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Court Dockets
U.S. District Court
District of Delaware (Wilmington)
CIVIL DOCKET FOR CASE #: 1:19-cv-01642-JFB-CJB
District of Delaware (Wilmington)
CIVIL DOCKET FOR CASE #: 1:19-cv-01642-JFB-CJB
Sysmex Corporation et al v. Beckman Coulter, Inc.
DOCKET INFORMATION
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| Plaintiff |
Sysmex Corporation
Plaintiff
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| Representation | |||
| Kelly E. Farnan Richards, Layton & Finger, PA One Rodney Square Suite 600 920 N. King Street Wilmington, DE 19801 (302) 651-7705 farnan@rlf.com LEAD ATTORNEY ATTORNEY TO BE NOTICED | Alexis White awhite@crowell.com PRO HAC VICE ATTORNEY TO BE NOTICED | Andrea Shoffstall ashoffstall@brinksgilson.com TERMINATED: 12/03/2020 PRO HAC VICE ATTORNEY TO BE NOTICED | |
| Daniel A. Parrish dparrish@crowell.com TERMINATED: 01/19/2022 PRO HAC VICE ATTORNEY TO BE NOTICED | James R. Sobieraj jsobieraj@crowell.com PRO HAC VICE ATTORNEY TO BE NOTICED | Joshua James jjames@crowell.com PRO HAC VICE ATTORNEY TO BE NOTICED | |
| Mark H. Remus mremus@crowell.com PRO HAC VICE ATTORNEY TO BE NOTICED | Renee Mosley Delcollo Richards, Layton & Finger, PA One Rodney Square Suite 600 920 N. King Street Wilmington, DE 19801 (302) 651-7641 delcollo@rlf.com ATTORNEY TO BE NOTICED | Robert S. Mallin rmallin@crowell.com PRO HAC VICE ATTORNEY TO BE NOTICED | |
| Defendant |
Beckman Coulter, Inc.
Defendant
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| Representation | |||
| Steven W. Lee Young, Conaway, Stargatt & Taylor LLP 1000 North King Street Wilmington, DE 19801 Rodney Square TERMINATED: 01/20/2021 LEAD ATTORNEY ATTORNEY TO BE NOTICED | Aaron R. Feigelson afeigelson@leydig.com PRO HAC VICE ATTORNEY TO BE NOTICED | David M. Airan dairan@leydig.com PRO HAC VICE ATTORNEY TO BE NOTICED | |
| James L. Higgins Young, Conaway, Stargatt & Taylor LLP 1000 North King Street Wilmington, DE 19801 (302) 571-5034 jhiggins@ycst.com Rodney Square ATTORNEY TO BE NOTICED | Nicole E. Kopinski nkopinski@leydig.com PRO HAC VICE ATTORNEY TO BE NOTICED | Taylor E. Hallowell Young Conaway Stargatt & Taylor, LLP 1000 N. King Street Wilmington, DE 19801 (302) 576-3271 thallowell@ycst.com ATTORNEY TO BE NOTICED | |
| Wallace H. Feng wfeng@leydig.com PRO HAC VICE ATTORNEY TO BE NOTICED | Wesley O. Mueller wmueller@leydig.com PRO HAC VICE ATTORNEY TO BE NOTICED | Melanie K. Sharp Young, Conaway, Stargatt & Taylor LLP 1000 North King Street Wilmington, DE 19801 (302) 571-6681 Fax: (302) 571-1253 msharp@ycst.com Rodney Square ATTORNEY TO BE NOTICED | |
Numbers shown are court assigned numbers.
| Entry | Filed | Description | |
|---|---|---|---|
| 1 | Sep 3, 2019 | View | COMPLAINT for PATENT INFRINGEMENT filed with Jury Demand against Beckman Coulter, Inc. - Magistrate Consent Notice to Pltf. ( Filing fee $ 400, receipt number 0311-2721658.) - filed by Sysmex Corporation, Sysmex America, Inc. (Attachments: # 1 Exhibit A and B, # 2 Exhibit C, # 3 Exhibit D and E, # 4 Civil Cover Sheet)(nmg) (Entered: 09/04/2019) |
| 2 | Sep 3, 2019 | Request | Notice, Consent and Referral forms re: U.S. Magistrate Judge jurisdiction. (nmg) (Entered: 09/04/2019) |
| 3 | Sep 3, 2019 | Request | Report to the Commissioner of Patents and Trademarks for Patent/Trademark Number(s) 10,401,350 and 10,401,351. (nmg) (Entered: 09/04/2019) |
| 4 | Sep 3, 2019 | View | Disclosure Statement pursuant to Rule 7.1: identifying Corporate Parent Sysmex Corporation for Sysmex America, Inc. filed by Sysmex America, Inc. and Sysmex Corporation. (nmg) (Entered: 09/04/2019) |
| Sep 4, 2019 | Summons Issued with Magistrate Consent Notice attached as to Beckman Coulter, Inc. on 9/4/2019. Requesting party or attorney should pick up issued summons at the Help Desk, Room 4209, or call 302-573-6170 and ask the Clerk to mail the summons to them. (nmg) (Entered: 09/04/2019) | ||
| Sep 11, 2019 | Case Assigned to Judge Richard G. Andrews. Please include the initials of the Judge (RGA) after the case number on all documents filed. (rjb) (Entered: 09/11/2019) | ||
| 5 | Sep 13, 2019 | Request | Return of Service Executed by Sysmex Corporation, Sysmex America, Inc.. Beckman Coulter, Inc. served on 9/5/2019, answer due 9/26/2019. (Farnan, Kelly) (Entered: 09/13/2019) |
| 6 | Sep 23, 2019 | Request | STIPULATION TO EXTEND TIME to answer or otherwise respond to the Complaint to October 28, 2019 - filed by Beckman Coulter, Inc.. (Higgins, James) (Entered: 09/23/2019) |
| Sep 24, 2019 | SO ORDERED, re 6 STIPULATION TO EXTEND TIME to answer or otherwise respond to the Complaint to October 28, 2019 (*Reset Answer Deadlines: Beckman Coulter, Inc. answer due 10/28/2019). Signed by Judge Richard G. Andrews on 9/24/2019. (nms) (Entered: 09/24/2019) | ||
| 7 | Oct 28, 2019 | Request | ANSWER to 1 Complaint, with Jury Demand , COUNTERCLAIM against Sysmex America, Inc., Sysmex Corporation by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 10/28/2019) |
| 8 | Nov 1, 2019 | Request | MOTION for Pro Hac Vice Appearance of Attorney Nicole E. Kopinski - filed by Beckman Coulter, Inc.. (Attachments: # 1 Certification by Counsel)(Sharp, Melanie) (Entered: 11/01/2019) |
| Nov 4, 2019 | SO ORDERED, re 8 MOTION for Pro Hac Vice Appearance of Attorney Nicole E. Kopinski, filed by Beckman Coulter, Inc.. Signed by Judge Richard G. Andrews on 11/4/2019. (nms) (Entered: 11/04/2019) | ||
| Nov 4, 2019 | Pro Hac Vice Attorney Nicole E. Kopinski for Beckman Coulter, Inc. added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (mal) (Entered: 11/04/2019) | ||
| 9 | Nov 11, 2019 | Request | MOTION for Pro Hac Vice Appearance of Attorney James R. Sobieraj and Robert S. Mallin - filed by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) (Entered: 11/11/2019) |
| Nov 12, 2019 | SO ORDERED, re 9 MOTION for Pro Hac Vice Appearance of Attorney James R. Sobieraj and Robert S. Mallin, filed by Sysmex Corporation, Sysmex America, Inc.. Signed by Judge Richard G. Andrews on 11/12/2019. (nms) (Entered: 11/12/2019) | ||
| 10 | Nov 13, 2019 | Request | STIPULATION TO EXTEND TIME to answer Defendant's Counterclaims to November 26, 2019 - filed by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) (Entered: 11/13/2019) |
| Nov 14, 2019 | SO ORDERED, re 10 STIPULATION TO EXTEND TIME to answer Counterclaims to November 26, 2019 (*Reset Answer Deadlines: Sysmex America, Inc. answer due 11/26/2019; Sysmex Corporation answer due 11/26/2019). Signed by Judge Richard G. Andrews on 11/14/2019. (nms) (Entered: 11/14/2019) | ||
| Nov 14, 2019 | Pro Hac Vice Attorney Robert S. Mallin for Sysmex America, Inc., for Sysmex Corporation added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (myr) (Entered: 11/14/2019) | ||
| Nov 14, 2019 | Pro Hac Vice Attorney James R. Sobieraj for Sysmex America, Inc., for Sysmex Corporation added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (myr) (Entered: 11/14/2019) | ||
| 11 | Nov 14, 2019 | Request | ORAL ORDER: The case is now referred to Magistrate Judge Christopher J. Burke for all purposes through the case dispositive motion deadline. Ordered by Judge Richard G. Andrews on 11/14/2019. (nms) (Entered: 11/14/2019) |
| 12 | Nov 15, 2019 | Request | ORAL ORDER: IT IS HEREBY ORDERED that the parties shall meet and confer and discuss, in person and/or by telephone, each of the matters listed on Judge Burke's Case Management Checklist ("Checklist"). Within thirty (30) days from the date of this Order, the parties shall jointly file the following: (i) a copy of the Checklist, indicating the names of Lead Counsel and Delaware Counsel for each party; (ii) a proposed Scheduling Order, which is consistent with Judge Burke's "Rule 16 Scheduling Order - Patent" up through and including paragraph number 18 (i.e., regarding the portions of the case schedule leading up to but not including the pretrial conference stage of the case) and that is consistent with paragraphs 13-16 of Judge Andrews "Rule 16 Scheduling Order Patent (i.e., regarding the portions of the case schedule from the pretrial conference through trial); and (iii) a letter, not to exceed three pages, that contains the following: (a) a description of what this case is about; (b) the parties' positions regarding any disputes in the proposed Scheduling Order, and (c) a list of the three most significant topics (other than Scheduling Order disputes) discussed during the parties' review of the Checklist items, along with a brief description as to what was discussed as to those topics. Thereafter, the Court may schedule a Case Management Conference/Rule 16 Scheduling Conference to be held with Judge Burke. The Checklist and both Scheduling Orders can be found on Judge Burke's/Judge Andrews portions of the District Court's website. Ordered by Judge Christopher J. Burke on 11/15/2019. (dlb) (Entered: 11/15/2019) |
| Nov 15, 2019 | REMARK: The parties should be aware that the Court encourages the participation of newer attorneys in courtroom proceedings and at oral argument. Please see the Court's Standing Order Regarding Courtroom Opportunities for Newer Attorneys, a link to which is provided here for the parties' convenience:http://www.ded.uscourts.gov/sites/ded/files/forms/StandingOrder2017.pdf (dlb) Modified on 11/15/2019 (awk). (Entered: 11/15/2019) | ||
| 13 | Nov 18, 2019 | Request | MOTION for Pro Hac Vice Appearance of Attorney Joshua James and Andrea L. Shoffstall - filed by Sysmex America, Inc., Sysmex Corporation. Motions referred to Christopher J. Burke.(Farnan, Kelly) (Entered: 11/18/2019) |
| 14 | Nov 18, 2019 | Request | MOTION for Pro Hac Vice Appearance of Attorney Aaron R. Feigelson - filed by Beckman Coulter, Inc.. (Attachments: # 1 Certification by Counsel)Motions referred to Christopher J. Burke.(Higgins, James) (Entered: 11/18/2019) |
| Nov 21, 2019 | SO ORDERED D.I. 14 MOTION for Pro Hac Vice Appearance of Attorney Aaron R. Feigelson filed by Beckman Coulter, Inc., 13 MOTION for Pro Hac Vice Appearance of Attorney Joshua James and Andrea L. Shoffstall filed by Sysmex Corporation, Sysmex America, Inc. Ordered by Judge Christopher J. Burke on 11/21/2019. (dlb) (Entered: 11/21/2019) | ||
| Nov 22, 2019 | Pro Hac Vice Attorney Aaron R. Feigelson for Beckman Coulter, Inc. added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (lak) (Entered: 11/22/2019) | ||
| 15 | Nov 25, 2019 | Request | MOTION for Pro Hac Vice Appearance of Attorney David M. Airan - filed by Beckman Coulter, Inc.. Motions referred to Christopher J. Burke.(Higgins, James) (Entered: 11/25/2019) |
| Nov 26, 2019 | Pro Hac Vice Attorney Andrea Shoffstall, and Joshua James for Sysmex Corporation added for electronic noticing. Pursuant to Local Rule 83.5 (d), Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (sam) Modified on 11/27/2019 (sam). (Entered: 11/26/2019) | ||
| Nov 26, 2019 | SO ORDERED D.I. 15 MOTION for Pro Hac Vice Appearance of Attorney David M. Airan filed by Beckman Coulter, Inc. Ordered by Judge Christopher J. Burke on 11/25/2019. (dlb) (Entered: 11/26/2019) | ||
| 16 | Nov 26, 2019 | Request | ANSWER to 7 Answer to Complaint, Counterclaim by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 11/26/2019) |
| 17 | Dec 16, 2019 | Request | STIPULATION TO EXTEND TIME to Jointly Submit Case Management/Scheduling Submissions to December 20, 2019 - filed by Beckman Coulter, Inc.. (Sharp, Melanie) (Entered: 12/16/2019) |
| Dec 17, 2019 | SO ORDERED D.I. 17 STIPULATION TO EXTEND TIME to Jointly Submit Case Management/Scheduling Submissions to December 20, 2019 filed by Beckman Coulter, Inc. Ordered by Judge Christopher J. Burke on 12/17/2019. (dlb) (Entered: 12/17/2019) | ||
| 18 | Dec 19, 2019 | Request | MOTION for Pro Hac Vice Appearance of Attorney Wesley O. Mueller - filed by Beckman Coulter, Inc.. Motions referred to Christopher J. Burke.(Higgins, James) (Entered: 12/19/2019) |
| Dec 19, 2019 | SO ORDERED D.I. 18 MOTION for Pro Hac Vice Appearance of Attorney Wesley O. Mueller filed by Beckman Coulter, Inc. Ordered Judge Christopher J. Burke on 12/19/2019. (dlb) (Entered: 12/19/2019) | ||
| Dec 20, 2019 | Pro Hac Vice Attorney Wesley O. Mueller for Beckman Coulter, Inc. added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (kmd) (Entered: 12/20/2019) | ||
| 19 | Dec 20, 2019 | Request | STIPULATION TO EXTEND TIME to Jointly Submit Case Management/Scheduling Submissions to December 23, 2019 - filed by Beckman Coulter, Inc.. (Sharp, Melanie) (Entered: 12/20/2019) |
| Dec 23, 2019 | SO ORDERED D.I. 19 STIPULATION TO EXTEND TIME to Jointly Submit Case Management/Scheduling Submissions to December 23, 2019 filed by Beckman Coulter, Inc. Ordered by Judge Christopher J. Burke on 12/23/2019. (dlb) (Entered: 12/23/2019) | ||
| 20 | Dec 23, 2019 | View | Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding joint proposed scheduling order and Case Management Checklist. (Attachments: # 1 Exhibit A, # 2 Proposed Scheduling Order, # 3 Case Management Checklist)(Farnan, Kelly) (Entered: 12/23/2019) |
| 21 | Dec 27, 2019 | Request | Order Setting Telephonic Case Management/Scheduling Conference: A Case Management/Scheduling Conference is set for 1/7/2020 at 11:00 AM before Judge Christopher J. Burke. Counsel for Plaintiff shall initiate the call. Ordered by Judge Christopher J. Burke on 12/27/2019. (dlb) (Entered: 12/27/2019) |
| 22 | Dec 30, 2019 | Request | NOTICE OF SERVICE of Disclosure of Asserted Patents, Accused Products and Damages Model filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 12/30/2019) |
| 23 | Dec 31, 2019 | Request | NOTICE OF SERVICE of 1) First Set of Interrogatories and 2) First Set of Request for Production of Documents and Things filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 12/31/2019) |
| 24 | Jan 3, 2020 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s First Set of Interrogatories to Sysmex Corporation (Nos. 1-8) filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 01/03/2020) |
| Jan 7, 2020 | Minute Entry for proceedings held before Judge Christopher J. Burke - Case Management/Scheduling Conference held on 1/7/2020. The Court heard the parties regarding their scheduling order disputes. Rulings on the disputes and key dates were provided to counsel. Counsel for Plaintiffs shall submit a revised proposed schedule by close of business on January 14, 2020. The Court will address the issue of case narrowing by separate order. (Clerk, D. Benyo) APPEARANCES: K. Farnan, J. Sobieraj for Plaintiffs; M. Sharp, S. Lee, A. Feigelson, W. Mueller for Defendant. (Court Reporter Dale Hawkins) (dlb) (Entered: 01/07/2020) | ||
| 25 | Jan 8, 2020 | Request | ORAL ORDER: The Court HEREBY ORDERS that by no later than January 22, 2020, the parties shall further meet and confer regarding the issue of case narrowing, and shall submit a joint letter of no more than 4 single-spaced pages that indicates whether the parties have reached agreement on the issue, and if not, that sets out their competing views as to how and when Plaintiffs' asserted claims and Defendant's invalidity case should be narrowed. The letter should include the parties' views on: (1) whether such narrowing should occur at all; (2) if it should, whether it should happen at one stage or two stages in the case; (3) when that stage/those stages should occur in the case schedule; and (4) how many claims and references/combinations/invalidity arguments each side should be limited to per stage, and why. The parties may also benefit by consulting the Court's decisions on case narrowing in other patent matters, including Civil Action Nos. 19-145, 18-300, 17-1390, 17-871, 17-600, 16-380, 15-980, 15-819, and 14-721. After receiving the letter, the Court will determine whether a further status teleconference with the parties is necessary. Ordered by Judge Christopher J. Burke on 1/8/2020. (mlc) (Entered: 01/08/2020) |
| 26 | Jan 9, 2020 | View | Official Transcript of Teleconference held on 01/07/2020 before Judge Christopher J. Burke. Court Reporter/Transcriber Dale C. Hawkins,Email: Dale_Hawkins@ded.uscourts.gov. Transcript may be viewed at the court public terminal or order/purchased through the Court Reporter/Transcriber before the deadline for Release of Transcript Restriction. After that date, it may be obtained through PACER. Redaction Request due 1/30/2020. Redacted Transcript Deadline set for 2/10/2020. Release of Transcript Restriction set for 4/8/2020. (dh) (Entered: 01/09/2020) |
| 27 | Jan 13, 2020 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s First Set of Document Requests to Sysmex Corporation (Nos. 173) filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 01/13/2020) |
| 28 | Jan 14, 2020 | Request | PROPOSED Scheduling Order, by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) Modified on 1/15/2020 (nms). (Entered: 01/14/2020) |
| 29 | Jan 16, 2020 | View | SCHEDULING ORDER: Case referred to the Magistrate Judge for the purpose of exploring ADR. Joinder of Parties due by 8/31/2020. Amended Pleadings due by 8/31/2020. Discovery due by 2/5/2021. Status Report due by 7/29/2020. Dispositive Motions due by 6/25/2021. A Motion Hearing is set for 8/13/2021 at 01:00 PM in Courtroom 2A before Judge Christopher J. Burke A Markman Hearing is set for 10/28/2020 at 01:00 PM in Courtroom 2A before Judge Christopher J. Burke. A Pretrial Conference is set for 11/19/2021 at 09:00 AM in Courtroom 6A before Judge Richard G. Andrews. A Jury Trial is set for 12/6/2021 at 09:30 AM in Courtroom 6A before Judge Richard G. Andrews. See Order for further details and deadlines. Signed by Judge Christopher J. Burke on 1/15/2020. (dlb) (Entered: 01/16/2020) |
| Jan 16, 2020 | CASE REFERRED to Chief Magistrate Judge Mary Pat Thynge for Mediation. Please see Standing Order dated January 20, 2016, regarding disclosure of confidential ADR communications. A link to the standing order is provided here for your convenience at https://www.ded.uscourts.gov/sites/ded/files/forms/StandingOrderforADR-Mediation.pdf (cak) (Entered: 01/16/2020) | ||
| 30 | Jan 17, 2020 | Request | NOTICE of Appearance by Steven W. Lee on behalf of Beckman Coulter, Inc. (Lee, Steven) (Entered: 01/17/2020) |
| 31 | Jan 22, 2020 | View | Letter to The Honorable Christoper J. Burke, from Kelly E. Farnan, regarding the parties respective proposals regarding narrowing. (Farnan, Kelly) Modified on 1/23/2020 (nms). (Entered: 01/22/2020) |
| 32 | Jan 23, 2020 | Request | NOTICE OF SERVICE of Plaintiffs Sysmex Corporation and Sysmex America, Inc.s Second Set of Requests for Production for Documents and Things (Nos. 53-68) filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 01/23/2020) |
| 33 | Jan 27, 2020 | Request | PROPOSED Protective Order, by Sysmex America, Inc., Sysmex Corporation. (Mosley, Renee) Modified on 1/28/2020 (nms). (Entered: 01/27/2020) |
| 34 | Jan 28, 2020 | Request | PROTECTIVE ORDER. Signed by Judge Christopher J. Burke on 1/28/2020. (dlb) (Entered: 01/28/2020) |
| 35 | Jan 29, 2020 | Request | Disclosure Statement pursuant to Rule 7.1: identifying Corporate Parent Danaher Corporation for Beckman Coulter, Inc., Beckman Coulter, Inc. filed by Beckman Coulter, Inc.. (Lee, Steven) (Entered: 01/29/2020) |
| 36 | Jan 30, 2020 | Request | NOTICE OF SERVICE of (1) Defendant Beckman Coulter, Inc.'s Objections and Responses to Plaintiffs Sysmex Corporation and Sysmex America, Inc.'s First Set of Interrogatories (Nos. 1-6) and (2) Defendant Beckman Coulter, Inc.'s Objections and Responses to Plaintiffs Sysmex Corporation and Sysmex America, Inc.'s First Set of Requests for Production of Documents and Things (Nos. 1-52) filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 01/30/2020) |
| 37 | Feb 3, 2020 | Request | NOTICE OF SERVICE of Responses to First Set of Interrogatories (Nos. 1-8) filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 02/03/2020) |
| 38 | Feb 5, 2020 | Request | STIPULATION TO EXTEND TIME - Deadline to submit Proposed Modified ESI Standard Agreement and Rule 26(a)(1) and Paragraph 3 Initial Disclosures to February 13, 2020 - filed by Beckman Coulter, Inc.. (Lee, Steven) (Entered: 02/05/2020) |
| Feb 6, 2020 | SO ORDERED D.I. 38 STIPULATION TO EXTEND TIME - Deadline to submit Proposed Modified ESI Standard Agreement and Rule 26(a)(1) and Paragraph 3 Initial Disclosures to February 13, 2020 filed by Beckman Coulter, Inc. Ordered by Judge Christopher J. Burke on 2/6/2020. (dlb) (Entered: 02/06/2020) | ||
| 39 | Feb 10, 2020 | Request | NOTICE OF SERVICE of Defendant's Core Technical Documents filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 02/10/2020) |
| 40 | Feb 11, 2020 | Request | ORAL ORDER: The Court, having reviewed the parties' January 22, 2020 joint letter regarding case narrowing, (D.I. 31 ), hereby ORDERS as follows: (1) By no later than 21 days following entry of the Court's claim construction order, Plaintiffs shall narrow the number of asserted claims to no more than 10 claims per asserted patent, and by no later than 35 days following entry of the Court's claim construction order, Defendant shall narrow its prior art invalidity positions to no more than 20 total prior art references and no more than 70 prior art invalidity grounds.; (2) The definition of "prior art ground" set out in footnote 1 of the parties' letter, (id. at 1 n.1), shall apply. To the extent there are issues relating to how a machine and its various operating manuals should be counted under this definition, (id. at 2), the parties shall meet and confer and attempt to resolve the issue. To the extent the parties cannot reach resolution, they may seek the Court's guidance pursuant to the discovery dispute procedures set out in the Scheduling Order.; and (3) The Court concludes a one-stage cutdown occurring after claim construction is appropriate here. In part that is because the case involves only two asserted patents containing at total of only 57 claims. And in part that is because the Court expects that, even without a required pre-initial-disclosures or pre-Markman cut-down, Plaintiffs will assert a reasonable number of claims at the initial infringement contention stage and, in turn, Defendant will choose to include a reasonable and proportionate number of references/prior art grounds in its initial invalidity contentions. Having the one cutdown occur after claim construction will also allow both parties the ability to learn more about the other side's infringement/invalidity case before having to reduce the number of asserted claims/total references/prior art grounds at issue. Ordered by Judge Christopher J. Burke on 2/11/2020. (mlc) (Entered: 02/11/2020) |
| 41 | Feb 12, 2020 | Request | NOTICE OF SERVICE of Responses and Objections of Plaintiffs Sysmex Corporation and Sysmex America, Inc. to Defendant's First Set of Document Requests (Nos. 1-73) filed by Sysmex America, Inc., Sysmex Corporation.(Delcollo, Renee) (Entered: 02/12/2020) |
| 42 | Feb 13, 2020 | Request | Proposed Modifications to the Court's ESI Default Standard, by Sysmex America, Inc., Sysmex Corporation. (Delcollo, Renee) Modified on 2/13/2020 (nms). (Entered: 02/13/2020) |
| 43 | Feb 13, 2020 | Request | NOTICE OF SERVICE of (1) Sysmex Corporation's Initial Disclosures Pursuant to Fed. R. Civ. P. 26(a)(1) and Paragraph 3 of the Default Standard and (2) Sysmex America, Inc.'s Initial Disclosures Pursuant to Fed. R. Civ. P. 26(a)(1) and Paragraph 3 of the Default Standard filed by Sysmex America, Inc., Sysmex Corporation.(Delcollo, Renee) (Entered: 02/13/2020) |
| 44 | Feb 13, 2020 | Request | NOTICE OF SERVICE of (1) Defendant Beckman Coulter, Inc.'s Initial Disclosures Pursuant to Federal Rule of Civil Procedure 26(a)(1) and (2) Defendant Beckman Coulter, Inc.'s Disclosures Pursuant to Paragraph 3 of the Default Standard for Discovery, Including Discovery of Electronically Stored Information filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 02/13/2020) |
| Feb 14, 2020 | SO ORDERED D.I. 42 parties Joint Proposed Modifications To The Court's ESI Default Standard filed by Sysmex Corporation, Sysmex America, Inc. Ordered by Judge Christopher J. Burke on 2/14/2020. (dlb) (Entered: 02/14/2020) | ||
| 45 | Feb 24, 2020 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s Objections and Responses to Plaintiff Sysmex America, Inc.'s Second Set of Requests for Production of Documents and Things (Nos. 53-68) filed by Beckman Coulter, Inc..(Higgins, James) (Entered: 02/24/2020) |
| 46 | Mar 6, 2020 | View | Joint Letter to The Honorable Christopher J. Burke from Melanie K. Sharp regarding Request for Scheduling of a Teleconference to Resolve Discovery Disputes. (Sharp, Melanie) (Entered: 03/06/2020) |
| 47 | Mar 8, 2020 | View | Letter Letter to The Honorable Christopher J. Burke from Melanie K. Sharp regarding Request for Teleconference to Resolve Discovery Disputes - re 46 Letter. (Lee, Steven) (Entered: 03/08/2020) |
| Mar 10, 2020 | ORAL ORDER Setting Teleconference: The Court has reviewed the parties' March 8, 2020 letter requesting a discovery dispute teleconference regarding 2 discovery disputes. (D.I. 47) It hereby ORDERS that the procedures for resolving a discovery dispute set out in the Scheduling Order, (D.I. 29), will be modified as follows with regard to this dispute: (1) The parties shall file a joint "Motion for Teleconference to Resolve Discovery Dispute," the text of which can be found in the "Forms" tab of Judge Burke's page on the District Court's website.; (2) A discovery dispute teleconference is set for March 23, 2020 at 1:00 PM before Judge Christopher J. Burke. (3) On March 13, 2020, any party seeking relief shall file with the Court a letter, not to exceed three (3) pages, in no less than 12-point font, outlining the issues in dispute and its position on those issues. On March 18, 2020, any party opposing the application for relief may file a letter, not to exceed three (3) pages, in no less than 12-point font, outlining that party(s) reasons for its opposition.; (4) Two courtesy copies of the letters are to be hand-delivered to the Clerk's Office within one hour of e-filing.; (5) The Court may choose to resolve the dispute prior to the telephone conference and will, in that event, cancel the conference. Ordered by Judge Christopher J. Burke on 3/10/2020. (dlb) (Entered: 03/10/2020) | ||
| 48 | Mar 13, 2020 | View | Letter to The Honorable Christopher J. Burke from Melanie K. Sharp, Esq. regarding Discovery Disputes - re Order Setting Teleconference,,,,,. (Attachments: # 1 Exhibit A - J)(Sharp, Melanie) (Entered: 03/13/2020) |
| 49 | Mar 17, 2020 | Request | Joint MOTION for Discovery Teleconference to Resolve Discovery Disputes - filed by Beckman Coulter, Inc.. Motions referred to Christopher J. Burke.(Sharp, Melanie) Modified on 3/17/2020 (nms). (Entered: 03/17/2020) |
| 50 | Mar 18, 2020 | View | Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding Discovery Dispute. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11)(Farnan, Kelly) (Entered: 03/18/2020) |
| Mar 23, 2020 | Minute Entry for proceedings held before Judge Christopher J. Burke - Discovery Conference held on 3/23/2020. The Court heard arguments from the parties regarding Defendant's discovery dispute motion, (D.I. 49). The Court took the motion under advisement and will issue an order.(Court reporter Jennifer Guy (Wilcox & Fetzer); Clerk: M. Crawford) Appearances: K. Farnan, R. Mallin, J. Sobieraj, A. Shoffstall for Plaintiffs; M. Sharp, A. Feigelson, N. Kopinski for Defendant. (dlb) (Entered: 03/23/2020) | ||
| 51 | Mar 23, 2020 | Request | ORAL ORDER: The Court, having reviewed the parties' discovery dispute motion relating to Defendant Beckman Coulter, Inc.'s ("BCI") discovery dispute motion, (D.I. 49), and the parties' letter briefs relating thereto, (D.I. 48; D.I. 50), and having heard argument on March 23, 2020, HEREBY GRANTS-IN-PART BCI's Motion as follows: (1) With respect to BCI's request that Plaintiffs Sysmex Corporation and Sysmex America, Inc. ("Sysmex") be compelled to produce documents relating to conception, reduction to practice and prior art, (D.I. 48 at 2-3), the request is DENIED. Sysmex represents that it has produced over 12,650 pages of responsive documents, and that it has searched for, but has been unable to locate, additional responsive non-ESI documents. (D.I. 50 at 1) Sysmex expects that it will produce additional responsive documents through the ESI search process, and has begun that process by proposing search terms. (Id. at 2); (2) With respect to BCI's request that Sysmex be compelled to supplement its response to Interrogatory No. 1, (D.I. 48 at 3), the request is GRANTED. By no later than April 6, 2020, absent further order of the Court, Sysmex shall provide a supplemental response that fully responds to the Interrogatory, including by identifying the date(s) of conception for each claim of the asserted patents (something Sysmex did not clearly do in its prior response).; (3) With respect to BCI's request that Sysmex be compelled to supplement its responses to Interrogatory Nos. 2-3, (D.I. 48 at 3), the request is DENIED AS MOOT. Sysmex has agreed to provide supplemental responses by March 27, 2020. (Id. at 3 n.2; D.I. 50 at 3) To the extent that BCI believes such responses are insufficient, it may follow the Court's discovery dispute procedures. Ordered by Judge Christopher J. Burke on 3/23/2020. (dlb) (Entered: 03/23/2020) |
| 52 | Mar 24, 2020 | Request | NOTICE OF SERVICE of Plaintiffs Sysmex Corporation and Sysmex America, Inc.s Initial Infringement Contentions Against Beckman Coulter, Inc. filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 03/24/2020) |
| 53 | Mar 24, 2020 | Request | NOTICE OF SERVICE of Plaintiffs Sysmex Corporation and Sysmex America, Inc.s Second Set of Interrogatories for Beckman Coulter, Inc. (Nos. 7-9) filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 03/24/2020) |
| 54 | Mar 25, 2020 | View | Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding discovery teleconference. (Farnan, Kelly) (Entered: 03/25/2020) |
| 55 | Mar 26, 2020 | Request | ORAL ORDER: The Court, having reviewed the parties March 25, 2020 letter, (D.I. 54), in which both sides indicate that an additional meet and confer should occur, hereby ORDERS that by no later than March 31, 2020, the parties shall further meet and confer on all disputed issues and submit a status report of no more than 1 single-spaced page that indicates whether the issues have been resolved. Ordered by Judge Christopher J. Burke on 3/26/2020. (dlb) (Entered: 03/26/2020) |
| 56 | Mar 30, 2020 | Request | NOTICE OF SERVICE of Plaintiff Sysmex Corporations Supplemental Responses to Beckman Coulter. Inc.s First Set of Interrogatories (Nos. 2-3) filed by Sysmex America, Inc., Sysmex Corporation.(Delcollo, Renee) (Entered: 03/30/2020) |
| 57 | Mar 31, 2020 | Request | Joint Status Report Pursuant to the Court's March 26, 2020 Oral Order (D.I. 55), by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) Modified on 3/31/2020 (nms). (Entered: 03/31/2020) |
| 58 | Apr 1, 2020 | Request | ORAL ORDER Setting Teleconference: The Court has reviewed the parties' March 25, 2020 letter requesting a discovery dispute teleconference regarding each side's document searching procedures, (D.I. 54), and the parties' March 31, 2020 joint status report indicating that ripe disputes remain, (D.I. 57). It hereby ORDERS that the procedures for resolving a discovery dispute set out in the Scheduling Order, (D.I. 29), will be modified as follows with regard to this dispute: (1) The parties shall file a joint "Motion for Teleconference to Resolve Discovery Dispute," the text of which can be found in the "Forms" tab of Judge Burke's page on the District Court's website.; (2) A discovery dispute teleconference is set for April 20, 2020 at 3:00 PM before Judge Christopher J. Burke. (3) On April 8, 2020, any party seeking relief shall file with the Court a letter, not to exceed three (3) pages, in no less than 12-point font, outlining the issues in dispute and its position on those issues. On April 15, 2020, any party opposing the application for relief may file a letter, not to exceed three (3) pages, in no less than 12-point font, outlining that party(s) reasons for its opposition.; (4) The Court may choose to resolve the dispute prior to the telephone conference and will, in that event, cancel the conference. Ordered by Judge Christopher J. Burke on 4/1/2020. (dlb) (Entered: 04/01/2020) |
| 59 | Apr 3, 2020 | Request | Joint MOTION for Teleconference to Resolve Discovery Dispute - filed by Sysmex America, Inc., Sysmex Corporation. Motions referred to Christopher J. Burke.(Farnan, Kelly) Modified on 4/6/2020 (nms). (Entered: 04/03/2020) |
| 60 | Apr 6, 2020 | Request | NOTICE OF SERVICE of Plaintiff Sysmex Corporation's Supplemental Responses to Beckman Coulter, Inc.'s First Set of Interrogatories (No. 1) filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 04/06/2020) |
| 61 | Apr 8, 2020 | View | Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding discovery dispute. (Attachments: # 1 Text of Proposed Order)(Farnan, Kelly) (Entered: 04/08/2020) |
| 62 | Apr 8, 2020 | Request | [SEALED] EXHIBITS re 61 Letter, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibits 1-2, # 2 Exhibits 3-8)(Farnan, Kelly) Modified on 4/9/2020 (nms). (Entered: 04/08/2020) |
| 63 | Apr 8, 2020 | View | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, Esq., regarding discovery disputes. (Attachments: # 1 Proposed Order, # 2 Exhibits A-F)(Sharp, Melanie) Modified on 4/9/2020 (nms). (Entered: 04/08/2020) |
| 64 | Apr 13, 2020 | Request | NOTICE OF SERVICE of Sysmex Corporations Supplemental Initial Disclosures Pursuant to Fed. R. Civ. P. 26(a)(1) and Paragraph 3 of the Default Standard filed by Sysmex America, Inc., Sysmex Corporation.(Delcollo, Renee) (Entered: 04/13/2020) |
| 65 | Apr 15, 2020 | View | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding Plaintiffs' April 8, 2020 Letter Brief with respect to Plaintiffs' Motion to Compel (D.I. 61 ). (Attachments: # 1 Exhibits A-D)(Sharp, Melanie) Modified on 4/16/2020 (nms). (Entered: 04/15/2020) |
| 66 | Apr 15, 2020 | View | Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding discovery dispute letter response (D.I. 63 ). (Attachments: # 1 Text of Proposed Order, # 2 Exhibits 1-11)(Farnan, Kelly) Modified on 4/16/2020 (nms). (Entered: 04/15/2020) |
| 67 | Apr 17, 2020 | Request | REDACTED VERSION of 62 Exhibit to a Document by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit 1-2, # 2 Exhibit 3-8)(Farnan, Kelly) (Entered: 04/17/2020) |
| Apr 20, 2020 | Minute Entry for proceedings held before Judge Christopher J. Burke - Discovery Conference held on 4/20/2020. The Court heard argument regarding the parties' discovery disputes, (D.I. 59). The Court will issue orders resolving the disputes. (Court Reporter Stacy Vickers (Hawkins). Clerk: M. Crawford) Appearances: K. Farnan, R. Delcollo, R. Mallin, J. Sobieraj and A. Shoffstall for Plaintiffs; M. Sharp, S. Lee, A. Feigelson and N. Kopinski for Defendant. (mlc) (Entered: 04/20/2020) | ||
| 68 | Apr 20, 2020 | Request | ORAL ORDER: The Court, having considered Plaintiffs' discovery dispute motion ("Motion"), (D.I. 59 ), in which they ask the Court to Order Defendant to provide additional information about how it will search its ESI files regarding its discovery obligations in this case (and how it searched ESI files in the related Illinois litigation), the parties' letter briefs relating thereto, (D.I. 61; D.I. 65), and having heard argument on April 20, 2020, hereby ORDERS as follows: (1) With regard to e-mail ESI, Defendant has confirmed that it will use keyword searching regarding that ESI, (D.I. 65 at 1 n.2), and so the Motion is DENIED as MOOT with regard to that form of ESI. However, the Court ORDERS that Defendant must provide Plaintiffs with a list of its proposed email ESI keywords by no later than April 27, 2020.; (2) With regard to non-email ESI, Defendant reports that it will conduct a manual search for this material. (Id. at 1) The Court agrees that, absent a deficiency demonstrated in its search, Defendant need not in the first instance "identify every document it has reviewed for responsiveness [pursuant to this manual search]" or anything like that. (Id. (emphasis omitted)); (3) That said, this Court's Default Standard for Discovery ("Default Standard") does require Defendant to meaningfully discuss and identify "[t]he likely sources of potentially relevant information... including... custodians and other data sources (e.g. paper files, email, databases, servers, etc.)" and disclose a "list of the non-custodial data sources that are most likely to contain non-duplicative discoverable information... from the most likely to the least likely." Default Standard, paras. 2(b) & 3(b). Yet here, Defendant has shared only very minimal information with Plaintiffs in this regard, listing just one corporate network drive and two databases as such non-custodial sources, and providing only vague descriptions of what those repositories are. (D.I. 61, ex. 2 at 6) And it is clear to the Court that in this case, Defendant does not intend to search certain sub-sections of these repositories that might otherwise be likely to contain discoverable information, because it has already manually searched these areas in the Illinois litigation (and produced documents to Plaintiffs relating thereto).; (4) Therefore, as to non-email ESI, Plaintiffs' Motion is GRANTED-IN-PART, in that by no later than April 27, 2020, Defendant shall further supplement its Paragraph 3(b) disclosures, and in doing so, shall indicate (a) what portions of the network drive and two databases at issue it intends to search manually for responsive documents; and (b) the portions of the drive/databases that likely contain discoverable information, but that Defendant does not intend to search, because these portions have already been reviewed as part of the Illinois litigation.; (5) To the extent that the Motion asks that Defendant "produce the agreed metadata [as set out in D.I. 42]" for documents produced in the Illinois litigation, (D.I. 61 at 3), the Court DENIES the Motion, in that it appears to the Court that the parties had previously agreed that such metadata need not be produced as to such documents, (D.I. 42 at 1). Ordered by Judge Christopher J. Burke on 4/20/2020. (mlc) (Entered: 04/20/2020) |
| 69 | Apr 20, 2020 | Request | ORAL ORDER: The Court, having considered Defendant's discovery dispute motion ("Motion"), (D.I. 59 ), in which it asks the Court to order Plaintiffs to "search for and produce its documents, and particularly its Japanese documents, through conventional searching, without exclusive reliance on keyword search terms[,]" (D.I. 63 at 3), the parties' letter briefs relating thereto, (D.I. 63; D.I. 66), and having heard argument on April 20, 2020, hereby ORDERS that the Motion is DENIED. Plaintiffs have chosen to use keyword searching as the means by which they search relevant ESI. The Court's Default Standard for Discovery ("Default Standard") permits them that choice. Default Standard, para. 5(b). If, after Plaintiffs have produced ESI discovery using this method, Defendant has a basis to believe that the search was deficient, it may address those issues with Plaintiffs and (if necessary) with the Court. The Court also expects that (as Plaintiffs assure it), (D.I. 66 at 2), if Plaintiffs otherwise learn of files that indisputably contain relevant, non-privileged, requested information, they will likely provide that information to Defendant in the first instance, regardless of whether keyword searching returns a "hit" as to such documents. As for Plaintiffs' ESI that is in Japanese, Plaintiffs produced a declaration from their eDiscovery vendor that indicates that Plaintiffs' proposed Japanese search terms will address the problems suggested by Defendant, and the Court has no indication that Plaintiffs are incorrect. (Id. at 3 & ex. 1) Ordered by Judge Christopher J. Burke on 4/20/2020. (mlc) (Entered: 04/20/2020) |
| 70 | Apr 23, 2020 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s Objections and Responses to Plaintiffs Sysmex Corporation and Sysmex America, Inc.'s Second Set of Interrogatories (Nos. 7-9) filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 04/23/2020) |
| 71 | Apr 24, 2020 | View | Letter to The Honorable Christopher J. Burke from Melanie K. Sharp, Esq. regarding Request for Scheduling of a Discovery Teleconference. (Sharp, Melanie) (Entered: 04/24/2020) |
| 72 | Apr 27, 2020 | Request | ORAL ORDER Setting Teleconference: The Court has reviewed the parties' April 24, 2020 letter requesting a discovery dispute teleconference regarding 1 dispute. (D.I. 71) It hereby ORDERS that the procedures for resolving a discovery dispute set out in the Scheduling Order, (D.I. 29), will be modified as follows with regard to this dispute: (1) The parties shall file a joint "Motion for Teleconference to Resolve Discovery Dispute," the text of which can be found in the "Forms" tab of Judge Burke's page on the District Court's website.; (2) A discovery dispute teleconference is set for May 11, 2020 at 3:00 PM before Judge Christopher J. Burke. (3) On April 30, 2020, any party seeking relief shall file with the Court a letter, not to exceed three (3) pages, in no less than 12-point font, outlining the issues in dispute and its position on those issues. On May 6, 2020, any party opposing the application for relief may file a letter, not to exceed three (3) pages, in no less than 12-point font, outlining that party(s) reasons for its opposition.; (4) The Court may choose to resolve the dispute prior to the telephone conference and will, in that event, cancel the conference. Ordered by Judge Christopher J. Burke on 4/27/2020. (dlb) (Entered: 04/27/2020) |
| 73 | Apr 27, 2020 | Request | NOTICE OF SERVICE of (1) Defendant Beckman Coulter, Inc.'s Supplemental Disclosures Pursuant To Paragraph 3 of the Default Standard for Discovery, Including Discovery of Electronically Stored Information, and (2) List of Defendant Beckman Coulter, Inc.'s Proposed Email ESI Keywords filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 04/27/2020) |
| 74 | Apr 28, 2020 | Request | Joint MOTION for Teleconference to Resolve Discovery Dispute - filed by Beckman Coulter, Inc.. Motions referred to Christopher J. Burke.(Sharp, Melanie) Modified on 4/29/2020 (nms). (Entered: 04/28/2020) |
| 75 | Apr 30, 2020 | View | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding discovery dispute with respect to Sysmexs Supplemental Response to Interrogatory No. 1. (Attachments: # 1 Exhibits A-E)(Sharp, Melanie) Modified on 5/1/2020 (nms). (Entered: 04/30/2020) |
| 76 | May 4, 2020 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s Initial Invalidity Contentions filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 05/04/2020) |
| 77 | May 6, 2020 | View | Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding response to discovery dispute letter (D.I. 75 ). (Attachments: # 1 Exhibits 1-6)(Farnan, Kelly) Modified on 5/7/2020 (nms). (Entered: 05/06/2020) |
| May 11, 2020 | Minute Entry for proceedings held before Judge Christopher J. Burke - Discovery dispute teleconference held on 5/11/2020. The Court heard argument regarding Defendant's discovery dispute, (D.I. 74). The Court will issue an order resolving the dispute. (Court Reporter Jennifer Guy (Wilcox & Fetzer). Clerk: M. Crawford) Appearances: K. Farnan, R. Delcollo and R. Mallin for Plaintiffs; M. Sharp, S. Lee, A. Feigelson and N. Kopinski for Defendant. (mlc) (Entered: 05/11/2020) | ||
| 78 | May 12, 2020 | View | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, Esq., regarding Motion to Enforce the Court's Discovery Order (D.I. 71 ). (Sharp, Melanie) Modified on 5/12/2020 (nms). (Entered: 05/12/2020) |
| 79 | May 12, 2020 | View | Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding Pending Discovery Motion - re 78 Letter. (Farnan, Kelly) (Entered: 05/12/2020) |
| 80 | May 13, 2020 | Request | ORAL ORDER: The Court, having considered Defendant's discovery dispute motion ("Motion"), (D.I. 74), in which it asks the Court to order Plaintiffs to supplement their response to Interrogatory No. 1, (D.I. 75 at 1), the parties' letter briefs relating thereto, (D.I. 75; D.I. 77), and having heard argument on May 11, 2020, hereby ORDERS that the Motion is GRANTED-IN-PART as follows: (1) The Court previously ordered Plaintiffs to "provide a supplemental response that fully responds to" Defendant's Interrogatory No. 1, (D.I. 51), and Plaintiffs served their supplemental response on April 6, 2020, (D.I. 75, ex. B). The Court understands Defendants objections to Plaintiffs' supplemental response to be two-fold, and will address each in turn.; (2) First, Defendant asserts that the supplemental response "still does not provide a date of conception." (D.I. 75 at 1) However, Plaintiffs' supplemental response "identifies February 1, 2007 as the date of" conception. (Id., ex. B at 3) And Plaintiffs' counsel has represented that at this stage, regardless of the content of Defendant's invalidity contentions, Plaintiffs are not aware of an earlier date of conception. (D.I. 77 at 1) For that reason, this portion of the Motion is DENIED as MOOT. The Court also notes that on May 4, 2020, Defendant served its invalidity contentions. (Id., ex. 5) And based on the seven prior art invalidity grounds asserted therein, the Court does not understand how a conception date earlier than February 1, 2007 would be relevant to the actual invalidity contentions that have now been put forward in the case. (Id. at 2) (3) Second, Defendant argues that the supplemental response fails "to provide any details surrounding the facts and circumstances of its alleged conception." (D.I. 75 at 2) Defendant's Interrogatory No. 1 asks for, inter alia, an identification of the "role or contribution, if any, in alleged conception and/or reduction to practice" of each individual who has "knowledge or information about such alleged conception and/or reduction to practice[.]" (Id., ex. B at 1) Plaintiffs' supplemental response identifies four individuals who were "inventors of the subject matter disclosed in Japanese Patent Application No. 2007-022523 [(the "Japanese Patent Application")] and claimed in the patents-in-suit[,]" but provides no further information. (Id. at 4) The Court finds it hard to believe that this is the entirety of the information currently available to Plaintiffs regarding the role or contribution that these individuals had in inventing the subject matter at issue. Further, Defendant's Interrogatory No. 1 asks for an identification of "all documents" relating to Plaintiffs' answer. (Id. at 1) Plaintiffs' supplemental response specifically identifies only the Japanese Patent Application. (D.I. 75 at 2) The Court also finds it difficult to believe that the only document that Plaintiffs are aware of relating to the issue of conception is the actual Japanese Patent Application itself. Therefore, this part of the Motion is GRANTED in that by May 27, 2020, Plaintiffs shall provide a second supplemental response to Defendant's Interrogatory No. 1, supplementing its answers further as to these two issues (if they have additional information regarding those issues to provide). If Plaintiffs fail to provide such a response, and it later becomes clear that they did have such information in their possession, custody or control at this time, then they will be precluded from relying on that information in this case in the future.; (4) Defendant's request to file a reply letter brief, (D.I. 78), is DENIED as Defendant had a full and fair opportunity to make a record as to this dispute, including during the lengthy teleconference the Court held with the parties on May 11. Ordered by Judge Christopher J. Burke on 5/13/2020. (dlb) (Entered: 05/13/2020) |
| 81 | May 13, 2020 | Request | NOTICE OF SERVICE of (1) Defendant Beckman Coulter, Inc.'s First Supplemental Objections and Responses to Plaintiffs Sysmex Corporation and Sysmex America, Inc.'s First Set of Interrogatories (No. 1); (2) Defendant Beckman Coulter, Inc.'s Second Set of Interrogatories to Sysmex Corporation (Nos. 9-13); and (3) Defendant Beckman Coulter, Inc.'s First Set of Requests for Admission (Nos. 1-19) filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 05/13/2020) |
| 82 | May 20, 2020 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s First Supplemental Objections and Responses to Plaintiffs Sysmex Corporation and Sysmex America, Inc.'s Second Set of Interrogatories (No. 8) filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 05/20/2020) |
| 83 | May 27, 2020 | Request | NOTICE OF SERVICE of Second Supplemental Responses to First Set of Interrogatories (No. 1) filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 05/27/2020) |
| 84 | Jun 3, 2020 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s Objections and Responses to Plaintiffs Sysmex Corporation and Sysmex America, Inc.'s Third Set of Interrogatories (No. 10) filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 06/03/2020) |
| 85 | Jun 12, 2020 | Request | NOTICE OF SERVICE of (1) Plaintiff Sysmex Corporation's Responses to Beckman Coulter Inc.'s Second Set of Interrogatories (Nos. 9-13), (2) Plaintiff Sysmex Corporation's Responses to Beckman Coulter Inc.'s First Set of Requests for Admission (Nos. 1-19), and (3) Plaintiff Sysmex America, Inc.'s Responses to Beckman Coulter Inc.'s First Set of Requests for Admission (Nos. 1-19) filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 06/12/2020) |
| 86 | Jun 15, 2020 | Request | NOTICE OF SERVICE of Third Set of Interrogatories (No. 10) filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 06/15/2020) |
| 87 | Jun 15, 2020 | Request | NOTICE OF SERVICE of Plaintiffs Sysmex Corporation and Sysmex America, Inc.'s Preliminary Proposed Claim Constructions filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 06/15/2020) |
| 88 | Jun 15, 2020 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s List of Claim Terms/Phrases Needing Construction and Proposed Claim Construction of Those Terms/Phrases filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 06/15/2020) |
| 89 | Jun 17, 2020 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s Second Supplemental Objections and Responses to Plaintiffs Sysmex Corporation and Sysmex America, Inc.'s First Set of Interrogatories (No. 6) filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 06/17/2020) |
| 90 | Jun 17, 2020 | Request | NOTICE OF SERVICE of Plaintiff Sysmex Corporation's Supplemental Responses to Beckman Coulter, Inc.'s First Set of Interrogatories (Nos. 4-5) filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 06/17/2020) |
| 91 | Jun 29, 2020 | Request | NOTICE OF SERVICE of Draft Joint Claim Construction Chart filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 06/29/2020) |
| 92 | Jun 29, 2020 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s Draft Joint Claim Construction Chart filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 06/29/2020) |
| 93 | Jul 2, 2020 | View | Letter to The Honorable Christopher J. Burke from Melanie K. Sharp regarding Request for Scheduling of a Teleconference to Resolve a Discovery Dispute regarding Claim Construction. (Sharp, Melanie) (Entered: 07/02/2020) |
| 94 | Jul 6, 2020 | Request | STIPULATION and [Proposed] Order Regarding Claim Construction by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) (Entered: 07/06/2020) |
| 95 | Jul 6, 2020 | View | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding disputes resolved by means of the Proposed Stipulated Order (D.I. 94 ). (Sharp, Melanie) Modified on 7/7/2020 (nms). (Entered: 07/06/2020) |
| 96 | Jul 6, 2020 | Request | JOINT Claim Construction Chart, by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) Modified on 7/7/2020 (nms). (Entered: 07/06/2020) |
| 97 | Jul 6, 2020 | Request | Joint APPENDIX re 96 Joint Claim Construction Chart, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibits)(Farnan, Kelly) Modified on 7/7/2020 (nms). (Entered: 07/06/2020) |
| Jul 13, 2020 | SO ORDERED D.I. 94 Stipulation regarding claim construction filed by Sysmex Corporation, Sysmex America, Inc. Ordered by Judge Christopher J. Burke on 7/13/2020. (mlc) (Entered: 07/13/2020) | ||
| 98 | Jul 15, 2020 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s Objections and Responses to Plaintiffs Sysmex Corporation and Sysmex America, Inc.'s "Third" Set of Interrogatories ("No. 10") filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 07/15/2020) |
| 99 | Jul 16, 2020 | View | Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding scheduling a discovery dispute teleconference. (Farnan, Kelly) Modified on 7/17/2020 (nms). (Entered: 07/16/2020) |
| 100 | Jul 16, 2020 | Request | ORAL ORDER Setting Teleconference: The Court has reviewed the parties' July 16, 2020 letter requesting a discovery dispute teleconference regarding one discovery dispute. (D.I. 99) It hereby ORDERS that the procedures for resolving a discovery dispute set out in the Scheduling Order, (D.I. 29), will be modified as follows with regard to this dispute: (1) The parties shall file a joint "Motion for Teleconference to Resolve Discovery Dispute," the text of which can be found in the "Forms" tab of Judge Burke's page on the District Court's website.; (2) A discovery dispute teleconference is set for 8/3/2020 at 1:00 PM before Judge Christopher J. Burke. (3) On July 22, 2020, any party seeking relief shall file with the Court a letter, not to exceed two (2) pages, in no less than 12-point font, outlining the issues in dispute and its position on those issues. On July 28, 2020, any party opposing the application for relief may file a letter, not to exceed two (2) pages, in no less than 12-point font, outlining that party(s) reasons for its opposition.; (4) By no later than July 30, 2020, the parties shall jointly provide the Court's Courtroom Deputy, Ms. Benyo, with a dial-in number via e-mail to use for the call.; and (5) The Court may choose to resolve the dispute prior to the telephone conference and will, in that event, cancel the conference.Ordered by Judge Christopher J. Burke on 7/16/2020. (mlc) (Entered: 07/16/2020) |
| 101 | Jul 20, 2020 | Request | NOTICE OF SERVICE of 1) Opening Claim Construction Brief and 2) Declaration of Joshua H. James in Support of Opening Claim Construction Brief filed by Sysmex America, Inc., Sysmex Corporation.(Delcollo, Renee) (Entered: 07/20/2020) |
| 102 | Jul 22, 2020 | View | Joint MOTION for Teleconference to Resolve Discovery Disputes - filed by Sysmex America, Inc., Sysmex Corporation. Motions referred to Christopher J. Burke.(Farnan, Kelly) Modified on 7/23/2020 (nms). (Entered: 07/22/2020) |
| 103 | Jul 22, 2020 | View | Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding Extension of Document Production Deadline. (Attachments: # 1 Exhibit 1-3, # 2 Text of Proposed Order)(Farnan, Kelly) (Entered: 07/22/2020) |
| 104 | Jul 22, 2020 | View | Letter to The Honorable Christopher J. Burke from Melanie K. Sharp, Esq. regarding Discovery Dispute with respect to Extension of Document Production Deadline. (Attachments: # 1 Exhibit A-E)(Sharp, Melanie) (Entered: 07/22/2020) |
| 105 | Jul 28, 2020 | Request | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, Esq., responding to Plaintiffs' July 22, 2020 letter (D.I. 103 ). (Attachments: # 1 Exhibits A-B)(Sharp, Melanie) Modified on 7/29/2020 (nms). (Entered: 07/28/2020) |
| 106 | Jul 28, 2020 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding opposition Letter (D.I. 104 ). (Attachments: # 1 Exhibits 1-4, # 2 Proposed Order)(Farnan, Kelly) Modified on 7/29/2020 (nms). (Entered: 07/28/2020) |
| 107 | Jul 29, 2020 | Request | Joint Interim Status Report, by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) Modified on 7/30/2020 (nms). (Entered: 07/29/2020) |
| Aug 3, 2020 | Minute Entry for proceedings held before Judge Christopher J. Burke - Discovery dispute teleconference held on 8/3/2020. The Court heard argument regarding the parties' discovery dispute, (D.I. 102). The dispute was resolved during the teleconference and the Court ordered counsel to submit a joint stipulation with revised deadlines by August 7, 2020 or a joint status letter if a stipulation cannot be submitted by that date. (Court Reporter Jennifer Guy (Wilcox & Fetzer). Clerk: M. Crawford) Appearances: K. Farnan and R. Mallin for Plaintiffs; M. Sharp, S. Lee and A. Feigelson for Defendant. (mlc) (Entered: 08/03/2020) | ||
| 108 | Aug 4, 2020 | Request | STIPULATION and Proposed Order Regarding Case Deadlines, by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) Modified on 8/5/2020 (nms). (Entered: 08/04/2020) |
| Aug 4, 2020 | SO ORDERED D.I. 108 Stipulation Regarding Case Deadlines re: Discovery Conference filed by Sysmex Corporation, Sysmex America, Inc. Ordered by Judge Christopher J. Burke on 8/4/2020. (mlc) (Entered: 08/04/2020) | ||
| 109 | Aug 4, 2020 | Request | REDACTED VERSION of 106 Letter by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit 1 - 4, # 2 Text of Proposed Order)(Farnan, Kelly) (Entered: 08/04/2020) |
| 110 | Aug 21, 2020 | Request | NOTICE OF SERVICE of Plaintiffs Sysmex Corporation and Sysmex America, Inc.s Third Set of Requests for Production of Documents and Things (Nos. 69-82) filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 08/21/2020) |
| 111 | Aug 24, 2020 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s Second Set of Document Requests to Plaintiffs Sysmex Corporation and Sysmex America, Inc. (Nos. 74-99) filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 08/24/2020) |
| 112 | Aug 31, 2020 | Request | Official Transcript of Discovery Dispute Teleconference held on 8/3/20 before Judge Christopher J. Burke. Court Reporter Jennifer Guy,Email: Jenniferguyrpr@gmail.com. Transcript may be viewed at the court public terminal or order/purchased through the Court Reporter before the deadline for Release of Transcript Restriction. After that date, it may be obtained through PACER. Redaction Request due 9/21/2020. Redacted Transcript Deadline set for 10/1/2020. Release of Transcript Restriction set for 11/30/2020. (Triozzi, Heather) (Entered: 08/31/2020) |
| 113 | Sep 4, 2020 | Request | NOTICE OF SERVICE of (1) Defendant Beckman Coulter, Inc.'s Responsive Claim Construction Brief, (2) Declaration of Aaron R. Feigelson in Support of Defendant Beckman Coulter, Inc.'s Responsive Claim Construction Brief, and (3) Declaration of John Martens in Support of Respondents' Initial Claim Construction Brief filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 09/04/2020) |
| 114 | Sep 21, 2020 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s Objections and Responses to Plaintiffs Sysmex Corp. and Sysmex America, Inc.'s Third Set of Requests For Production of Documents and Things (Nos. 69-82) filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 09/21/2020) |
| 115 | Sep 23, 2020 | Request | NOTICE OF SERVICE of Responses and Objections to Second Set of Document Requests (Nos. 74-99) filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 09/23/2020) |
| 116 | Sep 25, 2020 | Request | NOTICE OF SERVICE of (1) Plaintiffs Sysmex Corporation and Sysmex America, Inc.s Reply Claim Construction Brief; (2) Declaration of Vijay Madisetti, Ph.D., in Support of Plaintiffs Sysmex Corporation and Sysmex America, Inc.s Reply Claim Construction Brief and (3) Declaration of Joshua H. James in Supportof Plaintiffs Sysmex Corporation and Sysmex America, Inc.s Reply Claim Construction Brief filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 09/25/2020) |
| 117 | Sep 30, 2020 | Request | STIPULATION TO EXTEND TIME to File Motion for Leave to File an Amended Answer to October 1, 2020 - filed by Beckman Coulter, Inc.. (Lee, Steven) (Entered: 09/30/2020) |
| Sep 30, 2020 | SO ORDERED D.I. 117 STIPULATION TO EXTEND TIME to File Motion for Leave to File an Amended Answer to October 1, 2020 filed by Beckman Coulter, Inc. Ordered by Judge Christopher J. Burke on 9/30/2020. (dlb) (Entered: 09/30/2020) | ||
| 118 | Oct 1, 2020 | Request | STIPULATION Regarding Beckman Coulter, Inc.'s First Amended Answer and Counterclaims by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 1 - First Amended Answer and Counterclaim of Defendant Beckman Coulter, Inc. with Exhibits 1 - 2, # 2 Exhibit 2)(Lee, Steven) Modified on 10/2/2020 (dlb). (Entered: 10/01/2020) |
| Oct 2, 2020 | SO ORDERED D.I. 118 STIPULATION Regarding Beckman Coulter, Inc.'s First Amended Answer and Counterclaims by Beckman Coulter, Inc filed by Beckman Coulter, Inc. Ordered by Judge Christopher J. Burke on 10/2/2020. (dlb) (Entered: 10/02/2020) | ||
| 119 | Oct 2, 2020 | Request | First Amended Answer to 7 Answer to Complaint and COUNTERCLAIMS against Sysmex America, Inc., Sysmex Corporation by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2)(Lee, Steven) Modified on 10/5/2020 (nms). (Entered: 10/02/2020) |
| 120 | Oct 5, 2020 | Request | Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding Request the Scheduling of a Discovery Teleconference. (Farnan, Kelly) (Entered: 10/05/2020) |
| 121 | Oct 5, 2020 | Request | ORAL ORDER Setting Teleconference: The Court has reviewed the parties' October 5, 2020 letter requesting a discovery dispute teleconference. (D.I. 120) It hereby ORDERS that the procedures for resolving a discovery dispute set out in the Scheduling Order, (D.I. 29), will be modified as follows with regard to these disputes: (1) The parties shall file a joint "Motion for Teleconference to Resolve Discovery Dispute," the text of which can be found in the "Forms" tab of Judge Burke's page on the District Court's website.; (2) A discovery dispute teleconference is set for November 2, 2020 at 4:00 PM before Judge Christopher J. Burke. (3) On October 13, 2020, any party seeking relief shall file with the Court a letter, not to exceed three (3) pages, in no less than 12-point font, outlining the issues in dispute and its position on those issues. On October 20, 2020, any party opposing the application for relief may file a letter, not to exceed three (3) pages, in no less than 12-point font, outlining that party(s) reasons for its opposition.; (4) By no later than October 29, 2020, the parties shall jointly provide the Court's Courtroom Deputy, Ms. Benyo, with a dial-in number via e-mail to use for the call.; and (5) The Court may choose to resolve the disputes prior to the telephone conference and will, in that event, cancel the conference. Ordered by Judge Christopher J. Burke on 10/5/2020. (dlb) (Entered: 10/05/2020) |
| 122 | Oct 8, 2020 | Request | NOTICE OF SERVICE of Plaintiffs Sysmex Corporation and Sysmex America, Inc.s Fourth Set of Requests for Production of Documents and Things (Nos. 83-85) filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 10/08/2020) |
| 123 | Oct 9, 2020 | Request | Joint Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding claim construction. (Farnan, Kelly) Modified on 10/13/2020 (nms). (Entered: 10/09/2020) |
| 124 | Oct 9, 2020 | Request | ORAL ORDER: The Court HEREBY ORDERS as follows regarding the October 28, 2020 Markman hearing: (1) The hearing will now begin at 11:00 a.m.; (2) The hearing will be held via videoconference using the Skype for Business platform. By no later than October 21, 2020, the parties shall send an e-mail to the Court's Courtroom Deputy, Ms. Benyo, indicating the names and e-mail addresses of all individuals who will participate in the hearing.; (3) Having reviewed the parties' October 9, 2020 letter, (D.I. 123), the Court hereby ADOPTS the parties' proposal regarding time allocation. Three hours will be allocated for argument, to be split equally between the parties. With respect to the order of the terms and which side will present argument first for each term, the Court will reserve a decision until it is able to view the parties' Joint Claim Construction brief.; (4) By no later than October 16, 2020, the parties shall submit two hard copies of that Joint Claim Construction brief and accompanying exhibits/declarations to the Court.; (5) Each side shall submit their slide presentations to Ms. Benyo (copying the other side) via e-mail 24 hours in advance of the hearing.; and (6) On or before October 21, 2020, local and lead counsel for the parties shall meet and confer and file an amended joint claim construction chart that sets forth the terms/issues that remain in dispute. The meet and confer shall focus on an attempt to reach agreement on any remaining disputed terms/issues where possible and on an attempt to focus the dispute over the remaining terms/issues in light of the parties' claim construction briefing. Accompanying any amended joint claim construction chart, the parties shall file a letter with the Court identifying by name each individual who participated in the meet and confer, when and how that meet and confer occurred and how long it lasted. If no agreements on constructions have been reached or if no dispute has been narrowed on the meet and confer, the letter shall so state and the parties need not file an amended joint claim construction chart.Ordered by Judge Christopher J. Burke on 10/9/2020. (dlb) (Entered: 10/09/2020) |
| 125 | Oct 9, 2020 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s Claim Construction Sur-Reply Brief and Declaration of Aaron R. Feigelson in Support of Defendant Beckman Coulter, Inc.'s Claim Construction Sur-Reply Brief filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 10/09/2020) |
| 126 | Oct 13, 2020 | Request | Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding discovery dispute. (Attachments: # 1 Exhibits 1-12, # 2 Proposed Order)(Farnan, Kelly) Modified on 10/13/2020 (nms). (Entered: 10/13/2020) |
| 127 | Oct 13, 2020 | Request | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, Esq., regarding discovery dispute. (Attachments: # 1 Proposed Order, # 2 Exhibits 1-8)(Sharp, Melanie) Modified on 10/13/2020 (nms). (Entered: 10/13/2020) |
| 128 | Oct 14, 2020 | Request | Joint MOTION for Teleconference to Resolve Discovery Dispute - filed by Sysmex America, Inc., Sysmex Corporation. Motions referred to Christopher J. Burke.(Farnan, Kelly) Modified on 10/14/2020 (nms). (Entered: 10/14/2020) |
| 129 | Oct 14, 2020 | Request | NOTICE of filing the following Non-Paper material(s) in multi media format: USB drives re: Plaintiffs' Technology Tutorial. Original Non-paper material(s) to be filed with the Clerk's Office. Notice filed by Kelly E. Farnan on behalf of Sysmex America, Inc., Sysmex Corporation (Farnan, Kelly) (Entered: 10/14/2020) |
| 130 | Oct 14, 2020 | Request | NOTICE of filing the following Non-Paper material(s) in multi media format: DVD's Containing Beckman Coulter, Inc.'s Technology Tutorial. Original Non-paper material(s) to be filed with the Clerk's Office. Notice filed by Melanie K. Sharp on behalf of Beckman Coulter, Inc. (Sharp, Melanie) (Entered: 10/14/2020) |
| 131 | Oct 14, 2020 | Request | AMENDED Joint Claim Construction Chart, by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) Modified on 10/15/2020 (nms). (Entered: 10/14/2020) |
| 132 | Oct 14, 2020 | Request | AMENDED Joint Appendix to 131 Amended Joint Claim Construction Chart, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibits)(Farnan, Kelly) Modified on 10/15/2020 (nms). (Entered: 10/14/2020) |
| 133 | Oct 14, 2020 | Request | Joint Claim Construction Brief, filed by Sysmex Corporation, Sysmex America, Inc.. (Attachments: # 1 Exhibits 1-14, # 2 Exhibits 14-18, # 3 Exhibit 18)(Farnan, Kelly) Modified on 10/15/2020 (nms). (Entered: 10/14/2020) |
| 134 | Oct 16, 2020 | Request | MOTION to Dismiss BCI's Fifth Counterclaim and Motion to Strike BCI's Sixth Affirmative Defense - filed by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Proposed Order)Motions referred to Christopher J. Burke.(Farnan, Kelly) Modified on 10/19/2020 (nms). (Entered: 10/16/2020) |
| 135 | Oct 16, 2020 | View | OPENING BRIEF in Support re 134 MOTION to Dismiss BCI's Fifth Counterclaim and Motion to Strike BCI's Sixth Affirmative Defense filed by Sysmex America, Inc., Sysmex Corporation.Answering Brief/Response due date per Local Rules is 10/30/2020. (Farnan, Kelly) (Entered: 10/16/2020) |
| 136 | Oct 16, 2020 | Request | DECLARATION of Robert Mallin re 134 MOTION to Dismiss BCI's Fifth Counterclaim and Motion to Strike BCI's Sixth Affirmative Defense, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibits 1-4)(Farnan, Kelly) Modified on 10/19/2020 (nms). (Entered: 10/16/2020) |
| 137 | Oct 19, 2020 | Request | Response re 130 Defendant's Tutorial, by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) Modified on 10/20/2020 (nms). (Entered: 10/19/2020) |
| 138 | Oct 19, 2020 | Request | Response re 129 Technology Tutorial Submitted by Sysmex, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B)(Lee, Steven) Modified on 10/20/2020 (nms). (Entered: 10/19/2020) |
| 139 | Oct 20, 2020 | Request | Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding response to BCI's Discovery Dispute Letter (D.I. 127 ). (Attachments: # 1 Exhibits A-L)(Farnan, Kelly) Modified on 10/21/2020 (nms). (Entered: 10/20/2020) |
| 140 | Oct 20, 2020 | Request | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, Esq., regarding response to Sysmex's October 13, 2020 Letter Brief (D.I. 126 ). (Attachments: # 1 Proposed Order)(Sharp, Melanie) Modified on 10/21/2020 (nms). (Entered: 10/20/2020) |
| 141 | Oct 21, 2020 | Request | Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding the parties' claim construction meet and confer efforts. (Farnan, Kelly) Modified on 10/21/2020 (nms). (Entered: 10/21/2020) |
| 142 | Oct 21, 2020 | Request | Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding Notice under Courts Standing Order Regarding Courtroom Opportunities for Newer Attorneys. (Farnan, Kelly) (Entered: 10/21/2020) |
| 143 | Oct 27, 2020 | Request | ORAL ORDER: The Court, having viewed the parties' Joint Claim Construction brief, (D.I. 133), hereby ORDERS that Defendant's proposal regarding the order of terms and which side will present argument first for each term is adopted for the October 28, 2020 Markman hearing, (D.I. 123 at 1-2). Ordered by Judge Christopher J. Burke on 10/27/2020. (dlb) (Entered: 10/27/2020) |
| 144 | Oct 27, 2020 | Request | STIPULATION and Proposed Order Extending Deadlines - filed by Beckman Coulter, Inc.. (Lee, Steven) Modified on 10/28/2020 (nms). (Entered: 10/27/2020) |
| Oct 28, 2020 | SO ORDERED D.I. 144 STIPULATION TO EXTEND TIME for BCI to Respond to Plaintiffs Sysmex Corporation and Sysmex America, Inc.'s Motion to Dismiss BCI's Fifth Counterclaim and Motion to Strike BCI's Sixth Affirmative Defense, and for Sysmex to file its Reply filed by Beckman Coulter, Inc. Ordered by Judge Christopher J. Burke on 10/28/2020. (dlb) (Entered: 10/28/2020) | ||
| Oct 28, 2020 | Minute Entry for proceedings held before Judge Christopher J. Burke - Oral Argument held on 10/28/2020 regarding claim construction. The Court took the matter under advisement and will issue an opinion. (Court Reporter Heather Triozzi. Clerk: M. Crawford)Appearances: K. Farnan, J. Sobieraj, R. Mallin, J. James and T. Horie for Plaintiffs; M. Sharp, A. Feigelson, W. Mueller and D. Airan for Defendant. (mlc) (Entered: 10/28/2020) | ||
| 145 | Oct 29, 2020 | Request | Letter to The Honorable Christopher J. Burke from Melanie K. Sharp, Esq. regarding Corrected Joint Claim Construction Chart. (Sharp, Melanie) (Entered: 10/29/2020) |
| 146 | Oct 30, 2020 | Request | Official Transcript of Markman Hearing Videoconference held on 10/28/20 before Judge Christopher J. Burke. Court Reporter Heather M. Triozzi,Email: Heather_Triozzi@ded.uscourts.gov. Transcript may be viewed at the court public terminal or order/purchased through the Court Reporter before the deadline for Release of Transcript Restriction. After that date, it may be obtained through PACER. Redaction Request due 11/20/2020. Redacted Transcript Deadline set for 11/30/2020. Release of Transcript Restriction set for 1/28/2021. (Triozzi, Heather) (Entered: 10/30/2020) |
| 147 | Nov 2, 2020 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s First Supplemental Objections and Responses to Plaintiffs Sysmex Corp. and Sysmex America, Inc.'s Second Set of Requests For Production of Documents and Things (No. 68) and Defendant Beckman Coulter, Inc.'s First Supplemental Objections and Responses to Plaintiffs Sysmex Corp. and Sysmex America, Inc.'s Third Set of Requests For Production of Documents and Things (Nos. 6982) filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 11/02/2020) |
| Nov 2, 2020 | Minute Entry for proceedings held before Judge Christopher J. Burke - Discovery Dispute Teleconference held on 11/2/2020. The Court heard the parties regarding their disputes. The Court heard the parties disputes and resolved the disputes on the record. The Transcript shall serve as the substance of the Courts Order in this matter. APPEARANCES: K. Farnan, R. Mallin, A. Shoffstall for Plaintiffs; M. Sharp, S. Lee, A. Feigelson, N. Kopinski for Defendant. (Court Reporter Valerie Gunning) (dlb) Modified on 11/3/2020 (dlb). (Entered: 11/03/2020) | ||
| 148 | Nov 3, 2020 | Request | Second Amended Joint Construction Chart, by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 11/3/2020 (nms). (Entered: 11/03/2020) |
| 149 | Nov 9, 2020 | Request | NOTICE OF SERVICE of Plaintiffs Sysmex Corporation and Sysmex America, Inc.s Updated Privilege Logs filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 11/09/2020) |
| 150 | Nov 9, 2020 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s Objections and Responses to Plaintiff Sysmex America, Inc.'s Fourth Set of Requests for Production of Documents and Things (Nos. 83-85) filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 11/09/2020) |
| 151 | Nov 13, 2020 | Request | NOTICE to Take Deposition of Douglas Dunbabin on December 10, 2020 filed by Sysmex America, Inc., Sysmex Corporation.(Delcollo, Renee) (Entered: 11/13/2020) |
| 152 | Nov 13, 2020 | Request | NOTICE to Take Deposition of Eric Grace on December 8, 2020 filed by Sysmex America, Inc., Sysmex Corporation.(Delcollo, Renee) (Entered: 11/13/2020) |
| 153 | Nov 13, 2020 | Request | NOTICE to Take Deposition of John Blackwood on December 16, 2020 filed by Sysmex America, Inc., Sysmex Corporation.(Delcollo, Renee) (Entered: 11/13/2020) |
| 154 | Nov 13, 2020 | Request | NOTICE to Take Deposition of Mirta Gamez on December 15, 2020 filed by Sysmex America, Inc., Sysmex Corporation.(Delcollo, Renee) (Entered: 11/13/2020) |
| 155 | Nov 25, 2020 | Request | Official Transcript of telephone conference held on November 2, 2020 before Judge Burke. Court Reporter/Transcriber Valerie Gunning,Email: Valerie_Gunning@ded.uscourts.gov. Transcript may be viewed at the court public terminal or order/purchased through the Court Reporter/Transcriber before the deadline for Release of Transcript Restriction. After that date, it may be obtained through PACER. Redaction Request due 12/16/2020. Redacted Transcript Deadline set for 12/28/2020. Release of Transcript Restriction set for 2/23/2021. (vjg) (Entered: 11/25/2020) |
| 156 | Nov 30, 2020 | Request | ANSWERING BRIEF in Opposition re 134 MOTION to Dismiss BCI's Fifth Counterclaim and Motion to Strike BCI's Sixth Affirmative Defense filed by Beckman Coulter, Inc..Reply Brief due date per Local Rules is 12/7/2020. (Sharp, Melanie) (Entered: 11/30/2020) |
| 157 | Nov 30, 2020 | Request | DECLARATION of Aaron R. Feigelson re 156 Answering Brief in Opposition, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibits A-G)(Sharp, Melanie) Modified on 12/1/2020 (nms). (Entered: 11/30/2020) |
| 158 | Dec 3, 2020 | Request | NOTICE to Take Deposition of Douglas Dunbabin on December 10, 2020 filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 12/03/2020) |
| 159 | Dec 3, 2020 | Request | NOTICE to Take Deposition of Eric Grace on December 8, 2020 filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 12/03/2020) |
| 160 | Dec 3, 2020 | Request | NOTICE requesting Clerk to remove Andrea L. Shoffstall as co-counsel. Reason for request: Left firm. (Delcollo, Renee) (Entered: 12/03/2020) |
| 161 | Dec 3, 2020 | Request | NOTICE to Take Deposition of Mirta Gamez on January 6, 2021 filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 12/03/2020) |
| 162 | Dec 3, 2020 | Request | NOTICE of of Subpoena on John Blackwood by Sysmex America, Inc., Sysmex Corporation (Attachments: # 1 Exhibit A)(Delcollo, Renee) (Entered: 12/03/2020) |
| 163 | Dec 3, 2020 | Request | MOTION for Pro Hac Vice Appearance of Attorney Daniel Parrish - filed by Sysmex America, Inc., Sysmex Corporation. Motions referred to Christopher J. Burke.(Delcollo, Renee) (Entered: 12/03/2020) |
| 164 | Dec 14, 2020 | Request | NOTICE to Take Deposition of Andrea Britton on January 14, 2021 filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 12/14/2020) |
| 165 | Dec 16, 2020 | View | REPLY BRIEF re 134 MOTION to Dismiss BCI's Fifth Counterclaim and Motion to Strike BCI's Sixth Affirmative Defense filed by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) (Entered: 12/16/2020) |
| 166 | Dec 17, 2020 | Request | NOTICE to Take Deposition of Chris Sibley on December 30, 2020 filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 12/17/2020) |
| 167 | Dec 17, 2020 | Request | NOTICE to Take Deposition of Matthew Rhyner on January 8, 2021 filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 12/17/2020) |
| 168 | Dec 17, 2020 | Request | NOTICE to Take Deposition of Tiffany Murphy on January 19, 2021 filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 12/17/2020) |
| 169 | Dec 17, 2020 | Request | NOTICE to Take Deposition of Thomas Mittlestadt on January 22, 2021 filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 12/17/2020) |
| 170 | Dec 17, 2020 | Request | NOTICE OF SERVICE of Plaintiffs Sysmex Corporation and Sysmex America, Inc.'s: (1) Fourth Set of Interrogatories for Beckman Coulter, Inc. (Nos. 11-14) and (2) Fifth Set of Requests for Production of Documents and Things (No. 86) filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 12/17/2020) |
| Dec 18, 2020 | SO ORDERED D.I. 163 MOTION for Pro Hac Vice Appearance of Attorney Daniel Parrish filed by Sysmex Corporation, Sysmex America, Inc. Ordered by Judge Christopher J. Burke on 12/18/2020. (dlb) (Entered: 12/18/2020) | ||
| Dec 18, 2020 | Pro Hac Vice Attorney Daniel A. Parrish for Sysmex America, Inc. and Sysmex Corporation added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (kmd) (Entered: 12/18/2020) | ||
| 171 | Dec 18, 2020 | Request | NOTICE OF SERVICE of Plaintiffs Sysmex Corporation and Sysmex America, Inc.'s Sixth Set of Requests for Production of Documents and Things (Nos. 87-111) filed by Sysmex America, Inc., Sysmex Corporation.(Delcollo, Renee) (Entered: 12/18/2020) |
| 172 | Dec 22, 2020 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s Third Set of Interrogatories to Sysmex Corporation (Nos. 14-18) and Defendant Beckman Coulter, Inc.'s Fourth Set of Document Requests to Plaintiffs Sysmex Corporation and Sysmex America, Inc. (Nos. 103-106) filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 12/22/2020) |
| 173 | Dec 22, 2020 | Request | NOTICE to Take Deposition of Sharita Brooks on January 4, 2021 filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 12/22/2020) |
| 174 | Dec 22, 2020 | Request | NOTICE to Take Deposition of Ann Ludwig on January 7, 2021 filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 12/22/2020) |
| 175 | Dec 22, 2020 | Request | NOTICE to Take Deposition of Johannes Kalkman on January 21, 2021 filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 12/22/2020) |
| 176 | Dec 22, 2020 | Request | NOTICE to Take Deposition of Bradley Rubash on January 20, 2021 filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 12/22/2020) |
| 177 | Dec 22, 2020 | Request | NOTICE to Take Deposition of Daigo Fukuma on January 25, 2021 filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 12/22/2020) |
| 178 | Dec 22, 2020 | Request | NOTICE to Take Deposition of Noriyuki Narisada on January 27, 2021 filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 12/22/2020) |
| 179 | Dec 22, 2020 | Request | NOTICE to Take Deposition of Ralph Taylor on January 29, 2021 filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 12/22/2020) |
| 180 | Dec 22, 2020 | Request | NOTICE to Take Deposition of Masanori Imazu on February 2, 2021 filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 12/22/2020) |
| 181 | Dec 22, 2020 | Request | NOTICE to Take Deposition of Takaaki Nagai on February 4, 2021 filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 12/22/2020) |
| 182 | Dec 23, 2020 | Request | REQUEST for Oral Argument by Sysmex America, Inc., Sysmex Corporation re 134 MOTION to Dismiss BCI's Fifth Counterclaim and Motion to Strike BCI's Sixth Affirmative Defense. (Farnan, Kelly) (Entered: 12/23/2020) |
| 183 | Jan 4, 2021 | Request | MOTION for Pro Hac Vice Appearance of Attorney Wallace H. Feng, Esq. - filed by Beckman Coulter, Inc.. (Attachments: # 1 Certification by Counsel)Motions referred to Christopher J. Burke.(Lee, Steven) (Entered: 01/04/2021) |
| 184 | Jan 4, 2021 | Request | NOTICE to Take Deposition of Beckman Coulter, Inc. on January 29, 2021 filed by Sysmex America, Inc., Sysmex Corporation.(Delcollo, Renee) (Entered: 01/04/2021) |
| 185 | Jan 6, 2021 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s Fourth Set of Interrogatories to Sysmex Corporation (Nos. 19-25) filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 01/06/2021) |
| Jan 7, 2021 | SO ORDERED D.I. 183 MOTION for Pro Hac Vice Appearance of Attorney Wallace H. Feng, Esq. filed by Beckman Coulter, Inc. Ordered by Judge Christopher J. Burke on 1/7/2021. (dlb) (Entered: 01/07/2021) | ||
| 186 | Jan 8, 2021 | Request | NOTICE to Take Deposition of Tadashi Horie on January 15, 2021 filed by Beckman Coulter, Inc..(Lee, Steven) (Entered: 01/08/2021) |
| 187 | Jan 11, 2021 | Request | NOTICE to Take Deposition of Matthew Rhyner on January 13, 2021 filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 01/11/2021) |
| 188 | Jan 11, 2021 | Request | NOTICE to Take Deposition of Andrea Britton on January 29, 2021 filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 01/11/2021) |
| 189 | Jan 11, 2021 | Request | NOTICE to Take Deposition of Chris Sibley on February 1, 2021 filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 01/11/2021) |
| 190 | Jan 19, 2021 | Request | NOTICE to Take Deposition of Sysmex Corporation and Sysmex America, Inc. on February 3, 2021 filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 01/19/2021) |
| 191 | Jan 19, 2021 | Request | NOTICE OF SERVICE of (1) Defendant Beckman Coulter, Inc.'s Objections and Responses to Plaintiffs Sysmex Corporation and Sysmex America, Inc.'s Fifth Set of Requests for Production of Documents and Things (No. 86); (2) Defendant Beckman Coulter, Inc.'s Objections and Responses to Plaintiffs Sysmex Corporation and Sysmex America, Inc.'s Sixth Set of Requests for Production of Documents and Things (No. 87-111) and (3) Defendant Beckman Coulter, Inc.'s First Supplemental Objections and Responses to Plaintiffs Sysmex Corporation and Sysmex America, Inc.'s "Third" Set of Interrogatories ("No. 10") filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 01/19/2021) |
| 192 | Jan 20, 2021 | Request | NOTICE of Withdrawal of Counsel, Steven W. Lee by Beckman Coulter, Inc. (Higgins, James) (Entered: 01/20/2021) |
| 193 | Jan 20, 2021 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s Objections and Responses to Plaintiffs Sysmex Corporation and Sysmex America's "Fourth" Set of Interrogatories ("Nos. 11-14") filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 01/20/2021) |
| 194 | Jan 20, 2021 | Request | NOTICE OF SERVICE of (1) Plaintiff Sysmex Corporation's Responses to Beckman Coulter Inc.'s Third Set of Interrogatories (Nos. 14-18) and (2) Responses and Objections of Plaintiffs Sysmex Corporation and Sysmex America, Inc. to Defendant's Fourth Set of Document Requests (Nos. 103-106) filed by Sysmex America, Inc., Sysmex Corporation.(Delcollo, Renee) (Entered: 01/20/2021) |
| 195 | Jan 20, 2021 | Request | NOTICE to Take Deposition of Beckman Coulter, Inc. Pursuant to Federal Rule of Civil Procedure 30(b)(6) on February 5, 2021 filed by Sysmex America, Inc., Sysmex Corporation.(Delcollo, Renee) (Entered: 01/20/2021) |
| 196 | Jan 21, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding request for the scheduling of a discovery teleconference. (Farnan, Kelly) Modified on 1/21/2021 (nms). (Entered: 01/21/2021) |
| 197 | Jan 21, 2021 | Request | ORAL ORDER Setting Teleconference: The Court has reviewed the parties' January 21, 2021 letter requesting a discovery dispute teleconference regarding two discovery disputes. (D.I. 196) It hereby ORDERS that the procedures for resolving a discovery dispute set out in the Scheduling Order will be modified as follows with regard to this dispute: (1) The parties shall file a joint "Motion for Teleconference to Resolve Discovery Dispute," the text of which can be found in the "Forms" tab of Judge Burke's page on the District Court's website.; (2) A discovery dispute teleconference is set for February 8, 2021 at 4:00 PM before Judge Christopher J. Burke. (3) On January 28, 2021, any party seeking relief shall file with the Court a letter, not to exceed three (3) single-spaced pages, in no less than 12-point font, outlining the issues in dispute and its position on those issues. On February 4, 2021, any party opposing the application for relief may file a letter, not to exceed three (3) single-spaced pages, in no less than 12-point font, outlining that party(s) reasons for its opposition.; (4) By no later than February 4, 2021, the parties shall jointly provide the Court's Courtroom Deputy, Ms. Benyo, with a dial-in number via e-mail to use for the call.; and (5) The Court may choose to resolve the dispute prior to the telephone conference and will, in that event, cancel the conference. Ordered by Judge Christopher J. Burke on 1/21/2021. (dlb) (Entered: 01/21/2021) |
| Jan 22, 2021 | Pro Hac Vice Attorney Wallace H. Feng for Beckman Coulter, Inc. added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (kmd) (Entered: 01/22/2021) | ||
| 198 | Jan 22, 2021 | Request | Amended NOTICE of Deposition of Beckman Coulter, Inc. Pursuant to Federal Rule of Civil Procedure 30(b)(6) scheduled for February 5, 2021 by Sysmex America, Inc., Sysmex Corporation (Delcollo, Renee) (Entered: 01/22/2021) |
| 199 | Jan 25, 2021 | Request | NOTICE to Take Deposition of Bradley Rubash on January 26, 2020 [AMENDED] filed by Beckman Coulter, Inc..(Higgins, James) (Entered: 01/25/2021) |
| 200 | Jan 25, 2021 | Request | NOTICE to Take Deposition of Tammy Kutz on February 5, 2021 filed by Beckman Coulter, Inc..(Higgins, James) (Entered: 01/25/2021) |
| Jan 26, 2021 | Pro Hac Vice Attorney David M. Airan for Beckman Coulter, Inc. added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (kmd) (Entered: 01/26/2021) | ||
| 201 | Jan 26, 2021 | Request | NOTICE OF SERVICE of Plaintiffs Sysmex Corporation and Sysmex America, Inc.s Objections and Responses to Defendant Beckman Coulter, Inc.s Notice of Rule 30(b)(6) Deposition Topics (Nos. 1-23) filed by Sysmex America, Inc., Sysmex Corporation.(Delcollo, Renee) (Entered: 01/26/2021) |
| 202 | Jan 27, 2021 | Request | NOTICE to Take Deposition of Sharita Brooks on January 28, 2021 [Amended] filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 01/27/2021) |
| 203 | Jan 28, 2021 | Request | Joint Motion For Teleconference to Resolve Discovery Disputes - filed by Sysmex America, Inc., Sysmex Corporation. Motions referred to Christopher J. Burke.(Farnan, Kelly) Modified on 1/28/2021 (nms). (Entered: 01/28/2021) |
| 204 | Jan 28, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding discovery dispute. (Attachments: # 1 Exhibits 1-2)(Farnan, Kelly) Modified on 1/29/2021 (nms). (Additional attachment(s) added on 1/29/2021: # 2 proposed order) (dlb). (Entered: 01/28/2021) |
| 205 | Jan 28, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, Esq., regarding disputes relating to scheduling. (Attachments: # 1 Exhibits A-C, # 2 Proposed Order)(Sharp, Melanie) Modified on 1/29/2021 (nms). (Entered: 01/28/2021) |
| 206 | Jan 28, 2021 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s Objections and Responses to Plaintiff Sysmex Corporation's Amended Rule 30(b)(6) Deposition Topics (Nos. 19-48) filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 01/28/2021) |
| Jan 29, 2021 | CORRECTING ENTRY: Per request of filer, a Proposed Order has been added to D.I. 204. (dlb) (Entered: 01/29/2021) | ||
| 207 | Jan 29, 2021 | Request | NOTICE OF SERVICE of Plaintiffs' Supplemental Disclosure of Accused Products filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 01/29/2021) |
| 208 | Jan 29, 2021 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s Supplemental Identification of Initial Invalidity References filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 01/29/2021) |
| 209 | Feb 1, 2021 | Request | NOTICE to Take Deposition of Takaaki Nagai on February 2 and 3, 2021 [Amended] filed by Beckman Coulter, Inc..(Higgins, James) (Entered: 02/01/2021) |
| 210 | Feb 3, 2021 | Request | Amended Notice to Take Deposition of Ralph Taylor on February 4, 2021, filed by Beckman Coulter, Inc..(Sharp, Melanie) Modified on 2/4/2021 (nms). (Entered: 02/03/2021) |
| 211 | Feb 4, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, Esq., regarding reply to Sysmex's January 28, 2021 letter (D.I. 204 ). (Attachments: # 1 Exhibit D)(Sharp, Melanie) Modified on 2/5/2021 (nms). (Entered: 02/04/2021) |
| 212 | Feb 4, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding response to discovery dispute (D.I. 205 ). (Attachments: # 1 Exhibits 3-6, # 2 Proposed Order)(Farnan, Kelly) Modified on 2/5/2021 (nms). (Entered: 02/04/2021) |
| 213 | Feb 5, 2021 | Request | NOTICE OF SERVICE of Plaintiff Sysmex Corporations Responses to Beckman Coulter Inc.s Fourth Set of Interrogatories (Nos.19-25) filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 02/05/2021) |
| 214 | Feb 5, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding correction to February 4, 2021 letter (D.I. 212 ). (Attachments: # 1 Proposed Order)(Farnan, Kelly) Modified on 2/8/2021 (nms). (Entered: 02/05/2021) |
| Feb 8, 2021 | Minute Entry for proceedings held before Judge Christopher J. Burke - Discovery Conference held on 2/8/2021. The Court resolved the parties' discovery dispute, (D.I. 203). The Court provided February 2022 dates for trial and pretrial conference and ordered the parties to meet and confer and submit a jointly proposed stipulation including those dates and other scheduling order deadlines by Wednesday, February 10, 2021. (Court Reporter Jennifer Guy. Clerk: M. Crawford) Appearances: K. Farnan, J. Sobieraj and R. Mallin for Plaintiffs; M. Sharp, A. Feigelson, N. Kopinski for Defendant. (mlc) (Entered: 02/08/2021) | ||
| 215 | Feb 10, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan ,regarding the Court's February 8, 2021 Oral Order. (Attachments: # 1 Plaintiffs' Proposed Stipulation, # 2 Defendant's Proposed Stipulation)(Farnan, Kelly) (Entered: 02/10/2021) |
| 216 | Feb 11, 2021 | Request | SO ORDERED parties Stipulation at D.I. 215 resetting Scheduling Order Deadlines. Ordered by Judge Christopher J. Burke on 2/11/2021. (dlb) (Entered: 02/11/2021) |
| 217 | Feb 11, 2021 | Request | ORAL ORDER: The Court has today entered Plaintiffs' proposed stipulation regarding the case schedule. To the extent Defendant later believes that issues relating to planned depositions indicate that the schedule should be further amended, and to the extent the parties do not agree, Defendant can always raise that issue with the Court, pursuant to the Court's discovery dispute procedures. Ordered by Judge Christopher J. Burke on 2/11/2021. (mlc) (Entered: 02/11/2021) |
| 218 | Feb 25, 2021 | Request | NOTICE to Take Deposition of Tammy Kutz on February 26, 2021 (Amended) filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 02/25/2021) |
| 219 | Feb 26, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding supplemental authority in support of Plaintiffs' claim construction positions. (Attachments: # 1 Exhibits 1-3)(Farnan, Kelly) Modified on 3/1/2021 (nms). (Entered: 02/26/2021) |
| 220 | Mar 2, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, Esq., regarding supplemental authority in support of Defendant's claim construction positions. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G)(Sharp, Melanie) Modified on 3/2/2021 (nms). (Entered: 03/02/2021) |
| 221 | Mar 4, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding response to BCI's March 2, 2021 Letter (D.I. 220 ). (Farnan, Kelly) Modified on 3/5/2021 (nms). (Entered: 03/04/2021) |
| 222 | Mar 4, 2021 | Request | ORAL ORDER: The Court, having reviewed the parties' recent letters regarding the inter partes review Institution Decisions and their impact on claim construction and Plaintiffs' motion to dismiss, (D.I. 219; D.I. 220; D.I. 221), hereby ORDERS that no further responsive letters regarding these issues shall be filed without leave of Court. Ordered by Judge Christopher J. Burke on 3/4/2021. (dlb) (Entered: 03/04/2021) |
| 223 | Mar 9, 2021 | Request | AMENDED Notice to Take Deposition of Noriyuki Narisada on March 10-11, 2021, filed by Beckman Coulter, Inc..(Sharp, Melanie) Modified on 3/11/2021 (nms). (Entered: 03/09/2021) |
| 224 | Mar 18, 2021 | Request | ORAL ORDER Setting Hearing on Motion: The Court HEREBY ORDERS as follows: (1) Oral argument on the pending motion to dismiss, (D.I. 134) will be held on April 21, 2021 at 11:00 AM before Judge Christopher J. Burke via a videoconference platform.; (2) By no later than March 25, 2021, the parties shall submit to the Court a joint letter proposing how much time should be allocated for argument.; (3) By no later than March 25, 2021, the parties shall submit to the Court two courtesy copies of the relevant pleading and the briefs that have not already been submitted (plus supporting exhibits and declarations) (i.e., D.I. 119; D.I. 135; D.I. 136; D.I. 165).; (4) By no later than April 14, 2021, the parties shall send an e-mail to the Court's Courtroom Deputy, Ms. Benyo, indicating the names and e-mail addresses of all individuals who will participate in the hearing.; and (5) By no later than 24 hours in advance of the hearing, the parties shall submit any slide presentations via e-mail to Ms. Benyo (copying the other side). Ordered by Judge Christopher J. Burke on 3/18/2021. (dlb) (Entered: 03/18/2021) |
| 225 | Mar 19, 2021 | Request | NOTICE OF SERVICE of (1) Plaintiff Sysmex Corporation's Supplemental Response to Beckman Coulter Inc.'s First Set of Interrogatories (Nos. 6); (2) Plaintiff Sysmex Corporation's Supplemental Responses to Beckman Coulter Inc.'s Second Set of Interrogatories; and (3) Plaintiff Sysmex Corporation's Supplemental Responses to Beckman Coulter Inc.'s Third Set of Interrogatories (Nos. 15-16) filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 03/19/2021) |
| 226 | Mar 25, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding oral argument scheduled for April 21, 2021. (Farnan, Kelly) Modified on 3/25/2021 (nms). (Entered: 03/25/2021) |
| 227 | Mar 25, 2021 | Request | ORAL ORDER: The Court, having reviewed the parties' March 25, 2021 letter regarding the April 21, 2021 oral argument on Plaintiffs' Motion to Dismiss, (D.I. 226), HEREBY ORDERS that the parties' proposal regarding time allocation is adopted. Ninety minutes will be allocated for argument, to be split equally between the parties. Ordered by Judge Christopher J. Burke on 3/25/2021. (dlb) (Entered: 03/25/2021) |
| 228 | Mar 30, 2021 | Request | NOTICE OF SERVICE of (1) Plaintiff Sysmex Corporations Supplemental Responses to Beckman Coulter. Inc.s Second Set of Interrogatories (Nos. 11-12) and (2) Plaintiff Sysmex Corporations Supplemental Responses to Beckman Coulter Inc.s Third Set of Interrogatories (Nos. 15-16) filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 03/30/2021) |
| 229 | Mar 30, 2021 | Request | AMENDED NOTICE to Take Deposition of Daigo Fukuma on March 30-31, 2021, filed by Beckman Coulter, Inc..(Sharp, Melanie) Modified on 3/31/2021 (nms). (Entered: 03/30/2021) |
| 230 | Apr 6, 2021 | Request | REPORT AND RECOMMENDATIONS regarding claim construction. 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 4/20/2021. Signed by Judge Christopher J. Burke on 4/6/2021. (mlc) Modified on 5/11/2022 (smg). (Entered: 04/06/2021) |
| 231 | Apr 9, 2021 | Request | NOTICE OF SERVICE of Plaintiff Sysmex Corporations Supplemental Responses to Beckman Coulter. Inc.s First Set of Interrogatories (No. 4) filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 04/09/2021) |
| 232 | Apr 9, 2021 | Request | NOTICE OF SERVICE of Plaintiff Sysmex Corporations Supplemental Responses to Beckman Coulter. Inc.s First Set of Interrogatories (Nos. 4-5) filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 04/09/2021) |
| 234 | Apr 9, 2021 | Request | MOTION to Stay Claims Pending Inter Partes Review - filed by Beckman Coulter, Inc.. Motions referred to Christopher J. Burke.(Sharp, Melanie) Modified on 4/13/2021 (nms). (Entered: 04/09/2021) |
| 235 | Apr 9, 2021 | Request | OPENING BRIEF in Support re 234 MOTION to Stay Claims Pending Inter Partes Review, filed by Beckman Coulter, Inc..Answering Brief/Response due date per Local Rules is 4/23/2021. (Attachments: # 1 Exhibits A-E)(Sharp, Melanie) Modified on 4/13/2021 (nms). (Entered: 04/09/2021) |
| 236 | Apr 10, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding letter brief in support of Motion for Leave to Amend Second Amended Answer and Counterclaims. (Attachments: # 1 Exhibits A-M, # 2 Certificate of Service)(Sharp, Melanie) Modified on 4/13/2021 (nms). (Entered: 04/10/2021) |
| Apr 12, 2021 | CORRECTING ENTRY: D.I. 233 was removed from the docket and will be re-filed under seal. (lak) (Entered: 04/12/2021) | ||
| 237 | Apr 12, 2021 | Request | ORAL ORDER: The Court, having reviewed Defendant's Motion to Stay Plaintiffs' Claims Pending Inter Partes Review, (D.I. 234 ), hereby ORDERS that Plaintiffs' answering brief shall be no more than seven single-spaced pages, and Defendant's reply brief shall be no more than three single-spaced pages. Ordered by Judge Christopher J. Burke on 4/12/2021. (mlc) (Entered: 04/12/2021) |
| 238 | Apr 12, 2021 | Request | [SEALED] MOTION for Leave to Amend - filed by Beckman Coulter, Inc.. (Attachments: # 1 Proposed Order, # 2 Exhibit A, # 3 Exhibit B)Motions referred to Christopher J. Burke.(Sharp, Melanie) Modified on 4/13/2021 (nms). (Entered: 04/12/2021) |
| 239 | Apr 14, 2021 | Request | Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding Request the Scheduling of a Discovery Teleconference. (Farnan, Kelly) (Entered: 04/14/2021) |
| 240 | Apr 14, 2021 | Request | ORAL ORDER Setting Teleconference: The Court has reviewed the parties' April 14, 2021 letter requesting a discovery dispute teleconference regarding one discovery dispute. (D.I. 239) It hereby ORDERS that the procedures for resolving a discovery dispute set out in the Scheduling Order will be modified as follows with regard to this dispute: (1) The parties shall file a joint "Motion for Teleconference to Resolve Discovery Dispute," the text of which can be found in the "Forms" tab of Judge Burke's page on the District Court's website.; (2) A discovery dispute teleconference is set for May 3, 2021 at 12:00 PM before Judge Christopher J. Burke.; (3) On April 20, 2021, any party seeking relief shall file with the Court a letter, not to exceed three (3) single-spaced pages, in no less than 12-point font, outlining the issues in dispute and its position on those issues. On April 26, 2021, any party opposing the application for relief may file a letter, not to exceed three (3) single-spaced pages, in no less than 12-point font, outlining that party's reasons for its opposition.; (4) The parties should also consult Judge Burke's "Guidelines for Discovery Disputes," which is found in the "Guidelines" tab on Judge Burke's portion of the District Court's website.; (5) By no later than April 29, 2021, the parties shall jointly provide the Court's Courtroom Deputy, Ms. Benyo, with a dial-in number via e-mail to use for the call.; and (6) The Court may choose to resolve the dispute prior to the telephone conference and will, in that event, cancel the conference. Ordered by Judge Christopher J. Burke on 4/14/2021. (dlb) (Entered: 04/14/2021) |
| 241 | Apr 14, 2021 | Request | STIPULATION to Extend Time regarding various deadlines, by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) (Entered: 04/14/2021) |
| Apr 15, 2021 | SO ORDERED D.I. 241 Stipulation to Extend Time regarding various deadlines filed by Sysmex Corporation, Sysmex America, Inc. Ordered by Judge Christopher J. Burke on 4/14/2021. (dlb) (Entered: 04/15/2021) | ||
| 242 | Apr 16, 2021 | Request | Joint MOTION for Teleconference to Resolve Discovery Dispute - filed by Sysmex America, Inc., Sysmex Corporation. Motions referred to Christopher J. Burke.(Farnan, Kelly) (Entered: 04/16/2021) |
| 243 | Apr 16, 2021 | Request | Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding May 3, 2021 Discovery Dispute Teleconference. (Farnan, Kelly) (Entered: 04/16/2021) |
| 244 | Apr 16, 2021 | Request | ORAL ORDER: The Court, having considered Plaintiffs Notice Regarding Intent to Have Newer Attorney Argue Discovery Dispute, (D.I. 243), and pursuant to the Court's Standing Order Regarding Courtroom Opportunities for Newer Attorneys, HEREBY ORDERS that it will ensure that the parties have at least 60 minutes of argument collectively for the discovery dispute teleconference scheduled for May 3, 2021. Ordered by Judge Christopher J. Burke on 4/16/2021. (dlb) (Entered: 04/16/2021) |
| 245 | Apr 16, 2021 | Request | NOTICE OF SERVICE of Plaintiffs Sysmex Corporation and Sysmex America, Inc.s Final Infringement Contentions Against Beckman Coulter, Inc. filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 04/16/2021) |
| 246 | Apr 19, 2021 | Request | STIPULATION and Proposed Order to Extend Time to file a redacted version - filed by Sysmex America, Inc., Sysmex Corporation. (Delcollo, Renee) (Entered: 04/19/2021) |
| Apr 20, 2021 | SO ORDERED D.I. 246 STIPULATION and Proposed Order to Extend Time to file a redacted version filed by Sysmex Corporation, Sysmex America, Inc. Ordered by Judge Christopher J. Burke on 4/20/2021. (dlb) (Entered: 04/20/2021) | ||
| 247 | Apr 20, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding discovery dispute. (Attachments: # 1 Exhibit 1-5, # 2 Text of Proposed Order)(Farnan, Kelly) (Entered: 04/20/2021) |
| Apr 21, 2021 | Minute Entry for proceedings held before Judge Christopher J. Burke - Motion Hearing held on 4/21/2021 via videoconference regarding D.I. 134 MOTION to Dismiss BCI's Fifth Counterclaim and Motion to Strike BCI's Sixth Affirmative Defense filed by Sysmex Corporation, Sysmex America, Inc. The Court heard argument from the parties regarding the motion. The Court expects to issue a report and recommendation regarding the motion shortly. (Court Reporter Heather Triozzi. Clerk: M. Crawford) Appearances: K. Farnan, R. Delcollo, J. Sobieraj, R. Mallin for Plaintiffs; M. Sharp, A. Hubbi, A. Feigelson, D. Airan, N. Kopinski, W. Feng for Defendant. (mlc) (Entered: 04/21/2021) | ||
| 248 | Apr 21, 2021 | View | REDACTED VERSION of 238 MOTION for Leave to Amend by Beckman Coulter, Inc.. (Sharp, Melanie) (Entered: 04/21/2021) |
| 249 | Apr 21, 2021 | Request | REDACTED VERSION of 236 Letter, by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 4/22/2021 (nms). (Entered: 04/21/2021) |
| 250 | Apr 22, 2021 | Request | ORAL REPORT AND RECOMMENDATIONS regarding D.I. 134 MOTION to Dismiss BCI's Fifth Counterclaim and Motion to Strike BCI's Sixth Affirmative Defense filed by Sysmex Corporation, Sysmex America, Inc.: The Court, having reviewed Plaintiffs Sysmex Corporation and Sysmex America, Inc.'s ("Sysmex") Motion to Dismiss Defendant Beckman Coulter, Inc.'s ("BCI") Fifth Counterclaim and Motion to Strike BCI's Sixth Affirmative Defense (the "counterclaim"), (D.I. 134), and the parties' briefing relating thereto, (D.I. 135; D.I. 156; D.I. 165), and having heard argument on April 21, 2021, HEREBY RECOMMENDS that Sysmex's Motion be GRANTED. In support, the Court notes as follows: (1) The first reason why the counterclaim is deficient is that, even to the extent that it sufficiently alleges the "who" of inequitable conduct (i.e., Mr. Nagai and Mr. Horie), it fails to plausibility allege with particularity "facts from which the court may reasonably infer that a specific individual both knew of invalidating information that was withheld from the [United States Patent and Trademark Office ('PTO')] and withheld that information with a specific intent to deceive the PTO." Delano Farms Co. v. Ca. Table Grape Comm'n, 655 F.3d 1337, 1350 (Fed. Cir. 2011). BCI's counterclaim simply does not contain a sufficient amount of facts to allow for the reasonable inference that Mr. Nagai and Mr. Horie possessed the requisite knowledge or intent. (D.I. 135 at 7-10; D.I. 165 at 2-7) With regard to Mr. Nagai, to the extent that BCI's counterclaim relies on an allegation that "on information and belief" Mr. Nagai actively participated in the process of prosecuting Sysmex patent applications and reviewing patents and prior art from at least March 2006 to the present, (D.I. 119 at para. 25), the law requires that allegations made "on information and belief" set out the specific facts upon which the belief is reasonably based, see Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1330 (Fed. Cir. 2009). Yet BCI's counterclaim does not include any such specific facts. (D.I. 135 at 9 n.3; D.I. 165 at 3) While BCI points to material in its briefing (including sworn testimony, documents, and Sysmex's privilege log) as supporting Mr. Nagai's knowledge and deceptive intent, (D.I. 156 at 16), BCI may not amend its pleading in its responsive briefing; the Court cannot consider such information in resolving a motion to dismiss, as it was not included in or attached to the pleading-at-issue. And as for Mr. Horie, BCI's counterclaim is similarly deficient. To the extent that BCI seeks to fill holes about Mr. Horie's knowledge and intent by requesting that the Court take judicial notice of voluminous documents/facts arguably in the public record (and requesting that the Court draw various inferences from such material), (id. at 17-18), that is inappropriate, especially where BCI's theories regarding this content are not included in the counterclaim itself. See Varian Med. Sys., Inc. v. Elekta AB, Civil Action No. 15-871-LPS, 2016 WL 3748772, at *7 (D. Del. July 12, 2016) ("It seems like one thing to take judicial notice of a document... in order to amplify the factual basis for a claim already set out in some detail in a pleading. But it feels like quite another for an important element of a claim to be deemed satisfied entirely due to a large number of extra-complaint, judicially-noticed facts. At some level, doing so seems at odds with the idea that the factual basis of a plausible claim should actually be set out in a pleading.").; (2) The second reason the counterclaim is deficient is that, as Sysmex argues, (D.I. 135 at 10-15; D.I. 165 at 7-10), BCI fails to plead any facts that: (1) identify what claim limitations are disclosed in the allegedly withheld prior art references (and where those limitations are disclosed); and (2) explain which of those limitations are not found in the prior art that was before the Examiner (i.e., explaining why the references are material and not cumulative of information already in the record). See Int'l Bus. Machs. Corp. v. Priceline Grp. Inc., Civil Action No. 15-137-LPS-CJB, 2017 WL 1349175, at *10-11 (D. Del. Apr. 10, 2017) (explaining that such information is required to show the "why" and "how" of an inequitable conduct claim). Indeed, BCI's counterclaim never cites to the content of any of the asserted patent claims at all, and instead uses vague phraseology like "claimed hardware arrangement[s]." (D.I. 119 at para. 35); (3) With regard to BCI's request to file an amended pleading with respect to inequitable conduct, (D.I. 156 at 2, 21), the Court recommends that, if the District Court agrees with the Courts recommendation here, BCI not be immediately permitted to file an amended pleading. The Court has some concern about futility, since BCI had ample time to draft its prior counterclaim, and yet that claim was really deficient. So instead the Court recommends that BCI first be required to file a motion for leave to file an amended counterclaim (one that attaches the proposed amended pleading). See Fletcher-Harlee Corp. v. Pote Concrete Contractors, Inc., 482 F.3d 247, 252 (3d Cir. 2007).; and (4) The parties may serve and file specific written objections within fourteen (14) days of the issuance of this Report and Recommendation. Fed. R. Civ. P. 72(b)(2). The parties are directed to the Courts Standing Order for Objections Filed Under Fed. R. Civ. P. 72, dated October 9, 2013, a copy of which is available on the District Courts website, located at http://www.ded.uscourts.gov.. 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 5/6/2021. Ordered by Judge Christopher J. Burke on 4/22/2021. (dlb) (Entered: 04/22/2021) |
| 251 | Apr 26, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding discovery dispute teleconference scheduled for May 3, 2021. (Sharp, Melanie) Modified on 4/27/2021 (nms). (Entered: 04/26/2021) |
| 252 | Apr 26, 2021 | Request | PROPOSED Order to Cancel Discovery Dispute Teleconference Scheduled for May 3, 2021, by Beckman Coulter, Inc.. (Sharp, Melanie) (Entered: 04/26/2021) |
| Apr 27, 2021 | SO ORDERED D.I. 252 Proposed Order to Cancel Discovery Dispute Teleconference Scheduled for May 3, 2021, filed by Beckman Coulter, Inc. Ordered by Judge Christopher J. Burke on 4/27/2021. (dlb) (Entered: 04/27/2021) | ||
| 253 | Apr 27, 2021 | Request | REDACTED VERSION of 247 Letter, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibits 1-5, # 2 Proposed Order)(Farnan, Kelly) Modified on 4/27/2021 (nms). (Entered: 04/27/2021) |
| 254 | Apr 27, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding Motion to Amend (D.I. 238 ). (Attachments: # 1 Exhibits 1-18, Part 1, # 2 Exhibits 1-18, Part 2)(Farnan, Kelly) Modified on 4/28/2021 (nms). (Entered: 04/27/2021) |
| 255 | Apr 30, 2021 | Request | Official Transcript of Motion Hearing (Remote) held on 4/21/21 before Judge Christopher J. Burke. Court Reporter Heather M. Triozzi,Email: Heather_Triozzi@ded.uscourts.gov. Transcript may be viewed at the court public terminal or order/purchased through the Court Reporter before the deadline for Release of Transcript Restriction. After that date, it may be obtained through PACER. Redaction Request due 5/21/2021. Redacted Transcript Deadline set for 6/1/2021. Release of Transcript Restriction set for 7/29/2021. (Triozzi, Heather) (Entered: 04/30/2021) |
| 256 | May 4, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding reply in Support of Beckman Coulter, Inc.'s Motion for Leave to Amend its Answer and Counterclaims (D.I. 238 ). (Attachments: # 1 Exhibits N-T)(Sharp, Melanie) Modified on 5/4/2021 (nms). (Entered: 05/04/2021) |
| 257 | May 4, 2021 | View | OBJECTION to 230 Report and Recommendations, by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 5/5/2021 (nms). (Entered: 05/04/2021) |
| 258 | May 4, 2021 | Request | [SEALED] SEALED ANSWERING BRIEF in Opposition re 234 MOTION to Stay Claims Pending Inter Partes Review filed by Sysmex America, Inc., Sysmex Corporation.Reply Brief due date per Local Rules is 5/11/2021. (Attachments: # 1 Exhibit 1-17)(Farnan, Kelly) (Entered: 05/04/2021) |
| 259 | May 4, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding teleconference request to address Motion to Amend - (D.I. 238 ). (Sharp, Melanie) Modified on 5/5/2021 (nms). (Entered: 05/04/2021) |
| 260 | May 4, 2021 | Request | REDACTED VERSION of 254 Letter by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit 1-18)(Farnan, Kelly) (Entered: 05/04/2021) |
| 261 | May 4, 2021 | Request | Letter to The Honorable Christopher J. Burke from Melanie K. Sharp regarding Discovery Dispute Teleconference Request. (Sharp, Melanie) (Entered: 05/04/2021) |
| May 5, 2021 | DEFICIENCY NOTICE by the Court issued to Sysmex America, Inc., and Sysmex Corporation re 258 Sealed Answering Brief in Opposition. This filing does not comply with Local Rule 5.2(b)(1). Plaintiffs are to supplement the docket accordingly. (nms) (Entered: 05/05/2021) | ||
| 262 | May 5, 2021 | Request | NOTICE OF SERVICE of Sysmex Corporations and Sysmex America, Inc.s Opposition to Defendant Beckman Coulter, Inc.s Motion to Stay Sysmexs Claims Pending Inter Partes Review (D.I. 258) re 258 Answering Brief in Opposition, filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 05/05/2021) |
| 263 | May 5, 2021 | Request | ORAL ORDER Setting Teleconference: The Court has reviewed the parties' May 4, 2021 letters requesting teleconferences regarding (1) one discovery dispute; and (2) Defendant Beckman Coulter Inc.'s Motion to Amend ("Motion to Amend"). (D.I. 259; D.I. 261) It hereby ORDERS as follows regarding these requests: (1) With regard to the discovery dispute, the parties shall file a joint "Motion for Teleconference to Resolve Discovery Dispute," the text of which can be found in the "Forms" tab of Judge Burke's page on the District Court's website.; (2) A teleconference is set for May 25, 2021 at 2:00 PM before Judge Christopher J. Burke. During the teleconference, the Court will hear argument regarding the parties' discovery dispute as well as regarding the Motion to Amend; (3) On May 11, 2021, any party seeking relief regarding the discovery dispute shall file with the Court a letter, not to exceed three (3) single-spaced pages, in no less than 12-point font, outlining the issues in dispute and its position on those issues. On May 17, 2021, any party opposing the application for relief regarding the discovery dispute may file a letter, not to exceed three (3) single-spaced pages, in no less than 12-point font, outlining that party's reasons for its opposition.; (4) The parties should also consult Judge Burke's "Guidelines for Discovery Disputes," which is found in the "Guidelines" tab on Judge Burke's portion of the District Court's website.; (5) By no later than May 20, 2021, the parties shall jointly provide the Court's law clerk, Melanie Crawford, with a dial-in number via e-mail to use for the call.; and (6) The Court may choose to resolve the discovery dispute prior to the telephone conference. Ordered by Judge Christopher J. Burke on 5/5/2021. (dlb) (Entered: 05/05/2021) |
| 264 | May 5, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding correction to discovery dispute teleconference request . (Sharp, Melanie) Modified on 5/5/2021 (nms). (Entered: 05/05/2021) |
| 265 | May 6, 2021 | Request | ORAL ORDER: With respect to Defendant's Objections to the Report and Recommendation for the Construction of Certain Disputed Claim Terms, (D.I. 257), the Court hereby ORDERS that by no later than May 7, 2021, Defendant shall file the Certification required by Section 5 of this Court's Standing Order for Objections Filed under Federal Rule of Civil Procedure 72. Ordered by Judge Christopher J. Burke on 5/6/2021. (dlb) (Entered: 05/06/2021) |
| 266 | May 7, 2021 | Request | Certification Pursuant Standing Order for Objections Filed under Fed. R. Civ. P. 72 (see D.I. 257 ), by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 5/9/2021 (nms). (Entered: 05/07/2021) |
| 267 | May 7, 2021 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s Final Invalidity Contentions filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 05/07/2021) |
| 268 | May 7, 2021 | Request | [SEALED] MOTION for Leave to File Third Amended Answer and Counterclaims - filed by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B)Motions referred to Christopher J. Burke.(Sharp, Melanie) Modified on 5/9/2021 (nms). (Entered: 05/07/2021) |
| 269 | May 7, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding Motion for Leave to File a Third Amended Answer and Counterclaims. (Attachments: # 1 Exhibits A-B, # 2 Exhibits 1-21)(Sharp, Melanie) Modified on 5/9/2021 (nms). (Entered: 05/07/2021) |
| 270 | May 11, 2021 | Request | REDACTED VERSION of 256 Letter, by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 5/12/2021 (nms). (Entered: 05/11/2021) |
| 271 | May 11, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding discovery dispute regarding Plaintiffs' Final Infringement Contentions. (Attachments: # 1 Exhibits A-C, # 2 Certificate of Service)(Sharp, Melanie) Modified on 5/12/2021 (nms). (Entered: 05/11/2021) |
| 272 | May 11, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding Beckman Coulter, Inc.'s Withdrawal of its Motion to Stay (D.I. 234 ). (Sharp, Melanie) Modified on 5/12/2021 (nms). (Entered: 05/11/2021) |
| 273 | May 12, 2021 | Request | ORDER: The Report and Recommendations (D.I. 250 ) are ADOPTED. Plaintiffs Motion to Dismiss BCIs Fifth Counterclaim and Motion to Strike BCIs Sixth Affirmative Defense (D.I. 134 ) is GRANTED as set forth in the Report and Recommendations. Signed by Judge Richard G. Andrews on 5/12/2021. (nms) (Entered: 05/12/2021) |
| 274 | May 12, 2021 | Request | Joint MOTION for Teleconference to Resolve Discovery Dispute - filed by Beckman Coulter, Inc.. Motions referred to Christopher J. Burke.(Sharp, Melanie) Modified on 5/12/2021 (nms). (Entered: 05/12/2021) |
| 275 | May 14, 2021 | Request | REDACTED VERSION of 258 Answering Brief in Opposition, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit 1-17)(Farnan, Kelly) (Entered: 05/14/2021) |
| 276 | May 14, 2021 | Request | REDACTED VERSION of 268 MOTION for Leave to File Third Amended Answer and Counterclaims by Beckman Coulter, Inc.. (Sharp, Melanie) (Entered: 05/14/2021) |
| 277 | May 14, 2021 | Request | STIPULATION TO EXTEND TIME to file redacted versions of Motion for Leave to File Third Amended Answer and Counterclaims and Letter Brief in Support of Motion to May 18, 2021 - filed by Sysmex America, Inc., Sysmex Corporation. (Delcollo, Renee) (Entered: 05/14/2021) |
| May 17, 2021 | SO ORDERED D.I. 277 STIPULATION TO EXTEND TIME to file redacted versions of Motion for Leave to File Third Amended Answer and Counterclaims and Letter Brief in Support of Motion to May 18, 2021 filed by Sysmex Corporation, Sysmex America, Inc. Ordered by Judge Christopher J. Burke on 5/17/2021. (mlc) (Entered: 05/17/2021) | ||
| 278 | May 17, 2021 | Request | SEALED Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding opposition to Motion for Leave to File Third Amended Answer and Counterclaims. (Attachments: # 1 Exhibits A-F, # 2 Exhibits G-W)(Farnan, Kelly) Modified on 5/17/2021 (nms). (Entered: 05/17/2021) |
| May 17, 2021 | CORRECTING ENTRY: D.I. 278 has been placed under seal per counsel's request. (nms) (Entered: 05/17/2021) | ||
| 279 | May 17, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding response to Defendant's May 11, 2021 Letter. (Attachments: # 1 Exhibits 1-6)(Farnan, Kelly) Modified on 5/18/2021 (nms). (Entered: 05/17/2021) |
| 280 | May 18, 2021 | Request | STIPULATION TO EXTEND TIME the deadline for Plaintiffs' to file a response to Defendant's Objections to the Report and Recommendation for the Construction of Certain Disputed Claim Terms to May 19, 2021 - filed by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) (Entered: 05/18/2021) |
| May 18, 2021 | SO ORDERED D.I. 280 STIPULATION TO EXTEND TIME the deadline for Plaintiffs' to file a response to Defendant's Objections to the Report and Recommendation for the Construction of Certain Disputed Claim Terms to May 19, 2021 filed by Sysmex Corporation, Sysmex America, Inc. Ordered by Judge Christopher J. Burke on 5/18/2021. (mlc) (Entered: 05/18/2021) | ||
| 281 | May 18, 2021 | Request | REDACTED VERSION of 271 Letter, by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 5/19/2021 (nms). (Entered: 05/18/2021) |
| 282 | May 18, 2021 | Request | REDACTED VERSION of 268 MOTION for Leave to File Third Amended Answer and Counterclaims by Beckman Coulter, Inc.. (Sharp, Melanie) (Entered: 05/18/2021) |
| 283 | May 18, 2021 | Request | REDACTED VERSION of 269 Letter, by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 5/19/2021 (nms). (Entered: 05/18/2021) |
| 284 | May 19, 2021 | Request | RESPONSE to 257 Objections, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibits 1, 3-5)(Farnan, Kelly) Modified on 5/20/2021 (nms). (Entered: 05/19/2021) |
| 285 | May 19, 2021 | Request | [SEALED] EXHIBIT 2 to 284 Response to Objections, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit 2)(Farnan, Kelly) Modified on 5/20/2021 (nms). (Entered: 05/19/2021) |
| 286 | May 20, 2021 | Request | Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding May 25, 2021 Teleconference. (Farnan, Kelly) (Entered: 05/20/2021) |
| 287 | May 20, 2021 | Request | ORAL ORDER: The Court, having considered Plaintiffs' Notice Regarding Intent to Have Newer Attorney Argue Discovery Dispute, (D.I. 286), and pursuant to the Court's Standing Order Regarding Courtroom Opportunities for Newer Attorneys, HEREBY ORDERS that it will ensure that the parties have at least 60 minutes of argument collectively for the discovery dispute teleconference scheduled for May 25, 2021. Ordered by Judge Christopher J. Burke on 5/20/2021. (mlc) (Entered: 05/20/2021) |
| 288 | May 20, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding Beckman Coulter Inc.'s Reply in Support of its Motion for Leave to File Third Amended Answer and Counterclaims (D.I. 268 ). (Attachments: # 1 Exhibits 22-24, # 2 Certificate of Service)(Sharp, Melanie) Modified on 5/21/2021 (nms). (Entered: 05/20/2021) |
| 289 | May 20, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding Teleconference request to address Motion for Leave to File Third Amended Answer and Counterclaims (D.I. 268 ). (Sharp, Melanie) Modified on 5/21/2021 (nms). (Entered: 05/20/2021) |
| 290 | May 21, 2021 | Request | ORAL ORDER Setting Hearing on Motion: The Court hereby ORDERS that a teleconference to hear argument regarding Defendant's MOTION for Leave to File Third Amended Answer and Counterclaims, (D.I. 268 ), is set for 6/8/2021 at 2:00 PM before Judge Christopher J. Burke. The Court has allocated thirty minutes for each side to present its argument on the Motion. By no later than June 1, 2021, the parties shall jointly provide the Court's Courtroom Deputy, Ms. Benyo, with a dial-in number via email to use for the call.. Ordered by Judge Christopher J. Burke on 5/21/2021. (mlc) (Entered: 05/21/2021) |
| May 25, 2021 | Minute Entry for proceedings held before Judge Christopher J. Burke - Discovery Conference held on 5/25/2021. The Court heard argument from the parties regarding Defendant's discovery dispute, (D.I. 274), and resolved the dispute during the teleconference. The transcript shall serve as the Court's order. The Court also heard argument regarding Defendant's motion to amend, (D.I. 238). The Court took the motion under advisement and will issue an order. (Court Reporter Deanna Warner. Clerk: M. Crawford) Appearances: K. Farnan, R. Delcollo, J. Sobieraj, R. Mallin, J. James for Plaintiffs; M. Sharp, A. Hubbi, A. Feigelson, W. Feng for Defendant. (mlc) (Entered: 05/25/2021) | ||
| 291 | May 25, 2021 | Request | REDACTED VERSION of 278 Letter, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibits A-W part 1, # 2 Exhibits A-W part 2)(Farnan, Kelly) (Entered: 05/25/2021) |
| 292 | May 25, 2021 | Request | REDACTED VERSION of 279 Letter by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit 1-6)(Farnan, Kelly) (Entered: 05/25/2021) |
| 293 | May 26, 2021 | Request | REDACTED VERSION of 285 Exhibit to a Document by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit 2)(Farnan, Kelly) (Entered: 05/26/2021) |
| 294 | May 27, 2021 | Request | STIPULATION TO EXTEND TIME for The Parties to Serve Their Rule 26(a)(2) Initial Disclosure of Expert Testimony to June 1, 2021 - filed by Beckman Coulter, Inc.. (Sharp, Melanie) (Entered: 05/27/2021) |
| May 27, 2021 | SO ORDERED D.I. 294 STIPULATION TO EXTEND TIME for The Parties to Serve Their Rule 26(a)(2) Initial Disclosure of Expert Testimony to June 1, 2021 filed by Beckman Coulter, Inc. Ordered by Judge Christopher J. Burke on 5/27/2021. (dlb) (Entered: 05/27/2021) | ||
| 295 | May 27, 2021 | Request | REDACTED VERSION of 288 Letter, by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 5/28/2021 (nms). (Entered: 05/27/2021) |
| 296 | Jun 1, 2021 | Request | ORAL ORDER: The Court, having considered Defendant's motion for leave to amend ("Motion"), (D.I. 238), in which Defendant seeks leave to amend its Answer and Counterclaims to include (1) the affirmative defense of unclean hands, (2) a claim for breach of contract, and (3) a claim for Plaintiffs' violation of the Defend Trade Secrets Act (together, the "proposed new claims"), having reviewed the parties' letter briefs relating thereto, (D.I. 236; D.I. 254; D.I. 256), and having heard argument on May 25, 2021, hereby ORDERS that the Motion is DENIED. For reasons set out by Plaintiffs, (D.I. 254 at 2), the Court thinks it is very possible that Defendant, had it exercised diligence, could have moved to amend its counterclaims prior to the October 1, 2020 deadline for amendment set out in the Scheduling Order, (D.I. 118 at 1). Were that so, there would surely not be "good cause" to permit a post-Scheduling Order-deadline amendment here. But separate and apart from the question of whether the "good cause" standard could be satisfied, the Court concludes that pursuant to Federal Rule of Civil Procedure 15, Defendant's Motion should be denied because Defendant otherwise unduly delayed in waiting to file the Motion until April 10, 2021. See Paoli v. Stetser, Civil Action No. 12-66-GMS-CJB, 2013 WL 2154393, at *3 (D. Del. May 16, 2013) (noting that in considering a motion to amend filed after the relevant deadline in the scheduling order, even if the good cause standard is met, if a party has nevertheless unduly delayed in presenting the amendment pursuant to Rule 15(a), the motion should be denied); see also Cellectis S.A. v. Precision Biosciences, 883 F. Supp. 2d 526, 532 (D. Del. 2012) (noting that for Rule 15 purposes, delay is undue when an unwarranted burden is placed on the court or when the requesting party has had previous opportunities to amend). The Court comes to this conclusion for the following reasons: (1) The Motion was filed nearly six and a half months after the deadline for amendments, and just over four months in advance of the filing date for summary judgment motions.; (2) Even if one accepts at face value Defendant's argument that it had no reason to suspect that Mr. Horie may have improperly accessed confidential information from the Illinois Action until October 27, 2020 (when Plaintiffs sought to have Mr. Horie review Defendant's source code in this case), Defendant unduly drug its feet from there in getting the Motion filed. After all, it waited another eight weeks, until December 22, 2020, to request Mr. Horie's deposition. (D.I. 254 at 3-4) And from there, Defendant knowing that the initial February 2021 discovery cut off came and went, and that the case dispositive filing deadline was only months away, waited another 15 weeks, until April 10, 2021, to get its Motion on file. It simply waited too long. See Lipocine Inc. v. Clarus Therapeutics, Inc., C.A. No. 19-622 (WCB), 2020 WL 4794576, at *4 (D. Del. Aug. 18, 2020) ("[C]ourts in this district have found delay to be undue when the motion to amend was filed after the deadline for amending and the period of delay was three months or more from the time defendant obtained critical information relating to [the claim] to the date the motion to amend was filed.").; and (3) Were the claims permitted, the case schedule would be adversely affected. The proposed new claims involve alleged trade secrets, and trade secret discovery can be complicated. Those claims also implicate some complex issues involving attorney-client privilege. Both sides will need discovery, and Defendant never cogently explains how that could occur within the constraints of the current schedule. (D.I. 254 at 5); see also Asahi Glass Co. v. Guardian Indus. Corp., 276 F.R.D. 417, 42021 (D. Del. 2011).Ordered by Judge Christopher J. Burke on 6/1/2021. (dlb) (Entered: 06/01/2021) |
| 297 | Jun 1, 2021 | Request | NOTICE OF SERVICE of 1) Opening Expert Report of Vijay Madisetti, Ph.D. Regarding Infringement of U.S. Patent Nos. 10,401,350 and 10,401,351 and 2) Expert Report of David A. Haas filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 06/01/2021) |
| 298 | Jun 2, 2021 | Request | NOTICE OF SERVICE of Beckman Coulter, Inc.'s Expert Report of John W. Roche Concerning Invalidity of U.S. Patent Nos. 10,401,350 and 10,401,351 filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 06/02/2021) |
| 299 | Jun 4, 2021 | Request | NOTICE OF SERVICE of Plaintiffs Sysmex Corporation and Sysmex America, Inc.s Supplemental Final Infringement Contentions Against Beckman Coulter, Inc. filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 06/04/2021) |
| Jun 8, 2021 | Minute Entry for proceedings held before Judge Christopher J. Burke - Telephonic Oral Argument held on 6/8/2021 regarding D.I. 268 MOTION for Leave to File Third Amended Answer and Counterclaims filed by Beckman Coulter, Inc. The Court heard argument from the parties and took the motion under advisement. (Court Reporter Deanna Warner. Clerk: M. Crawford) Appearances: K. Farnan, R. Delcollo, J. Sobieraj, R. Mallin for Plaintiffs; M. Sharp, A. Hubbi, A. Feigelson for Defendant. (mlc) (Entered: 06/08/2021) | ||
| 300 | Jun 10, 2021 | Request | STIPULATION TO EXTEND TIME regarding Expert Discovery Deadlines to Various Dates - filed by Beckman Coulter, Inc.. (Sharp, Melanie) (Entered: 06/10/2021) |
| Jun 10, 2021 | SO ORDERED granting 300 STIPULATION TO EXTEND TIME regarding Expert Discovery Deadlines to Various Dates filed by Beckman Coulter, Inc. Ordered by Judge Christopher J. Burke on 6/10/2021. (dlb) (Entered: 06/10/2021) | ||
| 301 | Jun 11, 2021 | Request | ORAL ORDER: The Court, having considered Defendant's motion for leave to file an amended counterclaim for inequitable conduct, ("Motion"), (D.I. 268), having reviewed the parties' letter briefs relating thereto, (D.I. 269; D.I. 278; D.I. 288), and having heard argument on June 8, 2021, hereby ORDERS that the Motion is GRANTED for the reasons that follow: (1) Federal Rule of Civil Procedure 16(b)(4)'s good cause standard has been met here. Defendant first filed a pleading that included a counterclaim and affirmative defense of inequitable conduct by the October 1, 2020 deadline for amended pleadings. (D.I. 118; D.I. 119; see also D.I. 269 at 1) Plaintiffs thereafter filed a motion to dismiss the counterclaim and affirmative defense. (D.I. 134) The Court found that Defendant had not sufficiently pleaded inequitable conduct, and required Defendant to file a motion for leave to file an amended counterclaim should it wish to shore up its inequitable conduct allegations. (D.I. 250; D.I. 273) That is the present Motion before the Court. (2) In response to the Motion, Plaintiffs do not address futility; instead they argue that good cause is lacking (and/or, per Federal Rule of Civil Procedure 15, that undue delay and unfair prejudice are afoot), because Defendant had all the information alleged in its proposed amended counterclaim prior to the October 1, 2020 deadline. (D.I. 278) However, Defendant's proposed amended counterclaim newly alleges that named inventor Mr. Narisada engaged in inequitable conduct, and it bolsters that argument in part based on timely-sought deposition testimony from Mr. Narisada, which Defendant obtained on March 10, 2021. (D.I. 269 at 3; D.I. 288 at 2) Although Plaintiffs point to an interrogatory response and privilege log entries that purportedly conveyed the same information about Mr. Narisadas role well before March 2021, the Court is not persuaded that these documents demonstrated the extent of Mr. Narisada's involvement with the XE-2100 body fluid application. (D.I. 288 at 2) Under these circumstancesi.e., where the Defendant first attempted to file its inequitable conduct counterclaim by the pleading deadline (albeit unsuccessfully) and where it timely pursued additional relevant information that it included in its proposed amended counterclaim--the Court cannot say that Defendant was not diligent, nor that it unduly delayed. Cf. Enzo Life Scis., Inc. v. Digene Corp., 270 F. Supp. 2d 484, 488-89 (D. Del. 2003); (3) Moreover, Plaintiffs make no substantive argument (i.e., one that discusses in real detail the contours of still-needed discovery, or the extent of the filings impact on the case schedule) that explains why permitting Defendants proposed amended pleading would prejudice Plaintiffs by throwing the current case schedule off course. (D.I. 278 at 5); and (4) Accordingly, Defendant is directed to file its amended pleading on the docket by no later than June 14, 2021, but the amended pleading shall not contain the proposed additional counts relating to alleged violations of the Illinois protective order (counts that were the subject of a separate motion to amend that the Court has denied). (D.I. 296; see also D.I. 278 at 1 n.1). Ordered by Judge Christopher J. Burke on 6/11/2021. (dlb) (Entered: 06/11/2021) |
| 302 | Jun 14, 2021 | Request | [SEALED] Second Amended Answer to 1 Complaint, and COUNTERCLAIMS against Sysmex America, Inc., Sysmex Corporation by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 1, part A, # 2 Exhibit 1, part B, # 3 Exhibit 2, part A, # 4 Exhibit 2, part B, # 5 Exhibits 3-11, # 6 Certificate of Service)(Sharp, Melanie) Modified on 6/15/2021 (nms). (Entered: 06/14/2021) |
| 303 | Jun 21, 2021 | Request | REDACTED VERSION of 302 Amended Answer to Complaint, and Counterclaim, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 1 part A, # 2 Exhibit 1 part B, # 3 Exhibit 2 part A, # 4 Exhibit 2 part B, # 5 Exhibits 3-11, # 6 Certificate of Service)(Sharp, Melanie) Modified on 6/21/2021 (nms). (Entered: 06/21/2021) |
| 304 | Jun 21, 2021 | Request | MOTION to Strike Sysmexs' Untimely Expert Opinions - filed by Beckman Coulter, Inc.. Motions referred to Christopher J. Burke.(Sharp, Melanie) Modified on 6/22/2021 (nms). (Entered: 06/21/2021) |
| 305 | Jun 21, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding Motion to Strike Sysmexs' Untimely Expert Opinions (D.I. 304 ). (Attachments: # 1 Exhibits A-K, # 2 Certificate of Service)(Sharp, Melanie) Modified on 6/22/2021 (nms). (Attachment 1 replaced on 6/22/2021) (dlb). (Entered: 06/21/2021) |
| Jun 22, 2021 | CORRECTING ENTRY: PDF at D.I. 305 Ex. A-K has been replaced at request of filer. (dlb) (Entered: 06/22/2021) | ||
| 306 | Jun 25, 2021 | Request | STIPULATION and [Proposed] Order to Extend Certain Deadlines by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) (Entered: 06/25/2021) |
| 307 | Jun 25, 2021 | Request | NOTICE OF SERVICE of (1) Defendant Beckman Coulter, Inc.'s Expert Report of Mitchell B. Rosen with Respect to Damages; (2) Defendant Beckman Coulter, Inc.'s Expert Report of John Martens; (3) Defendant Beckman Coulter, Inc.'s Rebuttal Expert Report of John W. Roche Concerning Non-Infringement of U.S. Patent Nos. 10,401,350 and 10,401,351 filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 06/25/2021) |
| 308 | Jun 28, 2021 | Request | NOTICE OF SERVICE of (1) Expert Report of J. Paul Robinson Concerning the Validity of U.S. Patent Nos. 10,401,350 and 10,401,351 and (2) Rebuttal Expert Report of Vijay Madisetti, Ph.D. Regarding Validity of U.S. Patent Nos. 10,401,350 and 10,401,351 filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 06/28/2021) |
| Jun 28, 2021 | SO ORDERED D.I. 306 Stipulation and Proposed Order to Extend Certain Deadlines filed by Sysmex Corporation, Sysmex America, Inc. Ordered by Judge Christopher J. Burke on 6/28/2021. (mlc) (Entered: 06/28/2021) | ||
| 309 | Jun 29, 2021 | Request | REDACTED VERSION of 305 Letter, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit A-K, # 2 Certificate of Service)(Farnan, Kelly) (Entered: 06/29/2021) |
| 310 | Jul 1, 2021 | Request | MOTION to Dismiss Fifth Counterclaim and to strike BCIs Sixth Affirmative Defense - filed by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Proposed Order)Motions referred to Christopher J. Burke.(Farnan, Kelly) Modified on 7/1/2021 (nms). (Entered: 07/01/2021) |
| 311 | Jul 1, 2021 | Request | [SEALED] OPENING BRIEF in Support re 310 MOTION to Dismiss Fifth Counterclaim and to Strike BCIs Sixth Affirmative Defense, filed by Sysmex America, Inc., Sysmex Corporation.Answering Brief/Response due date per Local Rules is 7/15/2021. (Attachments: # 1 Exhibit A-N Part 1, # 2 Exhibit A-N Part 2, # 3 Exhibit A-N Part 3)(Farnan, Kelly) Modified on 7/1/2021 (nms). (Main Document 311 replaced on 7/8/2021) (dlb). (Entered: 07/01/2021) |
| 312 | Jul 1, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding response to Motion to Strike (D.I. 304 ). (Attachments: # 1 Exhibits 1-25)(Farnan, Kelly) Modified on 7/1/2021 (nms). (Main Document 312 replaced on 7/8/2021) (dlb). (Entered: 07/01/2021) |
| 313 | Jul 2, 2021 | Request | NOTICE of Change of Firm Affiliation by Sysmex America, Inc., Sysmex Corporation (Delcollo, Renee) (Entered: 07/02/2021) |
| 314 | Jul 7, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding Reply in Support of Motion to Strike Sysmex's Expert Opinions (D.I. 304 ). (Attachments: # 1 Exhibits M-L, # 2 Certificate of Service)(Sharp, Melanie) Modified on 7/8/2021 (nms). (Entered: 07/07/2021) |
| 315 | Jul 7, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding teleconference request to Address Motion to Strike Sysmex's Expert Opinions (D.I. 304 ). (Sharp, Melanie) Modified on 7/8/2021 (nms). (Entered: 07/07/2021) |
| Jul 8, 2021 | CORRECTING ENTRY: Main document PDFs at D.I. Nos. 311 and 312 have been replaced at the request of the filer. (dlb) (Entered: 07/08/2021) | ||
| 316 | Jul 9, 2021 | Request | REDACTED VERSION of 311 Opening Brief in Support, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit A-N_Part 1, # 2 Exhibit A-N_Part 2, # 3 Exhibit A-N_Part 3)(Farnan, Kelly) (Entered: 07/09/2021) |
| 317 | Jul 9, 2021 | Request | REDACTED VERSION of 312 Letter, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit 1-25)(Farnan, Kelly) (Entered: 07/09/2021) |
| 318 | Jul 12, 2021 | Request | ORAL ORDER Setting Hearing on Motion: The Court hereby ORDERS that a teleconference to hear argument regarding Defendant Beckman Coulter Inc.'s Motion to Strike Sysmex's Untimely Expert Opinions, (D.I. 304), is set for August 3, 2021 at 12:00 PM before Judge Christopher J. Burke. The Court has allocated thirty minutes for each side to present its argument on the Motion. By no later than July 29, 2021, the parties shall jointly provide the Court's Courtroom Deputy, Ms. Benyo, with a dial-in number via email to use for the call. Ordered by Judge Christopher J. Burke on 7/12/2021. (dlb) (Entered: 07/12/2021) |
| 319 | Jul 12, 2021 | Request | Letter to The Honorable Christopher J. Burke from Melanie K. Sharp regarding Discovery Dispute Teleconference Request Concerning the Deposition of Masanori Imazu. (Sharp, Melanie) (Entered: 07/12/2021) |
| 320 | Jul 13, 2021 | Request | ORAL ORDER Setting Teleconference: The Court has reviewed the parties' July 12, 2021 letter requesting a discovery dispute teleconference regarding one discovery dispute. (D.I. 319) It hereby ORDERS that the procedures for resolving a discovery dispute set out in the Scheduling Order will be modified as follows with regard to this dispute: (1) The parties shall file a joint "Motion for Teleconference to Resolve Discovery Dispute," the text of which can be found in the "Forms" tab of Judge Burke's page on the District Court's website.; (2) A discovery dispute teleconference is set for August 3, 2021 at 1:00 PM before Judge Christopher J. Burke.; (3) On July 19, 2021, any party seeking relief shall file with the Court a letter, not to exceed two (2) single-spaced pages, in no less than 12-point font, outlining the issues in dispute and its position on those issues. On July 26, 2021, any party opposing the application for relief may file a letter, not to exceed two (2) single-spaced pages, in no less than 12-point font, outlining that party's reasons for its opposition.; (4) The parties should also consult Judge Burke's "Guidelines for Discovery Disputes," which is found in the "Guidelines" tab on Judge Burke's portion of the District Court's website.; (5) By no later than July 29, 2021, the parties shall jointly provide the Court's Courtroom Deputy, Ms. Benyo, with a dial-in number via e-mail to use for the call.; and (6) The Court may choose to resolve the dispute prior to the telephone conference and will, in that event, cancel the conference. Ordered by Judge Christopher J. Burke on 7/13/2021. (dlb) (Entered: 07/13/2021) |
| 321 | Jul 13, 2021 | Request | MOTION for Pro Hac Vice Appearance of Attorney Alexis White - filed by Sysmex America, Inc., Sysmex Corporation. Motions referred to Christopher J. Burke.(Delcollo, Renee) (Entered: 07/13/2021) |
| Jul 13, 2021 | SO ORDERED D.I. 321 MOTION for Pro Hac Vice Appearance of Attorney Alexis White filed by Sysmex Corporation, Sysmex America, Inc. Ordered by Judge Christopher J. Burke on 7/13/2021. (dlb) (Entered: 07/13/2021) | ||
| 322 | Jul 14, 2021 | Request | REDACTED VERSION of 314 Letter, by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 7/15/2021 (nms). (Entered: 07/14/2021) |
| 323 | Jul 14, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding opening letter brief in support of Motion to Compel the Deposition of Mr. Masanori Imazu (D.I. 320 ). (Attachments: # 1 Exhibits A-O)(Sharp, Melanie) Modified on 7/15/2021 (nms). (Entered: 07/14/2021) |
| 324 | Jul 15, 2021 | Request | STIPULATION TO EXTEND TIME to File Beckman Coulter, Inc.'s Answering Brief in Opposition to Sysmex Corporation and Sysmex America, Inc.'s Motion to Dismiss BCI's Fifth Counterclaim and Motion to Strike BCI's Sixth Affirmative Defense to July 22, 2021 - filed by Beckman Coulter, Inc.. (Sharp, Melanie) (Entered: 07/15/2021) |
| Jul 15, 2021 | SO ORDERED D.I. 324 STIPULATION TO EXTEND TIME to File Beckman Coulter, Inc.'s Answering Brief in Opposition to Sysmex Corporation and Sysmex America, Inc.'s Motion to Dismiss BCI's Fifth Counterclaim and Motion to Strike BCI's Sixth Affirmative Defen filed by Beckman Coulter, Inc. Ordered by Judge Christopher J. Burke on 7/15/2021. (dlb) (Entered: 07/15/2021) | ||
| 325 | Jul 15, 2021 | Request | Joint Motion for Teleconference to Resolve Discovery Dispute - filed by Beckman Coulter, Inc.. Motions referred to Christopher J. Burke.(Sharp, Melanie) Modified on 7/16/2021 (nms). (Entered: 07/15/2021) |
| Jul 16, 2021 | Pro Hac Vice Attorney Alexis White for Sysmex America, Inc. and Sysmex Corporation added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (srs) (Entered: 07/16/2021) | ||
| 326 | Jul 16, 2021 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter, Inc.'s Reply Expert Report of John W. Roche Concerning Invalidity of U.S. Patent Nos. 10,401,350 and 10,401,351 filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 07/16/2021) |
| 327 | Jul 16, 2021 | Request | NOTICE OF SERVICE of (1) Reply Expert Report of J. Paul Robinson Concerning the Infringement of U.S. Patent Nos. 10,401,350 and 10,401,351; (2) Reply Expert Report of Vijay Madisetti, Ph.D. Regarding Infringement of U.S. Patent Nos. 10,401,350 and 10,401,351 and (3) Expert Reply Report of David A. Haas filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 07/16/2021) |
| 328 | Jul 20, 2021 | Request | NOTICE to Take Deposition of Vijay Madisetti on July 21, 2021 filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 07/20/2021) |
| 329 | Jul 20, 2021 | Request | NOTICE to Take Deposition of David A. Haas on August 2, 2021 filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 07/20/2021) |
| 330 | Jul 20, 2021 | Request | NOTICE to Take Deposition of J. Paul Robinson on August 4, 2021 filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 07/20/2021) |
| 331 | Jul 21, 2021 | Request | STIPULATION TO EXTEND TIME to File Beckman Coulter, Inc.'s Answering Brief in Opposition to Sysmex Corporation and Sysmex America, Inc.'s Motion to Dismiss BCI's Fifth Counterclaim and Motion to Strike BCI's Sixth Affirmative Defense to July 29, 2021 - filed by Beckman Coulter, Inc.. (Sharp, Melanie) (Entered: 07/21/2021) |
| Jul 21, 2021 | SO ORDERED D.I. 331 STIPULATION TO EXTEND TIME to File Beckman Coulter, Inc.'s Answering Brief in Opposition to Sysmex Corporation and Sysmex America, Inc.'s Motion to Dismiss BCI's Fifth Counterclaim and Motion to Strike BCI's Sixth Affirmative Defen filed by Beckman Coulter, Inc. Ordered by Judge Christopher J. Burke on 7/21/2021. (dlb) (Entered: 07/21/2021) | ||
| 332 | Jul 21, 2021 | Request | REDACTED VERSION of 323 Letter, by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 7/22/2021 (nms). (Entered: 07/21/2021) |
| 333 | Jul 26, 2021 | Request | Amended Notice to Take Deposition of J. Paul Robinson on July 28, 2021, filed by Beckman Coulter, Inc..(Sharp, Melanie) Modified on 7/27/2021 (nms). (Entered: 07/26/2021) |
| 334 | Jul 26, 2021 | Request | NOTICE to Take Deposition of Mitchell B. Rosen on August 3, 2021 filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 07/26/2021) |
| 335 | Jul 26, 2021 | Request | NOTICE to Take Deposition of John Martens on August 5, 2021 filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 07/26/2021) |
| 336 | Jul 26, 2021 | Request | NOTICE to Take Deposition of John W. Roche on August 6, 2021 filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 07/26/2021) |
| 337 | Jul 26, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding response to BCI's letter (D.I. 323 ). (Attachments: # 1 Exhibits 1-3)(Farnan, Kelly) Modified on 7/27/2021 (nms). (Entered: 07/26/2021) |
| 338 | Jul 29, 2021 | Request | [SEALED] ANSWERING BRIEF in Opposition re 310 MOTION to Dismiss Fifth Counterclaim and to strike BCIs Sixth Affirmative Defense filed by Beckman Coulter, Inc..Reply Brief due date per Local Rules is 8/5/2021. (Sharp, Melanie) (Entered: 07/29/2021) |
| 339 | Jul 30, 2021 | Request | Letter to The Honorable Christopher J. Burke from Melanie K. Sharp regarding the Court's Standing Order Regarding Courtroom Opportunities for Newer Attorneys. (Sharp, Melanie) (Entered: 07/30/2021) |
| 340 | Jul 30, 2021 | Request | ORAL ORDER: The Court, having considered Defendant's letter regarding its intent to have a newer attorney argue an upcoming discovery dispute, (D.I. 339), and pursuant to the Court's Standing Order Regarding Courtroom Opportunities for Newer Attorneys, HEREBY ORDERS that it will ensure that the parties have at least 60 minutes of argument collectively for the discovery dispute teleconference scheduled for scheduled for August 3, 2021. Ordered by Judge Christopher J. Burke on 7/30/2021. (dlb) (Entered: 07/30/2021) |
| 341 | Aug 2, 2021 | Request | REDACTED VERSION of 337 Letter by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit 1-3)(Farnan, Kelly) (Entered: 08/02/2021) |
| Aug 3, 2021 | Minute Entry for proceedings held before Judge Christopher J. Burke - Motion Hearing held on 8/3/2021 via teleconference regarding D.I. 304 MOTION to Strike Sysmexs' Untimely Expert Opinions filed by Beckman Coulter, Inc. The Court heard argument from the parties and denied the motion. With respect to Dr. Madisetti's opinions regarding the XE-5000, the Court ordered the parties to meet and confer regarding a process by which Dr. Madisetti will provide a supplemental report as well as any additional discovery that such a supplemental report would necessitate. (Court Reporter Deanna Warner. Clerk: M. Crawford) Appearances: K. Farnan, J. Sobieraj and J. James for Plaintiffs; M. Sharp, A. Feigelson and W. Feng for Defendant. (mlc) (Entered: 08/03/2021) | ||
| Aug 3, 2021 | Minute Entry for proceedings held before Judge Christopher J. Burke - Discovery Conference held on 8/3/2021 regarding Defendant's discovery dispute motion, D.I. 325 . The Court heard argument from the parties. The Court denied the motion without prejudice to renew as described. The transcript of the teleconference shall serve as the substance of the Court's order. (Court Reporter Deanna Warner. Clerk: M. Crawford) Appearances: K. Farnan, J. Sobieraj and J. James for Plaintiffs; M. Sharp, A. Feigelson and W. Feng for Defendant. (mlc) (Entered: 08/03/2021) | ||
| 342 | Aug 4, 2021 | Request | STIPULATION TO EXTEND TIME Plaintiffs deadline to file a reply brief in support of their Motion to Dismiss BCIs Fifth Counterclaim and Motion to Strike BCIs Sixth Affirmative Defense (D.I. 310) to August 13, 2021 - filed by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) (Entered: 08/04/2021) |
| Aug 5, 2021 | SO ORDERED D.I. 342 STIPULATION TO EXTEND TIME Plaintiffs deadline to file a reply brief in support of their Motion to Dismiss BCIs Fifth Counterclaim and Motion to Strike BCIs Sixth Affirmative Defense (D.I. 310) to August 13, 2021 filed by Sysmex Corporation, Sysmex America, Inc. Ordered by Judge Christopher J. Burke on 8/4/2021. (dlb) (Entered: 08/05/2021) | ||
| 343 | Aug 5, 2021 | Request | REDACTED VERSION of 338 Answering Brief in Opposition, by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 8/5/2021 (nms). (Entered: 08/05/2021) |
| 344 | Aug 11, 2021 | Request | MOTION to Stay the Case Schedule Pending the Deposition of Masanori Imazu - filed by Beckman Coulter, Inc.. Motions referred to Christopher J. Burke.(Higgins, James) Modified on 8/12/2021 (nms). (Entered: 08/11/2021) |
| 345 | Aug 11, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from James L. Higgins, regarding Motion to Stay the Case Schedule Pending the Deposition of Masanori Imazu (D.I. 344 ). (Attachments: # 1 Exhibits A-U, # 2 Certificate of Service)(Higgins, James) Modified on 8/12/2021 (nms). (Entered: 08/11/2021) |
| 346 | Aug 13, 2021 | Request | [SEALED] REPLY BRIEF re 310 MOTION to Dismiss Fifth Counterclaim and to strike BCIs Sixth Affirmative Defense filed by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit O-P)(Farnan, Kelly) (Attachment 1 replaced on 8/13/2021) (lak). (Entered: 08/13/2021) |
| Aug 13, 2021 | CORRECTING ENTRY: D.I. 346 attachment 1 exhibits O-P replaced per counsel's request. (lak) (Entered: 08/13/2021) | ||
| 347 | Aug 13, 2021 | Request | ORAL ORDER The Court hereby orders that a four-page answering letter brief regarding Defendant's motion to stay (D.I. 344) is due on August 17, 2021 and a two-page reply letter brief is due by August 20, 2021. Ordered by Judge Christopher J. Burke on 8/13/2021. (dlb) (Entered: 08/13/2021) |
| 348 | Aug 13, 2021 | Request | REQUEST for Oral Argument by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) (Entered: 08/13/2021) |
| 349 | Aug 17, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding response to Motion to Stay (D.I. 344 ). (Attachments: # 1 Exhibits 1-2_part 1, # 2 Exhibit 2 part, # 3 Exhibits 2 part 3 and Exhibit 3 part 1, # 4 Exhibit 3 part 2, # 5 Exhibit 3 part 3, # 6 Exhibit 3 part 4). (Farnan, Kelly) Modified on 8/18/2021 (nms). (Entered: 08/17/2021) |
| 350 | Aug 20, 2021 | Request | Unopposed Motion for Extension of Time to file Redacted Documents - filed by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Text of Proposed Order)Motions referred to Christopher J. Burke.(Delcollo, Renee) Modified on 8/21/2021 (nms). (Entered: 08/20/2021) |
| 351 | Aug 20, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from James L. Higgins, Esq., regarding reply in support of Motion to Stay the Case Schedule Pending the Deposition of Masanori Imazu. (Attachments: # 1 Exhibits V-W, # 2 Certificate of Service)(Higgins, James) Modified on 8/21/2021 (nms). Modified on 8/23/2021 (nms). (Entered: 08/20/2021) |
| 352 | Aug 20, 2021 | Request | SO ORDERED D.I. 350 Unopposed Motion for Extension of Time to File Redacted Documents. Ordered by Judge Christopher J. Burke on 8/20/2021. (mlc) (Entered: 08/20/2021) |
| 353 | Aug 20, 2021 | Request | NOTICE OF SERVICE of Supplemental Expert Report of Vijay Madisetti, Ph.D. Regarding the XE-5000 Being Covered by the Asserted Claims filed by Sysmex America, Inc., Sysmex Corporation.(Delcollo, Renee) (Entered: 08/20/2021) |
| 354 | Aug 23, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, Esq., regarding joint request for scheduling of a discovery teleconference. (Sharp, Melanie) Modified on 8/24/2021 (nms). (Entered: 08/23/2021) |
| 355 | Aug 23, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding response to Defendant's joint letter (D.I. 354 ). (Farnan, Kelly) Modified on 8/24/2021 (nms). (Entered: 08/23/2021) |
| 356 | Aug 24, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, Esq., regarding response to Letter (D.I. 355 ). (Sharp, Melanie) Modified on 8/24/2021 (nms). (Entered: 08/24/2021) |
| 357 | Aug 25, 2021 | Request | ORAL ORDER: The Court, having reviewed Defendant's motion to stay the case pending the completion of the deposition of Masanori Imazu ("Motion"), (D.I. 344), the letter briefing related thereto, (D.I. 345; D.I. 349; D.I. 351), and having considered the three stay-related factors, hereby ORDERS that the Motion is GRANTED. Cf. Chugai Pharm. Co., Ltd. v. Alexion Pharm., Inc., Civil Action No. 18-1802-MN, (D.I. 211) (D. Del. Nov. 16, 2020). It is hard to deny that, in terms of his positioning relative to the issues in this case, Mr. Imazu is an important witness. He is a longtime employee of Plaintiff Sysmex Corp., he is one of four inventors on both of the two patents-in-suit (there are only four inventors total; the same four inventors are on both of the two patents) and he worked on the creation of (and at certain points, was a team leader with regard to) Sysmex products that are asserted prior art to the patents-in-suit or that are asserted to read on the claims of those patents. (D.I. 345 at 1 & exs. E, G) Due at least in significant part to COVID-related issues, Defendant has not been permitted to depose Mr. Imazu; the deposition (if it does not get further postponed) is now scheduled to go forward on September 26-27, 2021. (D.I. 349 at 3) Meanwhile, fact discovery is long closed, the deadline for submitting summary judgment motions is currently scheduled for this Friday, and trial is currently scheduled to begin on February 14, 2022. (D.I. 216) With regard to the simplification factor, it favors Defendant. It certainly seems possible that Mr. Imazu would have relevant information regarding certain currently pleaded defenses, including anticipation, obviousness and inequitable conduct. (D.I. 345 at 2) If either Plaintiffs or Defendant file summary judgment motions as to those issues (and it seems very possible that they might), that summary judgment process would be simplified by having all relevant evidence, including Mr. Imazu's testimony, available to all parties and the Court (instead of having to disrupt the process in mid-stream by accounting for Mr. Imazu's testimony belatedly). A stay would also simplify the process of preparing for trial; without it, Defendant would be forced to get within a few months of trial without knowing how a key inventor's testimony will shake out. With regard to the "status of the case" factor, we are no doubt late in the case schedule. But the Court is unsure why that factor should really redound against Defendant here, who has been diligently seeking Mr. Imazu's testimony since December 2020. And with regard to the undue prejudice factor, it also favors Defendant. It is not hard to see why the absence of a stay would cause Defendant real prejudice. Imagine that your company was being sued for patent infringement, and that you were told at the beginning of the case that you would only be able to take the deposition testimony of a key inventor (who works for the opposing party, and who should know quite a lot about the issues at play in the case), until long after discovery closes, at a time when the summary judgment process is nearly over and just a few months before trial is to start. What reasonable patent attorney or client representative in those shoes would not say: "I am unduly prejudiced!" (See id. at 3) No later than five business days after the completion of Mr. Imazu's deposition, the parties shall jointly submit a new proposed pre-trial schedule to the Court. The remaining deadlines in the current Scheduling Order, (D.I. 216), are hereby VACATED. The Court has also reviewed the parties August 23, 2021 and August 24, 2021 letters requesting a discovery dispute teleconference regarding certain discovery disputes, (D.I. 354; D.I. 355; D.I. 356); in light of the stay of the case, the parties shall re-raise their requests after the stay has been lifted. Ordered by Judge Christopher J. Burke on 8/25/2021. (dlb) (Entered: 08/25/2021) |
| 358 | Aug 27, 2021 | Request | REDACTED VERSION of 351 Letter, by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 8/27/2021 (nms). (Entered: 08/27/2021) |
| 359 | Sep 3, 2021 | Request | REDACTED VERSION of 346 Reply Brief, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit O-P)(Farnan, Kelly) (Entered: 09/03/2021) |
| 360 | Sep 3, 2021 | Request | REDACTED VERSION of 345 Letter, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit A-U)(Sharp, Melanie) (Entered: 09/03/2021) |
| 361 | Sep 3, 2021 | Request | REDACTED VERSION of 349 Letter, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit 1-3 Part 1, # 2 Exhibit 1-3 Part 2, # 3 Exhibit 1-3 Part 3, # 4 Exhibit 1-3 Part 4, # 5 Exhibit 1-3 Part 5, # 6 Exhibit 1-3 Part 6, # 7 Exhibit 1-3 Part 7, # 8 Exhibit 1-3 Part 8, # 9 Exhibit 1-3 Part 9, # 10 Exhibit 1-3 Part 10, # 11 Exhibit 1-3 Part 11, # 12 Exhibit 1-3 Part 12)(Farnan, Kelly) (Entered: 09/03/2021) |
| 362 | Sep 7, 2021 | Request | NOTICE OF SERVICE of Plaintiff Sysmex Corporations Supplemental Responses to Beckman Coulter Inc.s First Set of Interrogatories (No. 3) and Third Set of Interrogatories (No. 16) filed by Sysmex America, Inc., Sysmex Corporation.(Delcollo, Renee) (Entered: 09/07/2021) |
| 363 | Sep 23, 2021 | Request | NOTICE to Take Deposition of MASANORI IMAZU on 09/23/2021 filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 09/23/2021) |
| 364 | Oct 5, 2021 | Request | Letter to Honorable Christopher J. Burke from Kelly E. Farnan regarding Response to Court's August 25, 2021 Oral Order. (Attachments: # 1 Text of Proposed Order)(Farnan, Kelly) (Entered: 10/05/2021) |
| 365 | Oct 6, 2021 | Request | Joint Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding Request the Scheduling of a Discovery Teleconference. (Farnan, Kelly) (Entered: 10/06/2021) |
| 366 | Oct 7, 2021 | Request | ORAL ORDER: The Court, having reviewed the parties' October 5, 2021 letter and proposed order reflecting the parties' competing schedules, (D.I. 364), hereby ORDERS as follows: (1) The stay of the case is hereby LIFTED.; and (2) By no later than October 12, 2021, the parties shall submit a joint letter of no more than three single-spaced pages that sets out their respective positions regarding their scheduling order proposals. Ordered by Judge Christopher J. Burke on 10/7/2021. (dlb) (Entered: 10/07/2021) |
| 367 | Oct 7, 2021 | Request | ORAL ORDER Setting Teleconference: The Court has reviewed the parties' October 6, 2021 letter requesting a discovery dispute teleconference regarding two discovery disputes. (D.I. 365) It hereby ORDERS that the procedures for resolving a discovery dispute set out in the Scheduling Order will be modified as follows with regard to this dispute: (1) The parties shall file a joint "Motion for Teleconference to Resolve Discovery Dispute," the text of which can be found in the "Forms" tab of Judge Burke's page on the District Court's website.; (2) A discovery dispute teleconference is set for November 1, 2021 at 12:00pm before Judge Christopher J. Burke.; (3) On October 14, 2021, any party seeking relief shall file with the Court a letter, not to exceed two (2) single-spaced pages, in no less than 12-point font, outlining the issues in dispute and its position on those issues. On October 21, 2021, any party opposing the application for relief may file a letter, not to exceed two (2) single-spaced pages, in no less than 12-point font, outlining that party's reasons for its opposition.; (4) The parties should also consult Judge Burke's "Guidelines for Discovery Disputes," which is found in the "Guidelines" tab on Judge Burke's portion of the District Court's website.; (5) By no later than October 27, 2021, the parties shall jointly provide the Court's Courtroom Deputy, Ms. Benyo, with a dial-in number via e-mail to use for the call.; and (6) The Court may choose to resolve the disputes prior to the telephone conference and will, in that event, cancel the conference. Ordered by Judge Christopher J. Burke on 10/7/2021. (dlb) (Entered: 10/07/2021) |
| 368 | Oct 8, 2021 | Request | Claim Narrowing Pursuant to the Court's Oral Order (D.I. 40 ) and Plaintiffs' Proposed Schedule (D.I. 364 ), by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) Modified on 10/8/2021 (nms). (Entered: 10/08/2021) |
| 369 | Oct 12, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, regarding response to the Court's October 7, 2021 Oral Order (D.I. 366 ). (Attachments: # 1 Exhibit 1)(Farnan, Kelly) Modified on 10/13/2021 (nms). (Main Document 369 replaced on 10/13/2021) (nms). (Attachment 1 replaced on 10/13/2021) (nms). (Entered: 10/12/2021) |
| Oct 13, 2021 | CORRECTING ENTRY: The pdfs for D.I. 369 have been replaced with amended versions per counsel's request. (nms) (Entered: 10/13/2021) | ||
| 370 | Oct 14, 2021 | Request | Joint Motion for Teleconference to Resolve Discovery Disputes - filed by Sysmex America, Inc., Sysmex Corporation. Motions referred to Christopher J. Burke.(Delcollo, Renee) Modified on 10/15/2021 (nms). (Entered: 10/14/2021) |
| 371 | Oct 14, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, Esq., regarding proper scope of additional discovery. (Attachments: # 1 Exhibits A-G)(Sharp, Melanie) Modified on 10/15/2021 (nms). (Entered: 10/14/2021) |
| 372 | Oct 14, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding a request for an Order to compel expert report and deposition. (Attachments: # 1 Exhibit 1, # 2 Proposed Order)(Farnan, Kelly) Modified on 10/15/2021 (nms). (Entered: 10/14/2021) |
| 373 | Oct 15, 2021 | View | AMENDED SCHEDULING ORDER: Dispositive Motions due by 11/30/2021. A Motion Hearing is set for 1/26/2022 at 11:00 AM in Courtroom 2A before Judge Christopher J. Burke. A Pretrial Conference is set for 6/3/2022 at 08:30 AM in Courtroom 6A before Judge Richard G. Andrews. A Jury Trial is set for 6/27/2022 at 09:30 AM in Courtroom 6A before Judge Richard G. Andrews. See order for further deadlines. Signed by Judge Christopher J. Burke on 10/15/2021. (mlc) (Entered: 10/15/2021) |
| 374 | Oct 15, 2021 | Request | PROPOSED Order regarding 371 Motion Requesting the Court's Assistance in Determining the Scope of Additional Discovery, by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 10/15/2021 (nms). (Entered: 10/15/2021) |
| 375 | Oct 19, 2021 | Request | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, Esq., regarding withdrawal of discovery motion regarding proper scope of additional discovery (D.I. 371 ). (Sharp, Melanie) Modified on 10/19/2021 (nms). (Entered: 10/19/2021) |
| 376 | Oct 20, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding Plaintiffs' response to Defendant's October 14, 2021 Letter (D.I. 371 ). (Attachments: # 1 Exhibit 1, # 2 Exhibit 2)(Farnan, Kelly) Modified on 10/21/2021 (nms). (Entered: 10/20/2021) |
| 377 | Oct 20, 2021 | Request | REDACTED VERSION of 369 Letter, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit 1)(Farnan, Kelly) (Entered: 10/20/2021) |
| 378 | Oct 21, 2021 | Request | ORAL ORDER: The Court, having reviewed the parties' recent letters regarding Defendant's withdrawn discovery dispute, (D.I. 371; D.I. 375; D.I. 376), hereby ORDERS as follows: (1) The Court will not hear argument from the parties regarding Defendant's withdrawn discovery dispute during the November 1, 2021 discovery dispute teleconference.; (2) The Court provides the following guidance to the parties regarding the scope of Defendant's supplemental expert reports and invalidity contentions in light of the August 20, 2021 Supplemental Expert Report of Vijay Madisetti, Ph.D. Regarding the XE-5000 Being Covered By The Asserted Claims ("Dr. Madisetti's supplemental report"), and the September 28 deposition of Mr. Masanori Imazu, (see D.I. 376 at 1): (a) If Defendant wishes to include in supplemental expert reports and/or supplemental invalidity contentions content based on Dr. Madisetti's supplemental report and/or Mr. Imazu's deposition in further support of previously asserted claims or defenses, Defendant may do so.; (b) To the extent that Defendant asserts new claims or defenses in supplemental expert reports and/or invalidity contentions based on Dr. Madisetti's supplemental report and/or or Mr. Imazu's deposition, and Plaintiff believes that such content should be stricken because it is untimely, the parties shall follow the procedures regarding motions to strike set out in the Scheduling Order. (D.I. 29 at 11). Ordered by Judge Christopher J. Burke on 10/21/2021. (dlb) (Entered: 10/21/2021) |
| 379 | Oct 21, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, Esq., regarding opposition to request to compel (D.I. 372 ). (Attachments: # 1 Exhibits A-C)(Sharp, Melanie) Modified on 10/21/2021 (nms). (Entered: 10/21/2021) |
| 380 | Oct 22, 2021 | Request | REDACTED VERSION of 371 Letter by Beckman Coulter, Inc.. (Sharp, Melanie) (Entered: 10/22/2021) |
| 381 | Oct 27, 2021 | Request | REDACTED VERSION of 376 Letter, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2)(Farnan, Kelly) (Entered: 10/27/2021) |
| 382 | Oct 29, 2021 | Request | NOTICE of Defendant Beckman Coulter Inc.'s Narrowing of Prior Art References and Prior Art Invalidity Grounds by Beckman Coulter, Inc. (Sharp, Melanie) (Entered: 10/29/2021) |
| 383 | Oct 29, 2021 | Request | NOTICE OF SERVICE of Defendant Beckman Coulter Inc.'s Supplemental Final Invalidity Contentions filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 10/29/2021) |
| 384 | Oct 29, 2021 | Request | NOTICE OF SERVICE of (1) Supplemental Expert Report of John W. Roche Concerning Invalidity and Non-Infringement of U.S. Patent Nos. 10,401,350 and 10,401,351, in view of Dr. Vijay Madisetti's Supplemental Report Regarding the XE-5000 and Masanori Imazu's Deposition Testimony and (2) Expert Report of Paul D. Martin, Ph.D. Concerning Sysmex Source Code for XE02100 and XE-5000 filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 10/29/2021) |
| 385 | Nov 1, 2021 | Request | ORAL ORDER: The Court, having reviewed the parties' Joint Motion for Teleconference to Resolve Discovery Disputes relating to Plaintiffs' request for an order compelling production of John Roches annotations of Dr. Paul Robinson's validity report and compelling the deposition of Mr. Roche to finish his cross-examination, (D.I. 370), and the parties' letter briefs relating thereto, (D.I. 372; D.I. 379), hereby ORDERS as follows: (1) The issue of whether Plaintiffs have the right to Mr. Roche's annotations appears to turn primarily on the degree to which the annotations amount to "preliminary drafts of his reply report" (and are thus work product that would be protected subject to Plaintiff's waiver argument). (D.I. 379 at 2) The Court does not have before it the annotations and Mr. Roche's reply expert report. Accordingly, by no later than November 2, 2021, Defendant shall submit to the Court in camera by e-mail to the Court's Courtroom Deputy Deborah Benyo the annotations, along with a letter of no more than 2 single-spaced pages that shows the Court how the annotations relate to the content of Mr. Roche's reply report.; and (2) Today's discovery dispute teleconference is CANCELLED. The Court expects that it will resolve the discovery dispute motion on the papers. Ordered by Judge Christopher J. Burke on 11/1/2021. (dlb) (Entered: 11/01/2021) |
| Nov 1, 2021 | REDACTION NOTICE: In accordance with section G of the Administrative Procedures Governing Filing and Service by Electronic Means, redacted versions of sealed documents shall be filed electronically within 7 days of the filing of the sealed document. The records of this case do not reflect the filing of a redacted version of DI # 379 . (nms) (Entered: 11/01/2021) | ||
| 386 | Nov 2, 2021 | Request | REDACTED VERSION of 379 Letter by Beckman Coulter, Inc.. (Sharp, Melanie) (Entered: 11/02/2021) |
| 387 | Nov 3, 2021 | Request | NOTICE of In Camera Submission, by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 11/3/2021 (nms). (Entered: 11/03/2021) |
| 388 | Nov 8, 2021 | Request | ORAL ORDER: The Court has reviewed the parties' discovery dispute motion (the "Motion") relating to Plaintiffs Sysmex Corporation and Sysmex America, Inc.'s ("Sysmex") request for an order compelling production of John Roche's annotations of Dr. Paul Robinson's validity report and compelling a further deposition of Mr. Roche to finish his cross-examination. (D.I. 370) It has also reviewed the parties' letter briefs and Defendant Beckman Coulter, Inc.'s ("BCI") in camera submission relating thereto. (D.I. 372; D.I. 379; 387) Having done so, it HEREBY GRANTS-IN-PART Sysmex's Motion as follows: (1) The Court GRANTS-IN-PART Sysmex's request for an order compelling production of Mr. Roche's annotations of Dr. Robinson's validity report. The law provides that annotations made by an expert on another expert's report typically amount to "facts or data" that the expert has considered in formulating his or her own opinions, and therefore must be disclosed. See, e.g., Fed. R. Civ. P. 26(a)(2)(B); Wenk v. O'Reilly, No. 2:12-cv-474, 2014 WL 1121920, at *4 (S.D. Ohio Mar. 20, 2014). On the other hand, if the annotations constitute drafts of a to-be-submitted expert report, then they are work product that is protected from disclosure. See Fed. R. Civ. P. 26(b)(4); Wenk, 2014 WL 1121920 at *5-6; see also In re Nat'l Hockey League Players' Concussion Injury Litig., MDL No. 14-2551 (SRN/JSM), 2017 WL 68444, at *2 (D. Minn. Feb. 21, 2017). BCI argues that Mr. Roche's annotations amount to drafts of parts of his later-submitted reply report and thus are protected work product. (D.I. 379 at 2) The Court has conducted an in camera review of Mr. Roche's annotations, (see D.I. 385), and concludes as follows: (a) With regard to Mr. Roche's annotations on pages 65, 118 and 277 (the first annotation on that page), the Court can see how the content of these annotations formed portions of Mr. Roche's reply report, and therefore finds that these annotations can be considered to be drafts of that report, thus making them protected work product. With respect to Sysmex's argument that any privilege regarding these three annotations has been waived by Mr. Roche's testimony, (D.I. 372 at 2), the Court does not agree. The Court cannot understand how BCI can be said to have used this work-product-protected information as a "sword and a shield," as Sysmex asserts. (D.I. 379 at 2) Finally, to the extent that Sysmex argues that even if the annotations constituted work product, they still must be produced because Sysmex has a "substantial need" for them, (D.I. 372 at 2 n.1), Sysmex did not sufficiently develop this argument. The Court therefore DENIES Sysmex's request for an order compelling these three annotations.; (b) With respect to Sysmex's argument that the annotations at issue are relevant because there "appears to be a dispute between the parties regarding which paragraphs of Dr. Robinson's validity report [that Mr.] Roche reviewed[,]" (id. at 2), the Court doesn't see why there should be a dispute about that, as that information (i.e., an identification of just the paragraph numbers that Mr. Roche reviewed and annotated) cannot itself be attorney work product. The Court thus ORDERS that BCI shall tell Sysmex which paragraphs of Dr. Robinson's validity report Mr. Roche made the three work-product-protected annotations on.; and (c) With regard to the remainder of the annotations at issue, after reviewing BCI's in camera submission letter, the annotations themselves and Mr. Roche's reply report, the Court concludes that BCI has not sufficiently demonstrated that these annotations amounted to drafts of portions of Mr. Roche's reply report. In light of that, it otherwise appears that this material constitutes "facts or data" that Mr. Roche at least considered in forming his expert opinions in the case (or to the extent it could somehow be said that Mr. Roche did not consider this information, BCI has not sufficiently demonstrated how that is so). The Court therefore GRANTS Sysmex's request for an order compelling the remainder of the annotations at issue; and (2) Lastly, the Court DENIES Sysmex's request for an order compelling a further deposition of Mr. Roche to finish his cross-examination, at least at this time. Mr. Roche has already testified for more than 8 hours at deposition (although the Scheduling Order provides that no more than 7 hours is permitted per witness). (D.I. 379 at 2; see also D.I. 29 at 3) On this record, Sysmex has not sufficiently articulated what "new issues" BCI brought up on redirect that would require additional time for re-cross. (D.I. 372 at 2) Sysmex also argued that more time would be needed to depose Mr. Roche as to the annotations that the Court has now ordered be produced. The Court is not so sure that is so, and Sysmex has not even seen the annotations yet. The Court ORDERS that after Sysmex does review them, if it thinks that additional deposition time is warranted, it meet and confer with BCI on that front. If the parties cannot come to agreement, Sysmex can re-raise the issue with the Court via the Courts discovery dispute procedures.Ordered by Judge Christopher J. Burke on 11/8/2021. (mlc) (Entered: 11/08/2021) |
| 389 | Nov 11, 2021 | Request | NOTICE OF SERVICE of i) Supplemental Rebuttal Expert Report of Vijay Madisetti, Ph.D.; and ii) Supplemental Rebuttal Expert Report of J. Paul Robinson filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 11/11/2021) |
| 390 | Nov 12, 2021 | Request | Letter to The Honorable Christopher J. Burke from Melanie K. Sharp, Esq. regarding Beckman Coulter, Inc.'s Request for Scheduling of an Emergency Discovery Teleconference. (Sharp, Melanie) (Entered: 11/12/2021) |
| 391 | Nov 12, 2021 | Request | ORAL ORDER: The Court, having reviewed Defendant's November 12, 2021 letter, (D.I. 390), hereby ORDERS that the parties should submit a proposed expedited briefing schedule to the Court. The Court expects that it will resolve the dispute on the papers. Ordered by Judge Christopher J. Burke on 11/12/2021. (mlc) (Entered: 11/12/2021) |
| 392 | Nov 12, 2021 | Request | STIPULATION and Proposed Order on Discovery Dispute Letter Briefing Schedule, by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 11/15/2021 (nms). (Entered: 11/12/2021) |
| 393 | Nov 13, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding request for emergency relief regarding extension of certain deadlines. (Attachments: # 1 Exhibits A-D, # 2 Proposed Order)(Sharp, Melanie) Modified on 11/15/2021 (nms). (Entered: 11/13/2021) |
| 394 | Nov 15, 2021 | Request | [SEALED] Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding response to Defendant's request for emergency relief (D.I. 394 ). (Attachments: # 1 Exhibits 1-3)(Farnan, Kelly) Modified on 11/15/2021 (nms). (Entered: 11/15/2021) |
| Nov 15, 2021 | SO ORDERED D.I. 392 Proposed Order regarding Discovery Dispute Letter Briefing Schedule filed by Beckman Coulter, Inc. Ordered by Judge Christopher J. Burke on 11/15/2021. (mlc) (Entered: 11/15/2021) | ||
| 395 | Nov 15, 2021 | Request | ORAL ORDER: With respect to the parties' discovery dispute, (D.I. 390), for the Court's administrative purposes, the Court hereby ORDERS that by no later than November 15, 2021, the parties shall file a joint "Motion for Briefing Schedule to Resolve Discovery Dispute." Ordered by Judge Christopher J. Burke on 11/15/2021. (mlc) (Entered: 11/15/2021) |
| 396 | Nov 15, 2021 | Request | ORAL ORDER: The Court, having reviewed the parties' letter briefs, (D.I. 393; D.I. 394), hereby ORDERS that Defendant's request for a seven-day extension of the deadline for Mr. Roche's reply report and a seven-day extension for Mr. Roche's deposition is DENIED for the reasons set out in Plaintiff's letter. Ordered by Judge Christopher J. Burke on 11/15/2021. (mlc) (Entered: 11/15/2021) |
| 397 | Nov 15, 2021 | Request | Joint Motion for Briefing Schedule to Resolve Discovery Dispute - filed by Beckman Coulter, Inc.. Motions referred to Christopher J. Burke.(Sharp, Melanie) Modified on 11/15/2021 (nms). (Entered: 11/15/2021) |
| Nov 15, 2021 | Motions terminated: D.I. 397 Joint Motion for Briefing Schedule to Resolve Discovery Dispute filed by Beckman Coulter, Inc. Ordered by Judge Christopher J. Burke on 11/15/2021. (mlc) (Entered: 11/15/2021) | ||
| 398 | Nov 15, 2021 | Request | NOTICE to Take Deposition of John W. Roche on November 18, 2021 filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 11/15/2021) |
| 399 | Nov 15, 2021 | Request | NOTICE to Take Deposition of Paul D. Martin on November 22, 2021 filed by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) (Entered: 11/15/2021) |
| 400 | Nov 16, 2021 | Request | NOTICE OF SERVICE of Supplemental Reply Expert Report of John W. Roche Concerning Invalidity of U.S. Patent Nos. 10,401,350 and 10,401,351 and the Reply Expert Report of Paul D. Martin, Ph.D. Concerning Sysmex Source Code for XE-2100 and XE-5000 filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 11/16/2021) |
| 401 | Nov 18, 2021 | Request | NOTICE to Take Deposition of Vijay Madisetti on November 19, 2021 filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 11/18/2021) |
| 402 | Nov 18, 2021 | Request | NOTICE to Take Deposition of J. Paul Robinson on November 23, 2021 filed by Beckman Coulter, Inc..(Sharp, Melanie) (Entered: 11/18/2021) |
| 403 | Nov 22, 2021 | Request | REDACTED VERSION of 393 Letter, by Beckman Coulter, Inc.. (Sharp, Melanie) (Entered: 11/22/2021) |
| 404 | Nov 23, 2021 | Request | REDACTED VERSION of 394 Letter by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit 1-3)(Delcollo, Renee) (Entered: 11/23/2021) |
| 405 | Nov 30, 2021 | Request | MOTION to Exclude Certain Opinions of John W. Roche and Mitchell B. Rosen - filed by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Proposed Order)Motions referred to Christopher J. Burke.(Farnan, Kelly) Modified on 11/30/2021 (nms). (Entered: 11/30/2021) |
| 406 | Nov 30, 2021 | View | MOTION for Partial Summary Judgment - filed by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Proposed Order)Motions referred to Christopher J. Burke.(Farnan, Kelly) Modified on 11/30/2021 (nms). Modified on 6/2/2022 (smg). (Entered: 11/30/2021) |
| 407 | Nov 30, 2021 | Request | [SEALED] OPENING BRIEF in Support re 405 MOTION to Exclude Certain Opinions of John W. Roche and Mitchell B. Rosen, and 406 MOTION for Partial Summary Judgment, filed by Sysmex America, Inc., Sysmex Corporation.Answering Brief/Response due date per Local Rules is 12/14/2021. (Farnan, Kelly) Modified on 11/30/2021 (nms). (Entered: 11/30/2021) |
| 408 | Nov 30, 2021 | Request | [SEALED] APPENDIX, Volume I to 407 Opening Brief in Support, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibits 1-22, # 2 Exhibits 23-33)(Farnan, Kelly) Modified on 11/30/2021 (nms). (Entered: 11/30/2021) |
| 409 | Nov 30, 2021 | Request | [SEALED] APPENDIX, Volume II to 407 Opening Brief in Support, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibits 34-47)(Farnan, Kelly) Modified on 11/30/2021 (nms). (Entered: 11/30/2021) |
| 410 | Nov 30, 2021 | Request | MOTION for Summary Judgment of Invalidity - filed by Beckman Coulter, Inc.. (Attachments: # 1 Proposed Order)Motions referred to Christopher J. Burke.(Sharp, Melanie) Modified on 12/1/2021 (nms). (Entered: 11/30/2021) |
| 411 | Nov 30, 2021 | Request | [SEALED] OPENING BRIEF in Support re 410 MOTION for Summary Judgment of Invalidity, filed by Beckman Coulter, Inc..Answering Brief/Response due date per Local Rules is 12/14/2021. (Sharp, Melanie) Modified on 12/1/2021 (nms). (Entered: 11/30/2021) |
| 412 | Nov 30, 2021 | Request | MOTION for Summary Judgment of Noninfringement - filed by Beckman Coulter, Inc.. (Attachments: # 1 Proposed Order)Motions referred to Christopher J. Burke.(Sharp, Melanie) Modified on 12/1/2021 (nms). (Entered: 11/30/2021) |
| 413 | Nov 30, 2021 | Request | [SEALED] OPENING BRIEF in Support re 412 MOTION for Summary Judgment of Noninfringement, filed by Beckman Coulter, Inc..Answering Brief/Response due date per Local Rules is 12/14/2021. (Sharp, Melanie) Modified on 12/1/2021 (nms). (Entered: 11/30/2021) |
| 414 | Nov 30, 2021 | Request | MOTION to Exclude the Opinions of Plaintiffs' Damages Expert David Haas - filed by Beckman Coulter, Inc.. (Attachments: # 1 Proposed Order)Motions referred to Christopher J. Burke.(Sharp, Melanie) Modified on 12/1/2021 (nms). (Entered: 11/30/2021) |
| 415 | Nov 30, 2021 | Request | [SEALED] OPENING BRIEF in Support re 414 MOTION to Exclude the Opinions of Plaintiffs' Damages Expert David Haas, filed by Beckman Coulter, Inc..Answering Brief/Response due date per Local Rules is 12/14/2021. (Sharp, Melanie) Modified on 12/1/2021 (nms). (Entered: 11/30/2021) |
| 416 | Nov 30, 2021 | Request | [SEALED] DECLARATION of Wallace H. Feng, Volume 1, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibits 1-7, # 2 Exhibit 8, Part 1, # 3 Exhibit 8, Part 2, # 4 Exhibit 8, Part 3, # 5 Exhibit 8, Part 4, # 6 Exhibits 9-15)(Sharp, Melanie) Modified on 12/1/2021 (nms). (Entered: 11/30/2021) |
| 417 | Nov 30, 2021 | Request | [SEALED] Declaration of Wallace H. Feng, Volume 2, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 16, Part 2, # 2 Exhibits 17-26, part 1, # 3 Exhibits 17-26, part 2, # 4 Exhibits 17-26, part 3)(Sharp, Melanie) Modified on 12/1/2021 (nms). (Entered: 11/30/2021) |
| 418 | Nov 30, 2021 | Request | [SEALED] Declaration of Wallace H. Feng, Volume 3, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 27, part 2, # 2 Exhibits 28-34)(Sharp, Melanie) Modified on 12/1/2021 (nms). (Entered: 11/30/2021) |
| 419 | Nov 30, 2021 | Request | [SEALED] Declaration of Wallace H. Feng, Volume 4, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 35, part 2, # 2 Exhibit 35, part 3, # 3 Exhibit 35, part 4, # 4 Exhibit 35, part 5, # 5 Exhibit 35, part 6, # 6 Exhibit 35, part 7, # 7 Exhibit 35, part 8, # 8 Exhibit 35, part 9, # 9 Exhibit 35, part 10, # 10 Exhibit 35, part 11, # 11 Exhibit 35, part 12, # 12 Exhibit 35, part 13)(Sharp, Melanie) Modified on 12/1/2021 (nms). (Entered: 11/30/2021) |
| 420 | Nov 30, 2021 | Request | [SEALED] Declaration of Wallace H. Feng, Volume 5, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibits 36-44, part 2, # 2 Exhibits 36-44, part 3, # 3 Exhibits 36-44, part 4, # 4 Exhibits 36-44, part 5, # 5 Exhibits 36-44, part 6, # 6 Exhibits 36-44, part 7)(Sharp, Melanie) Modified on 12/1/2021 (nms). (Entered: 11/30/2021) |
| Dec 1, 2021 | DEFICIENCY NOTICE by the Court issued to Beckman Coulter, Inc. re 418 Sealed Declaration, Volume 3, 417 Sealed Declaration, Volume 2, 419 Sealed Declaration, Volume 4, 420 Sealed Declaration, Volume 5. These filings do not comply with Local Rule 5.2(b)(1). Defendant is requested to supplement the docket accordingly with a certificate of service. (nms) (Entered: 12/01/2021) | ||
| 421 | Dec 1, 2021 | Request | CERTIFICATE OF SERVICE for Declaration of Wallace H. Feng, Volumes 2 through 5 (D.I. 417, 418, 419 and 420), by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 12/1/2021 (nms). (Entered: 12/01/2021) |
| 422 | Dec 7, 2021 | Request | STIPULATION TO EXTEND TIME to file public versions of summary judgment and Daubert opposition and reply filings to January 25, 2022 - filed by Sysmex America, Inc., Sysmex Corporation. (Delcollo, Renee) Modified on 12/8/2021 (nms). (Entered: 12/07/2021) |
| Dec 8, 2021 | SO ORDERED D.I. 422 STIPULATION TO EXTEND TIME to file public versions of summary judgment and Daubert opposition and reply filings to January 25, 2022 filed by Sysmex Corporation, Sysmex America, Inc. Ordered by Judge Christopher J. Burke on 12/8/2021. (dlb) (Entered: 12/08/2021) | ||
| 423 | Dec 10, 2021 | Request | REDACTED VERSION of 413 Opening Brief in Support by Beckman Coulter, Inc.. (Sharp, Melanie) (Entered: 12/10/2021) |
| 424 | Dec 10, 2021 | Request | REDACTED VERSION of 411 Opening Brief in Support by Beckman Coulter, Inc.. (Sharp, Melanie) (Entered: 12/10/2021) |
| 425 | Dec 10, 2021 | Request | REDACTED VERSION of 415 Opening Brief in Support, by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 12/13/2021 (nms). (Entered: 12/10/2021) |
| 426 | Dec 10, 2021 | View | REDACTED VERSION of 407 Opening Brief in Support, by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) (Entered: 12/10/2021) |
| 427 | Dec 21, 2021 | Request | [SEALED] ANSWERING BRIEF in Opposition re 412 MOTION for Summary Judgment of Noninfringement, 414 MOTION to Exclude the Opinions of Plaintiffs' Damages Expert David Haas, 410 MOTION for Summary Judgment of Invalidity filed by Sysmex America, Inc., Sysmex Corporation.Reply Brief due date per Local Rules is 12/28/2021. (Farnan, Kelly) (Entered: 12/21/2021) |
| 428 | Dec 21, 2021 | Request | [SEALED] APPENDIX to 427 Answering Brief in Opposition, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibits 48-55, # 2 Exhibits 56-66, # 3 Exhibits 67-72)(Farnan, Kelly) Modified on 12/22/2021 (nms). (Entered: 12/21/2021) |
| 429 | Dec 21, 2021 | Request | [SEALED] ANSWERING BRIEF in Opposition re 405 MOTION to Exclude Certain Opinions of John W. Roche and Mitchell B. Rosen, 406 MOTION for Partial Summary Judgment filed by Beckman Coulter, Inc..Reply Brief due date per Local Rules is 12/28/2021. (Sharp, Melanie) (Entered: 12/21/2021) |
| 430 | Dec 21, 2021 | Request | [SEALED] DECLARATION of Wallace H. Feng, Volume I re 429 Answering Brief in Opposition, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibits 1-19, # 2 Exhibits 22-47, # 3 Exhibits 48-52T, # 4 Exhibits 53-62, # 5 Certificate of Service)(Sharp, Melanie) Modified on 12/22/2021 (nms). (Entered: 12/21/2021) |
| 431 | Dec 21, 2021 | Request | [SEALED] Declaration of Wallace H. Feng, Volume II re 429 Answering Brief in Opposition, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibits 69-72, # 2 Certificate of Service)(Sharp, Melanie) Modified on 12/22/2021 (nms). (Entered: 12/21/2021) |
| 432 | Dec 21, 2021 | Request | [SEALED] Declaration of Wallace H. Feng, Volume III re 429 Answering Brief in Opposition, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 79, # 2 Exhibits 80-83, # 3 Exhibits 84-85T, # 4 Exhibits 86-94, # 5 Exhibit 95 - 108, # 6 Exhibits 109-112, # 7 Exhibits 113-116, # 8 Certificate of Service)(Sharp, Melanie) Modified on 12/22/2021 (nms). (Entered: 12/21/2021) |
| 433 | Jan 4, 2022 | Request | REPORT AND RECOMMENDATION: The Court, having reviewed Plaintiffs' motion to dismiss Defendant's Fifth Counterclaim and to strike Defendant's Sixth Affirmative Defense ("Motion"), (D.I. 310 ), and the briefing related thereto, (D.I. 311; D.I. 338; D.I. 346), hereby recommends that the Motion be DENIED and ORDERS that Plaintiffs' request for oral argument, (D.I. 348), is DENIED. The Court recommends denial of Plaintiffs' Motion for the following reasons: (1) With regard to Mr. Horie's knowledge of the relevant prior art at issue (the XE-2100 hematology analyzer (the "XE-2100"), the XE-2100 IPU Manual and the XE-2100 Main Unit Manual) and its materiality, (D.I. 311 at 5-7), while the allegations are not robust, there is enough to plausibly state a claim of knowledge of at least the XE-2100 and the XE-2100 Main Unit Manual, in light of the fact that: (a) Mr. Horie has worked closely with Plaintiffs since 2004 in prosecuting patent applications in the field of hematology and blood analysis; (b) he was aware of and disclosed the Kresie reference to the United States Patent and Trademark Office ("PTO") during the examination of the asserted patents, which references the XE-2100's ability to analyze body fluids; and (c) most particularly, in 2015-16, during the prosecution of an unrelated patent application, he argued that references relating to the XE-2100 (one of which included the relevant portion of the XE-2100 Main Unit Manual) did not invalidate the patent. (D.I. 302 at 32-33 at paras. 56-57, 59); (2) With regard to Mr. Nagai and Mr. Narisada's knowledge, (D.I. 311 at 8-11), the issue is more difficult than it would normally be, because both men were deposed (the depositions are referenced in Defendant's pleading, so they can be considered here) and when asked whether they recalled the relevant prior art, they denied it. (D.I. 346 at 6 n.6 (citing D.I. 311, ex. M at 168, 172, 182-83; id., ex. N at 104-06, 131-33)) But these two men allegedly: (a) developed the hardware and the software (including for body fluid analysis) for the XE-2100, respectively; (b) are alleged to have known about the XE-2100's approval for body fluid analysis; and (c) are alleged (and the Court cannot say this is implausible, although some of the supporting documentation is in a foreign language) to have provided input on or to have drafted the relevant portions of the XE-2100 IPU Manual. (D.I. 302 at 30-31 at paras. 51-54) If these men developed the XE-2100, it seems plausible that they were aware at the relevant time of its approval and use for body fluid analysis and of documents that would describe the same. Their statements years later that they do not recall this information may be helpful to Plaintiffs at the proof stage, but do not necessarily render the allegations against them implausible. (D.I. 338 at 15-16); (3) With regard to whether deceptive intent was sufficiently pleaded, (D.I. 311 at 11-12), it was. The allegations are that Mr. Horie, Mr. Nagai and Mr. Narisada were all aware of their duty of candor to the PTO, knew of the materiality of the references, and purposefully did not disclose them, so as to advantage their longtime employer (Plaintiffs) and permit it to retaliate against Defendant amidst litigation wars between the parties. (D.I. 302 at 34, 37 at paras. 62, 68); see Zadro Prods., Inc. v. SDI Techs., Inc., Case No. 17-1406 (WCB), 2019 WL 1100470, at *5 (D. Del. Mar. 8, 2019). The Court cannot say those allegations are implausible.; (4) With regard to whether the allegedly withheld information is simply cumulative of what was already before the Examiner, (D.I. 311 at 12-14), the main issue here is whether Defendant identified the "particular claim limitations... that are supposedly absent from the [prior art] information of record" that was before the PTO, Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1329 (Fed. Cir. 2009); see also (D.I. 311 at 12-13). But Defendant does explain that the limitation at issue is that relating to "a body fluid measuring mode including a sequence of operations that is different from the sequence of operations for a blood measuring mode with respect to the running of a background check and auto-rinse in preparing for measurement[.]" (D.I. 302 at 36 at para. 67) And as to Plaintiffs' assertion that this limitation is covered by a submitted piece of prior art, (D.I. 311 at 13-14), that is a fact-intensive issue that is not well suited for the pleadings stage, see Illumina Inc. v. BGI Genomics Co., Ltd., Case No. 20-cv-01465-WHO, 2021 WL 428632, at *5 (D. Del. Feb. 8, 2021), and the Court cannot necessarily tell that Plaintiffs are correct in their assertion, (D.I. 338 at 17-18).; and (5) Lastly, with regard to whether the allegations are facially plausible, (D.I. 311 at 14-16), again, Plaintiffs' argument calls for the Court (with little additional context provided) to try to assess what certain of the PTO's statements in the prosecution history meant, and to then conclude that those statements necessarily contradict Defendant's arguments here about the materiality of the references at issue. (Id. at 15-16) The Court cannot make that leap based on the limited information available to it. 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 1/18/2022. Ordered by Judge Christopher J. Burke on 1/4/2022. (mlc) (Entered: 01/04/2022) |
| 434 | Jan 10, 2022 | Request | ORAL ORDER: With regard to the hearing on case dispositive and Daubert motions scheduled for January 26, 2022, the Court hereby ORDERS as follows: (1) Due to a scheduling conflict, the hearing will be rescheduled to February 11, 2022 at 11:00 a.m.; (2) At present, the hearing will be held via a videoconference platform. However, the Court would consider holding the hearing in person with a limited number of attorneys in attendance if both sides wished to do so.; (3) By January 28, 2022, the parties shall submit a joint letter indicating their views regarding: (a) whether the parties are jointly requesting that the hearing be converted to an in-person hearing.; (b) how much time should be allocated for the hearing; (c) whether any of the pending summary judgment and/or Daubert motions shall be submitted on the papers (to allow more time for argument on the remaining motions), or alternatively, whether the parties intend to present argument as to each such pending motion during the hearing; and (d) the order in which the motions will be argued. Ordered by Judge Christopher J. Burke on 1/10/2022. (ceg) (Entered: 01/10/2022) |
| 435 | Jan 14, 2022 | Request | [SEALED] REPLY BRIEF re 410 Motion for Summary Judgment, 412 Motion for Summary Judgment, 414 Daubert Motion, filed by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 1/18/2022 (nms). (Main Document 435 replaced on 1/21/2022) (dlb). (Entered: 01/14/2022) |
| 436 | Jan 14, 2022 | Request | [SEALED] REPLY BRIEF re 405 MOTION to Exclude Certain Opinions of John W. Roche and Mitchell B. Rosen, 406 MOTION for Partial Summary Judgment filed by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) (Entered: 01/14/2022) |
| 437 | Jan 14, 2022 | Request | [SEALED] APPENDIX re 436 Reply Brief, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibits 73-93)(Farnan, Kelly) Modified on 1/18/2022 (nms). (Entered: 01/14/2022) |
| 438 | Jan 14, 2022 | Request | [SEALED] DECLARATION of Wallace H. Feng re 435 Reply Brief, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibits 13-118, # 2 Exhibits 119-125, # 3 Exhibits 126-130)(Sharp, Melanie) Modified on 1/18/2022 (nms). (Attachment 1 replaced on 1/21/2022) (dlb). (Entered: 01/14/2022) |
| 439 | Jan 19, 2022 | Request | NOTICE requesting Clerk to remove Daniel A. Parrish as co-counsel. Reason for request: Left Firm. (Farnan, Kelly) (Entered: 01/19/2022) |
| 440 | Jan 19, 2022 | Request | ORDER: The Report and Recommendation (D.I. 433 ) is ADOPTED. Plaintiffs' Motion to Dismiss Fifth Counterclaim and to Strike Defendant's Sixth Affirmative Defense (D.I. 310 ) is DENIED. Signed by Judge Richard G. Andrews on 1/19/2022. (nms) (Main Document 440 replaced on 1/19/2022) (nms). Modified on 1/19/2022 (nms). (Entered: 01/19/2022) |
| Jan 19, 2022 | CORRECTING ENTRY: The pdf for D.I. 440 has been replaced with a corrected version. The D.I. number in paragraph numbered 1 has been amended. The NEF for the filing has been regenerated. (nms) (Entered: 01/19/2022) | ||
| 441 | Jan 21, 2022 | Request | ORAL ORDER: At the request of the parties, the Court will reschedule the hearing on case dispositive and Daubert motions that is currently set for February 11, 2022. The Court hereby ORDERS as follows: (1) the hearing will be rescheduled to February 25, 2022 at 11:00 a.m.; (2) the parties' joint letter, described in the Court's Oral Order dated January 10, 2022, (D.I. 434), shall remain due to be filed by January 28, 2022. Ordered by Judge Christopher J. Burke on 1/21/2022. (dlb) (Entered: 01/21/2022) |
| Jan 21, 2022 | CORRECTING ENTRY: At the request of the filer, PDF at D.I. 438, Attachment #1 has been replaced for Exhibits 13-118. (dlb) (Entered: 01/21/2022) | ||
| 442 | Jan 25, 2022 | Request | [SEALED] DECLARATION of Wallace H. Feng re 413 Opening Brief in Support, 411 Opening Brief in Support, and 415 Opening Brief in Support, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibits 1-2, # 2 Exhibit 3 part 1, # 3 Exhibit 3 part 2, # 4 Exhibit 4 part 1, # 5 Exhibit 4 Part 2 part 5, # 6 Exhibits 5-7, # 7 Exhibits 8-10, # 8 Exhibit 11 part 1, # 9 Exhibit 11 part 2, # 10 Exhibit 11 part 3, # 11 Exhibit 11 part 4 - Exhibit 15, # 12 Exhibit 16 part 1, # 13 Exhibit 16 part 2 - Exhibit 17)(Sharp, Melanie) Modified on 1/25/2022 (nms). (Entered: 01/25/2022) |
| 443 | Jan 25, 2022 | Request | [SEALED] Declaration of Wallace H. Feng, Volume II, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 19 part 2 - Exhibit 20 , # 2 Exhibits 21-29, # 3 Exhibits 30-37, # 4 Exhibits 38-44, # 5 Certificate of Service)(Sharp, Melanie) Modified on 1/25/2022 (nms). (Entered: 01/25/2022) |
| 444 | Jan 25, 2022 | Request | REDACTED VERSION of 442 Declaration of Wallace H. Feng, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibits 1-2, # 2 Exhibit 3 part 1, # 3 Exhibit 3 part 2, # 4 Exhibit 4 part 1, # 5 Exhibit 4 part 2, # 6 Exhibits 5-7, # 7 Exhibits 8-10, # 8 Exhibit 11 part 1, # 9 Exhibit 11 part 2, # 10 Exhibit 11 part 3 - Exhibit 12, # 11 Exhibits 13-15, # 12 Exhibit 16 part 1, # 13 Exhibit 16 part 2 - Exhibit 17)(Sharp, Melanie) Modified on 1/25/2022 (nms). (Entered: 01/25/2022) |
| 445 | Jan 25, 2022 | Request | REDACTED VERSION of 443 Sealed Declaration of Wallace H. Feng, Volume II, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 19 part 2 - Exhibit 20, # 2 Exhibits 22-35, # 3 Exhibits 36-40, # 4 Exhibits 41-44, # 5 Certificate of Service)(Sharp, Melanie) Modified on 1/26/2022 (nms). (Entered: 01/25/2022) |
| 446 | Jan 25, 2022 | Request | [SEALED] NOTICE of Withdrawal of D.I. 416 - 420 in Favor of Excerpts at D.I. 442 - 443 , by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 1/26/2022 (nms). (Entered: 01/25/2022) |
| 447 | Jan 25, 2022 | View | REDACTED VERSION of 429 Answering Brief in Opposition, by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 1/26/2022 (nms). (Entered: 01/25/2022) |
| 448 | Jan 25, 2022 | Request | REDACTED VERSION of 430 Declaration of Wallace H. Feng, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 04 part 2 - 06 part 1, # 2 Exhibit 06 part 2 - 41 part 1, # 3 Exhibit 41 part 2 - 48 part 1, # 4 Exhibit 48 part 2 - 50 part 1, # 5 Exhibit 50 part 2 - 62)(Sharp, Melanie) Modified on 1/26/2022 (nms). (Entered: 01/25/2022) |
| 449 | Jan 25, 2022 | Request | REDACTED VERSION of 431 Declaration of Wallace H. Feng, Volume II, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 68 part 2 - Exhibit 72 part 1, # 2 Exhibit 72 part 2)(Sharp, Melanie) Modified on 1/26/2022 (nms). (Entered: 01/25/2022) |
| 450 | Jan 25, 2022 | Request | REDACTED VERSION of 432 Declaration, of Wallace H. Feng, Volume III, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibits 77-79, # 2 Exhibit 79 part 2 - Exhibit 84 part 1, # 3 Exhibit 84 part 2 - Exhibit 107, # 4 Exhibits 108-113 part 1, # 5 Exhibit 113 part 2 - Exhibit 116)(Sharp, Melanie) Modified on 1/26/2022 (nms). (Entered: 01/25/2022) |
| 451 | Jan 25, 2022 | Request | REDACTED VERSION of 435 Reply Brief, by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 1/26/2022 (nms). (Entered: 01/25/2022) |
| 452 | Jan 25, 2022 | Request | REDACTED VERSION of 438 Declaration of Wallace H. Feng, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 26 part 2 - Exhibit 119 part 1, # 2 Exhibit 119 part 2 - Exhibit 129, # 3 Exhibit 130)(Sharp, Melanie) Modified on 1/26/2022 (nms). (Entered: 01/25/2022) |
| 453 | Jan 25, 2022 | Request | REDACTED VERSION of 408 Appendix by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit 1-33 Part 1, # 2 Exhibit 1-33 Part 2, # 3 Exhibit 1-33 Part 3)(Farnan, Kelly) (Entered: 01/25/2022) |
| 454 | Jan 25, 2022 | Request | REDACTED VERSION of 409 Appendix, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibits 34-47)(Farnan, Kelly) Modified on 1/26/2022 (nms). (Entered: 01/25/2022) |
| 455 | Jan 25, 2022 | Request | REDACTED VERSION of 427 Answering Brief in Opposition, by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) (Entered: 01/25/2022) |
| 456 | Jan 25, 2022 | Request | REDACTED VERSION of 428 Appendix by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit 48-72)(Farnan, Kelly) (Entered: 01/25/2022) |
| 457 | Jan 25, 2022 | Request | REDACTED VERSION of 436 Reply Brief by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) (Entered: 01/25/2022) |
| 458 | Jan 25, 2022 | Request | REDACTED VERSION of 437 Appendix by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit 73-93)(Farnan, Kelly) (Entered: 01/25/2022) |
| 459 | Jan 26, 2022 | Request | ORAL ORDER: The redacted filings (D.I. 453 , 454 , and 458 ) are REJECTED because parts of them are redacted in their entirety. Absent a compelling reason, supported by a statement under oath by a party, redactions in their entirety are impermissible; redactions must be done so as to redact the least possible amount of the materials submitted. Failure to make a good faith attempt at such redactions may result in sanctions, the most common of which would be simply unsealing the entire filing. Redacting in its entirety a document that contains publicly available materials is prima facie evidence of bad faith. Revised redacted filings are DUE within five business days. Ordered by Judge Richard G. Andrews on 1/26/2022. (nms) (Entered: 01/26/2022) |
| 460 | Jan 27, 2022 | Request | Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding response to BCIs Notice of Withdrawal (D.I. 446 ). (Attachments: # 1 Exhibits A-B)(Farnan, Kelly) Modified on 1/27/2022 (nms). (Entered: 01/27/2022) |
| 461 | Jan 27, 2022 | Request | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding response to Sysmex's Letter (D.I. 460). (Sharp, Melanie) Modified on 1/28/2022 (nms). (Entered: 01/27/2022) |
| 462 | Jan 28, 2022 | Request | Joint Letter to The Honorable Christopher J. Burke, from Kelly E. Farnan, regarding Summary Judgment Hearing. (Farnan, Kelly) Modified on 1/28/2022 (nms). (Entered: 01/28/2022) |
| 463 | Feb 1, 2022 | Request | REDACTED VERSION of 446 Notice of Withdrawal of D.I. 416 - 420 in Favor of Excerpts at D.I. 442 - 443 , by Beckman Coulter, Inc.. (Sharp, Melanie) Modified on 2/1/2022 (nms). (Entered: 02/01/2022) |
| 464 | Feb 2, 2022 | Request | REDACTED VERSION of 408 Appendix, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibits 1-33 part 1, # 2 Exhibits 1-33part 2, # 3 Exhibits 1-33 part 3, # 4 Exhibits 1-33 part 4)(Farnan, Kelly) Modified on 2/3/2022 (nms). (Entered: 02/02/2022) |
| 465 | Feb 2, 2022 | Request | REDACTED VERSION of 409 Appendix, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibits 34-47 part 1, # 2 Exhibits 34-47 part 2)(Farnan, Kelly) Modified on 2/3/2022 (nms). (Entered: 02/02/2022) |
| 466 | Feb 2, 2022 | Request | REDACTED VERSION of 437 Appendix, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibits 73-93 part 1, # 2 Exhibits 73-93 part 2, # 3 Exhibits 73-93 part 3, # 4 Exhibits 73-93 part 4, # 5 Exhibits 73-93 part 5)(Farnan, Kelly) Modified on 2/3/2022 (nms). (Entered: 02/02/2022) |
| 467 | Feb 2, 2022 | Request | ANSWER to 302 Amended Answer to Complaint, and Counterclaims, by Sysmex America, Inc., Sysmex Corporation.(Farnan, Kelly) Modified on 2/3/2022 (nms). (Entered: 02/02/2022) |
| 468 | Feb 3, 2022 | Request | MOTION for Pro Hac Vice Appearance of Attorney Maxwell B. Snow - filed by Beckman Coulter, Inc.. Motions referred to Christopher J. Burke.(Sharp, Melanie) (Entered: 02/03/2022) |
| 469 | Feb 7, 2022 | Request | Letter to Honorable Christopher J. Burke from Kelly E. Farnan regarding Sysmex's Reply Brief in Support of its Motion for Partial Summary Judgment and Daubert Motion. (Farnan, Kelly) (Entered: 02/07/2022) |
| Feb 9, 2022 | SO ORDERED D.I. 468 MOTION for Pro Hac Vice Appearance of Attorney Maxwell B. Snow filed by Beckman Coulter, Inc. Ordered by Judge Christopher J. Burke on 2/9/2020. (dlb) (Entered: 02/09/2022) | ||
| 470 | Feb 14, 2022 | Request | ORAL ORDER: The Court, saddened that the parties were not able to resolve the instant dispute among themselves and that it therefore required the use of the Court's time to resolve, and having reviewed Defendant's "Notice of Withdrawal of D.I. 416-420 In Favor of Excerpts at D.I. 442-443 Relied On In Briefing" (the "Notice of Withdrawal"), (D.I. 446), and the parties' letters relating thereto, (D.I. 460; D.I. 461), hereby ORDERS that Defendant's Notice of Withdrawal is STRICKEN and D.I. 416-420 shall remain the operative exhibits. Defendant shall file public redacted versions of D.I. 416-420 within seven days. Ordered by Judge Christopher J. Burke on 2/14/2022. (mlc) (Entered: 02/14/2022) |
| 471 | Feb 14, 2022 | Request | ORAL ORDER: The Court, having reviewed the parties' January 28, 2022 letter regarding the summary judgment hearing set for February 25, 2022, (D.I. 462), is further disheartened by the amount of disagreement that existed as to what should have been (at least for the most part) fairly non-controversial administrative issues. Nevertheless, having reviewed the letter, the Court hereby ORDERS as follows: (1) Since the parties have not jointly agreed to an in-person hearing, the hearing will be held via videoconference using the Microsoft Teams platform. By no later than February 18, 2022, the parties shall send an e-mail to the Court's Courtroom Deputy, Ms. Benyo, indicating the names and e-mail addresses of all individuals who will participate in the hearing.; (2) The Court adopts the parties' proposal regarding time allocation. Three hours will be allocated for argument.; (3) With regard to how the three hours should be structured: (a) Ninety minutes shall be allocated for BCI's issues, which will proceed first, with each side getting forty-five minutes of argument regarding BCI's issues.; and (b) Ninety minutes shall be allocated for Sysmex's issues, which will follow argument regarding BCI's issues, with each side getting forty-five minutes of argument regarding Sysmex's issues.; and (4) Twenty-four hours in advance of the hearing, each side shall: (a) submit two hard copies of its slide presentation to the Court; and (b) email its slide presentation to Ms. Benyo (copying the other side). Ordered by Judge Christopher J. Burke on 2/14/2022. (mlc) (Entered: 02/14/2022) |
| 472 | Feb 22, 2022 | Request | REDACTED VERSION of 416 Declaration of Wallace H. Feng, Vol. 1, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 4 part 2 - 7 Part 1 part, # 2 Exhibit 7 part 2 - 8 part 1, # 3 Exhibit 8 Part 2 part 4, # 4 Exhibit 8 part 3 part 5, # 5 Exhibit 8 part 4 - 11 part 1, # 6 Exhibit 11 part 2 - 15 part 7)(Sharp, Melanie) Modified on 2/22/2022 (nms). (Entered: 02/22/2022) |
| 473 | Feb 22, 2022 | Request | REDACTED VERSION of 417 Declaration of Wallace H. Feng, Vol. 2, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 16 part 2, # 2 Exhibit 16 part 3, # 3 Exhibit 16 part 4, # 4 Exhibit 16 part 5, # 5 Exhibit 16 part 6, # 6 Exhibit 16 part 7, # 7 Exhibit 20 part 2, # 8 Exhibit 20 part 3)(Sharp, Melanie) Modified on 2/22/2022 (nms). (Entered: 02/22/2022) |
| 474 | Feb 22, 2022 | Request | REDACTED VERSION of 418 Declaration of Wallace H. Feng, Vol. 3, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 27 part 2, # 2 Exhibit 27 part 3 - 29 part 1, # 3 Exhibit 29 part 2 - 30 part 1, # 4 Exhibit 30 part 2 - 34 part 5)(Sharp, Melanie) Modified on 2/22/2022 (nms). (Entered: 02/22/2022) |
| 475 | Feb 22, 2022 | Request | REDACTED VERSION of 419 Declaration of Wallace H. Feng, Volume 4, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 35 Part 2 of 2)(Sharp, Melanie) Modified on 2/22/2022 (nms). (Entered: 02/22/2022) |
| 476 | Feb 22, 2022 | Request | REDACTED VERSION of 420 Declaration of Wallace H. Feng, Vol. 5, by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 36 part 2, # 2 Exhibit 36 Part 3, # 3 Exhibit 36 part 4, # 4 Exhibit 36 part 5, # 5 Exhibit 36 part 6 - 37 part 1, # 6 Exhibit 37 part 2 - 38 part 7, # 7 Exhibit 39 - 43 Part 1 part 8, # 8 Exhibit 43 part 2 - 44 part 9)(Sharp, Melanie) Modified on 2/22/2022 (nms). (Entered: 02/22/2022) |
| 477 | Feb 23, 2022 | Request | Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding the February 25, 2022 Hearing. (Farnan, Kelly) (Entered: 02/23/2022) |
| 478 | Feb 23, 2022 | Request | ORAL ORDER: The Court, having considered Plaintiffs' February 23, 2022 letter, (D.I. 477), and pursuant to the Court's Standing Order Regarding Courtroom Opportunities for Newer Attorneys, hereby ORDERS that the Court will ensure that sufficient time is permitted for argument of the issue to be addressed by a newer attorney. Ordered by Judge Christopher J. Burke on 2/23/2022. (dlb) (Entered: 02/23/2022) |
| 479 | Feb 24, 2022 | Request | Letter to The Honorable Christopher J. Burke from Melanie K. Sharp regarding Supplemental Authority. (Sharp, Melanie) (Entered: 02/24/2022) |
| Feb 25, 2022 | Minute Entry for proceedings held before Judge Christopher J. Burke - Motion Hearing held via videoconference on 2/25/2022 regarding D.I. 412 MOTION for Summary Judgment of Noninfringement filed by Beckman Coulter, Inc., D.I. 405 MOTION to Exclude Certain Opinions of John W. Roche and Mitchell B. Rosen filed by Sysmex Corporation, Sysmex America, Inc., D.I. 406 MOTION for Partial Summary Judgment filed by Sysmex Corporation, Sysmex America, Inc., D.I. 410 MOTION for Summary Judgment of Invalidity filed by Beckman Coulter, Inc. The Court heard argument from the parties and took the matters under advisement. (Court Reporter Deanna Warner. Clerk: M. Crawford) Appearances: K. Farnan, R. Delcollo, J. Sobieraj, R. Mallin, J. James, A. White for Plaintiffs; M. Sharp, T. Hallowell, D. Airan, W. Mueller, A. Feigelson, N. Kopinski for Defendant. (mlc) (Entered: 02/25/2022) | ||
| 480 | Feb 28, 2022 | Request | Letter to The Honorable Christopher J. Burke, from Melanie K. Sharp, regarding inequitable conduct evidence (see D.I. 429 ). (Sharp, Melanie) Modified on 3/1/2022 (nms). (Entered: 02/28/2022) |
| Mar 1, 2022 | Case Reassigned to Judge Joseph F. Bataillon of the United States District Court for the District of Nebraska. Please include the initials of the Judge (JFB) after the case number on all documents filed. (rjb) (Entered: 03/01/2022) | ||
| 481 | Mar 1, 2022 | Request | Letter to Honorable Christopher J. Burke from Kelly E. Farnan regarding Response to Final Written Decision - re 479 Letter. (Farnan, Kelly) (Entered: 03/01/2022) |
| Mar 2, 2022 | ORAL ORDER - Due to the transfer order in this case, the Court issues the following order: The referral to Magistrate Judge Burke shall remain in place. (D.I. 11) Additionally, Magistrate Judge Burke shall handle the pretrial conference. The parties have the right to file an appeal of the Magistrate Judge's order, and the same shall be decided by the undersigned. IT IS SO ORDERED.Signed by Judge Joseph F. Bataillon on 03/02/2022. (AEV) (Entered: 03/02/2022) | ||
| 482 | Mar 2, 2022 | Request | Letter to The Honorable Christopher J. Burke from Melanie K. Sharp regarding Response to Sysmex's Letter (D.I. 481) - re 479 Letter, 481 Letter. (Sharp, Melanie) (Entered: 03/02/2022) |
| 483 | Mar 3, 2022 | Request | The Pretrial Conference is now set for June 3, 2022 at 10:00 AM in Courtroom 2A before Judge Christopher J. Burke. Ordered by Judge Christopher J. Burke on 3/3/2022. (dlb) (Entered: 03/03/2022) |
| 484 | Mar 7, 2022 | Request | Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding Inequitable Conduct Chart - re 480 Letter. (Farnan, Kelly) (Entered: 03/07/2022) |
| 485 | Mar 17, 2022 | Request | NOTICE of Appearance by Taylor E. Hallowell on behalf of Beckman Coulter, Inc. (Hallowell, Taylor) (Entered: 03/17/2022) |
| 486 | Mar 21, 2022 | Request | Official Transcript of Summary Judgment Hearing held on 2/25/22 before Judge Christopher J. Burke. Court Reporter Deanna Warner,Email: Warnerdeanna@gmail.com. Transcript may be viewed at the court public terminal or order/purchased through the Court Reporter before the deadline for Release of Transcript Restriction. After that date, it may be obtained through PACER. Redaction Request due 4/11/2022. Redacted Transcript Deadline set for 4/21/2022. Release of Transcript Restriction set for 6/21/2022. (Triozzi, Heather) (Entered: 03/21/2022) |
| Apr 4, 2022 | CASE NO LONGER REFERRED to Chief Magistrate Judge Thynge for the purpose of exploring ADR. Pursuant to the Court's Standing Order No. 2022-2, dated March 14, 2022, "[u]nless otherwise directed by the Court, Magistrate Judges will no longer engage in alternative dispute resolution of patent and securities cases." See also 28 U.S.C. § 652(b). (Taylor, Daniel) (Entered: 04/04/2022) | ||
| 487 | Apr 8, 2022 | Request | Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding Sysmex's Motion Summary Judgment of No Inequitable Conduction - re 406 MOTION for Partial Summary Judgment. (Attachments: # 1 Attachments)(Farnan, Kelly) (Entered: 04/08/2022) |
| 488 | Apr 12, 2022 | Request | NOTICE OF SERVICE of (1) Defendant Beckman Coulter, Inc.s First Supplemental Initial Disclosures Pursuant to Federal Rule of Civil Procedure 26(a)(1); (2) Defendant Beckman Coulter, Inc.s Second Supplemental Disclosures Pursuant to Paragraph 3 filed by Beckman Coulter, Inc..(Hallowell, Taylor) (Entered: 04/12/2022) |
| 489 | Apr 13, 2022 | Request | Letter to The Honorable Christopher J. Burke from Melanie K. Sharp regarding Supplemental Authority - re 412 MOTION for Summary Judgment of Noninfringement, 414 MOTION to Exclude the Opinions of Plaintiffs' Damages Expert David Haas. (Sharp, Melanie) (Entered: 04/13/2022) |
| 490 | Apr 14, 2022 | Request | Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding Response to BCI's April 13, 2022 Letter - re 489 Letter,. (Farnan, Kelly) (Entered: 04/14/2022) |
| 491 | Apr 14, 2022 | Request | Letter to The Honorable Christopher J. Burke from Melanie K. Sharp regarding Response to Sysmex's April 14, 2022 and April 8, 2022 Letters. - re 490 Letter, 487 Letter. (Sharp, Melanie) (Entered: 04/14/2022) |
| 492 | Apr 20, 2022 | Request | MOTION for Pro Hac Vice Appearance of Attorney Mark H. Remus - filed by Sysmex America, Inc., Sysmex Corporation. Motions referred to Christopher J. Burke.(Delcollo, Renee) (Entered: 04/20/2022) |
| 493 | Apr 27, 2022 | Request | ORDER ADOPTING REPORT AND RECOMMENDATIONS - The Court adopts magistrate judge's report and recommendation on claim construction, D.I. 230 , in its entirety. Defendant Beckman Coulter Inc.'s objections 257 are overruled. Signed by Judge Joseph F. Bataillon on 04/27/2022. (smg) (Entered: 04/27/2022) |
| 494 | Apr 27, 2022 | Request | MOTION to Stay Pending Sysmex Corporation and Sysmex America, Inc.'s Federal Circuit Appeal - filed by Beckman Coulter, Inc.. (Attachments: # 1 Rule 7.1.1. Certification and Averment of Counsel, # 2 [Proposed] Order Granting Motion to Stay)Motions referred to Christopher J. Burke.(Sharp, Melanie) (Entered: 04/27/2022) |
| 495 | Apr 27, 2022 | Request | Letter to the Honorable Christopher J. Burke from Melanie K. Sharp regarding Motion to Stay - re 494 MOTION to Stay Pending Sysmex Corporation and Sysmex America, Inc.'s Federal Circuit Appeal. (Attachments: # 1 Exhibit 1-3, # 2 Exhibit 4, # 3 Exhibit 5, # 4 Exhibit 6-8)(Sharp, Melanie) (Entered: 04/27/2022) |
| 496 | Apr 28, 2022 | Request | ORAL ORDER Setting Hearing on Motion: The Court hereby ORDERS that a teleconference to hear argument regarding Defendant's Motion to Stay, (D.I. 494), is set for May 11, 2022 at 1:00 PM before Judge Christopher J. Burke. By no later than May 6, 2022, the parties shall jointly provide the Court's Courtroom Deputy, Ms. Benyo, with a dial-in number via email to use for the call. Ordered by Judge Christopher J. Burke on 4/28/2022. (dlb) (Entered: 04/28/2022) |
| Apr 28, 2022 | SO ORDERED D.I. 492 MOTION for Pro Hac Vice Appearance of Attorney Mark H. Remus filed by Sysmex Corporation, Sysmex America, Inc. Ordered by Judge Christopher J. Burke on 4/28/2022. (dlb) (Entered: 04/28/2022) | ||
| Apr 29, 2022 | Pro Hac Vice Attorney Mark H. Remus for Sysmex America, Inc. and Sysmex Corporation added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (mpb) (Entered: 04/29/2022) | ||
| 497 | May 3, 2022 | Request | [SEALED] Letter to Honorable Christopher J. Burke from Kelly E. Farnan regarding Opposition to Motion to Stay - re 494 MOTION to Stay Pending Sysmex Corporation and Sysmex America, Inc.'s Federal Circuit Appeal. (Attachments: # 1 Exhibit A)(Farnan, Kelly) (Entered: 05/03/2022) |
| 498 | May 4, 2022 | Request | REDACTED VERSION of 497 Letter, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit A)(Delcollo, Renee) (Entered: 05/04/2022) |
| 499 | May 6, 2022 | View | REPORT AND RECOMMENDATIONS re 406 MOTION for Partial Summary Judgment filed by Sysmex Corporation, Sysmex America, Inc. Objections to R&R due by 5/11/2022. Signed by Judge Christopher J. Burke on 5/6/2022.This order will be emailed to local counsel. (dlb) Modified on 5/12/2022 -document unsealed(dlb). (Entered: 05/06/2022) |
| 500 | May 6, 2022 | View | Letter to the Honorable Christopher J. Burke from Melanie K. Sharp regarding Reply in Support of Motion to Stay - re 497 Letter, 494 MOTION to Stay Pending Sysmex Corporation and Sysmex America, Inc.'s Federal Circuit Appeal. (Attachments: # 1 Exhibit 9 - 14)(Sharp, Melanie) (Entered: 05/06/2022) |
| 501 | May 10, 2022 | Request | ORAL REPORT AND RECOMMENDATION: The Court has reviewed the portion of Defendant's motion for summary judgment of invalidity ("Motion"), (D.I. 410), that seeks summary judgment on the ground that certain asserted claims lack adequate written description, (D.I. 411 at 21-23; D.I. 427 at 21-23; D.I. 435 at 19-20). The Court recommends that this portion of the Motion be DENIED for the following reasons: (1) The test for sufficiency of the written description is whether the disclosure of the application that is relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). This inquiry is a question of fact. Id.; (2) The dispute here relates to claim limitations that require that the sensing operation in a body fluid measuring mode include a "pre-washing" that is "automatically initiat[ed]." (See, e.g., '350 patent, col. 17:26-30) Plaintiffs' position in the case is that when a "blank check" is performed, this amounts to the type of "pre-washing" called for by the claims. (D.I. 417, ex. 16 at para. 149); (3) The Court has no trouble agreeing with Defendant that this type of "automatically initiat[ed]" pre-washing cannot be manually initiated. (D.I. 411 at 22); (4) From there though, Defendant argues that: (a) the only place in the patents where a blank check is described is in col. 11:25-33; (b) that description is of a manually-initiated blank check operation; and (c) this cannot provide written description of pre-washing that is automatically initiated. (Id.); (5) However, Plaintiffs (via their expert) opine that the blank check procedure discussed at 11:25-33 is not the same blank check procedure that is part of the pre-sequence pre-wash (step S31 in Fig 9, 11:5-14 and 38-55) that provides a written description for the claimed automatically initiated pre-washing." (D.I. 427 at 22; see also D.I. 417, ex. 16 at para. 150) It does seem reasonable to the Court that the blank check process described in col. 11:38-55 and step 31 of Figure 9 is one that could be said to occur "automatically," in that the process is powered by the "sample analyzer" via a "microcomputer[.]" ('350 patent, col. 11:41, 11:46); (6) Defendant disputes that this portion of the specification in fact describes a non-manual "initiat[ion]" of the blank check operation, because the specification explains that the blank check operation itself does not begin until a human operator first changes the measurement mode to the body fluid measurement mode. (D.I. 435 at 19 (citing '350 patent, col. 11:38-40)) Yet the Court cannot say that it is clear that this portion of column 11 is necessarily describing the blank check operation itself as being initiated manually. It could well be (depending on how the technology at issue works and what a POSITA would understand) that what is being described here is a blank check operation that is initiated automatically by a sample analyzer/microcomputeralbeit at a point after a prior act has occurred (i.e., an act that is separate and distinct from the blank check operation process) wherein a human has manually changed the measurement mode.; (6) And to the extent that Defendant argues that Plaintiffs' position here is inconsistent with how Plaintiffs have argued for validity over the LH-750 analyzer or the XE-2100 analyzer, (D.I. 411 at 22-23 (citing D.I. 417, ex. 16 at paras. 232, 665); D.I. 435 at 19-20), that is not sufficiently clear to the Court from the record.; and (7) The parties are directed to the Court's Standing Order for Objections Filed Under Fed. R. Civ. P. 72, dated March 7, 2022, a copy of which is available on the District Court's website, located at http://www.ded.uscourts.gov. 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 are due by May 16, 2022; responses to objections are due by May 23, 2022. Ordered by Judge Christopher J. Burke on 5/10/2022. (dlb) Modified on 5/23/2022 (smg). (Entered: 05/10/2022) |
| May 11, 2022 | Minute Entry for proceedings held before Judge Christopher J. Burke - Motion Hearing held on 5/11/2022 via teleconference regarding D.I. 494 MOTION to Stay Pending Sysmex Corporation and Sysmex America, Inc.'s Federal Circuit Appeal filed by Beckman Coulter, Inc. The Court heard argument from the parties and took the motion under advisement. (Court Reporter Michele Rolfe. Clerk: M. Crawford) Appearances: K. Farnan, R. Delcollo, R. Mallin for Plaintiffs; M. Sharp, T. Hallowell, D. Airan, A. Feigelson for Defendant.(mlc) (Entered: 05/11/2022) | ||
| 502 | May 11, 2022 | View | OBJECTIONS by Sysmex America, Inc., Sysmex Corporation to 499 REPORT AND RECOMMENDATIONS re 406 MOTION for Partial Summary Judgment filed by Sysmex Corporation, Sysmex America, Inc.. Please note that when filing Objections pursuant to Federal Rule of Civil Procedure 72(b)(2), briefing consists solely of . (Attachments: # 1 Certification)(Farnan, Kelly) (Entered: 05/11/2022) |
| May 12, 2022 | Document Unsealed at D.I. 499. No redactions requested. (dlb) (Entered: 05/12/2022) | ||
| 503 | May 12, 2022 | Request | ORAL ORDER: The Court, having reviewed Defendant's motion to stay pending Plaintiffs Federal Circuit appeal, ("Motion"), (D.I. 494), and the briefing related thereto, (D.I. 495; D.I. 497; D.I. 500), having heard lengthy argument during a teleconference on May 11, 2022, and having considered the three stay-related factors, hereby ORDERS that the Motion is DENIED for the following reasons: (1) As an initial matter, the second and third stay-related factors both strongly favor denial of the Motion; indeed, it is hard to imagine too many scenarios where Plaintiffs could make a stronger showing as to these factors. With regard to factor two, which looks at the status of the case, we are at an incredibly late stage, with the Court being in the midst of deciding summary judgment and Daubert motions and with trial set to begin in a little over six weeks. (D.I. 497 at 3) Moreover, the Court has already engaged in a significant amount of work in this hard-fought case, having resolved a large number of discovery disputes, (D.I. 51; D.I. 68; D.I. 69; D.I. 80; 8/3/20 Minute Entry; 11/2/20 Minute Entry; 2/8/21 Minute Entry; 5/25/21 Minute Entry; 8/3/21 Minute Entry; D.I. 388), claim construction, (D.I. 230; D.I. 493), motions to dismiss, (D.I. 250; D.I. 433), motions to amend, (D.I. 296; D.I. 301), and a previous motion to stay, (D.I. 357). Cf. SenoRx, Inc. v. Hologic, Inc., Civ. Action No. 12-173-LPS-CJB, 2013 WL 144255, at *5 (D. Del. Jan. 11, 2013) (noting that when a stay request comes at a time when trial is imminent, "the Court and the parties have already expended significant resources in the litigation, and the principle of maximizing the use of judicial and litigant resources [typically] is best served [at that point] by seeing the case through to its conclusion"). As for factor three, which considers undue prejudice to Plaintiffs from a stay, the parties are direct and fierce competitors in a small market, (5/11/22 Transcript ("Tr.") at 20-21, 60), and they have litigated the case as such. Moreover, Defendant could have earlier moved to stay the case back in February 2022 when the United States Patent and Trademark Office's Patent Trial and Appeal Boards ("PTAB") Final Written Decision ("FWD") issued, but for whatever reason, it chose not to do so until over two months later (with the trial date barreling down on everyone in the meantime). (D.I. 497 at 4) Had Defendant filed the instant Motion earlier, perhaps the Court and the parties could have taken different steps to try to address the issues raised in the Motion (i.e., regarding the parties' disputes relating to the PTAB's conclusions in the FWD, and how they should impact a trial here).; (2) Defendant's Motion largely focused on factor one, which considers whether granting the stay would simplify the issues for trial. On that front, Defendant: (a) noted the PTAB's finding that claims 7-15 of the '351 patent (claims that Plaintiffs are not asserting in this case) lack written description support for a controller programmed to sense white blood cells in body fluid using an electrical detector; and (b) argued that, as a result, Plaintiffs would be collaterally estopped from arguing that all of their asserted claims in the '350 and '351 patents are valid, because the scope of each of the asserted claims broadly covers all detectors for sampling all cells in body fluid[.]" (D.I. 495 at 2-3; see also D.I. 500 at 1-2) In other words, Defendants position was that an affirmance by the United States Court of Appeals for the Federal Circuit of the FWD would necessarily establish the invalidity of every asserted claim here. If that were so, the simplification factor would go Defendant's way. However, Plaintiffs contend that the scope of the asserted claims is not so broad as to cover an electrical detector that senses white blood cells in the body fluid mode. (Tr. at 34-35, 47) Rather, Plaintiffs argue that the asserted claims cover an electrical detector that measures red blood cells in the blood measuring mode and the body fluid measuring mode, and that there is support in the written description for this claim scope. (Id. at 35-36, 42, 45, 50-51, 54; D.I. 497 at 2) To this, Defendant retorts that if the asserted claims are construed "in such a way [as] to not cover electrical detection of white blood cells in the body fluid mode, the case is over because Defendant's accused products would not infringe such claims. (Tr. at 61, 68-70, 78) But the Court has no way of knowing if that is so or not so, and we are well past the deadline for Defendant to file a summary judgement motion of non-infringement on that ground.; and (3) Accordingly, this caseone that has been pending for years, and that has already seen its trial date moved onceneeds to proceed to trial. Ordered by Judge Christopher J. Burke on 5/12/2022. (dlb) (Entered: 05/12/2022) |
| 504 | May 13, 2022 | Request | Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding Proposed Juror Questionnaire. (Attachments: # 1 Juror Questionnaire)(Farnan, Kelly) (Entered: 05/13/2022) |
| 505 | May 16, 2022 | Request | RESPONSE TO OBJECTIONS by Beckman Coulter, Inc. re 502 Objections, to the Report and Recommendation on their Motion for Partial Summary Judgment of No Inequitable Conduct. (Higgins, James) (Entered: 05/16/2022) |
| 506 | May 17, 2022 | Request | REPORT AND RECOMMENDATION: The Court has reviewed the portion of Defendants motion for summary judgment of invalidity ("Motion"), (D.I. 410), that seeks summary judgment on the ground that claim 1 of the '350 patent is anticipated by Defendants LH 700 series hematology analyzer ("LH 700"), (D.I. 411 at 18-21; D.I. 427 at 17-21; D.I. 435 at 21-22). The Court recommends that this portion of the Motion be DENIED. Plaintiffs primarily contest this portion of the Motion by arguing that there is a material dispute of fact as to whether the LH 700 discloses two limitations in claim 1: the limitations that the parties refer to as CL4 and CL6. (D.I. 427 at 18-21) CL4 requires that a controller must be programmed to selectively operate the sample analyzer in a "blood measuring mode" and a "body fluid measuring mode[,]" ('350 patent, col. 16:49-50), and pursuant to the Court's claim construction, those respective modes must be "different from" each other, (D.I. 230 at 16; D.I. 493 at 10). And CL6 requires that the "sensing operation performed in the body fluid measuring mode" must be "different, at least partially, from the sensing operation performed in the blood measuring mode[.]" ('350 patent, col. 16:62-65) So both CL4 and CL6 require that the respective modes or their sensing operations must be "different." As the Court understands it, the key issue regarding Defendant's anticipation argument is Defendants assertion that in the LH 700, there is a difference in the two modes: that unlike in the LH 700's blood measuring mode, in the device's body fluid measuring mode, it "prepares for measurement of a body fluid sample by checking if the body fluid mode has been selected, and then overrid[es] the user's test type selection to ensure that only a CBC test is run." (D.I. 411 at 21; see also D.I. 435 at 21) To that, Plaintiffs respond, inter alia, that even if this was a difference, the LH 700 would not anticipate CL6 because CL6 requires that such a difference be present in the mode's 'sensing operation[,]" ('350 patent, col. 16:62), and this process of checking a box to select the body fluid measuring mode and the resulting overriding of the test type selection does not occur during the "sensing operation" of the LH 700's body fluid measuring mode (since it is not a part of the process for "preparing for measurement"), (id., col. 16:58-59; see also D.I. 427 at 21; D.I. 417, ex. 16 at para. 216). To resolve that dispute, it appears that the Court would be required to construe the term "preparing for measurement[,]" (see D.I. 411 at 21; D.I. 427 at 21; D.I. 435 at 21-22), and, unfortunately, the parties have not provided the Court with a sufficient record to allow it to do so intelligently at this time. Accordingly, summary judgment on this record is not warranted. To the extent either party wishes to seek claim construction relating to "preparing for measurement" at this late stage, they can raise that issue with the trial judge. The parties are directed to the Court's Standing Order for Objections Filed Under Fed. R. Civ. P. 72, dated March 7, 2022, a copy of which is available on the District Court's website, located at http://www.ded.uscourts.gov. 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 are due by May 23, 2022; responses to objections are due by May 27, 2022. Ordered by Judge Christopher J. Burke on 5/16/2022. (dlb) (Entered: 05/17/2022) |
| 507 | May 20, 2022 | Request | ORAL REPORT AND RECOMMENDATION: The Court, having reviewed the portion of Plaintiffs' motion for partial summary judgment ("Motion"), (D.I. 406 ), that seeks summary judgment as to Defendant's allegation that some of the asserted claims are invalid based on the Advia2120 product ("Advia 2120"), (D.I. 407 at 17-27; D.I. 429 at 12-21; D.I. 436 at 7-12), hereby recommends that this portion of the Motion be GRANTED for the following reasons: (1) The on-sale bar under 35 U.S.C. s. 102(b) applies when, before the critical date, the claimed invention: (a) was the subject of a commercial offer for sale; and (b) was ready for patenting. Pfaff v. Wells Elecs., Inc., 525 U.S. 67-68 (1998). At trial, Defendant must prove by clear and convincing evidence that there was a definite sale or offer to sell the Advia 2120 by the critical date (which here is January 31, 2007) and that the subject matter of the sale or offer to sell fully anticipated or rendered obvious the claimed invention. Elan Corp., PLC v. Andrx Pharms., Inc., 366 F.3d 1336, 1340 (Fed. Cir. 2004); see also (D.I. 408, ex. 11 at para. 23).; (2) Plaintiffs first argue that Defendant has not put forward sufficient evidence to create a genuine issue of material fact as to whether the Advia 2120 was on sale in the U.S. prior to the critical date. Although the issue is far from certain, the Court will herein assume arguendo that Defendant could meet this hurdle. (3) Nevertheless, the Court agrees with Plaintiffs' second argument: that there is insufficient evidence from which a reasonable fact finder could conclude by clear and convincing evidence that the Advia 2120 that may have been on sale in the U.S. prior to the critical date actually anticipates or renders obvious the asserted claims at issue. It so concludes because: (a) the Advia-OG is the only document that facially describes the Advia 2120 and that is said by Defendant to demonstrate how that device was designed and operated prior to the crucial date. (D.I. 407 at 21-24) But the Advia-OG was printed in 2008, and the simple fact that it lists a 2007 copyright cannot be enough to meet Defendant's burden to demonstrate what the contours of the device actually were as of January 2007 or earlier. (Id. at 21-22; D.I. 408, ex. 22 at BCID233031, -33 (Advia-OG noting a print date in 2008, a 2007 copyright, and stating that its content "was correct at the time of printing[,]"); D.I. 408, ex. 25 at paras. 1051-54); Lectrolarm Custom Servs., Inc. v. Vicon Indus., Inc., No. 03-2330 MA/A, 2006 WL 290574, at *3 (W.D. Tenn. Feb. 6, 2006) ("Capabilities described in the Owners Manual cannot be considered by the court in its analysis of claim invalidity because, given only a copyright year of 1988, the court has insufficient information to determine whether the Owners Manual was published before or after May 12, 1988."); cf. Navico Inc. v. Garmin Intl, Inc., NO. 2:16-CV-00190-JRG-RSP, 2017 WL 3750252, at *3 (E.D. Tex. July 28, 2017); (b) Nor is there a sufficient record to allow for the conclusion that the Advia 2120 is materially identical to the Advia 120 (as Defendant claims), such that Defendant could try to show how the Advia 2120 anticipates/renders obvious the claims simply by looking to the Advia 120 by proxy. Defendant's expert Mr. Roche never opined as to how the Advia 120 reads on the asserted claims, nor explained how the Advia 120 was similar or different from the Advia 2120, and none of Defendant's deposed witnesses had any information at all about the two products and their respective structures. (D.I. 407 at 17-19, 21 (citations omitted); D.I. 436 at 11-12) The few snippits from the record cited by Defendant, (D.I. 429 at 12-13 (citing D.I. 431, ex. 64; D.I. 431, ex. 66 at SCorp-Del00125160; D.I. 431, ex. 67 at SCorp-Del00289901; D.I. 432, ex. 75 at BCID233407)), are far too vague as to whether the devices were similar in all material respects, (D.I. 436 at 11-12). And Defendant's assertion that the descriptions of the Advia 120 in Ornstein and K003796 are "consistent" with those of the Advia 2120 in Advia-OG, (D.I. 429 at 16), is merely attorney argument, (D.I. 436 at 10). Mr. Roche did, however, indicate that the two products were in fact different in some ways, (D.I. 408, ex. 11 at para. 195 (noting that the Advia 2120 was an "improved" version of the Advia 120)), and Plaintiffs' expert Dr. Robinson went into further detail about those differences in his expert report, (id., ex. 25 at paras. 1057, 1071-73 & n.523).; (c) Defendant cannot rely on a vague reference in Mr. Roche's report to his "personal experience, including conversations with former Bayer employees[,]" (id., ex. 21 at para. 77; see also id., ex. 11 at para. 226), to support its invalidity position here, when Mr. Roche never describes what "personal experience" he is referring to, nor the substance of any such conversations, (D.I. 407 at 24-25).; and (d) Defendant cannot use the belated declaration of Dr. Zelmanovic, the former Principal Scientist at Bayer Corp. who worked on development of the Advia 2120, (D.I. 429 at 13, 17-20; D.I. 431, ex. 63), to fill in the blanks for its invalidity case that are otherwise missing from the properly-developed record. Dr. Zelmanovic was never mentioned in Defendant's initial disclosures or any supplementation thereof, (D.I. 436 at 8-9), and thus Defendant did not timely disclose him in this case as a fact witness with key knowledge, cf. Dasso Int'l, Inc. v. MOSO N. Am., Inc., Civil Action No. 17-1574-RGA, Civil Action No. 19-564-RGA, 2021 WL 4427168, at *8 (D. Del. Sept. 27, 2021). Nor would allowing consideration of the declaration here be harmless under the Pennypack factors. It was no doubt surprising for Plaintiffs to see Dr. Zelmanovic's declaration filed at the eleventh hour, when he was previously only mentioned briefly in Mr. Roche's June 1, 2021 opening report. (See D.I. 430, ex. 41 at para. 226) As a result, there has been no discovery regarding Dr. Zelmanovic's statements, which Defendant now relies on heavily, and there is no time to cure this prejudice, with trial imminent.; and (4) The parties are directed to the Court's Standing Order for Objections Filed Under Fed. R. Civ. P. 72, dated March 7, 2022, a copy of which is available on the District Court's website, located at http://www.ded.uscourts.gov. 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 5/25/2022; responses to objections are due by May 31, 2022.Ordered by Judge Christopher J. Burke on 5/20/2022. (mlc) Modified on 6/10/2022 (smg). (Entered: 05/20/2022) |
| 508 | May 23, 2022 | Request | ORDER ADOPTING REPORT AND RECOMMENDATIONS, D.I. 501 , in its entirety. Signed by Judge Joseph F. Bataillon on 05/23/2022. (smg) (Entered: 05/23/2022) |
| 509 | May 24, 2022 | View | MOTION for Supplemental Claim Construction and Other Relief Based on Sysmex's New Theory of the Case Raised at the May 11, 2022 Hearing - filed by Beckman Coulter, Inc.. (Attachments: # 1 Rule 7.1.1. Certification and Averment of Counsel, # 2 [Proposed] Order Granting Motion for Supplemental Claim Construction and Other Relief)Motions referred to Christopher J. Burke.(Sharp, Melanie) (Entered: 05/24/2022) |
| 510 | May 24, 2022 | Request | OPENING BRIEF in Support re 509 MOTION for Supplemental Claim Construction and Other Relief Based on Sysmex's New Theory of the Case Raised at the May 11, 2022 Hearing filed by Beckman Coulter, Inc..Answering Brief/Response due date per Local Rules is 6/7/2022. (Sharp, Melanie) (Entered: 05/24/2022) |
| 511 | May 24, 2022 | View | DECLARATION re 510 Opening Brief in Support, of Motion for Supplemental Claim Construction and Other Relief Based on Sysmexs New Theory of the Case Raised at the May 11, 2022 Hearing by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 1-14)(Sharp, Melanie) (Entered: 05/24/2022) |
| 512 | May 25, 2022 | Request | OBJECTION to 507 Report and Recommendations Granting Partial Summary Judgment as to the Advia 2120 by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 1-4, # 2 Exhibit G, # 3 Exhibit H)(Sharp, Melanie) (Entered: 05/25/2022) |
| 513 | May 25, 2022 | Request | EXHIBIT re 512 Objection to Report and Recommendations Granting Partial Summary Judgment as to the Advia 2120 by Beckman Coulter, Inc.. (Sharp, Melanie) (Entered: 05/25/2022) |
| 514 | May 26, 2022 | Request | ORDER ADOPTING REPORT AND RECOMMENDATIONS for 410 Motion for Summary Judgment filed by Beckman Coulter, Inc., 506 Report and Recommendations. (See Order for further details) Signed by Judge Joseph F. Bataillon on 05/25/2022. (smg) (Entered: 05/26/2022) |
| 515 | May 26, 2022 | View | REPORT AND RECOMMENDATIONS re 412 MOTION for Summary Judgment of Noninfringement filed by Beckman Coulter, 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 5/31/2022. Signed by Judge Christopher J. Burke on 5/26/2022.This order will be emailed to local counsel. (dlb) Modified on 6/1/2022 to unseal document (dlb). (Entered: 05/26/2022) |
| May 26, 2022 | ORAL ORDER: The Court has reviewed Sysmexs unopposed proposed juror questionnaire. D.I. 504. The Court will send the proposed questionnaire to the prospective jurors as modified by the Court. The parties are instructed that the information provided in response to the questionnaire is confidential and is not to be disseminated outside the Court and parties in this case. Signed by Judge Joseph F. Bataillon on 05/26/22. (AEV) (Entered: 05/26/2022) | ||
| 516 | May 27, 2022 | Request | NOTICE OF SERVICE of Notice Pursuant to 35 U.S.C. § 282 filed by Beckman Coulter, Inc..(Hallowell, Taylor) (Entered: 05/27/2022) |
| 517 | May 27, 2022 | Request | [SEALED] Proposed Pretrial Order [Joint] by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit 1 - Uncontested Facts, # 2 Exhibit 2 - Sysmex Statement of Issues of Fact, # 3 Exhibit 3 - BCI Statement of Facts to be Litigated, # 4 Exhibit 4 - Sysmex Statement of Issues of Law, # 5 Exhibit 5 - BCI Statement of Contested Issues of Law, # 6 Exhibit 6 - Sysmex Witness List, # 7 Exhibit 6A - BCI Objections to Sysmex Witness List, # 8 Exhibit 7 - BCI Witness List, # 9 Exhibit 7A - Sysmex's Objections to BCI's List of Trial Witnesses, # 10 Exhibit 8 - Sysmex Deposition Designations, # 11 Exhibit 9 - BCI's Deposition Designations, # 12 Exhibit 10 - Sysmex Trial Exhibit List, # 13 Exhibit 11 - BCI Trial Exhibit List, # 14 Exhibit 12 - Sysmex Brief Statement of Intended Proofs, # 15 Exhibit 13 - BCI Statement of Proofs, # 16 Exhibit 14 - Sysmex MIL 1, # 17 Exhibit 15 - Sysmex MIL 2, # 18 Exhibit 16 - Sysmex MIL 3, # 19 Exhibit 17 - Beckman MIL 1, # 20 Exhibit 18 - Beckman MIL 2, # 21 Exhibit 19 - Beckman MIL 3)(Farnan, Kelly) (Attachment 11 replaced on 6/2/2022) (dlb). (Entered: 05/27/2022) |
| 518 | May 31, 2022 | Request | Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding Pre-Trial Conference. (Farnan, Kelly) (Entered: 05/31/2022) |
| 519 | May 31, 2022 | Request | ORDER ADOPTING REPORT AND RECOMMENDATIONS for 406 Motion for Summary Judgment filed by Sysmex Corporation, Sysmex America, Inc. The Court adopts magistrate judge's report and recommendation, D.I. 499 , in its entirety and Plaintiffs' motion for partial summary judgment of no inequitable conduct, D.I. 406 ; D.I. 407 at 14-28, is denied. (See Order for further details) Signed by Judge Joseph F. Bataillon on 05/31/2022. (smg) (Entered: 05/31/2022) |
| 520 | May 31, 2022 | Request | RESPONSE TO OBJECTIONS by Sysmex America, Inc., Sysmex Corporation . (Attachments: # 1 Exhibit A)(Farnan, Kelly) (Entered: 05/31/2022) |
| 521 | May 31, 2022 | Request | OBJECTION to 515 Report and Recommendations to Deny Beckman Coulter's Motion for Summary Judgment of Non-Infringement by Beckman Coulter, Inc.. (Attachments: # 1 Certification, # 2 Exhibit 1-2)(Sharp, Melanie) (Entered: 05/31/2022) |
| 522 | May 31, 2022 | Request | Proposed Jury Instructions by Sysmex America, Inc., Sysmex Corporation [Sysmex's Proposed] Preliminary Jury Instructions. (Farnan, Kelly) (Entered: 05/31/2022) |
| 523 | May 31, 2022 | Request | Proposed Jury Instructions by Sysmex America, Inc., Sysmex Corporation [Sysmex's Proposed] Final Jury Instructions. (Farnan, Kelly) (Entered: 05/31/2022) |
| 524 | May 31, 2022 | Request | Proposed Voir Dire by Sysmex America, Inc., Sysmex Corporation. (Farnan, Kelly) (Entered: 05/31/2022) |
| 525 | May 31, 2022 | View | Proposed Jury Instructions by Beckman Coulter, Inc. [Beckman Coulter's Proposed] Preliminary Jury Instructions. (Sharp, Melanie) (Entered: 05/31/2022) |
| 526 | May 31, 2022 | Request | Proposed Jury Instructions by Beckman Coulter, Inc. [Beckman Coulter's Proposed] Final Jury Instructions. (Sharp, Melanie) (Entered: 05/31/2022) |
| 527 | May 31, 2022 | Request | Proposed Voir Dire by Beckman Coulter, Inc.. (Sharp, Melanie) (Entered: 05/31/2022) |
| 528 | Jun 1, 2022 | View | VERDICT SHEET by Sysmex America, Inc., Sysmex Corporation [Sysmex's Proposed] Verdict Form. (Farnan, Kelly) (Entered: 06/01/2022) |
| 529 | Jun 1, 2022 | Request | ORAL ORDER: The Court, having reviewed Plaintiffs' May 31, 2022 letter, (D.I. 518), hereby ORDERS that Plaintiffs' request that the Court permit Mr. Mallin to participate in the pre-trial conference by telephone is GRANTED. By no later than June 2, 2022, Plaintiffs shall jointly provide the Court's Courtroom Deputy, Ms. Benyo, with a dial-in number via email to use for Mr. Mallin's participation in the pre-trial conference. The remainder of the Sysmex team participating in the pre-trial conference may still appear in person. Ordered by Judge Christopher J. Burke on 6/1/2022. (dlb) (Entered: 06/01/2022) |
| Jun 1, 2022 | Document Unsealed. 515 REPORT AND RECOMMENDATIONS re 412 MOTION for Summary Judgment of Noninfringement filed by Beckman Coulter, Inc. No redactions requested. (dlb) (Entered: 06/01/2022) | ||
| 530 | Jun 1, 2022 | View | Letter to the Honorable Joseph F. Bataillon from James L. Higgins regarding Verdict Form - re 528 Verdict Sheet. (Higgins, James) (Entered: 06/01/2022) |
| 531 | Jun 2, 2022 | Request | REPORT AND RECOMMENDATION: The Court, having reviewed the portion of Plaintiffs' motion for partial summary judgment, (D.I. 406), that relates to Defendant's Section 102(f) derivation defense, (see D.I. 407 at 27-33; D.I. 429 at 21-31; D.I. 436 at 12-15), hereby recommends that this portion of the motion be GRANTED for the following reasons: (1) The Court will address the motion as it relates to the Goffin Meyvis letter (the "GM letter") and the SEG proposals (the "SEG proposal") only; it will not address the Advia-OG issue here, as the Court relies on Defendants representation that Defendant is not seeking to rely on the Advia-OG to prove its derivation defense. (D.I. 429 at 24); (2) Plaintiffs assert, inter alia, that the key portions of the GM letter and the SEG proposals cannot be evidence as to the defense because they are hearsay. (D.I. 407 at 30-31; D.I. 436 at 12-14) The Court agrees with Plaintiffs that Defendant's suggestion that the documents have some other non-hearsay purpose, (D.I. 429 at 25-26), is not helpful to it, because as to the Section 102(f) defense, Defendant is clearly attempting to (and indeed, must) use these documents for their truth -- i.e., to show that, in fact, the named inventors did not first conceive of the claimed subject matter -- so that Defendant can satisfy the first "conception" element of the defense. (D.I. 429 at 22; D.I. 436 at 12) Additionally, the Court concludes that the documents are not admissible under the residual hearsay exception. (D.I. 429 at 26-28) That exception should only be used "rarely and in exceptional circumstances." FTC v. Mag. Sols., LLC, Civil Action No. 7-692, 2009 WL 690613, at *1 (W.D. Pa. Mar. 16, 2009). And Federal Rule of Evidence 807 (Rule 807) requires that the documents must be more probative than any other evidence that Defendant could obtain through reasonable efforts; yet here, Defendant has made no showing or provided no argument as to why reasonable efforts could not have resulted in testimony by Mr. Kalkman or Goffin Meyvis employees about the substance of these documents. (D.I. 436 at 13-14 ("BCI did not try to depose or obtain evidence from the purported authors of the documents.")); see Conning v. Halpern, Civil Action No. 18-cv-12336-ADB, 2021 WL 2646672, at *3 (D. Mass. June 28, 2021) (finding that an e-mail was not admissible under Rule 807 where the email was not more probative than other evidence that plaintiff could have obtained through reasonable efforts, as, inter alia, the plaintiff failed to explain whether he sought one declarants voluntary testimony or why he elected not to depose him); see also Burton v. Kohn L. Firm, S.C., 934 F.3d 572, 58384 (7th Cir. 2019); Sanchez v. Fl. Dept of Corrections, Case No. 4:20-cv-360-AW-MJF, 2020 WL 12309024, at *4 (N.D. Fl. Nov. 24, 2020).; and (3) The parties are directed to the Court's Standing Order for Objections Filed Under Fed. R. Civ. P. 72, dated March 7, 2022, a copy of which is available on the District Court's website, located at http://www.ded.uscourts.gov. 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 6/7/22; responses to objections are due by 6/10/22.. Ordered by Judge Christopher J. Burke on 6/2/2022. (dlb) (Entered: 06/02/2022) |
| Jun 2, 2022 | CORRECTING ENTRY: PDF at D.I. 517 #11 Exhibit 9 has been replaced at the request of the filer. (dlb) (Entered: 06/02/2022) | ||
| 532 | Jun 2, 2022 | Request | [SEALED] ANSWERING BRIEF in Opposition re 509 MOTION for Supplemental Claim Construction and Other Relief Based on Sysmex's New Theory of the Case Raised at the May 11, 2022 Hearing filed by Sysmex America, Inc., Sysmex Corporation.Reply Brief due date per Local Rules is 6/9/2022. (Attachments: # 1 Exhibit 1 - 11)(Farnan, Kelly) (Entered: 06/02/2022) |
| 533 | Jun 2, 2022 | Request | ORAL ORDER : With regard to Fridays pre-trial conference (PTC), the Court notes as follows: (1) Judge Bataillon will resolve the motions in limine, and so the Court will not hear argument on those motions at the PTC.; (2) Judge Bataillon will also handle the pending motion for supplemental claim construction. (D.I. 509); (3) During the PTC, the parties should be prepared to discuss with the Court whether the current amount of asserted claims and prior art defenses/combinations can be further narrowed prior to the start of trial.; (4) The Court is contemplating ordering that each side would be allocated 17 hours of trial time (equating to no more than six trial days), and the parties should be prepared to indicate at the PTC whether they find this acceptable or disagree with that proposed allocation.; (5) With regard to the issue raised in paragraph 89 of the PTO as to jury notebooks, the Court ORDERS that Sysmexs proposal shall be adopted.; (6) The Court sees that there are disputes/potential disputes described in paragraphs 14 and 96-100 of the PTO, and it will be prepared to address those issues with the parties at the PTC. If the parties believe there are other disputes related to trial procedure that the Court will need to address with them at the PTC, they should advise the Court of that by joint letter prior to the PTC.. Ordered by Judge Christopher J. Burke on 6/2/2022. (dlb) (Entered: 06/02/2022) |
| Jun 2, 2022 | Motion No Longer Referred: 509 MOTION for Supplemental Claim Construction and Other Relief Based on Sysmex's New Theory of the Case Raised at the May 11, 2022 Hearing (dlb) (Entered: 06/02/2022) | ||
| 534 | Jun 2, 2022 | Request | Letter to the Honorable Christopher J. Burke from Melanie K. Sharp regarding the Pretrial Conference scheduled for this Friday, June 3, 2022. (Sharp, Melanie) (Entered: 06/02/2022) |
| 535 | Jun 2, 2022 | Request | ORAL ORDER: The Court, having reviewed Defendant's June 2, 2022 letter, (D.I. 534), hereby ORDERS that Defendant's request is granted. Ms. Sharp can use the dial-in information provided to the Court for Mr. Mallin to participate in the pre-trial conference if necessary. Ordered by Judge Christopher J. Burke on 6/2/2022. (dlb) (Entered: 06/02/2022) |
| 536 | Jun 2, 2022 | Request | Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding Pre-Trial Conference - re 533 Oral Order,,,,,. (Farnan, Kelly) (Entered: 06/02/2022) |
| 537 | Jun 2, 2022 | View | REPORT AND RECOMMENDATIONS re 410 MOTION for Summary Judgment of Invalidity filed by Beckman Coulter, 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 6/7/2022. Signed by Judge Christopher J. Burke on 6/2/2022. (dlb) (Entered: 06/02/2022) |
| 538 | Jun 2, 2022 | Request | ORAL REPORT AND RECOMMENDATION: With regard to the remaining portions of Plaintiffs' motion for partial summary judgment ("Motion"), (D.I. 406 ), that the Court has not yet decided, the Court hereby recommends as follows: (1) As to the portion of the Motion relating to Defendant's lack of enablement defense, (D.I. 407 at 33-34; D.I. 429 at 31-34; D.I. 436 at 16-17), the Court recommends that it be DENIED. Defendant's expert Mr. Roche opined that, as to certain asserted claims, to the extent that the claimed multi-mode detectors refer to electrical detectors (the Court offers no opinion here on whether they do or not), then those affected claims are invalid for lack of enablement. (D.I. 408, ex. 11 at paras. 150-54; id., ex. 21 at para. 49) In their opening brief, Plaintiffs simply argued that summary judgment was warranted as to this defense because Mr. Roche's opinions "do not include a Wands analysis but instead include only conclusory, unsupported ipse dixit statements about undue experimentation." (D.I. 407 at 33) To be sure, Mr. Roche's opinions on this score are not lengthy. But Defendant rightly responded that Mr. Roche's analysis does touch explicitly on at least Wands factors two, three and five, and that it is not entirely conclusory. (See D.I. 429 at 33-34) To the extent that in Plaintiffs' reply brief, Plaintiffs then pivoted and specifically called out the lack of "evidence of the amount of time and effort it took [BCI] to modify [certain] algorithms [in its DxH 800]" (i.e., regarding Wands factor one), (D.I. 436 at 16), that more specific argument should have been in Plaintiffs' opening brief, and thus is waived here.; (2) As to the portion of the Motion for which Plaintiffs seek summary judgment regarding anticipation defenses to certain asserted claims ("the asserted claims at issue"), (D.I. 407 at 34; D.I. 429 at 34; D.I. 436 at 17-18), to the extent the Motion is directed to Defendant's anticipation defense regarding the Advia 2120 as to all of the asserted claims at issue (with the exception of claims 25-26 of the 351 patent), the Court recommends that it be DENIED, as Defendant has promoted expert testimony in support of the defense, (D.I. 429 at 34 (citing D.I. 408, ex. 11 at paras. 221, 226)). Otherwise, this portion of the Motion is DENIED as MOOT, in that Defendant asserts that it is not otherwise seeking and has not sought a judgment that these claims are invalid via an anticipation defense, (D.I. 429 at 34); to the extent Plaintiffs disagree with Defendant's assertion in this regard, (D.I. 436 at 17-18), they have not shown the Court why the assertion is wrong.; (3) As to the portion of the Motion for which Plaintiffs seek summary judgment that the XE-5000 and XN products are covered by certain asserted claims, (D.I. 407 at 35; D.I. 429 at 35-36; D.I. 436 at 18), the Court recommends that it be DENIED. Plaintiffs' argument here seems to be that Defendant cannot prevail because it does not have an expert report in which its expert is asserting that the products are not covered by these claims. (D.I. 436 at 18) But it appears Defendant will attempt to prevail on this point by relying on some of its evidence from its related non-infringement case and by poking holes (i.e., via cross-examination) in Plaintiffs' evidence. (D.I. 429 at 35-36 (citing, inter alia, D.I. 413)) And, at least as to Defendant's "controller"-related and "automatic pre-wash"-related arguments, it seems possible to the Court that this could be a viable method on which Defendant could proceed.; and (4) The parties are directed to the Court's Standing Order for Objections Filed Under Fed. R. Civ. P. 72, dated March 7, 2022, a copy of which is available on the District Court's website, located at http://www.ded.uscourts.gov. 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 6/7/2022; responses to objections are due by 6/10/22.Ordered by Judge Christopher J. Burke on 6/2/2022. (mlc) (Entered: 06/02/2022) |
| 539 | Jun 3, 2022 | Request | ORAL ORDER: The Court hereby ORDERS as follows: (1) The Court has confirmed with the Clerk's Office that trial in the instant case can begin on June 24, 2022. By no later than June 6, 2022 at noon eastern standard time, the parties shall submit a joint letter confirming whether both sides are available to begin on June 24.; (2) Trial will be held in Courtroom 2A.; and (3) Each side shall have 18 hours of combined total trial time for the jury trial and inequitable conduct bench trial. Ordered by Judge Christopher J. Burke on 6/3/22. (mlc) (Entered: 06/03/2022) |
| Jun 3, 2022 | Minute Entry for proceedings held before Judge Christopher J. Burke - Pretrial Conference held on 6/3/2022. The Court reviewed the proposed pretrial order and discussed issues relating to the upcoming trial with the parties. The parties shall meet and confer regarding the issues discussed and submit a joint follow-up letter. (Court Reporter Michele Rolfe. Clerk: M. Crawford) Appearances: K. Farnan, J. Sobieraj, M. Remus, J. James and R. Mallin (by telephone) for Plaintiffs; T. Hallowell, M. Sharp, D. Airen, A. Feigelson, N. Kopinski, M. Snow and W. Feng for Defendant. (mlc) (Entered: 06/03/2022) | ||
| 540 | Jun 3, 2022 | Request | REDACTED VERSION of 517 Proposed Pretrial Order,,,, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit 1 - Uncontested Facts, # 2 Exhibit 2 - Sysmex Statement of Issues of Fact, # 3 Exhibit 3 - BCI Statement of Facts to be Litigated, # 4 Exhibit 4 - Sysmex Statement of Issues of Law, # 5 Exhibit 5 - BCI Statement of Contested Issues of Law, # 6 Exhibit 6 - Sysmex Witness List, # 7 Exhibit 6A - BCI Objections to Sysmex Witness List, # 8 Exhibit 7 - BCI Witness List, # 9 Exhibit 7A - Sysmex's Objections to BCI's List of Trial Witnesses, # 10 Exhibit 8 - Sysmex Deposition Designations, # 11 Exhibit 9 - BCI's Deposition Designations, # 12 Exhibit 10 - Sysmex Trial Exhibit List, # 13 Exhibit 11 - BCI Trial Exhibit List, # 14 Exhibit 12 - Sysmex Brief Statement of Intended Proofs, # 15 Exhibit 13 - BCI Statement of Proofs, # 16 Exhibit 14 - Sysmex MIL 1, # 17 Exhibit 15 - Sysmex MIL 2, # 18 Exhibit 16 - Sysmex MIL 3, # 19 Exhibit 17 - Beckman MIL 1, # 20 Exhibit 18 - Beckman MIL 2, # 21 Exhibit 19 - Beckman MIL 3)(Delcollo, Renee) (Entered: 06/03/2022) |
| 541 | Jun 3, 2022 | Request | Redacted Final PRETRIAL ORDER. Signed by Judge Christopher J. Burke on 6/3/2022. (dlb) (Entered: 06/03/2022) |
| 542 | Jun 6, 2022 | Request | Joint Letter to The Honorable Christopher J. Burke from Kelly E. Farnan regarding Response to the Court's Oral Order - re 539 Oral Order,,. (Farnan, Kelly) (Entered: 06/06/2022) |
| 543 | Jun 6, 2022 | Request | ORAL ORDER: The Court, having reviewed the parties' June 6, 2022 letter, (D.I. 542), and having conferred with the District Court, hereby ORDERS that jury selection and initial jury instructions will take place on June 24, 2022, and the parties shall proceed with opening statements on June 27, 2022. Ordered by Judge Christopher J. Burke on 6/6/2022. (mlc) (Entered: 06/06/2022) |
| 544 | Jun 6, 2022 | Request | RESPONSE TO OBJECTIONS by Sysmex America, Inc., Sysmex Corporation . (Attachments: # 1 Exhibit A)(Farnan, Kelly) (Main Document 544 replaced on 6/7/2022) (dlb). (Entered: 06/06/2022) |
| 545 | Jun 7, 2022 | Request | OBJECTION to 531 Report and Recommendations Granting Plaintiffs' Motion for Partial Summary Judgment regarding Beckman Coulter, Inc.'s Derivation Defense by Beckman Coulter, Inc.. (Attachments: # 1 Certification, # 2 Exhibit A-B)(Sharp, Melanie) (Entered: 06/07/2022) |
| 546 | Jun 8, 2022 | Request | ORAL ORDER: The Court, having reviewed the portion of Plaintiffs' Daubert motion seeking to exclude certain opinions of Defendant's damages expert Mitchell Rosen, ("Motion"), (D.I. 405), and the briefing related thereto, (D.I. 407 at 46-49; D.I. 429 at 47-50; D.I. 436 at 24-25), having heard argument on the Motion (as well as on other motions) by videoconference on February 25, 2022, (D.I. 486 (Tr.)), and having considered the relevant legal standards, see 360Heros, Inc. v. GoPro, Inc., --- F. Supp. 3d ---, 2021 WL 5050879, at *1-2 (D. Del. Nov. 1, 2021), hereby ORDERS that the Motion be GRANTED-IN-PART and DENIED-IN-PART as follows: (1) With regard to Plaintiffs' challenge to Mr. Rosen's opinions based on his understanding of the "patented feature" of the asserted claims, (D.I. 407 at 46), it is DENIED. Plaintiffs argue that the paragraphs at issue are based on Mr. Rosen's "erroneous understanding" that the "patented feature" of the asserted claims is the autowash/prewash feature and the counting and displaying of mononucleated and polynucleated cells--and that this renders these paragraphs unreliable because none of the asserted claims include limitations corresponding to the "full patented feature" that Mr. Rosen has identified. (Id. at 46-47 (internal quotation marks and citations omitted); see also D.I. 409, ex. 46) However, it is undisputed that some asserted claims require an autowash/prewash feature, some require counting and displaying of mononucleated and polynucleated cells, and some require neither of these features. (D.I. 429 at 48) And the Court agrees with Defendant that Mr. Rosen did not appear improperly limit his damages opinion to an understanding that all asserted claims require both features. (Id. at 48-49; see also D.I. 409, ex. 44 at paras. 47, 50; Defendant's Motion for Summary Judgment Presentation, Slide 146) To the extent that Plaintiffs disagree with Mr. Rosen's characterization of the asserted claims' improvement over the prior art, they can take that up with him on cross examination. Cf. Meridian Mfg., Inc. v. C & B Mfg., Inc., 340 F. Supp. 3d 808, 844-45 (N.D. Iowa 2018) ("[The damages expert] can explain her understanding of the particular feature that informed her damages analysis and [plaintiff] is free to cross-examine her about it.").; (2) With regard to Plaintiffs' challenge to Mr. Rosen's opinion regarding non-asserted patents, (D.I. 407 at 48-49), it is GRANTED-IN-PART and DENIED-IN-PART. For the reasons discussed by Plaintiffs, the Court agrees with Plaintiffs that Mr. Rosen is not qualified to opine that Plaintiffs "could have asserted" the non-asserted patents discussed in paragraph 104 of his report against Defendant as early as 2008. (D.I. 407 at 48-49 (citing D.I. 409, ex. 44 at para. 104); see also D.I. 409, ex. 45 at 282-83, 292-93) Thus, the Court agrees that this portion of paragraph 104 should be excluded. However, the other material in paragraph 104 relates to what the non-asserted patents cover, and Mr. Rosen properly relied on discussions with Mr. Roche with respect to this topic. (D.I. 409, ex. 44 at para. 104; Tr. at 182) Thus, the Court does not agree that the remainder of paragraph 104 should be excluded.; and (3) Objections to this Order are due by June 13, 2022 and responses are due by June 16, 2022.. Ordered by Judge Christopher J. Burke on 6/8/2022. (dlb) (Entered: 06/08/2022) |
| 547 | Jun 9, 2022 | Request | ORAL ORDER: The Court, having reviewed the portion of Plaintiffs' Daubert motion seeking to exclude certain opinions of Defendant's technical expert John Roche, ("Motion"), (D.I. 405), and the briefing related thereto, (D.I. 407 at 36-46; D.I. 429 at 36-47; D.I. 436 at 18-24), and having considered the relevant legal standards, see 360Heros, Inc. v. GoPro, Inc., --- F. Supp. 3d ---, 2021 WL 5050879, at *1-2 (D. Del. Nov. 1, 2021); Personal Audio, LLC v. Google LLC, Civil Action No. 17-1751-CFC-CJB, 2021 WL 5038740, at *1-2 (D. Del. Oct. 25, 2021), hereby ORDERS that the Motion be GRANTED-IN-PART and DENIED-IN-PART as follows: (1) With regard to Plaintiffs' challenge to Mr. Roches "multi-mode detector" written description opinion, (D.I. 407 at 36-37), it is DENIED. Plaintiffs' argument is that Mr. Roche's opinion in this regard is irrelevant because it is not tied to the limitations in the asserted claims. (Id.; D.I. 436 at 18) In response, Defendant explained that Mr. Roches opinion is relevant in light of Defendant's contention that every asserted claim is invalid for lack of written description because the specification does not show possession of the full breadth of the asserted claims. (D.I. 429 at 36-37; see also D.I. 408, ex. 11 at para. 137) At this stage, the Court cannot say that Mr. Roche's "multi-mode detector" written description opinion is irrelevant to any issue in the case.; (2) With regard to Plaintiffs' challenge to Mr. Roche's enablement opinion, (D.I. 407 at 37-38), it is DENIED. Plaintiffs contend that Mr. Roche's opinion fails to address the Wands factors and is conclusory and unsupported by facts and data. (Id. at 37) The Court does not agree, for reasons it previously explained in resolving Plaintiffs motion for summary judgment relating to Defendants lack of enablement defense, (D.I. 538; see also D.I. 429 at 37 & n.6, 38-39); Amgen, Inc. v. Chugai Pharms. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991) (noting that the Wands factors "are illustrative, not mandatory").; (3) With regard to Plaintiffs challenge to Mr. Roche's indefiniteness opinion regarding "controller[,]" (D.I. 407 at 38-39), it is GRANTED. Defendant's retort to this challenge was that this opinion would be "relevant and admissible" if the District Court sustained its objections to the Court's recommended construction of the "controller" term. (D.I. 429 at 39) However, the District Court has subsequently overruled Defendant's objections, (D.I. 493 at 8-10), and therefore Defendant has not demonstrated that the opinion is relevant to the issues to be tried.; (4) With regard to Plaintiffs' challenge to Mr. Roche's non-infringement opinion regarding "multi-mode detector[,]" (D.I. 407 at 39-40), it is GRANTED. One of the reasons that Plaintiffs give for challenging this opinion is that it is based on an incorrect claim construction for the "multi-mode detector" limitation. (Id. at 40; D.I. 436 at 20-21) Defendant's response confirmed that the parties had a ripe dispute regarding the construction of this limitation. (D.I. 429 at 40) However, in the Court's Report and Recommendation regarding Defendant's Motion for Summary Judgment of Noninfringement, the Court took up the parties' claim construction dispute and recommended that Sysmex's proposed construction be adopted. (D.I. 515 at 16-18) To the extent that this recommendation is adopted, (see D.I. 521 at 5-6), then Mr. Roche's non-infringement opinion regarding "multi-mode detector" would be based on an improper claim construction (and thus would be unreliable and unhelpful to the factfinder), see Integra Lifescis. Corp. v. HyperBranch Med. Tech., Inc., Civil Action No. 15-819-LPS-CJB, 2018 WL 1785033, at *5 (D. Del. Apr. 4, 2018).; (5) With regard to Plaintiffs' challenge to Mr. Roches non-infringement opinion regarding claim 21 of the '350 patent, (D.I. 407 at 40-41), it is DENIED. Plaintiffs' primary argument is that this opinion is improperly based on a new, untimely theory of Defendant's that implicates the scope of the claim term "each configured to electrically or optically sense cells[.]" (Id.; D.I. 436 at 21) However, the proper avenue for relief on this basis would have been a motion to strike filed pursuant to Fed. R. Civ. P. 37 that included an analysis of the Pennypack factors, not the filing of a Daubert motion. As for Plaintiffs' other argument -- i.e., that a sentence in paragraph 46 should be stricken "as it is improper for one witness to opine on the veracity of another witness[,]" (D.I. 407 at 41) --Defendant persuasively explained why this statement is not problematic, (D.I. 429 at 42).; (6) With regard to Plaintiffs' challenge to Mr. Roche's patentable subject matter opinion, (D.I. 407 at 41-43), it is DENIED. The Court recently recommended that Defendant's Motion for Summary Judgment of Invalidity relating to Section 101 be denied because there is at least a material dispute of fact with respect to whether the claimed body fluid mode in claim 16 of the '351 patent amounts to an unconventional utilization of computer technology/functionality. (D.I. 537) Mr. Roche's patentable subject matter opinion pertains to this dispute and therefore could be useful to resolution of the Section 101 issue. (D.I. 429 at 42) Plaintiffs' other complaints regarding this opinion are not grounds for exclusion. (D.I. 407 at 42-43); (7) With regard to Plaintiffs' challenge to Mr. Roche's materiality opinions, (id. at 43-44), it is DENIED without prejudice to renew. Plaintiffs argue that these opinions relating to inequitable conduct should be excluded based on cases from this Court holding that patent law experts cannot testify regarding the materiality of prior art. (Id.; D.I. 436 at 22) However, Mr. Roche is a technical expert, and Defendant's inequitable conduct defense will be tried to the District Court during a bench trial. (D.I. 429 at 41-42) The Court agrees with Defendant that the District Court can decide at the bench trial whether Mr. Roche's materiality opinions are properly offered to inform as to factual disputes (and do not amount to legal conclusions) and whether they are helpful or not.; (8) With regard to Plaintiff' challenge to Mr. Roche's opinions regarding legal conclusions and other litigation, (D.I. 407 at 44-45), it is GRANTED-IN-PART and DENIED-IN-PART. With regard to the single statement in paragraph 217 that Plaintiffs seek to strike as an improper legal opinion, (id. at 44), Defendant does not respond directly to this argument and instead generally addresses paragraph 217 as a whole. (D.I. 429 at 43; D.I. 436 at 22) Accordingly, Plaintiffs' argument regarding this statement is unrebutted and Plaintiffs' Motion is GRANTED as to it. With regard to paragraphs 24-25 and 27-28 relating to other litigation between the parties, Plaintiffs assert that they should be stricken "as irrelevant and outside the scope of Roche's expertise." (D.I. 407 at 44) The Motion is DENIED as to these paragraphs. The Court is not persuaded that this material is completely irrelevant to any issue in the case, (see D.I. 429 at 43-44), and Plaintiffs' argument regarding the scope of Mr. Roche's expertise is conclusory. With regard to paragraph 26, Plaintiffs' Motion is GRANTED. Plaintiffs argue that this paragraph improperly includes opinions regarding the Examiner and Plaintiffs" state of mind. (D.I. 407 at 44-45) Defendant did not provide any response as to why these statements should withstand Plaintiffs' challenge. (D.I. 429 at 43-44; D.I. 436 at 23); (9) With regard to Plaintiffs challenge to Mr. Roche's commentary on Mr. Imazu's veracity and summaries of Mr. Imazu's testimony, (D.I. 407 at 45), and with regard to Plaintiffs' challenge to Mr. Roche's conception opinions, (id. at 46), they are DENIED as MOOT, in light of the Court's prior decision recommending the grant of Plaintiffs' motion for summary judgment relating to Defendant's Section 102(f) derivation defense, (see D.I. 531).; and (10) Objections to this Order are due by June 14, 2022 and responses are due by June 17, 2022. Ordered by Judge Christopher J. Burke on 6/9/2022. (dlb) (Entered: 06/09/2022) |
| 548 | Jun 9, 2022 | View | REDACTED VERSION of 532 Answering Brief in Opposition, by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit 1-11)(Delcollo, Renee) (Main Document 548 replaced on 6/10/2022) (dlb). (Attachment 1 replaced on 6/10/2022) (dlb). (Entered: 06/09/2022) |
| 549 | Jun 9, 2022 | Request | REPLY BRIEF re 509 MOTION for Supplemental Claim Construction and Other Relief Based on Sysmex's New Theory of the Case Raised at the May 11, 2022 Hearing filed by Beckman Coulter, Inc.. (Sharp, Melanie) (Entered: 06/09/2022) |
| 550 | Jun 9, 2022 | Request | DECLARATION re 549 Reply Brief in Support of its Motion for Supplemental Claim Construction and Other Relief Based on Sysmex's New Theory of the Case Raised at the May 11, 2022 Hearing by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 15-18)(Sharp, Melanie) (Entered: 06/09/2022) |
| 551 | Jun 9, 2022 | View | ORDER ADOPTING REPORT AND RECOMMENDATIONS for 507 Report and Recommendations. The portion of Sysmex's motion for summary judgment, D.I. 406 , which seeks judgment as to Defendant's allegation that some of the asserted claims are invalid under the on-sale bar of 35 U.S.C. § 102(b) based on the Advia 2120 product is granted. Signed by Judge Joseph F. Bataillon on 06/09/2022. (smg) (Entered: 06/10/2022) |
| Jun 10, 2022 | CORRECTING ENTRY: PDFs at D.I. 548 have been replaced at the request of the filer. (dlb) (Entered: 06/10/2022) | ||
| 552 | Jun 10, 2022 | Request | RESPONSE TO OBJECTIONS by Sysmex America, Inc., Sysmex Corporation re 545 Objection to Report and Recommendations, . (Delcollo, Renee) (Entered: 06/10/2022) |
| 553 | Jun 10, 2022 | Request | Letter to Honorable Christopher J. Burke from Kelly E. Farnan regarding Response to Pretrial Conference. (Farnan, Kelly) (Entered: 06/10/2022) |
| 554 | Jun 10, 2022 | Request | [SEALED] EXHIBIT re 553 Letter by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Tab A, # 2 Tab B, # 3 Exhibit C)(Farnan, Kelly) (Entered: 06/10/2022) |
| 555 | Jun 13, 2022 | View | MEMORANDUM ORDER: Defendant's objection, D.I. 521 , is overruled. The Court adopts the magistrate judge's report and recommendation, D.I. 515 , in its entirety. BCI's motion for summary judgment of noninfringement, D.I. 412 , is denied. Signed by Judge Joseph F. Bataillon on 6/10/2022. (nmg) (Entered: 06/13/2022) |
| 556 | Jun 13, 2022 | View | MEMORANDUM ORDER: The report and recommendation of the magistrate judge, D.I. 537 , is adopted in its entirety. Signed by Judge Joseph F. Bataillon on 6/10/2022. (nmg) (Entered: 06/13/2022) |
| 557 | Jun 13, 2022 | View | MEMORANDUM ORDER: The report and recommendation of the magistrate judge, D.I. 538 , is adopted in its entirety. Signed by Judge Joseph F. Bataillon on 6/10/2022. (nmg) (Entered: 06/13/2022) |
| 558 | Jun 13, 2022 | Request | MOTION to Dismiss for Lack of Jurisdiction Over the Subject Matter BCI's Counterclaims with Respect to Claims 7-15 of the '351 Patent - filed by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 Exhibit A-C, # 2 Text of Proposed Order Proposed Order)(Farnan, Kelly) Modified on 6/15/2022 (smg). Modified on 6/15/2022 (dlb). (Entered: 06/13/2022) |
| 559 | Jun 14, 2022 | Request | ORAL ORDER: The Jury Trial in this matter scheduled for June 24-July 1, 2022, will be held in Courtroom 2A at the J. Caleb Boggs Federal Building, 844 N. King Street, Wilmington, DE. Trial will begin at 9:00 AM. All hard copies of exhibits (three separate copies) shall be delivered to the courthouse in Wilmington, not Omaha, on or by June 24, 2022. However, one digital copy of exhibits via flashdrive are to be sent to the Omaha courthouse at Roman L. Hruska Federal Courthouse, 111 S. 18th Plz, Suite 3259, Omaha, NE 68102, by June 22, 2022. Signed by Judge Joseph F. Bataillon on 06/14/2022. (AEV) (Entered: 06/14/2022) |
| 560 | Jun 14, 2022 | Request | MEMORANDUM ORDER: Defendant's objection, D.I. 545 , is overruled. The Court adopts the magistrate judge's report and recommendation, D.I. 531 , in its entirety. The portion of Sysmex's motion for summary judgment, D.I. 406 , which seeks judgment as to Defendant's section 102(f) derivation defense is granted. Signed by Judge Joseph F. Bataillon on 6/14/2022. (nmg) (Entered: 06/14/2022) |
| 561 | Jun 14, 2022 | Request | ORDER: Defendant's Motion for Supplemental Claim Construction, D.I. 509 , is denied. Defendant shall respond to Plaintiffs' Motion to Dismiss, D.I. 558 , by close of business June 17, 2022. Plaintiffs may file a reply by close of business June 20, 2022. Signed by Judge Joseph F. Bataillon on 6/14/2022. (nmg) (Entered: 06/14/2022) |
| 562 | Jun 14, 2022 | Request | MEMORANDUM ORDER: The oral report and recommendation of the magistrate judge, D.I. 546 , is adopted in its entirety. Signed by Judge Joseph F. Bataillon on 6/14/2022. (nmg) (Entered: 06/14/2022) |
| Jun 15, 2022 | Set Hearing: Jury Selection set for 6/24/2022 in Courtroom 2A before Judge Joseph F. Bataillon. (smg) (Entered: 06/15/2022) | ||
| Jun 15, 2022 | Motion No Longer Referred to Judge Burke: 558 MOTION to Dismiss for Lack of Jurisdiction Over the Subject Matter BCI's Counterclaims with Respect to Claims 7-15 of the '351 Patent (dlb) (Entered: 06/15/2022) | ||
| 563 | Jun 15, 2022 | Request | ORAL ORDER: The Court, having reviewed Defendant's Daubert motion seeking to exclude the opinions of Plaintiffs' damages expert David Haas, ("Motion"), (D.I. 414), and the briefing related thereto, (D.I. 415; D.I. 427 at 38-48; D.I. 435 at 23-25), and having considered the relevant legal standards, see 360Heros, Inc. v. GoPro, Inc., --- F. Supp. 3d ---, 2021 WL 5050879, at *1-2 (D. Del. Nov. 1, 2021); Personal Audio, LLC v. Google LLC, Civil Action No. 17-1751-CFC-CJB, 2021 WL 5038740, at *1-2 (D. Del. Oct. 25, 2021), hereby ORDERS that the Motion be DENIED as follows: (1) With regard to Defendants challenge to Mr. Haas' opinions based on a failure to properly apportion his reasonable royalty value, (D.I. 415 at 3-5), it is DENIED. Mr. Haas applied an apportionment rate of 23%. (See id.; D.I. 427 at 41) Defendant has a few lines of attack with regard to Mr. Haas' opinion in this regard. For example, while Mr. Haas utilized Defendant's sales data for purchases of body fluid reagent (i.e., body fluid control) for its analyzers to arrive at his apportionment rate, (D.I. 417, ex. 19 at paras. 153, 172), Defendant posits that a single purchase of this reagent "does not indicate that those customers actually used it or that they refilled their orders[,]" (D.I. 415 at 4). Additionally, Defendant contends that Mr. Haas "improperly estimates the number of machines running the body fluid tests based on the number of units of controls purchased" and "failed to account for the customer's potential use of all of those... units for a single analyzer." (Id.) The Court is not persuaded that Mr. Haas' use of these inferences constitutes an unreliable methodology. Indeed, Defendant's former Senior Director of Marketing and Product Management for Hematology, Mr. Rhyner, and Defendant's damages expert, Mr. Rosen, agreed that there was at least some correlation between sales of body fluid controls and usage of the body fluid mode. (D.I. 427 at 42 (citing D.I. 428, ex. 68 at 95-97; id., ex. 69 at 226-29)) Mr. Rosen also agreed that "the parties ultimately would have chosen to rely upon [approximately 23%] at the date of the hypothetical negotiation[.]" (D.I. 428, ex. 69 at 232) Defendants' criticisms go to the weight of Mr. Haas' opinion and can be explored during cross-examination. See, e.g., Osseo Imaging, LLC v. Planmeca USA Inc., CA. No. 17-1386-LPS, 2020 WL 6318724, at *10 (D. Del. Oct. 28, 2020). Defendant also faults Mr. Haas for: (a) failing to ask how many users ever used the accused products in an allegedly infringing manner and how frequently those users used the alleged invention, which are questions to be considered under Georgia-Pacific factor 11; (b) for the 23% of customers he estimated purchased body fluids, attributing "100% of the value of the accused analyzers that allegedly 'used' the body fluid mode to the patents" and thus failing to "apportion between patented and non-patented features with respect to those customers who perform body fluid tests[;]" and (c) ignoring that "most customers never want or use the body fluid mode at all." (D.I. 415 at 4-5; see also D.I. 435 at 24-25) With respect to the last issue, Defendant cites to nothing in support of this statement, so this is not a reason to exclude Mr. Haas' opinions. (See D.I. 427 at 43 n.22; see also D.I. 428, ex. 68 at 43-45) With regard to the first two issues, in contrast to Mr. Haas' opinion, Mr. Rosen opined that the parties would have agreed to a "second apportionment factor" on top of the 23% apportionment factor that relates to customers that have used the body fluid feature, in order "to account for the relative value of the Accused Products attributable to the body fluid functionality versus other functionalities." (D.I. 409, ex. 44 at para. 136) However, Mr. Haas explained why he did not agree with Mr. Rosen's compound apportionment approach including that the value of a patented invention need not be determined based on frequency of use alone if it provided critical benefits, and the evidence shows that customers wanted the body fluid measuring mode and were willing to pay for it. (D.I. 417, ex. 20 at paras. 20, 46; Id., ex. 25 at 201-03) Here again, Defendant's critiques go to the weight rather than the admissibility of Mr. Haas' opinion.; (2) With regard to Defendant's assertion that Mr. Haas' lost profits opinion should precluded for failure to apportion for the patented and unpatented features, (D.I. 415 at 5-7), it is DENIED. Defendant argues that Mr. Haas relied on the entire value of certain accused analyzers, but he failed to make the required showing that the basis of demand for those products is any individual patented feature. (Id. at 6) However, Mr. Haas' analysis relied on the Panduit factors, which take into account demand for the product as a whole (factor 1) and the absence of non-infringing alternatives with respect to the large hematology customer segment of the market (factor 2). (D.I. 427 at 44 (citing D.I. 417, ex. 19 at paras. 44-68)) This analysis included a market-based apportionment, which allocates lost profits to Plaintiffs based in part on Mr. Haas' information indicating that the body fluid mode feature is an "important driver" in customer purchase decisions. (Id. at 44-45 (citing D.I. 417, ex. 19 at paras. 65-68; id., ex. 20 at para. 21)) Therefore, the Court is not persuaded that Mr. Haas' opinion is unreliable, and Defendant's criticisms go to the weight to be afforded his opinion. See, e.g., Sprint Commc'ns Co. LP v. Charter Commcns, Inc., C.A. No. 17-1734-RGA, 2021 WL 982732, *1213 (D. Del. Mar. 16, 2021); Malibu Boats, LLC v. Skier's Choice, Inc., Case No. 3:18-cv-00015, 2021 WL 1572477, at *4 (E.D. Tenn. Apr. 21, 2021); Limelight Networks, Inc. v. XO Commc'ns, LLC, Civil Action No. 3:15-cv-720-JAG, 2018 WL 678245, at *5-6 (E.D. Va. Feb. 2, 2018).; (3) With regard to Defendant's challenge to Mr. Haas convoyed sales opinions, (D.I. 415 at 7-8), it is DENIED. Defendant first asserts that Mr. Haas improperly included convoyed sales of reagents and service in his analysis because he failed to "investigate whether those sales bear any functional relationship to the alleged invention." (Id. at 7 (internal quotation marks and citation omitted)) But Mr. Haas did address this in his report, (D.I. 417, ex. 19 at paras. 20, 91, 130-34; id, ex. 20 at paras. 38-39, 50-54), and in his testimony, (D.I. 428, ex. 67 at 60-61, 194-97), and so this is not a basis for exclusion, Arterbury v. Odessa Separator, Inc., Case No. 5:16-cv-00183-RWS-RSP, 2019 WL 6699804, at *4 (E.D. Tex. Jan. 30, 2019) (declining to strike expert's opinions based on convoyed sales, as the expert provided some support regarding the functional relationship between the patented and unpatented products); Bombardier Recreational Prods. Inc. v. Arctic Cat Inc., Civil No. 12-2706 (JRT/LIB), 2017 WL 758335, at *9 (D. Minn. Feb. 24, 2017) (denying motion with regard to convoyed sales opinion where the expert discussed the basis for his finding that convoyed sales applied). Second, Defendant challenges Mr. Haas' inclusion of convoyed sales data relating to Defendant's installed United States base of analyzers that were sold before the asserted patents issued. (D.I. 415 at 8) The Court already explained why it did not find this argument persuasive in its Report and Recommendation regarding Defendant's Motion for Summary Judgment of Non-Infringement. (D.I. 515 at 21-24; see also D.I. 427 at 46); (4) With regard to Defendant's challenge to Mr. Haas' future lost profits opinions, (D.I. 415 at 9), it is DENIED. Defendant argues that Mr. Haas' opinion in this regard lacks "factual un[der]pinning" because it is based on BCI testimony that analyzers last for five to seven years. (Id.) But Mr. Haas did rely on information provided by Defendant in order to buttress this claim to future lost profit damages. (See D.I. 427 at 46-47 (citing D.I. 428, ex. 67 at 194-99; id., ex. 70 at paras. 44-45, 88)) And though Mr. Haas' evidentiary presentation here could have been more robust, the Court is not persuaded that it fails the forgiving Daubert test. To the extent that Defendant makes a different argument in its reply brief that it could have made in its opening brief, (D.I. 435 at 25), that argument is waived.; (5) With regard to Defendant's argument that Mr. Haas' reasonable royalty and lost profits analysis opinions should be excluded because he failed to consider Defendant's ability to sell non-infringing alternatives, (D.I. 415 at 9-10), it is DENIED. Defendant contends that Mr. Haas "failed to acknowledge that BCI could have sold the accused hematology analyzers without the alleged patented feature or even without the ability to analyze body fluids altogether" even though Defendant had sold the prior art analyzers for years. (Id.; see also D.I. 435 at 23) But Mr. Haas did not fail to consider possible non-infringing alternatives; instead, he addressed the non-infringing alternatives identified by Defendant and explained why, in his view, none of them were acceptable. (D.I. 427 at 48 (citing D.I. 417, ex. 19 at paras. 59-68; id., ex. 20 at paras. 21-26; id., ex. 25 at 235-40)) Defendant may attack Mr. Haas' opinion through competing evidence and cross-examination, but his opinion does not warrant exclusion. See, e.g., Xodus Med., Inc. v. Prime Med., LLC, No. 3:18-cv-413-JPM, 2021 WL 5985001, at *3 (E.D. Tenn. Dec. 16, 2021); W. Plastics, Inc. v. DuBose Strapping, Inc., 334 F. Supp. 3d 744, 753 (E.D.N.C. 2018); and (6) Objections to this Order are due by June 17, 2022 and responses are due by June 21, 2022. Ordered by Judge Christopher J. Burke on 6/15/2022. (dlb) (Entered: 06/15/2022) |
| 564 | Jun 16, 2022 | View | MEMORANDUM ORDER: The oral report and recommendation of the magistrate judge, D.I. 547 , is adopted in its entirety. Signed by Judge Joseph F. Bataillon on 6/16/2022. (nmg) (Entered: 06/16/2022) |
| 565 | Jun 17, 2022 | Request | [SEALED] ANSWERING BRIEF in Opposition re 558 MOTION to Dismiss for Lack of Jurisdiction Over the Subject Matter BCI's Counterclaims with Respect to Claims 7-15 of the '351 Patent filed by Beckman Coulter, Inc..Reply Brief due date per Local Rules is 6/24/2022. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2 Part. 1, # 3 Exhibit 2 Part. 2, # 4 Exhibit 2 Part. 3, # 5 Exhibit 3, # 6 Exhibit 4)(Sharp, Melanie) (Entered: 06/17/2022) |
| 566 | Jun 17, 2022 | Request | Letter to The Honorable Joseph F. Battaillon from Kelly E. Farnan regarding Submission of Trial Exhibits - re 559 Oral Order,,. (Farnan, Kelly) (Entered: 06/17/2022) |
| 567 | Jun 17, 2022 | Request | OBJECTIONS by Beckman Coulter, Inc. to 563 Oral Order,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,, [Defendant Beckman Coulter, Inc.'s Objections to Report and Recommendation Denying Beckman Coulter, Inc.'s Daubert Motion to Exclude the Opinions of Plaintiffs' Damages Expert David Haas]. (Attachments: # 1 Certification)(Sharp, Melanie) (Main Document 567 replaced on 6/21/2022) (dlb). (Entered: 06/17/2022) |
| 568 | Jun 17, 2022 | Request | MOTION for Reargument re 561 Order, [Defendant Beckman Coulter Inc.'s Motion for Partial Reargument of the Court's Order at D.I. 561] - filed by Beckman Coulter, Inc.. (Attachments: # 1 [Proposed] Order, # 2 Exhibit A)Motions referred to Christopher J. Burke.(Sharp, Melanie) (Entered: 06/17/2022) |
| 569 | Jun 20, 2022 | Request | RESPONSE TO OBJECTIONS by Sysmex America, Inc., Sysmex Corporation re 567 Objections, . (Delcollo, Renee) (Entered: 06/20/2022) |
| 570 | Jun 20, 2022 | Request | REPLY BRIEF re 558 MOTION to Dismiss for Lack of Jurisdiction Over the Subject Matter BCI's Counterclaims with Respect to Claims 7-15 of the '351 Patent filed by Sysmex America, Inc., Sysmex Corporation. (Delcollo, Renee) (Entered: 06/20/2022) |
| 571 | Jun 20, 2022 | Request | NOTICE OF SERVICE of Supplemental Expert Report of David A. Haas filed by Sysmex America, Inc., Sysmex Corporation.(Delcollo, Renee) (Entered: 06/20/2022) |
| 572 | Jun 20, 2022 | Request | Proposed Jury Instructions by Beckman Coulter, Inc. [BECKMAN COULTER'S REVISED PROPOSED] FINAL JURY INSTRUCTIONS AS THEY RELATE TO BECKMAN COULTER'S SECTION 101 DEFENSE. (Sharp, Melanie) (Entered: 06/20/2022) |
| 573 | Jun 20, 2022 | Request | VERDICT SHEET by Beckman Coulter, Inc. [BECKMAN COULTER'S REVISED PROPOSED] VERDICT FORM AS IT RELATES TO BECKMAN COULTER'S SECTION 101 DEFENSE. (Sharp, Melanie) (Entered: 06/20/2022) |
| 574 | Jun 20, 2022 | Request | Proposed Jury Instructions by Sysmex America, Inc., Sysmex Corporation [PROPOSED] SYSMEXS REVISED FINAL JURY INSTRUCTION REGARDING PATENT INELIGIBILITY. (Delcollo, Renee) (Entered: 06/20/2022) |
| 575 | Jun 20, 2022 | Request | VERDICT SHEET by Sysmex America, Inc., Sysmex Corporation [SYSMEXS REVISED PROPOSED] VERDICT FORM. (Attachments: # 1 Cover Letter to the Honorable Joseph F. Bataillon Regarding Sysmexs Revised Proposed Verdict Form)(Delcollo, Renee) (Entered: 06/20/2022) |
| Jun 21, 2022 | CORRECTING ENTRY: At the request of the filer, the PDF at D.I. 567 has been replaced. (dlb) (Entered: 06/21/2022) | ||
| 576 | Jun 21, 2022 | Request | MOTION to Strike Untimely Written Description Defenses - filed by Sysmex America, Inc., Sysmex Corporation. (Attachments: # 1 7.1.1 Certification, # 2 Text of Proposed Order Proposed Order)Motions referred to Christopher J. Burke.(Farnan, Kelly) (Entered: 06/21/2022) |
| 577 | Jun 21, 2022 | Request | Letter to The Honorable Joseph F. Bataillon from Kelly E. Farnan regarding Motion to Strike BCI's Untimely Written Description Defenses - re 576 MOTION to Strike Untimely Written Description Defenses. (Attachments: # 1 Exhibit 1-4)(Farnan, Kelly) (Entered: 06/21/2022) |
| 578 | Jun 21, 2022 | Request | ORDER denying 568 Motion for Reargument re 561 Order, [Defendant Beckman Coulter Inc.'s Motion for Partial Reargument of the Court's Order at D.I. 561 filed by Beckman Coulter, Inc. Signed by Judge Joseph F. Bataillon on 06/21/2022. (smg) (Entered: 06/21/2022) |
| 579 | Jun 21, 2022 | Request | REDACTED VERSION of 554 Exhibit to a Document by Sysmex America, Inc., Sysmex Corporation. (Delcollo, Renee) (Entered: 06/21/2022) |
| 580 | Jun 21, 2022 | Request | Letter to The Honorable Joseph F. Bataillon from Kelly E. Farnan regarding Flash drive containing Plaintiffs' Trial Exhibits - re 559 Oral Order,,. (Farnan, Kelly) (Entered: 06/21/2022) |
| 581 | Jun 21, 2022 | Request | ORAL ORDER: Pursuant to the parties' joint letter, D.I. 566, the Court will allow the identified 26 exhibits to be delivered to the Court via thumb drive (3 copies) in lieu of hard copy due to their size on or by June 24, 2022. Signed by Judge Joseph F. Bataillon on 6/21/22. (AEV) (Entered: 06/21/2022) |
| 582 | Jun 21, 2022 | Request | OBJECTIONS by Beckman Coulter, Inc. to 525 Proposed Jury Instructions [Beckman Coulter's Objections to Draft Initial Jury Instructions]. (Attachments: # 1 Exhibit 1-2)(Sharp, Melanie) (Entered: 06/21/2022) |
| 583 | Jun 21, 2022 | Request | VERDICT SHEET by Beckman Coulter, Inc. [Beckman Coulter's Proposed] Verdict Form. (Attachments: # 1 Exhibit A)(Sharp, Melanie) (Entered: 06/21/2022) |
| 584 | Jun 22, 2022 | Request | OBJECTIONS by Sysmex America, Inc., Sysmex Corporation to 582 Objections . (Attachments: # 1 Exhibit A)(Farnan, Kelly) (Entered: 06/22/2022) |
| 585 | Jun 22, 2022 | Request | Letter to Honorable Joseph F. Bataiillon from Kelly E. Farnan regarding Response to Court's Oral Order regarding Testimony of Mr. Nagai - re 561 Order,. (Farnan, Kelly) (Entered: 06/22/2022) |
| 586 | Jun 22, 2022 | Request | Letter to the Honorable Joseph F. Bataillon from Melanie K. Sharp regarding Opposition to Motion to Strike - re 576 MOTION to Strike Untimely Written Description Defenses. (Attachments: # 1 Exhibit A-D)(Sharp, Melanie) (Entered: 06/22/2022) |
| 587 | Jun 23, 2022 | Request | Letter to The Honorable Joseph F. Bataillon from Kelly E. Farnan regarding Reply in Support of Motion to Strike - re 576 MOTION to Strike Untimely Written Description Defenses. (Farnan, Kelly) (Entered: 06/23/2022) |
| 588 | Jun 23, 2022 | View | Letter to The Honorable Joseph F. Bataillon from Kelly E. Farnan regarding Parties' Proposed Edits to Voir Dire. (Attachments: # 1 Proposed Voir Dire Edits)(Farnan, Kelly) (Entered: 06/23/2022) |
| 589 | Jun 23, 2022 | Request | ORAL ORDER: Due to illness, the jury trial in this case, scheduled for June 24-July 1, is continued. A new trial date will be scheduled at a later date. Signed by Judge Joseph F. Bataillon on 06/23/2022. (AEV) (Entered: 06/23/2022) |
| 590 | Jun 24, 2022 | Request | MEMORANDUM AND ORDER ADOPTING REPORT AND RECOMMENDATIONS, D.I. 563 , in its entirety. Defendant's objections, D.I. 567 , are overruled. Signed by Judge Joseph F. Bataillon on 6/24/2022. (nmg) (Entered: 06/24/2022) |
| 591 | Jun 24, 2022 | Request | MEMORANDUM AND ORDER, the parties' motions in limine (D.I. 517-16; D.I. 517-17; D.I. 517-18; D.I. 517-19; D.I. 517-20; D.I. 517-21) are granted in part and in denied in part as set forth in this order. Signed by Judge Joseph F. Bataillon on 6/24/2022. (nmg) (Entered: 06/24/2022) |
| 592 | Jun 24, 2022 | View | REDACTED VERSION of 565 Answering Brief in Opposition, to Sysmex's Motion to Dismiss Beckman Coulter, Inc.'s Counterclaims with Respect to Claims 7-15 of the 351 Patent by Beckman Coulter, Inc.. (Attachments: # 1 Exhibit 1-4)(Sharp, Melanie) (Entered: 06/24/2022) |
| 593 | Jun 28, 2022 | View | ORDER granting 558 Motion to Dismiss for Lack of Subject Jurisdiction. BCI's counterclaims of invalidity and noninfringement as to Claims 715 of the 351 Patent are dismissed. (See Order for further details) Signed by Judge Joseph F. Bataillon on 06/28/2022. (smg) (Entered: 06/28/2022) |