Filed: Jul. 03, 2013
Latest Update: Jul. 03, 2013
Summary: ORDER REQUESTING STATUS REPORT WILLIAM J. MART NEZ, District Judge. This matter is before the Court sua sponte. It involves a civil action for patent infringement, among other claims. Plaintiff XY, LLC ("Plaintiff") asserts ten patents against Defendant Trans Ova Genetics L.C. ("Defendant"), for patent infringement pursuant to 35 U.S.C. 271 et seq —including: United States Patent No. 7,820,425, United States Patent No. 6,357,307, United States Patent No. 6,604,435, United States Patent N
Summary: ORDER REQUESTING STATUS REPORT WILLIAM J. MART NEZ, District Judge. This matter is before the Court sua sponte. It involves a civil action for patent infringement, among other claims. Plaintiff XY, LLC ("Plaintiff") asserts ten patents against Defendant Trans Ova Genetics L.C. ("Defendant"), for patent infringement pursuant to 35 U.S.C. 271 et seq —including: United States Patent No. 7,820,425, United States Patent No. 6,357,307, United States Patent No. 6,604,435, United States Patent No..
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ORDER REQUESTING STATUS REPORT
WILLIAM J. MARTÍNEZ, District Judge.
This matter is before the Court sua sponte. It involves a civil action for patent infringement, among other claims. Plaintiff XY, LLC ("Plaintiff") asserts ten patents against Defendant Trans Ova Genetics L.C. ("Defendant"), for patent infringement pursuant to 35 U.S.C. §§ 271 et seq—including: United States Patent No. 7,820,425, United States Patent No. 6,357,307, United States Patent No. 6,604,435, United States Patent No. 6,782,768, United States Patent No. 6,263,745, United States Patent No. 7,713,687, United States Patent No. 7,771,921, United States Patent No. 6,149,867, United States Patent No. 6,524,860, and United States Patent No. 7,195,920 (the "Asserted Patents"). (ECF No. 15 at 1-2.)
On June 20, 2013, Defendant Trans Ova filed an Answer, which pled no less than twenty-nine affirmative defenses, including, inter alia, 35 U.S.C. § 102, 103 and 112, inter alia. (ECF No. 31 at 12-15.) These defenses also included inequitable conduct and patent misuse. (Id.) Counterclaims also pled in Defendant's Answer include allegations of monopolization pursuant to the Sherman Act, 15 U.S.C. § 2. (Id. at 53.)
This matter is not insignificant. The filings above are illustrative, and only provide a snapshot of what is potentially involved in this case should it proceed to trial. The Court notes that it has recently reviewed U.S. Magistrate Judge Boyd N. Boland's Scheduling Order. (ECF No. 24.) The Court has also reviewed the transcript from the Scheduling Conference that was set for June 6, 2013. (ECF No. 32.) During the Scheduling Conference, the Court observes that the parties made several references to settlement—resulting in a settlement conference being set for July 26, 2013 before Magistrate Judge Boland. (Id.) The Court encourages such developments.1
Notwithstanding this, the Court also observes that this case is "extensive and voluminous." (Id. at 11.) This was expressly acknowledged at the Scheduling Conference. Thus, to allow the Court to better understand this dispute—and accommodate any potential Claim Construction hearing should the matter not settle at this stage—the Court DIRECTS the parties to prepare a Joint Status Report as follows:
1. Status: The Parties are to indicate (a) nature of the dispute by broadly summarizing the nature of technology (and whether the patents involve product and process patents, or both); (b) the current status of the proceedings; (c) any and all pending motions, (d) any other issues which are relevant to the litigation.
2. Settlement Prospects: The Parties are to indicate the prospects of settlement (at this juncture of the proceedings) by indicating on a scale of 1-10 the prospects of the Parties settling, with a score of 10 being highly possible and a score of 1 being near impossible.
3. Claim Construction: The Parties are to assess whether Claim Construction2 would promote settlement (if this case does not settle at the settlement conference set for later this month)—by providing greater certainty as to specific claim terms, in the context of the prior art. To this end, the Parties should indicate (a) the anticipated length of time necessary for a Claim Construction Hearing; (b) whether any Party proposes to call one or more witnesses, including experts (and their potential testimony);3 (c) a list of any other issues which might appropriately be taken up at a pre-hearing conference prior to the Claim Construction Hearing.
4. Dispositive Motions: Given what was addressed by the Parties at the Scheduling Conference, the Court confirms that the Parties may each file one "Early Motion for Partial Summary Judgment" by no later than August 16, 2013.4 Such motions were expressly discussed at the Settlement Conference (ECF No. 32 at 27-29), and this may include a motion related to the antitrust claims on the one hand, or inequitable conduct or 35 U.S.C. § 101 on the other. The motion filed by either Party need not be limited to these subject areas. But the Parties should briefly outline in the Status Report the extent to which any Early Motion for Partial Summary Judgment would narrow the issues in dispute (and potentially assist in settlement negotiations should the matter not settle on July 26, 2013, and or reducing the estimated trial period).
5. Timing: The Parties are to jointly file the Status Report by no later than July 15, 2013 at 12:00 noon. Such filing shall not to exceed six pages in length exclusive of the caption page, attorney signature blocks and certificate of service.