REPORT AND RECOMMENDATION

MARY PAT THYNGE, Magistrate Judge.

I. INTRODUCTION

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

Thereafter, defendant filed a motion to bifurcate the covenant issue, and stay the patent infringement case, pursuant to FED. R. CIV. P. 42(b).5 While that motion was pending, plaintiffs amended their complaint to add claims of infringement for three additional patents.6 On October 20, 2011, the court granted defendant's motion to bifurcate and stay.7

Subsequently, defendant filed its amended answer and counterclaims to plaintiffs' first amended complaint.8 In this pleading, defendant added a counterclaim for breach of the same contract that served as the basis for its covenant not to sue affirmative defense.9 On May 23, 2012, a Report and Recommendation was issued granting plaintiffs' motion to dismiss defendant's breach of contract counterclaim, under FED. R. CIV. P. 12(b)(6), for failure to state a claim upon which relief can be granted, and denying defendant's request to file an amended counterclaim, pursuant to FED. R. CIV. P. 15(a).10 The Report and Recommendation was adopted by the Honorable Leonard P. Stark on June 29, 2012.11 Presently before the court are the defendant's12 and plaintiffs'13 cross-motions for summary judgment on the covenant not to sue issue, and plaintiffs' motion to strike.14 The parties' cross-motions for summary judgment are directed to a covenant not to sue contained in a settlement and cross license agreement ("Settlement Agreement") between Applera Corporation ("Applera") and defendant Illumina.15 Before considering the parties' respective arguments in their cross-motions for summary judgment, however, the court must address plaintiffs' motion to strike.

II. Motion To Strike

A. Summary of Arguments

In their motion to strike, plaintiffs argue:16

(1) Defendant's reply brief17 relies on inadmissible evidence from an incomplete record on the parties' settlement negotiations, including the negotiation history, draft settlement agreements, and correspondence.

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

B. Discussion

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

1. Inadmissible Evidence — Settlement Negotiations and Settlement Agreement Drafts

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

a. Negotiation Record

Plaintiffs note defendant and Applera25 entered into a confidentiality agreement where "any information discussed, exchanged, or disclosed" during negotiations "will be used only for settlement purposes" and not for "discovery or at trial or for any other purpose in any proceeding or litigation."26 Thus, they argue defendant cannot rely on the negotiation history to clarify the terms "Defined Product," "Blocking Patents," and "necessarily infringed."27 Defendant counters, by relying on material covered by the confidential agreements in their opening brief, plaintiffs "opened the door to the use of the `negotiation record,' and equity requires that [defendant] also be allowed to rely on this evidence."28

As to defendant's argument, plaintiffs contend they objected to defendant's evidence as inadmissible, and cited a settlement related document should the evidence be admitted.29 Plaintiffs maintain such an "evidentiary proffer is a well-accepted tool of trial, and eliminates the unfairness of having an incomplete record should the objection about admissibility turn out to be wrong."30

While defendant does not cite any authority to support its proposition, evidence from the settlement agreement can be used if "offered for a purpose other than to prove the specific details of a negotiated claim."31 "Evidence of agreements in general, or a policy of making a particular type of agreement may be relevant and not prohibited by Rule 408 as long as it `does not extend to the terms of those licenses granted in settlement of litigation.'"32 Even if plaintiffs "opened the door," that door should remain closed where plaintiffs' references to the settlement agreement were inappropriate, and neither parties' evidence would be admissible.

Plaintiffs maintain defendant's arguments on pages nineteen to twenty-two of its reply brief,33 based on the parties' settlement negotiations, are inadmissible. Because defendant relies upon settlement negotiations to prove the specific details or terms, the arguments based upon the parties' settlement negotiations contained in pages nineteen to twenty,34 and twenty-one to twenty-two,35 of defendant's reply brief are inadmissible.36

b. California Mediation Privilege

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

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

c. Incomplete Record

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

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

2. Inadmissible Evidence — New Arguments and Alleged Facts

Plaintiffs point out a party may not "reserve material for the reply brief which should have been included in a full and fair opening brief."49 They contend defendant's reply brief "raised numerous new arguments and cited new evidence that could have, and should have, been raised in its opening brief."50 Defendant argues its "reply" brief was actually a "reply in support of its own motion for summary judgment, combined with a response to Plaintiffs' own motion for summary judgment" pursuant to the briefing schedule.51 As such, the arguments and evidence in defendant's brief were "either explicitly contained within Illumina's initial brief or directly responsive to an argument raised by Plaintiffs."52 Plaintiffs note while defendant was given twenty pages for its answering brief to oppose plaintiffs' cross motion,53 and ten pages in its reply brief to address plaintiffs' answering brief,54 through its conflated answering and reply brief, defendant reserved material for its reply brief which should have been in its opening brief.55

Further:

At first blush, many of the aforementioned issues overlap. Defendant's brief does not clearly delineate where its answering or reply briefs begin and end.58 Despite these concerns, the court will address defendant's combined brief, and plaintiff's claims of new arguments and new alleged facts.59

a. New Arguments

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

i. Evasion of the Covenant

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

ii. Readers

Plaintiffs maintain defendant argues, for the first time in its reply brief, that "Illumina's readers, used to practice GoldenGate and DASL, also fall within the definition of Defined Products."62 They point out defendant's opening brief only argued "Illumina's GoldenGate™ and DASL™ assays, performed using BeadChip arrays, `SAM' or VeraCode beads — are Defined and Modified Defined Products, respectively."63 Defendant contends because plaintiffs argued genuine material factual issues exist regarding whether the accused assays, Bead-Based products and readers fall within "Defined Products," it is allowed to respond to plaintiffs' arguments.64 The court finds defendant, in its combined brief,65 merely responds to arguments raised in plaintiffs' answering brief on the issue of readers and Defined Products, and is not improperly raising new argument.66

iii. "Essentially Identical" And "Exactly The Same"

Plaintiffs contend defendant's argument that "Illumina's GoldenGate and DASL assays performed using VeraCode Beads are Modified Defined Products"67 is premised on the assertion in defendant's opening brief that "[t]he chemistry of the GoldenGate or DASL assay performed using VeraCode Beads is essentially identical to the chemistry used to perform steps one through four of Exhibit 1 using SAM and BeadChip as of August 2004."68 In its reply brief, defendant alleges "[t]he GoldenGate and DASL assays are performed in exactly the same manner, using the same steps of Exhibit 1."69 Plaintiffs maintain omitting this argument in defendant's opening brief precludes raising it now,70 and "to the extent that [defendant] believed that [defendant's] own documents supported its argument that assays using VeraCode beads are `Modified Defined Products,' [defendant] should have cited that material in its opening brief."71

Defendant counters the "in exactly the same manner" language is consistent with the argument in its initial brief, and was merely responsive to plaintiffs' assertions concerning the similarities between the products.72

The parties dispute the meaning of "substantially similar" as it applies to "Modified Defined Products." As plaintiffs argue, there is a difference between "essentially identical" and "exactly the same." In its opening brief,73 defendant uses the term "essentially identical," but notes "minor differences," suggesting a distinction between its use of the terms "essentially identical" and "exactly the same." By using a term with a more restrictive meaning in its reply brief, defendant is essentially making a new argument, and therefore, the material on page twenty concerning "Modified Defined Products"74 is struck, along with defendant's own documents cited in support of its argument that assays are performed "in exactly the same manner."75

iv. PCR Method Patents

Plaintiffs point out defendant, in its opening brief, did not argue equating "Genetic Analysis Patents [to] PCR method patents is contrary to the express purpose of the claimed invention."76 Defendant counters it "spent nearly three pages in its initial brief addressing this argument."77 The court finds defendant's argument is not new as its opening brief discusses that the claims at issue do not constitute "Excluded Patent Claims" since they are not claimed inventions that are PCR methods.78

b. New Facts

Plaintiffs contend that by referencing a 2003 Illumina press release, defendant introduces new factual material in support of its argument that the Sentrix Array Matrix and BeadChip are both an Illumina BeadArray.79 Defendant responds the 2003 press release was publicly available, and was used to counter plaintiffs' argument that BeadChip products are not Illumina BeadArrays.80

In their response to defendant's opening brief, plaintiffs discuss whether BeadChip products are Illumina BeadArrays.81 Since this was not in the section relating to plaintiffs' opening brief, defendant is not responding to plaintiffs' argument.82 Rather, plaintiffs are responding to defendant's contentions, with defendant adding factual material in its reply brief not previously included in its opening brief. Therefore, plaintiffs' motion to strike new facts is granted, and the factual material on page eighteen of defendant's reply brief83 will not be considered.84

3. Leave to File a Sur-Reply

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

III. Cross-Motions for Summary Judgment

A. Legal Standard

Summary Judgment is appropriate if the "pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and the movant is entitled to a judgment as a matter of law."90 Once there has been adequate time for discovery, Rule 56(c) mandates judgment against the party who "fails to make a sufficient showing to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial."91 When a party fails to make such a showing, "there can be no `genuine issue as to any material fact' since a complete failure of proof concerning an essential element of the nonmoving party's case necessarily renders all other facts immaterial."92 The moving party is therefore entitled to judgment as a matter of law because "the nonmoving party has failed to make a sufficient showing on an essential element of her case with respect to which she has the burden of proof."93 A dispute of material fact exists where "the evidence is such that a reasonable jury could return a verdict for the nonmoving party."94

The moving party bears the initial burden of identifying portions of the record which demonstrate the absence of a genuine issue of material fact.95 However, a party may move for summary judgment with or without supporting affidavits.96 Therefore, "the burden on the moving party may be discharged by `showing' — that is, pointing out to the district court — that there is an absence of evidence supporting the nonmoving party's case."97

If the moving party has demonstrated an absence of material fact, the nonmoving party must then "come forward with specific facts showing that there is a genuine issue for trial."98 If the nonmoving party bears the burden of proof at trial, he "must go beyond the pleadings in order to survive a motion for summary judgment."99 That party "may not rest upon the mere allegations or denials of his pleadings, but must set forth specific facts showing that there is a genuine issue for trial."100 At the summary judgment stage, the court is not to "weigh the evidence and determine the truth of the matter, but to determine whether there is a genuine issue for trial."101 Further, "there is no issue for trial unless there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party."102 The threshold inquiry therefore is "determining whether there is a need for trial — whether, in other words, there are any genuine factual issues that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party."103

This standard does not change merely because there are cross-motions for summary judgment.104 Cross-motions for summary judgment:

Moreover, "[t]he filing of cross-motions for summary judgment does not require the court to grant summary judgment for either party."106

B. Background

In 2004, in an attempt to resolve disputes following a joint development venture, Applera and Illumina entered into a settlement and cross license agreement ("Settlement Agreement").107 The Settlement Agreement included a covenant not to sue, under which "Applera . . . its Successors, or its assigns" would not bring suit against Illumina for infringement of "the Blocking Patents by the Defined Product or Modified Defined Product."108 The Settlement Agreement included an integration clause109 and a California choice of law provision.110

Subsequent to execution of the Settlement Agreement, a series of business transactions occurred. As recited in the parties' Stipulation of Agreed Facts:111

In 2009, Cornell granted Life Technologies a New Exclusive Licence Agreement to the patents-in-suit ("2009 NELA").112

C. Summary of Arguments

In moving for summary judgment, defendant argues:113

(1) Life Technologies is bound by the covenant not to sue because it is Applera's Successor, Affiliate, and affiliate. Applied Biosystems is bound by the covenant not to sue because it is Applera's Successor, and because after merging with Applera, Applied Biosystems stepped into Applera's shoes and assumed Applera's contractual obligations as a matter of Delaware corporate law.

(2) Cornell and Applied Biosystems lack standing to sue defendant. Cornell contractually waived its right to sue defendant for infringement by granting Life Technologies an exclusive license to the patents-in suit and explicitly contracted away its right to sue defendant via the 2009 NELA. Applied Biosystems has no ownership interest in the patents-in-suit.

(3) The covenant not to sue bars plaintiffs' infringement claims as it protects defendant from suits alleging infringement of the "Blocking Patents" by "Defined Products" and "Modified Defined Products." The accused products are Defined Products and Modified Defined Products, the patents-in-suit are Blocking Patents, and the asserted patent claims are not the "Excluded Patent Claims" exempted from the covenant not to sue.

In their cross motion for summary judgment, plaintiffs argue:114

(1) Life Technologies is not bound by the covenant not to sue because it is not Applera, Applera's Successor, or Applera's assign.

(2) Cornell is not bound by the covenant not to sue because Cornell is not Applera, Applera's Successor, or Applera's assign.

(3) The covenant not to sue protects defendant from suits alleging infringement of the "Blocking Patents" that are "owned or licensed by Applera," and the patents-in-suit are not owned or licensed by Applera.

(4) The covenant not to sue protects defendant from suits alleging infringement of the "Blocking Patents" that "would necessarily be infringed" by the sale, manufacture, or use of the "Defined Product," and the patents in suit are not necessarily infringed because the Defined Product can be used without infringing the patents.

D. Discussion — Motion For Summary Judgment — Breadth of Covenant Not To Sue — Parties

Plaintiffs move for summary judgment that Cornell and Life Technologies are not bound by the covenant not to sue. Defendant moves for summary judgment that Life Technologies and Applied Biosystems are bound by the covenant not to sue.

As noted, the Settlement Agreement is governed by California law.115

Further:

The court may also look to dictionary definitions when determining the meaning of words in a contract.118 "On a motion for summary judgment, a court may properly interpret a contract as a matter of law only if the meaning of the contract is unambiguous."119

1. Settlement Agreement

The preamble of the Settlement Agreement recites:

This is a Settlement and Cross Licence Agreement . . . by and between

The covenant not to sue at issue recites:

The Settlement Agreement defines "Affiliate" as follows:

"Successor" is defined as "an entity that acquires all or substantially all of the assets of Applera or Illumina, or of one or more operating divisions thereof, or an entity that merges into or with Applera or Illumina or any Affiliate of either."123 The agreement also provides that the parties, Applera and Illumina, and their "successors and assigns" are "irrevocably" bound to its terms.124

Initially, the parties disagree as to which entities are bound by the covenant not to sue. Plaintiffs point to the covenant's recitation that "Applera covenants that at no time during the term of this Agreement will it, its Successors, or its assigns"125 as demonstrating the covenant only covers Applera, Applera's Successors, or Applera's assigns. Defendant agrees those entities are bound, but maintains the preamble defined "Applera" as more than just "Applera Corporation": "Applera Corporation . . . and all of its affiliates, divisions, and Affiliates (as defined in Article 1 of this Agreement), including but not limited to Applera Corporation — Applied Biosystems Group, an operating group of Applera Corporation . . . (collectively, Applera Corporation and all of its affiliates and Affiliates are `Applera')."126 According to defendant, that demonstrates the parties expanded the definition of "Applera" to include Affiliates and affiliates,127 and, therefore, those entities are also bound by the covenant not to sue.128

Considering the Settlement Agreement as a whole, the court rejects defendant's position.

First, the remainder of the preamble does not support a definition of "Applera" as including Applera's Affiliates and affiliates. As plaintiffs note, the preamble describes past actions of "Applera" and "Illumina,"129 but none of those actions was taken by the parties' Affiliates or affiliates. Plaintiffs assert Applera and Illumina themselves took each of the recited actions.130

Plaintiffs also contend the covenant not to sue granted by Illumina contains redundant and unnecessary language if defendant's position were accepted:

Plaintiffs point to similar redundancies that would exist if the covenant provisions describing the covenant beneficiaries: "Applera or its . . . affiliated or related companies, Affiliates."132 The definition of "Successor" would likewise contain redundant and unnecessary references to Applera and its Affiliates under defendant's definition: "A `Successor' shall mean . . . an entity that merges into or with Applera or Illumina or any Affiliate of either."133 Finally, plaintiffs argue the references to "Affiliates" in the releases and cross licenses would be redundant if "Applera" included its "Affiliates": "Applera . . . hereby fully and forever releases Illumina and its past and present . . . Affiliates";134 "Illumina grants to Applera and its Affiliates. . . ."135

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

2. Cornell

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

3. Applied Biosystems

Defendant moves for summary judgment that Applied Systems is bound by the covenant not to sue because it is Applera's Successor. Plaintiffs do not contest this issue. In fact, they make repeated references to Applied Biosystems being Applera's Successor in their briefs.138 Consequently, defendant's motion for summary judgment that Applied Biosystems is bound by the covenant not to sue is granted.

4. Life Technologies

The parties each move for summary judgment on the question of whether Life Technologies is bound by the covenant not to sue. Defendant asserts Life Technologies is so bound as Applera's Successor; plaintiffs disagree with that assertion.

Defendant argues Applied Biosystems stepped into the shoes of Applera through the string of corporate transactions described above. Under Delaware law, the surviving entity of a merger absorbs all rights and responsibilities of the parties to a merger: "all debts, liabilities and duties of the respective constituent corporations shall thenceforth attach to said surviving or resulting corporation, and may be enforced against it to the same extent as if said debts, liabilities and duties had been incurred or contracted by it."139 Further, "the policy of the law is so clear that survival [of a merged entity's contractual obligations] should be taken as the normal course of events."140 Consequently, defendant asserts that, by operation of law, Applied Biosystems is to be treated as if Applied Biosystems itself had contracted the obligations of the covenant not to sue.141

The Settlement Agreement defined "Successor" to mean "an entity that acquires all or substantially all of the assets of Applera or Illumina, or of one or more operating divisions thereof, or an entity that merges into or with Applera or Illumina or any Affiliate of either." Because Life Technologies acquired all or substantially all of the assets of Applied Biosystems, which stepped into the shoes of Applera, it is bound by the covenant not to sue as a Successor to Applera.142 Therefore, defendant's motion for summary judgment that Life Technologies is bound by the covenant not to sue is granted, and plaintiff's motion that it is not so bound is denied.

E. Discussion — Motion For Summary Judgment — Breadth of Covenant Not To Sue — Infringement

The covenant not to sue bars suits alleging infringement of "Blocking Patents" that "would necessarily be infringed" by the manufacture, use, or sale of the "Defined Product" and "Modified Defined Product," but excluding "Excluded Patent Claims." The parties dispute whether the accused products are "Defined Products" or "Modified Defined Products." There is also a dispute as to whether the patents at issue are "Blocking Patents," and whether the asserted patent claims are "Excluded Patent Claims."

1. "Defined Products"

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

a. Definition of "Illumina BeadArray"

Defendant moves for summary judgment that its Sentrix Array Matrix ("SAM") and BeadChip products constitute Illumina BeadArray Products.145 Plaintiffs contend disputed issues of material fact preclude summary judgment in Illumina's favor.

Defendant asserts that in contemporaneous, publicly-available documents, it made clear the term BeadArray refers to both SAM and BeadChip. For instance, defendant's 2003 annual report stated its "BeadArray technology [has been deployed] in two different formats, the Array Matrix and the BeadChip."146 Further, a November 5, 2003 press release by defendant refers to BeadChip technology as BeadArray

Technology.147 Lastly, defendant's GoldenGate™ 2004 Assay Workflow describes the steps of the GoldenGate assay with either SAM or BeadChip arrays.148

Defendant maintains Applera knew before the Settlement Agreement was executed that "BeadArray" included BeadChip technology. In its 2004 arbitration filings, Applera defined defendant's "Assembled Arrays" to include "BeadArray™, Sentrix Array, Sentrix BeadArray, Sentrix Array Matrix, Sentrix BeadChip, Sentrix BeadChip Platform, Sentrix Multi-Array, or Sentrix Multi-Array Platform."149 By such admission, defendant maintains plaintiffs "cannot now limit the term `an Illumina BeadArray' to only one of those products and not the variety of products — including both SAM and BeadChip products — that incorporate Illumina's fundamental BeadArray Technology."150

Plaintiffs contend the interpretation of "an Illumina BeadArray" is disputed, and critical for a finder of fact to determine whether the accused assays and products fall within the scope of the covenant. For instance, plaintiffs dispute defendant's contention that "an Illumina BeadArray" is not a product, but rather broadly encompasses "BeadArray technology" and any product that encompasses that technology.151 They point out the phrase "BeadArray technology" is not used in the agreement, and no evidence demonstrates "BeadArray technology" is synonymous with the term "Illumina BeadArray."152

Plaintiffs contend a genuine issue exists as to whether the accused assays that use defendant's BeadChip and VeraCode produces to detect amplicons are "Defined Products." Plaintiffs allege the parties understood the term "Illumina BeadArray" to mean an array with tens of thousands of beads at the end of fiber optic bundles. In support, they reference deposition testimony,153 SEC filings,154 peer reviewed journal articles,155 scientific conferences,156 and marketing materials.157 They argue their definition is "consistent with the parties' mutual use of the term during the parties' collaboration under the [joint development agreement],"158 and defendant's "understanding of the phrase remained consistent in its court filings in the arbitration that followed a breakdown in the parties' collaboration."159

Plaintiffs maintain defendant's BeadChip and VeraCode products do not have tens of thousands of beads at the end of fiber optic bundles. They argue the BeadChip and VeraCode products have beads "bound by etched wells on a planar silica slide" rather than beads on the end of fiber optic bundles.160 Plaintiffs further allege defendant admitted "VeraCode products and assays that use those products are not Defined Products . . . because they too do not have fiber optic bundles,"161 and its readers are not "Defined Products" since the readers are not "an Illumina BeadArray."162

Defendant contends plaintiffs' assertion that it has not shown "BeadArray technology" is synonymous with the "Illumina Bead Array" product referenced in the Settlement Agreement is a straw man argument as Illumina avers it does not have, and has never had, a single product named "an Illumina BeadArray."163 Because plaintiffs present no evidence to rebut that representation, the court determines this argument does not raise a genuine issue of material fact.

Defendant also contends plaintiffs concede its SAM is "an Illumina BeadArray" as used in step 5 of Exhibit 1 of the Settlement Agreement with plaintiffs' statement that "[t]he evidence shows that the only product that arguably used an Illumina BeadArray during the relevant time was Illumina's Sentrix Array Matrix."164 The court agrees and grants defendant's motion for summary judgment that its SAM is a Defined Product.

The court also agrees with defendant that the evidence supports its assertion that at the time the Settlement Agreement was signed in August of 2004, "an Illumina BeadArray" referred to both SAM and BeadChip. As noted above, plaintiffs' 2004 arbitration filing against Illumina defined Illumina's arrays to include both BeadChip and SAM;165 defendant's 2003 Annual Report stated its "BeadArray technology [has been deployed] in two different formats, the Array Matrix and the BeadChip";166 defendant's November 5, 2003 press release referred to BeadChip as BeadArray Technology;167 and defendant's 2004 GoldenGate assay workflow describes the steps of the GoldenGate assay with either SAM or BeadChip assays.168

The SEC filings cited by plaintiffs are defendant's SEC filings in 2000, 2001, and 2002, before the BeadChips' introduction in September 2003.169 The citations to Downing's deposition also concern a discussion of those SEC filings. Moreover, defendant states the journal articles, marketing materials, and user guides relied upon by plaintiffs were published or disseminated before the BeadChips' introduction.170 Defendant contends, therefore, that "there is nothing inconsistent about the fact that these early documents refer only to `fiber optic bundles' (SAM) and do not reference Beach Chip. The bottom-line is that by 2004 when the Agreement was signed, both parties were fully aware that `BeadArray Technology" included both SAM and BeadChip."171

The court finds plaintiffs have not raised a genuine issue of material fact on this issue, and grants defendant's motion for summary judgment that BeadChip and Sam are "Defined Products."

2. "Modified Defined Products"

The Settlement Agreement defines "Modified Defined Product as "a product (substantially similar to a Defined Product and having all of the `steps' set forth on Exhibit 1 hereto) that is a modification of the Defined Product."172 Defendant moves for summary judgment that its GoldenGate and DASL assay performed using VeraCode Beads are "Modified Defined Products." Plaintiffs argue there are disputed facts concerning whether the accused assays and products meet the requirement that each is: (i) "substantially similar to a Defined Product"; (ii) has "all of the `steps' set forth on Exhibit 1"; and (iii) is "a modification of the Defined Product."

Defendant argues its GoldenGate and DASL assays are "Modified Defined Products" when performed using VeraCode beads,173 because "[t]he chemistry of the GoldenGate or DASL assay performed using VeraCode Beads is essentially identical to the chemistry used to perform steps one through four of Exhibit 1 using SAM and BeadChip as of August 2004."174 According to defendant, the only differences are: "[(1)] VeraCode provides faster hybridization time[; (2)] VeraCode decodes the beads at the time the assay is performed, as opposed to before it is performed[; and (3)] VeraCode digitally decodes the beads, whereas BeadArray uses oligo decoding."175 Defendant contends these "minor differences" do not vary any of the "steps" in Exhibit 1 because "[n]either the [settlement agreement] nor Exhibit 1 specify when or how beads must be decoded when performing the assay in order for the product to be considered a `Defined Product.'"176

Plaintiffs argue that, although they agree "substantially similar" means "essentially identical to," neither the plain meaning of the phrase nor the language of the Agreement requires the additional limitation to be "essentially identical to the chemistry used to perform" the steps of Exhibit 1. Plaintiffs also maintain defendant does not cite any evidence that "minor differences" is an appropriate measuring stick of substantial similarity.177 They further dispute whether the BeadChip and VeraCode products, and assays that use those products, contain all of the steps of, or are substantially similar to, the Defined Product.178 As discussed previously, "Defined Product" requires "an Illumina BeadArray" in the fifth step. Plaintiffs submit there is evidence that would permit a factfinder to conclude this step is missing from assays that use VeraCode products because these products are not BeadArrays.179 Further, they point out the accused assays using VeraCode products are performed in substantially different ways from SAM products.180

The court first notes defendant only cites one exhibit to its opening brief in support of its argument that "using VeraCode Beads is essentially identical to the chemistry used to perform steps one through four of Exhibit 1 using SAM and BeadChip as of August 2004."181 That document states "biggest difference" between the SAM-based and VeraCode-based protocol is the "VeraCode-based protocol takes two days, whereas the SAM-based protocol takes three."182 It also states, however, after a certain point, "[t]he workflows differ from this point on, as the VeraCode-based GG assay has a clearly defined sample addition step, a separate hybridization in the Vortemp (vs. oven for SAMS), its own wash protocol, and a separate scan protocol for the BeadXpress reader, all very different from the SAM protocols for the analogous steps-all detailed in the manual."183 Although defendant contends plaintiffs point to "irrelevant differences" in VeraCode "because VeraCode uses the same steps as are set forth in Exhibit 1 of the Settlement Agreement,"184 the court is not persuaded that the single document cited by defendant, and its arguments related thereto, establish that VeraCode meets the definition of a Modified Defined Product.185 Consequently, defendant's motion for summary judgment that VeraCode is a Modified Defined Product is denied.

3. "Blocking Patents"

Pursuant to the Settlement Agreement, "Blocking Patents" are defined as:

Both parties cross move for summary judgment on the issue of whether the patents-in-suit are Blocking Patents.

a. "[O]wned or licensed by Applera"

Plaintiffs move for summary judgment that none of the patents-in-suit are "owned or licensed by Applera." Plaintiffs state that two of the ten patents-in-suit did not exist before Applera ceased to exist on November 21, 2008.187 They argue that because those patents issued after Applera ceased to exist, they could never have been "owned or licensed by Applera."188

Plaintiffs also contend none of the ten patents-in-suit was "owned or licensed by Applera" when the accusation of infringement was made that allegedly triggered the covenant. They note when this suit was filed in 2010, Cornell Research Foundation was the patent owner, Life Technologies was the exclusive licensee, and Applera had not existed for many months. Plaintiffs contend the Settlement Agreement does not define Applera in such a way as to cover patents owned or licensed by Applera's Successor, Applied Biosystems, but had it done so, Applied Biosystems does not own or license any of the patents-in-suit.

Defendant does not dispute Life Technologies is the exclusive licensee of the patents-in-suit, nor does it dispute plaintiff's assertion that the Settlement Agreement does not define Applera in such a way as to cover patents owned or licensed by Applera's Successor. Instead, it repeats its argument, previously rejected by the court, that the preamble of the Settlement Agreement defines "Applera" to include Applera's "Affiliates and affiliates."189

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

b. "[W]ould necessarily be infringed by . . . the Defined Product"

The parties each moved for summary judgment on whether the Cornell patents are "necessarily . . . infringed by . . . the Defined Product." "Defined Product" is "Illumina's GoldenGate™ assay, as described in Exhibit 1."192 Exhibit 1 lists the five steps of the assay:

Eluting the extended and ligated probes from the target material;

Universal PCR, rolling circle, random priming, T4/Eberwine, strand displacement, TMA (transcripted mediated amplification), LCR (ligase chain reaction), MDA (multiple displacement amplification) or SPIA amplification of the extended and ligated probes to generate labeled amplicons; and

Plaintiffs point out defendant never argued the definition of "Blocking Patents" to be ambiguous nor identified any evidence or other information which it contends bears on the construction of that language.194 Under California law, "[t]he words of a contract are to be understood in their ordinary and popular sense, rather than according to their strict legal meaning; unless used by the parties in a technical sense, or unless a special meaning is given to them by usage, in which case the latter must be followed."195 For assistance in defining a word, the court may use a dictionary,196 and the dictionary definition of "necessarily" is "as a necessary result; inevitably."197

Plaintiffs argue the meanings of "Blocking Patents" and "necessarily infringed" were commonly known, through judicial interpretation, at the time of the Settlement Agreement.198 If an "accused device can be used at any given time in a noninfringing manner, the accused device does not necessarily infringe" a patent.199 Further, "[i]f all of the claims are valid, the parties here have blocking patents. That is, neither can practice its invention and avoid infringing the other's without a license."200

Plaintiffs argue they are entitled to summary judgment because defendant admitted the Defined Product can be practiced without infringing any of the patents in suit,201 and further note the Defined Product expressly permits the use of nine different amplification methods, with only one of which, PCR, covered by the patent claims.202 Defendant admitted the Defined Product can be practiced with different amplification methods.203

Defendant argues a patent is "necessarily infringed" if it covers an invention that requires the performance of the five steps of its GoldenGate assay.204 Defendant asserts the nine different amplification methods listed in Step 4 allow for broad freedom when selecting an amplification method.205 Defendant represents its primary purpose for executing the Settlement Agreement was to have freedom to operate its GoldenGate assay in the future.206

Under plaintiffs' argument, defendant contends the covenant not to sue would essentially be worthless because it would not protect its key commercial product, the GoldenGate assay,207 for which protection was sought over the long term.208 Defendant also contends plaintiffs' application of the law is incorrect, because in determining whether an accused product "necessarily infringes," one must look to the product as it existed at the time it was accused.209

The court finds the patented-in-suit patents are "necessarily infringed" by the "Defined Product." Initially, the court agrees with defendant that it seems illogical that, given the importance of the GoldenGate asset to Illumina in 2004, it would have entered an agreement that rendered the covenant not to sue essentially worthless. Case law also supports defendant's position that the focus is on whether an accused product "necessarily infringes" begins with the accused product as it existed at the time it was accused.210 Defendant's admission that the "Defined Product," e.g., "Illumina's GoldenGate™ assay, as described in Exhibit 1," is capable of being practiced without infringing the patents-in-suit does not change the fact that the Defined Product, as it existed at the time it was accused, necessarily infringes the patents-in-suit. Consequently, the court grants defendant's motion for summary judgment and denies plaintiffs' motion for summary judgment.

4. "Excluded Patent Claims"

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

a. "Patents . . . that claim inventions that are instruments"

Defendant submits the claims of the `917 and `233 patents (the "Array Patents") are not Excluded Patent Claims because they do not "claim inventions that are instruments."212 Defendant argues "a patent claiming an invention that is an array is not the same thing as a patent that claims an invention that is an instrument."213 Defendant contends "[t]he term `instrument' has a well-understood meaning in the biotechnology industry" and, "[i]n this case, instrument refers to the HiScan, IScan and Bead Array Reader" which are "instruments that contain optics, software, and other components for reading the results of experiments contained on arrays."214 Defendant states "[a]rrays are disposable items, which are inserted into the instrument, for example, Illumina's BeadArrays."215

Defendant points out the words "instrument" and "array" consistently appear in the Settlement Agreement separated by a comma: "existing or future Illumina products or services including, without limitation, arrays, instruments, oligonucleotide products, reagents, or commercial services";216 "existing or future Applera products or services including, without limitation, arrays, instruments, oligonucleotide products, reagents, or commercial services.";217 "existing or future Applera products or services including, without limitation, arrays, instruments, oligonucleotide products, reagents, or commercial services."218 Defendant submits that under basic rules of contract interpretation, since the terms are listed separately throughout the settlement agreement, the parties intended and understood the terms to have different meanings.219

Defendant also maintains both the parties' and the industry's usage of the terms confirm that an array is not an instrument. For instance, Applera's 2005 Annual Report divided the company's profits into two major categories: (1) instrument sales and (2) consumable sales.220 The consumables included chemical reagents and other disposables and arrays.221 Similarly, Applied Biosystems' current website at present distinguishes between instruments and arrays.222 Dr. Michael Hunkapiller, former President of the Applied Biosystems Group of Applera, stated that prior to the Settlement Agreement, his company did not classify a consumable as an instrument.223 Defendant's expert, Dr. Stacey Gabriel, also testified no one in the industry would ever call an array an instrument.224 Defendant points out that, historically, it has distinguished the two terms in public usage.225

Plaintiffs contend questions of fact regarding the meaning of "instrument" and how that definition is applied to the patent claims at issue preclude summary judgment.

Plaintiffs state Illumina's expert, Dr. Gabriel, testified that many definitions of "instrument" in the biotechnology and life sciences fields are satisfied by patents directed to arrays.226 Plaintiffs note their expert, Dr. Kevin Struhl, similarly opined that an "instrument" "is a device that is made or adapted for a specific purpose."227 Dr. Struhl cited three dictionaries that are consistent with his definition of "instrument."228 Plaintiffs also argue "consumables" is a budgetary, not a scientific term, which relates to cost and not whether an item is an instrument.229 According to plaintiffs, arrays can be reused.230 Plaintiffs further contend the patents do not simply claim arrays; rather, they claim devices "comprising" multiple features, including an array.231 Since the legal term "`comprising' creates a presumption that the recited elements are only a part of the device," such claims do not exclude additional, unrecited elements.232 Finally, plaintiffs agree that the usage of the terms "array" and "instrument" together in the Settlement Agreement means they are not synonymous. Plaintiffs suggest, however, that "an array can clearly qualify as an instrument, but not all instruments (consider the readers discussed above) are arrays."233

The court finds there is a genuine issue as to whether an "array" is an "instrument." As noted previously, an "Excluded Patent Claim" includes a claim that covers inventions that are instruments. The parties submit competing evidence on whether an "array" as used in the claims is an "instrument." Because the meaning of patent terms are legitimately contested, "a factual dispute arises, precluding summary judgment."234

b. "Patents . . . that claim inventions that are . . . polymerase chain reaction (PCR) methods"

The covenant not to sue also excludes patent claims that "claim inventions that are . . . polymerase chain reaction (PCR) methods."235 Defendant argues "a patent claiming a detection method that uses PCR as one step of that detection method is not the same thing as a patent that claims an invention that is a PCR method."236 Defendant submits the patents-in-suit are not Excluded Patent Claims because they do not claim inventions that are PCR methods.237

Defendant argues there is nothing novel about PCR as it is used in the patents-in-suit, and nowhere do the patents describe a new method of doing PCR. Defendant states the PCR method utilized in those patents, Universal PCR, was well-known in 2004. It states the first PCR method was invented in 1983 by Dr. Kary B. Mullis.238 Defendant explains that after Mullis' original patents, many variations and improvements of the PCR protocol were developed and patented, such as "real-time PCR" and "quantitative PCR" as well as others.239 Defendant argues it is these variations and improvements on the PCR amplification protocol itself that constitute "claims in patents. . . that claim inventions that are . . . polymerase chain reaction (PCR) methods."240

Defendant represents the original Mullis patents and related PCR patents were still in effect at the time of the Settlement Agreement, and were the centerpiece of a "PCR Licencing Program" run by Life Technologies through today.241 According to defendant, it was this separate PCR Licensing Program that the parties were carving out of the Settlement Agreement. Defendant notes none of the patents-in-suit is part of the PCR Licensing Program, which defendant argues confirms that Life Technologies understands that the asserted patents are not claiming "inventions" that are PCR methods.

Defendant contends that although some of the asserted claims contain the step of performing PCR, they are not claiming a new or novel way to perform PCR. Defendant reiterates that simply because asserted claims contain a PCR step, does not mean that they are PCR methods. Similarly, it states the mere fact that GoldenGate in Exhibit 1 contains a PCR step, does not mean that it is a PCR method. Defendant concludes the mere combination of the step of basic PCR with an allegedly new method "for identifying one or more target nucleotide sequences," does not mean it "claim[s] inventions that are . . . (PCR) methods."242

Plaintiffs argue there is "evidence in the record from which a reasonable fact finder could conclude the term `PCR methods' refers to methods in which PCR is one of the steps, along with other, non-PCR steps."243 In support of their position, they reference their expert, Dr. Struhl's, report,244 treatises,245 peer reviewed journal articles,246 and Illumina's own usage.247 According to Dr. Struhl, the `470, `434, `039, `865, `285 and `453 patents claim inventions that are PCR methods.248 According to plaintiffs, since determining whether a patent claims a "PCR method" is highly subjective and fact driven, summary judgment is inappropriate.

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

F. Discussion — Motion For Summary Judgment — Standing

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

1. Cornell and Applied Biosystems

Defendant moves for summary judgment that neither Cornell and Applied Biosystems have standing to bring this action. Defendant asserts Cornell lacks independent standing in this case without Life Technologies. On December 16, 2009, Cornell gave Life Technologies an exclusive, worldwide, perpetual license to make, use, and sell products embodying the patents in suit.253 Pursuant to this license, Cornell gave Life Technologies all rights to bring suit against defendant for infringement.254 Thus, defendant argues Life Technologies was given sole standing.255 Defendant also contends Applied Biosystems lacks standing because Life Technologies is the exclusive licensee of the patents-in-suit, and plaintiffs have not claimed Applied Biosystems has any rights to those patents.256

Plaintiffs counter, arguing the standing issue is not ripe for summary judgment because discovery on the subject has not been conducted, in part due to defendant's conduct.257 They contend defendant never sought standing related discovery.258 Plaintiffs also argue Cornell is not expressly prohibited from proceeding with this litigation by itself.259

a. Cornell

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

b. Applied Biosystems

Defendant argues Applied Biosystems lacks standing to bring this suit because Life Technologies is the exclusive licensee of the patents-in-suit, and Applied Biosystems no rights to those patents. Again, because the court determined the patents-in-suit are not "owned or licensed by Applera," the covenant not to sue would not prohibit Applied Biosystems from bringing this action. Additionally, the 2009 NELA demonstrates Applied Biosystems does not lack standing.

The 2009 NELA recites:

Further:

Additionally:

The 2009 NELA defines "Affiliate" as "any entity Controlling, Controlled by, or under common Control with the referenced entity. An Affiliate of LICENSEE shall include, but is not limited to, Applied Biosystems, LLC."264 As stated in the 2009 NELA, Applied Biosystems can also "initiate" a legal proceeding.

Consequently, defendant's motion that Applied Biosystems lacks standing is denied.

IV. ORDER AND RECOMMENDED DISPOSITION

For the reasons contained herein, this court recommends that:

(1) Plaintiffs' motion to strike, alleging defendant's reply brief relies on inadmissible evidence from an incomplete record on the parties' settlement negotiations, including the negotiation history, draft settlement agreements, and correspondence (D.I. 184) is GRANTED.

(2) Plaintiffs' motion to strike, alleging defendant's reply brief contains arguments and alleged facts that were not included in defendant's opening brief (D.I. 184) is GRANTED IN PART AND DENIED IN PART.

(3) Defendant's motion for summary judgment, alleging Life Technologies and Applied Biosystems are bound by the covenant not to sue entered into by Applera as Applera's "Affiliates," affiliates," or "Successors" (D.I. 167) is GRANTED.

(4) Defendant's motion for summary judgment, alleging Cornell and Applied Biosystems lack standing to sue defendant because Cornell contractually waived its right to sue defendant for infringement, and Applied Biosystems has no ownership interest in the patents at issue (D.I. 167), is DENIED.

(5) Defendant's motion for summary judgment, alleging the covenant not to sue bars plaintiffs' infringement claims as it protects defendant from suits alleging infringement of the "Blocking Patents" by "Defined Products" and "Modified Defined Products," because the accused products are Defined and Modified Defined Products, the patents at issue are Blocking Patents, and the asserted patent claims are not the "Excluded Patent Claims" exempted from the covenant not to sue (D.I. 167) is DENIED.

(6) Plaintiffs' cross motion for summary judgment, alleging Life Technologies is not bound by the covenant not to sue because Life Technologies is not Applera, Applera's "Affiliates," "affiliates," or "Successors" (D.I. 172) is DENIED.

(7) Plaintiffs' cross motion for summary judgment, alleging Cornell is not bound by the covenant not to sue because Cornell is not Applera, Applera's "Affiliates," Applera's "affiliates," or Applera's "Successors" (D.I. 172) is GRANTED.

(8) Plaintiffs' cross motion for summary judgment, alleging the covenant not to sue protects defendant from suits alleging infringement of the "Blocking Patents" that are "owned or licensed by Applera," and the patents in suit are not owned or licensed by Applera (D.I. 172), is GRANTED.

(9) Plaintiffs' cross motion for summary judgment, alleging the covenant not to sue protects defendant from suits alleging infringement of the "Blocking Patents" that "would necessarily be infringed" by the sale, manufacture, or use of the "Defined Product," and the patents in suit are not necessarily infringed because the Defined Product can be used without infringing the patents (D.I. 172), is DENIED.

This Report and Recommendation is filed pursuant to 28 U.S.C. § 636(b)(1)(B), FED. R. CIV. P. 72(b)(1), and D. Del. LR 72.1. The parties may serve and file specific written objections within fourteen days after being served with a copy of this Report and Recommendation.265 The objections and response to the objections are limited to ten pages each.

The parties are directed to the Court's standing Order in Non Pro Se matters for Objections Filed under FED. R. CIV. P. 72, dated November 16, 2009, a copy of which is available on the Court's website, www.ded.uscourts.gov.