Hybridization Fixture & Plate
Requirements.”); id. at B942-62 (noting development of “Analytical Detector product that
images Illumina’s proprietary Array Matrix” in “Analytical Detector - Product Concept
Plan”); id. at B175-77, 168:3-174:2 (Downing deposition testimony clarifying meaning of
31

“understanding of the phrase remained consistent in its court filings in the arbitration
that followed a breakdown in the parties’ collaboration.”159
Plaintiffs maintain defendant’s BeadChip and VeraCode products do not have
tens of thousands of beads at the end of fiber optic bundles. They argue the BeadChip
and VeraCode products have beads “bound by etched wells on a planar silica slide”
rather than beads on the end of fiber optic bundles.160 Plaintiffs further allege defendant
admitted “VeraCode products and assays that use those products are not Defined
Products . . . because they too do not have fiber optic bundles,”161 and its readers are
not “Defined Products” since the readers are not “an Illumina BeadArray.”162
Defendant contends plaintiffs’ assertion that it has not shown “BeadArray

terms in aforementioned development plans).
159
Id. at B975 (“In its pre-collaboration experience, Illumina found that the beads
loaded into the ends of the individual fibers of the BeadArrays were retained even when
subjected to significant vibration.”).
160
Id. at B1799 (distinguishing between “Array Matrix” format and “BeadChip”
format).
161
D.I. 173 at 24 (citing D.I. 175 at B208-09, 212-13 (“Illumina’s VeraCode bead
platform, when used to practice Illumina’s GoldenGate or DASL Assay, itself qualifies as
a component of a Modified Defined Product”); D.I. 175 at B1802-03 (“VeraCode
technology uses cylindrical glass microbeads” which align within a transparent groove
plate)). Defendant moves for summary judgment that its GoldenGate and DASL Assays
are “Modified Defined Products” when practiced using its VeraCode Beads. Because
neither party moved for summary judgment that the VeraCode products are “Defined
Products,” the court need not address plaintiffs’ argument on that point.
162
D.I. 173 at 25 (citing D.I. 175 at B1020-21 (noting defendant states “Illumina
interprets the phrase ‘Illumina BeadArray’ to refer to its BeadArray Technology, which is
deployed on either of two multi-sample array formats, i.e., Illumina’s Array Matrix and
BeadChip arrays”)). Although in its reply brief, defendant represents its readers, used
to practice GoldenGate and DASL fall within the definition of “Defined Products,” based
on the assertion in plaintiff’s First Amended Complaint that readers are used to perform
the detection step (step 5) in Exhibit 1 (D.I. 63 at ¶ 45), neither party moved for
summary judgment with respect to the accused readers. See D.I. 168 at 1-2
(Defendant’s Summary of the Argument); D.I. 173 at 2-3 (Plaintiffs’ Summary of
Argument). Therefore, the court need not address this argument.
32

technology” is synonymous with the “Illumina Bead Array” product referenced in the
Settlement Agreement is a straw man argument as Illumina avers it does not have, and
has never had, a single product named “an Illumina BeadArray.”163 Because plaintiffs
present no evidence to rebut that representation, the court determines this argument
does not raise a genuine issue of material fact.
Defendant also contends plaintiffs concede its SAM is “an Illumina BeadArray” as
used in step 5 of Exhibit 1 of the Settlement Agreement with plaintiffs’ statement that
“[t]he evidence shows that the only product that arguably used an Illumina BeadArray
during the relevant time was Illumina’s Sentrix Array Matrix.”164 The court agrees and
grants defendant’s motion for summary judgment that its SAM is a Defined Product.
The court also agrees with defendant that the evidence supports its assertion
that at the time the Settlement Agreement was signed in August of 2004, “an Illumina
BeadArray” referred to both SAM and BeadChip. As noted above, plaintiffs’ 2004
arbitration filing against Illumina defined Illumina’s arrays to include both BeadChip and
SAM;165 defendant’s 2003 Annual Report stated its “BeadArray technology [has been
deployed] in two different formats, the Array Matrix and the BeadChip”;166 defendant’s
November 5, 2003 press release referred to BeadChip as BeadArray Technology;167
and defendant’s 2004 GoldenGate assay workflow describes the steps of the
GoldenGate assay with either SAM or BeadChip assays.168
163

D.I. 179 at 17 n.17 (citing D.I. 180, Ex. 10 (Illumina’s 2003 Annual Report)).
D.I. 173 at 23 n.9.
165
D.I. 169, Ex. 21 at ¶ 3.
166
Id., Ex. 19 at L0009416.
167
Id., Ex. 20 at ILMN_CRN280990.
168
Id., Ex. 4.
164

33

The SEC filings cited by plaintiffs are defendant’s SEC filings in 2000, 2001, and
2002, before the BeadChips’ introduction in September 2003.169 The citations to
Downing’s deposition also concern a discussion of those SEC filings. Moreover,
defendant states the journal articles, marketing materials, and user guides relied upon
by plaintiffs were published or disseminated before the BeadChips’ introduction.170
Defendant contends, therefore, that “there is nothing inconsistent about the fact that
these early documents refer only to ‘fiber optic bundles’ (SAM) and do not reference
Beach Chip. The bottom-line is that by 2004 when the Agreement was signed, both
parties were fully aware that ‘BeadArray Technology” included both SAM and
BeadChip.”171
The court finds plaintiffs have not raised a genuine issue of material fact on this
issue, and grants defendant’s motion for summary judgment that BeadChip and Sam
are “Defined Products.”
2.

“Modified Defined Products”

The Settlement Agreement defines “Modified Defined Product as “a product
169

D.I. 175 at B191, B195, B201.
Defendant notes only one document with a 2004 date, a January 26, 2004
document, is cited by plaintiffs as evidence that “BeadArray Technology” does not
include BeadChip. Defendant explains that document is a draft BETA version of a 2004
BeadArray Reader User Guide. It maintains the reason that document “only mentions
fiber optic bundle[s]” is because the BeadChip was not originally designed for use with
Illumina’s BeadArray Reader. D.I. 179 at 19 (citing D.I. 180, Ex. 12 at 1-3). Defendant
states the BeadArray Reader was later modified to accommodate BeadChip, and the
BETA version of the BeadArray Reader User Guide cited by plaintiffs was outdated as
of March 12, 2004, well before the Settlement Agreement was executed. It avers the
revised version of the 2004 BeadArray Reader User Guide, which references both SAM
and BeadChip, was published on March 12, 2004. Id. (citing D.I. 180, Ex 13 at
ILMN_CRN014543).
171
D.I. 179 at 18.
170

34

(substantially similar to a Defined Product and having all of the ‘steps’ set forth on
Exhibit 1 hereto) that is a modification of the Defined Product.”172 Defendant moves for
summary judgment that its GoldenGate and DASL assay performed using VeraCode
Beads are “Modified Defined Products.” Plaintiffs argue there are disputed facts
concerning whether the accused assays and products meet the requirement that each
is: (i) “substantially similar to a Defined Product”; (ii) has “all of the ‘steps’ set forth on
Exhibit 1"; and (iii) is “a modification of the Defined Product.”
Defendant argues its GoldenGate and DASL assays are “Modified Defined
Products” when performed using VeraCode beads,173 because “[t]he chemistry of the
GoldenGate or DASL assay performed using VeraCode Beads is essentially identical to
the chemistry used to perform steps one through four of Exhibit 1 using SAM and
BeadChip as of August 2004.”174 According to defendant, the only differences are: “[(1)]
VeraCode provides faster hybridization time[; (2)] VeraCode decodes the beads at the
time the assay is performed, as opposed to before it is performed[; and (3)] VeraCode
digitally decodes the beads, whereas BeadArray uses oligo decoding.”175 Defendant
contends these “minor differences” do not vary any of the “steps” in Exhibit 1 because
“[n]either the [settlement agreement] nor Exhibit 1 specify when or how beads must be
decoded when performing the assay in order for the product to be considered a ‘Defined
Product.’”176

172

D.I. 169, Ex. 3 at ¶ 1.4.
D.I. 168 at 12.
174
Id.; D.I. 169, Ex. 23.
175
D.I. 168 at 12.
176
Id. at 12-13.
173

35

Plaintiffs argue that, although they agree “substantially similar” means
“essentially identical to,” neither the plain meaning of the phrase nor the language of the
Agreement requires the additional limitation to be “essentially identical to the chemistry
used to perform” the steps of Exhibit 1. Plaintiffs also maintain defendant does not cite
any evidence that “minor differences” is an appropriate measuring stick of substantial
similarity.177 They further dispute whether the BeadChip and VeraCode products, and
assays that use those products, contain all of the steps of, or are substantially similar to,
the Defined Product.178 As discussed previously, “Defined Product” requires “an
Illumina BeadArray” in the fifth step. Plaintiffs submit there is evidence that would
permit a factfinder to conclude this step is missing from assays that use VeraCode
products because these products are not BeadArrays.179 Further, they point out the
accused assays using VeraCode products are performed in substantially different ways
from SAM products.180
The court first notes defendant only cites one exhibit to its opening brief in
support of its argument that “using VeraCode Beads is essentially identical to the
chemistry used to perform steps one through four of Exhibit 1 using SAM and BeadChip
as of August 2004.”181 That document states “biggest difference” between the SAMbased and VeraCode-based protocol is the “VeraCode-based protocol takes two days,

177

D.I. 173 at 26.
Id. (citing its arguments and evidence with regard to Defined Products on
page 23 of it brief).
179
Id. at 26-27.
180
D.I. 175 at B1105 (describing differences between VeraCode and SAM).
181
D.I. 168 at 12 (citing D.I. 180, Ex. 23 (3/5/07 FAQs for VeraCode)).
178

36

whereas the SAM-based protocol takes three.”182 It also states, however, after a certain
point, “[t]he workflows differ from this point on, as the VeraCode-based GG assay has a
clearly defined sample addition step, a separate hybridization in the Vortemp (vs. oven
for SAMS), its own wash protocol, and a separate scan protocol for the BeadXpress
reader, all very different from the SAM protocols for the analogous steps–all detailed in
the manual.”183 Although defendant contends plaintiffs point to “irrelevant differences” in
VeraCode “because VeraCode uses the same steps as are set forth in Exhibit 1 of the
Settlement Agreement,”184 the court is not persuaded that the single document cited by
defendant, and its arguments related thereto, establish that VeraCode meets the
definition of a Modified Defined Product.185 Consequently, defendant’s motion for
summary judgment that VeraCode is a Modified Defined Product is denied.
3.

“Blocking Patents”

Pursuant to the Settlement Agreement, “Blocking Patents” are defined as:
all patents, both domestic and foreign counterparts, either currently or
after the Effective Date, owned or licensed by Applera, that claim
inventions that would necessarily be infringed by Illumina or its customers
as a direct result of their manufacture, use, or sale of the Defined Product,
but excluding the Excluded Patent Claims.186
Both parties cross move for summary judgment on the issue of whether the
patents-in-suit are Blocking Patents.
182

D.I. 180, Ex. 23 at ILMN_CRN384299.
Id. (emphasis added).
184
D.I. 179 at 21.
185
See, e.g., Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986) (“Rule 56(c)
mandates the entry of summary judgment . . . against a party who fails to make a
showing sufficient to establish the existence of an element essential to that party’s case,
and on which that party will bear the burden of proof at trial.”).
186
D.I. 174, Settlement and Cross License Agreement at A002.
183

37

a.

“[O]wned or licensed by Applera”

Plaintiffs move for summary judgment that none of the patents-in-suit are “owned
or licensed by Applera.” Plaintiffs state that two of the ten patents-in-suit did not exist
before Applera ceased to exist on November 21, 2008.187 They argue that because
those patents issued after Applera ceased to exist, they could never have been “owned
or licensed by Applera.”188
Plaintiffs also contend none of the ten patents-in-suit was “owned or licensed by
Applera” when the accusation of infringement was made that allegedly triggered the
covenant. They note when this suit was filed in 2010, Cornell Research Foundation was
the patent owner, Life Technologies was the exclusive licensee, and Applera had not
existed for many months. Plaintiffs contend the Settlement Agreement does not define
Applera in such a way as to cover patents owned or licensed by Applera’s Successor,
Applied Biosystems, but had it done so, Applied Biosystems does not own or license
any of the patents-in-suit.
Defendant does not dispute Life Technologies is the exclusive licensee of the
patents-in-suit, nor does it dispute plaintiff’s assertion that the Settlement Agreement
does not define Applera in such a way as to cover patents owned or licensed by
Applera’s Successor. Instead, it repeats its argument, previously rejected by the court,
that the preamble of the Settlement Agreement defines “Applera” to include Applera’s
“Affiliates and affiliates.”189
187

D.I. 173 at 18 (citing D.I. 63, Ex. I (‘746 patent, issued Feb. 22, 2011); Ex. K
(‘233 patent, issued Feb. 22, 2011)).
188
Id. at 18-19.
189
D.I. 179 at 16.
38

The court agreed with defendant that Applied Biosystems stepped into the shoes
of Applera and, because Life Technologies acquired all or substantially all of Applera
with its acquisition of Applied Biosystems, Life Technologies is Applera’s Successor.
Applied Biosystems, however, does not own or license the patents-in-suit; the parties
agree Life Technologies is the exclusive licensee of those patents. In light of
defendant’s concession that “the question is not whether the [Settlement] Agreement
covers patents owned or licensed by Applera’s Successor,”190 the court grants plaintiffs
motion for summary judgment that the patents-in-suit are not owned or licensed by
Applera as required by the definition of “Blocking Patents.”191
b.

“[W]ould necessarily be infringed by . . . the Defined
Product”

The parties each moved for summary judgment on whether the Cornell patents
are “necessarily . . . infringed by . . . the Defined Product.” “Defined Product” is
“Illumina’s GoldenGate™ assay, as described in Exhibit 1.”192 Exhibit 1 lists the five
steps of the assay:
Hybridization of at least two oligonucleotide probes to a target nucleic acid
material, where the target material may be DNA, cDNA, RNA, or artificial
oligonucleotide template;
Extension and ligation of one probe to the other while the probes are
hybridized to the target material;

190

Id. (emphasis in original).
In the section of its opening brief captioned “The Patents-In-Suit Are ‘Blocking
Patents,’” defendant did not present argument that the patents-in-suit were owned or
licensed by Applera. To the extent its motion for summary judgment that the patents-insuit are Blocking Patents requires that determination, and defendant implicitly so
moved, the court denies defendant’s motion on this issue.
192
D.I. 169, Ex. 3 at ¶ 1.2.
191

39

Eluting the extended and ligated probes from the target material;
Universal PCR, rolling circle, random priming, T4/Eberwine, strand
displacement, TMA (transcripted mediated amplification), LCR (ligase
chain reaction), MDA (multiple displacement amplification) or SPIA
amplification of the extended and ligated probes to generate labeled
amplicons; and
Detection of the amplicons on an Illumina BeadArray.193
Plaintiffs point out defendant never argued the definition of “Blocking Patents” to
be ambiguous nor identified any evidence or other information which it contends bears
on the construction of that language.194 Under California law, “[t]he words of a contract
are to be understood in their ordinary and popular sense, rather than according to their
strict legal meaning; unless used by the parties in a technical sense, or unless a special
meaning is given to them by usage, in which case the latter must be followed.”195 For
assistance in defining a word, the court may use a dictionary,196 and the dictionary
definition of “necessarily” is “as a necessary result; inevitably.”197
Plaintiffs argue the meanings of “Blocking Patents” and “necessarily infringed”
were commonly known, through judicial interpretation, at the time of the Settlement
Agreement.198 If an “accused device can be used at any given time in a noninfringing

193

D.I. 169, Ex. 3 at L0000212.
Id. at A053-54 (“Illumina does not contend that any term or phrase in the
Settlement and Cross License Agreement is ambiguous”).
195
Cal. Civ. Code § 1644.
196
See, e.g., Walker v. Gomez, 609 F. Supp. 2d 1149, 1156 (S.D. Cal. 2009)
(noting in order “[t]o determine the ordinary and popular meaning of a word, the court
will typically consult a dictionary”).
197
D.I. 174 at A096 (THE OXFORD AMERICAN COLLEGE DICTIONARY at 905 (2002
ed.)); see also D.I. 174, (Flatley Depo.) at A084, 146:15-20 (noting the dictionary he
probably owned was an Oxford dictionary).
198
D.I. 173 at 20.
194

40

manner, the accused device does not necessarily infringe” a patent.199 Further, “[i]f all
of the claims are valid, the parties here have blocking patents. That is, neither can
practice its invention and avoid infringing the other’s without a license.”200
Plaintiffs argue they are entitled to summary judgment because defendant
admitted the Defined Product can be practiced without infringing any of the patents in
suit,201 and further note the Defined Product expressly permits the use of nine different
amplification methods, with only one of which, PCR, covered by the patent claims.202
Defendant admitted the Defined Product can be practiced with different amplification
methods.203
Defendant argues a patent is “necessarily infringed” if it covers an invention that
requires the performance of the five steps of its GoldenGate assay.204 Defendant
asserts the nine different amplification methods listed in Step 4 allow for broad freedom
when selecting an amplification method.205 Defendant represents its primary purpose
for executing the Settlement Agreement was to have freedom to operate its GoldenGate
199

ACCO Brands, Inc. v. ABA Locks Mfrs. Co., Ltd., 501 F.3d 1307, 1313 (Fed.
Cir. 2007).
200
Rohm and Haas Co. v. Mobil Oil Corp., 718 F. Supp. 274, 285 (D. Del. 1989).
201
D.I. 174 at A034-42 (Illumina Resp. to Request for Admission) (noting
defendant’s statement that “Illumina admit[ted] that there are ways to practice the
Defined Product, as defined in the Settlement and Cross License Agreement, without
infringing [U.S. Patent Nos. 6,797,470; 7,083,917; 7,166,434; 7,312,039; 7,320,865;
7,332,285; 7,364,858; 7,429,453; 7,892,746; 7,893,233]”).
202
Id. at A012 (Settlement and Cross License Agreement); A047-48; A048-49.
203
Id. at A047-48 (Illumina Resp. to Request for Admission) (noting defendant
admitted “the GoldenGate Assay described in Exhibit 1 of the Settlement and Cross
Licence Agreement” “can be performed without using polymerase chain reaction
(“PCR”) amplification;” “can be performed using rolling circle amplification;” and “can be
performed using transcripted mediated amplification.”).
204
D.I. 168 at 14.
205
Id.
41

assay in the future.206
Under plaintiffs’ argument, defendant contends the covenant not to sue would
essentially be worthless because it would not protect its key commercial product, the
GoldenGate assay,207 for which protection was sought over the long term.208 Defendant
also contends plaintiffs’ application of the law is incorrect, because in determining
whether an accused product “necessarily infringes,” one must look to the product as it
existed at the time it was accused.209
The court finds the patented-in-suit patents are “necessarily infringed” by the
“Defined Product.” Initially, the court agrees with defendant that it seems illogical that,
given the importance of the GoldenGate asset to Illumina in 2004, it would have entered
an agreement that rendered the covenant not to sue essentially worthless. Case law
also supports defendant’s position that the focus is on whether an accused product
“necessarily infringes” begins with the accused product as it existed at the time it was
accused.210 Defendant’s admission that the “Defined Product,” e.g., “Illumina’s
206

Id. at 13.
Id. at 14-15.
208
D.I. 169, Ex. 26, Jay Flatley Depo. at 90:24-91:4 (stating goal of settlement
agreement was “to make sure that we couldn’t be sued under those patents, nor could
we be sued on any other patents subsequent to signing this that related to the products
that we defined in the agreement or any products that we considered to be derivative to
that product”).
209
D.I. 179 at 22.
210
See, e.g., ACCO Brands, Inc. v. ABA Locks Mfrs. Co., Ltd., 501 F.3d 1307,
1313 (Fed. Cir. 2007) (“Because the accused device can be used at any given time in a
noninfringing manner, the accused device does not necessarily infringe the ‘989
patent.”); Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d
984, 995 (Fed. Cir. 2009) (equating “necessarily infringes” with “necessarily [having] to
be placed in the infringing configuration,” and determining simply being capable of being
put into the claimed configuration is insufficient for a finding of infringement”); Dynacore
holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1276 (Fed. Cir. 2004) (equating
207

42

GoldenGate™ assay, as described in Exhibit 1,” is capable of being practiced without
infringing the patents-in-suit does not change the fact that the Defined Product, as it
existed at the time it was accused, necessarily infringes the patents-in-suit.
Consequently, the court grants defendant’s motion for summary judgment and denies
plaintiffs’ motion for summary judgment.
4.

“Excluded Patent Claims”

The Settlement Agreement defines “Excluded Patent Claims” as “claims in
patents, both domestic and foreign counterparts, either currently or after the Effective
Date, owned or licensed by Applera that claim inventions that are instruments,
enzymes, dyes, nucleic acid sequences, polymerase chain reaction (PCR) methods, or
software.”211 Defendant moves for summary judgment that the asserted patent claims
are not the “Excluded Patent Claims.”
a.

“Patents . . . that claim inventions that are instruments”

Defendant submits the claims of the ‘917 and ‘233 patents (the “Array Patents”)
are not Excluded Patent Claims because they do not “claim inventions that are
instruments.”212 Defendant argues “a patent claiming an invention that is an array is not
the same thing as a patent that claims an invention that is an instrument.”213 Defendant
contends “[t]he term ‘instrument’ has a well-understood meaning in the biotechnology
“necessarily infringe” with “substantial[ly] non-infringing,” and finding no determination of
liability if there are substantially non-infringing uses of the defendant’s products);
Genentech, Inc. v. Trs. of Univ. of Pa., No. 10-CV-02037 LHK, 2012 WL 1670167, at
*11 (N.D. Cal. May 14, 2012) (“[a]n accused product does not ‘necessarily infringe’ if it
‘can be used at any given time in a noninfringing manner’” (citation omitted)).
211
D.I. 169, Ex. 3 at ¶ 1.3.
212
D.I. 168 at 16.
213
Id. at 15 (emphasis in original).
43

industry” and, “[i]n this case, instrument refers to the HiScan, IScan and Bead Array
Reader” which are “instruments that contain optics, software, and other components for
reading the results of experiments contained on arrays.”214 Defendant states “[a]rrays
are disposable items, which are inserted into the instrument, for example, Illumina’s
BeadArrays.”215
Defendant points out the words “instrument” and “array” consistently appear in
the Settlement Agreement separated by a comma: “existing or future Illumina products
or services including, without limitation, arrays, instruments, oligonucleotide products,
reagents, or commercial services”;216 “existing or future Applera products or services
including, without limitation, arrays, instruments, oligonucleotide products, reagents, or
commercial services.”;217 “existing or future Applera products or services including,
without limitation, arrays, instruments, oligonucleotide products, reagents, or
commercial services.”218 Defendant submits that under basic rules of contract
interpretation, since the terms are listed separately throughout the settlement
agreement, the parties intended and understood the terms to have different
meanings.219
Defendant also maintains both the parties’ and the industry’s usage of the terms
confirm that an array is not an instrument. For instance, Applera’s 2005 Annual Report
214

Id. (emphasis in original); D.I. 169, Ex. 30 at ILMN_CRN175346 (noting “[t]he
BeadArray Reader is a high-performance instrument”); id., Ex. 29.
215
D.I. 169, Ex. 29 (showing “Array Formats” and a “Sentrix® Array Matrix” being
inserted into a “BeadStation” or “BeadArray Platform”).
216
Id., Ex. 3 at ¶ 4.5 (emphasis added).
217
Id. at ¶ 4.6 (emphasis added).
218
Id. at ¶ 4.8 (emphasis added).
219
D.I. 168 at 16-17.
44

divided the company’s profits into two major categories: (1) instrument sales and (2)
consumable sales.220 The consumables included chemical reagents and other
disposables and arrays.221 Similarly, Applied Biosystems’ current website at present
distinguishes between instruments and arrays.222 Dr. Michael Hunkapiller, former
President of the Applied Biosystems Group of Applera, stated that prior to the
Settlement Agreement, his company did not classify a consumable as an instrument.223
Defendant’s expert, Dr. Stacey Gabriel, also testified no one in the industry would ever
call an array an instrument.224 Defendant points out that, historically, it has
distinguished the two terms in public usage.225
220

D.I. 169, Ex. 32 (Applera 2005 Annual Report) at 13, 32, 36, 37, 38, 43, 44,

82.
221

Id. For example, that document describes “consumable products” as
“chemical reagents and other disposables used in conjunction with our various
instrument systems . . . .” Id. at 13 (emphasis added); id. at 36 (stating that
“Consumables” “included assays”); id., Ex. 32 at 38 (“Consumables” included sales of
particular assay products).
222
Id., Ex. 34 (separately listing products under the headings “Gene Expression
Analysis Instruments” and “Gene Expression Assays, Plates & Arrays”).
223
Id., Ex. 33 (Hunkapiller Depo.) at 41:23-42:5 (“Q. Can you think of any
example at Applied Biosystems Inc. where an item that was consumable or disposable
was referred to as an instrument? “Consumables referred to as an instrument. Not that
I recall.”(objection omitted)).
224
Id., Ex. 31 (Gabriel Expert Rpt.) at 3, 10 (stating the term “instrument” is
“widely understood” to refer to a category distinct from “consumable,” and the term
“consumable” includes the term “arrays”). Dr. Gabriel describes instruments as
repeatedly usable over an extended period of time, and arrays, or consumables, as
generally for single use. Id., Ex. 31 at ¶¶ 2, 5-7.
225
Id., Ex. 35 (Illumina 2002 Form 10-K Form) at 7 (“Illumina will manufacture the
arrays and Applied Biosystems will manufacture the instrument and reagent kits and
have responsibility for sales and marketing of the system.”; “[Illumina] will develop and
manufacture the Array of Arrays and and Applied Biosystems will develop and
manufacture the detection instrument and the reagent kits.”); id., Ex. 19 (Illumina 2003
Annual Report) at L0009419 (“[T]he BeadArray Reader . . . is an instrument that uses a
laser to read the results of experiments that are captured on . . . Sentrix Array Matrices
and BeadChips . . . .”); id., Ex. 19 at L0009418 (describing “disposable Sentrix Arrays
45

Plaintiffs contend questions of fact regarding the meaning of “instrument” and
how that definition is applied to the patent claims at issue preclude summary judgment.
Plaintiffs state Illumina’s expert, Dr. Gabriel, testified that many definitions of
“instrument” in the biotechnology and life sciences fields are satisfied by patents
directed to arrays.226 Plaintiffs note their expert, Dr. Kevin Struhl, similarly opined that
an “instrument” “is a device that is made or adapted for a specific purpose.”227 Dr.
Struhl cited three dictionaries that are consistent with his definition of “instrument.”228
Plaintiffs also argue “consumables” is a budgetary, not a scientific term, which relates to
cost and not whether an item is an instrument.229 According to plaintiffs, arrays can be
reused.230 Plaintiffs further contend the patents do not simply claim arrays; rather, they
claim devices “comprising” multiple features, including an array.231 Since the legal term
“‘comprising’ creates a presumption that the recited elements are only a part of the

and BeadChips, GoldenGate reagent kits” and “BeadArray Reader scanning
instruments”); id., Ex. 45 (Illumina 2011 Form 10-K) at 11 (describing “instruments and
consumables (which include reagents, flow cells, and BeadChips) . . . .”).
226
D.I. 175 at B1665, 43:14-21 (Gabriel Depo.) (testifying “an instrument is a
device to perform a step of a process” and “an array is a device to perform a step of a
process”); id. at B1666, 45:5-12 (Gabriel Depo.) (testifying “an instrument is a device to
run a process for a specific purpose” and “an array is used to run a process for a
specific purpose”); id. at B1667, 50:4-10 (Gabriel Depo.) (testifying “an instrument is a
device used for measurements” and “an array is a device used for measurements”).
227
Id. at B1178, ¶ 77 (Struhl Rebut. Expert Rpt.). Dr. Struhl also states “the term
‘instruments’ can refer to devices that can be used to run a process for a specific
purpose and to devices that can be used to measure things . . . .”). Id. at B1180, ¶ 82
(Struhl Rebuttal Expert Rpt.).
228
Id. at B1180-81, ¶ 82 (Struhl Rebut. Expert Rpt.).
229
Id. at B1682, 61:14-64:4 (Struhl Depo.).
230
Id. at B1671, 69:8-9 (Gabriel Depo.); id. at B1181, ¶ 84 (Struhl Rebut. Expert
Rpt.); id. at B1183-85, ¶¶ 90, 93 (Struhl Rebut. Expert Rpt.); id. at B1686, 81:3-83:19
(Struhl Depo.); id. at B1687, 86:7-15.
231
D.I. 63, Exs. B, I, K (citing claim 7).
46

device,” such claims do not exclude additional, unrecited elements.232 Finally, plaintiffs
agree that the usage of the terms “array” and “instrument” together in the Settlement
Agreement means they are not synonymous. Plaintiffs suggest, however, that “an array
can clearly qualify as an instrument, but not all instruments (consider the readers
discussed above) are arrays.”233
The court finds there is a genuine issue as to whether an “array” is an
“instrument.” As noted previously, an “Excluded Patent Claim” includes a claim that
covers inventions that are instruments. The parties submit competing evidence on
whether an “array” as used in the claims is an “instrument.” Because the meaning of
patent terms are legitimately contested, “a factual dispute arises, precluding summary
judgment.”234
b.

“Patents . . . that claim inventions that are . . .
polymerase chain reaction (PCR) methods”

The covenant not to sue also excludes patent claims that “claim inventions that
are . . . polymerase chain reaction (PCR) methods.”235 Defendant argues “a patent
claiming a detection method that uses PCR as one step of that detection method is not
the same thing as a patent that claims an invention that is a PCR method.”236
Defendant submits the patents-in-suit are not Excluded Patent Claims because they do

232

Crystal Semiconductor Corp. v. TriTech Microelecs. Int’l Inc., 246 F.3d 1336,
1348 (Fed. Cir. 2001).
233
D.I. 173 at 35.
234
Gen. Elec. Co. v. Hoechst Celanese Corp., 698 F. Supp. 1181, 1187 (D. Del.
1988).
235
D.I. 169, Ex. 3 at ¶ 1.3 (emphasis added).
236
D.I. 168 at 15 (emphasis in original).
47

not claim inventions that are PCR methods.237
Defendant argues there is nothing novel about PCR as it is used in the patentsin-suit, and nowhere do the patents describe a new method of doing PCR. Defendant
states the PCR method utilized in those patents, Universal PCR, was well-known in
2004. It states the first PCR method was invented in 1983 by Dr. Kary B. Mullis.238
Defendant explains that after Mullis’ original patents, many variations and improvements
of the PCR protocol were developed and patented, such as “real-time PCR” and
“quantitative PCR” as well as others.239 Defendant argues it is these variations and
improvements on the PCR amplification protocol itself that constitute “claims in patents .
. . that claim inventions that are . . . polymerase chain reaction (PCR) methods.”240
Defendant represents the original Mullis patents and related PCR patents were
still in effect at the time of the Settlement Agreement, and were the centerpiece of a
“PCR Licencing Program” run by Life Technologies through today.241 According to
defendant, it was this separate PCR Licensing Program that the parties were carving
out of the Settlement Agreement. Defendant notes none of the patents-in-suit is part of
the PCR Licensing Program, which defendant argues confirms that Life Technologies
understands that the asserted patents are not claiming “inventions” that are PCR
methods.
Defendant contends that although some of the asserted claims contain the step

237

Id. at 18.
D.I. 169, Ex. 37.
239
Id., Ex. 38.
240
Id., Ex. 3 at ¶ 1.3 (emphasis added).
241
Id., Exs. 39-41 (licensing agreements).
238

48

of performing PCR, they are not claiming a new or novel way to perform PCR.
Defendant reiterates that simply because asserted claims contain a PCR step, does not
mean that they are PCR methods. Similarly, it states the mere fact that GoldenGate in
Exhibit 1 contains a PCR step, does not mean that it is a PCR method. Defendant
concludes the mere combination of the step of basic PCR with an allegedly new method
“for identifying one or more target nucleotide sequences,” does not mean it “claim[s]
inventions that are . . . (PCR) methods.”242
Plaintiffs argue there is “evidence in the record from which a reasonable fact
finder could conclude the term ‘PCR methods’ refers to methods in which PCR is one of
the steps, along with other, non-PCR steps.”243 In support of their position, they
reference their expert, Dr. Struhl’s, report,244 treatises,245 peer reviewed journal
articles,246 and Illumina’s own usage.247 According to Dr. Struhl, the ‘470, ‘434, ‘039,
‘865, ‘285 and ‘453 patents claim inventions that are PCR methods.248 According to
plaintiffs, since determining whether a patent claims a “PCR method” is highly
subjective and fact driven, summary judgment is inappropriate.

242

Id., Ex. 3 at ¶ 1.3 (emphasis added).
D.I. 173 at 31.
244
D.I. 175 at B1164, B1167-74 (Struhl Rebut. Expert Rpt.) (explaining how PCR
methods means any method that includes PCR as a step in the overall method or
process).
245
Id. at B1167-72; B1234 (Struhl Rebut. Expert Rpt.) (stating “[s]everal PCR
methods have been developed . . . . One of these, litigation-mediated PCR, has broad
applications including genomic footprinting and sequencing”).
246
Id. at B1167-72 (Struhl Rebut. Expert Rpt.); B1368; B1383; B1388; B1390-91;
B1399; B1409; B1410.
247
Id. at B1172-73; B1422; B1425; B1429; B1449; B1477; B1660-62 (Gabriel
Depo.) at 18:17-23, 21:22-24, 25:16-21, 25:22-24.
248
Id. at B1174-78 (Struhl Rebut. Expert Rpt.).
243

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The court agrees with defendant that “Plaintiffs’ argument boils down to the
assertion that, merely because the claims of the patents contain the step of PCR the
claims claim ‘inventions that are’ PCR methods.”249 Plaintiffs have not demonstrated
that the specification describes a novel PCR method that is claimed in the asserted
claims. Indeed, plaintiffs’ expert, Dr. Struhl acknowledged that “the essence” of the
PCR method Mullis invented in the 1980s is “definitely the same” as the PCR method
utilized by the asserted claims.250 The claims recite “a method for identifying one or
more different target nucleotide sequences”; a PCR method is used as one step in that
invention. Consequently, the court grants defendant’s motion for summary judgment
that the asserted claims reciting PCR as a step are not Excluded Patent Claims.
F.

Discussion - Motion For Summary Judgment - Standing

Standing is “a jurisdictional requirement which remains open to review at all
stages of the litigation.”251 Once standing is challenged, the party seeking to invoke the
court’s jurisdiction has the burden of establishing its standing.252
1.

Cornell and Applied Biosystems

Defendant moves for summary judgment that neither Cornell and Applied

249

D.I. 179 at 24. The court also agrees with defendant that it is telling that
plaintiffs did not dispute, or respond to, defendant pointing out that Life Technologies
and its predecessors had, at the time of the Settlement Agreement, a “PCR Licensing
Program” that continues through today. Despite the “PCR Licensing Program” being
established to monetize and license PCR method patents, the asserted patents are not
part of that program. Id. at 27.
250
D.I. 180, Ex. 25 (Struhl Depo.) at 150:18-151:19.
251
Nat’l Org. For Women, Inc. v. Scheidler, 510 U.S. 249, 255 (1994); In re ANC
Rental Corp., 280 B.R. 808, 815 (D. Del. 2002).
252
MobileMedia Ideas, LLC v. Apple Inc., C.A. No. 10-258 SLR, 2012 WL
3528107, at *5 (D. Del. Aug. 16, 2012).
50

Biosystems have standing to bring this action. Defendant asserts Cornell lacks
independent standing in this case without Life Technologies. On December 16, 2009,
Cornell gave Life Technologies an exclusive, worldwide, perpetual license to make, use,
and sell products embodying the patents in suit.253 Pursuant to this license, Cornell
gave Life Technologies all rights to bring suit against defendant for infringement.254
Thus, defendant argues Life Technologies was given sole standing.255 Defendant also
contends Applied Biosystems lacks standing because Life Technologies is the exclusive
licensee of the patents-in-suit, and plaintiffs have not claimed Applied Biosystems has
any rights to those patents.256
Plaintiffs counter, arguing the standing issue is not ripe for summary judgment
because discovery on the subject has not been conducted, in part due to defendant’s
conduct.257 They contend defendant never sought standing related discovery.258
Plaintiffs also argue Cornell is not expressly prohibited from proceeding with this
litigation by itself.259
a.

Cornell

253

D.I. 169, Ex. 2 (2009 NELA) at L0019051-52, ¶¶ 3.1, 3.2, 3.3.
Id., Ex. 2 at L0019062, ¶¶ 14.1, 14.2, 14.4.
255
D.I. 168 at 10.
256
Id.; id. at 10 (“[Applied Biosystems] lacks standing because it has asserted no
ownership interest in the patents-in-suit.”).
257
Paris v. Christiana Care Visiting Nurse Ass’n, 197 F. Supp. 2d 111, 116 (D.
Del. 2002) (stating when deciding a motion for summary judgment, a “nonmovant’s
evidence . . . must be sufficient for a reasonable jury to find in favor of the party, given
the applicable burden of proof.”); see also D.I. 87 at 2-3 (showing no mention of the
standing issue in discovery order); D.I. 175 at B1777, B1790-91.
258
D.I. 87 at 2-3; D.I. 175 at B1777, 1790-91.
259
D.I. 169, Ex. 2 at L0019062, ¶ 14.2. Because the court determines, below,
that Cornell and Applied Biosystems do not lack standing, the parties’ arguments
concerning the ripeness of this issue need not be addressed.
254

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Defendant acknowledges Cornell only lacks standing to proceed in this case
without Life Technologies.260 In light of the court’s determination, above, that the
patents-in-suit are not “owned or licensed by Applera,” as required by the definition of
“Blocking Patents,” the covenant not to sue does not prohibit Life Technologies from
bringing this action. Since defendant’s argument that Cornell lacks standing is based
on its position, previously rejected, that Life Technologies is prohibited from bringing this
action its motion for summary judgment that Cornell lacks standing is denied.
b.

Applied Biosystems

Defendant argues Applied Biosystems lacks standing to bring this suit because
Life Technologies is the exclusive licensee of the patents-in-suit, and Applied
Biosystems no rights to those patents. Again, because the court determined the
patents-in-suit are not “owned or licensed by Applera,” the covenant not to sue would
not prohibit Applied Biosystems from bringing this action. Additionally, the 2009 NELA
demonstrates Applied Biosystems does not lack standing.
The 2009 NELA recites:
If within ninety (90) days of the Effective Date LICENSEE and/or its
Affiliates has not granted a sublicense to Illumina Inc. and/or its Affiliates
pursuant to this Article 14, LICENSEE and/or its Affiliates shall promptly
initiate legal proceeding(s) against Illumina and/or its Affiliates in its sole
discretion. CRF will join as a party in such legal proceeding(s).261
Further:
LICENSEE and/or its Affiliates will (a) fully control the legal proceeding
described in this Article 14, and make all decisions related thereto,
260

D.I. 168 at 9 (“Cornell lacks standing to proceed in this case without [Life
Technologies].”).
261
D.I. 169, Ex. 2 at L0019062, ¶ 14.2.
52

including decisions related to filing, strategy and selection of counsel; and
(b) fully control and make all decisions related to whether to settle any
such legal proceeding. LICENSORS shall not contact or otherwise
correspond with Illumina Inc. and/or its Affiliates during any such legal
proceeding against them regarding the legal proceeding, or settlement
thereof, or regarding the Licensed Patents, the Licensed Applications, or
this Agreement. CRF shall be entitled to (a) a complete, unredacted,
executed copy of any sublicense agreement entered into as a result of the
legal proceeding, and (b) a complete, unredacted, executed copy of the
settlement papers entered into as a result of the legal proceeding.262
Additionally:
LICENSORS will (a) fully cooperate with LICENSEE and/or its Affiliates in
relation to any legal proceeding referenced in this Article 14 (including
without limitation joining as a party or parties to such legal proceeding if
they are an owner of a patent that is included in such legal proceeding,
making its employees available for discussion and depositions, providing
all requested discovery, and entering into a joint defense agreement or a
common interest agreement), (b) will fully cooperate with any decisions or
action taken or made by LICENSEE and/or its Affiliates related to such
legal proceeding, and (c) fully cooperate with LICENSEE and/or its
Affiliates in relation to any settlement and any decisions or action taken or
made by LICENSEE and/or its Affiliates related to such settlement.263
The 2009 NELA defines “Affiliate” as “any entity Controlling, Controlled by, or under
common Control with the referenced entity. An Affiliate of LICENSEE shall include, but
is not limited to, Applied Biosystems, LLC.”264 As stated in the 2009 NELA, Applied
Biosystems can also “initiate” a legal proceeding.
Consequently, defendant’s motion that Applied Biosystems lacks standing is
denied.
IV. ORDER AND RECOMMENDED DISPOSITION
For the reasons contained herein, this court recommends that:
262

Id. at ¶ 14.3.
Id. at ¶ 14.4.
264
D.I. 175 at B002 (2009 NELA) (emphasis added).
263

53

(1) Plaintiffs’ motion to strike, alleging defendant’s reply brief relies on
inadmissible evidence from an incomplete record on the parties’ settlement
negotiations, including the negotiation history, draft settlement agreements, and
correspondence (D.I. 184) is GRANTED.
(2) Plaintiffs’ motion to strike, alleging defendant’s reply brief contains arguments
and alleged facts that were not included in defendant’s opening brief (D.I. 184) is
GRANTED IN PART AND DENIED IN PART.
(3) Defendant’s motion for summary judgment, alleging Life Technologies and
Applied Biosystems are bound by the covenant not to sue entered into by Applera as
Applera’s “Affiliates,” affiliates,” or “Successors” (D.I. 167) is GRANTED.
(4) Defendant’s motion for summary judgment, alleging Cornell and Applied
Biosystems lack standing to sue defendant because Cornell contractually waived its
right to sue defendant for infringement, and Applied Biosystems has no ownership
interest in the patents at issue (D.I. 167), is DENIED.
(5) Defendant’s motion for summary judgment, alleging the covenant not to sue
bars plaintiffs’ infringement claims as it protects defendant from suits alleging
infringement of the “Blocking Patents” by “Defined Products” and “Modified Defined
Products,” because the accused products are Defined and Modified Defined Products,
the patents at issue are Blocking Patents, and the asserted patent claims are not the
“Excluded Patent Claims” exempted from the covenant not to sue (D.I. 167) is DENIED.
(6) Plaintiffs’ cross motion for summary judgment, alleging Life Technologies is
not bound by the covenant not to sue because Life Technologies is not Applera,
Applera’s “Affiliates,” “affiliates,” or “Successors” (D.I. 172) is DENIED.
54

(7) Plaintiffs’ cross motion for summary judgment, alleging Cornell is not bound
by the covenant not to sue because Cornell is not Applera, Applera’s “Affiliates,”
Applera’s “affiliates,” or Applera’s “Successors” (D.I. 172) is GRANTED.
(8) Plaintiffs’ cross motion for summary judgment, alleging the covenant not to
sue protects defendant from suits alleging infringement of the “Blocking Patents” that
are “owned or licensed by Applera,” and the patents in suit are not owned or licensed by
Applera (D.I. 172), is GRANTED.
(9) Plaintiffs’ cross motion for summary judgment, alleging the covenant not to
sue protects defendant from suits alleging infringement of the “Blocking Patents” that
“would necessarily be infringed” by the sale, manufacture, or use of the “Defined
Product,” and the patents in suit are not necessarily infringed because the Defined
Product can be used without infringing the patents (D.I. 172), is DENIED.
This Report and Recommendation is filed pursuant to 28 U.S.C. § 636(b)(1)(B),
FED. R. CIV. P. 72(b)(1), and D. Del. LR 72.1. The parties may serve and file specific
written objections within fourteen days after being served with a copy of this Report and
Recommendation.265 The objections and response to the objections are limited to ten
pages each.
The parties are directed to the Court’s standing Order in Non Pro Se matters for
Objections Filed under FED. R. CIV. P. 72, dated November 16, 2009, a copy of which is
available on the Court’s website, www.ded.uscourts.gov.

265

FED. R. CIV. P. 72(b)(2).
55

June 25, 2013

/s/ Mary Pat Thynge
UNITED STATES MAGISTRATE JUDGE

56