Case 1:20-cv-01644-RGA-JLH Document 15-1 Filed 03/31/21 Page 1 of 4 PageID #: 2205
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`March 31, 2021
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`VIA E-FILING
`The Honorable Jennifer L. Hall
`United States District Court
`Federal Building
`844 King Street
`Wilmington, DE 19801
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`Re:
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`Ravgen, Inc. v. Illumina, Inc., et al, (C.A. No. 20-1644-RGA-JLH)
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`Dear Judge Hall:
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`Plaintiff and Defendants in the above-captioned case submit this joint letter addressing
`disputes in the scheduling order filed herewith.
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`1.
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`Description of the Case
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`Plaintiff filed this action against Defendants for patent infringement in December 2020.
`Plaintiff alleges infringement of U.S. Patent Nos. 7,332,277 (the “’277 patent”) and 7,727,720 (the
`“’720 patent”). The ’277 and ’720 patents involve technology for the preparation and analysis of
`“free” nucleic acids, including in prenatal and cancer testing applications. Plaintiff’s complaint
`accuses various prenatal and liquid biopsy genetic tests offered by Defendants of infringement.
`Defendants assert, inter alia, defenses of invalidity and non-infringement.
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`2.
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`Scheduling Order Disputes
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`Coordination with Co-Pending Cases
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`Plaintiff’s Position: A number of disputes relate to coordination between this and three
`co-pending actions that all involve the same two asserted patents. Coordination among the four
`cases, which will necessarily involve overlapping issues, will conserve resources. Defendants
`appeared to agree and asked for time to coordinate with defendants in the other cases. Ravgen
`agreed to extend deadlines to give time for all defendants to coordinate and to allow for filing a
`joint schedule. (See D.I. 12, 13, 14.) Ravgen provided a joint schedule to all defendants on March
`10, 2021. Ravgen conferred with all defendants on March 25, 2021. The day of this filing,
`Defendants refused to file a joint schedule. Coordinating promotes efficiency and is consistent
`with the Court’s practice. Ravgen appreciates that Illumina appears more willing to cooperate than
`some other defendants but still believes that the limits on discovery and briefing addressed below
`will help focus the cases. Thus, Ravgen’s proposals are consistent across the cases.
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`Defendants’ Position: Illumina believes that coordination across the four cases is
`appropriate, and has thus agreed upon a coordinated schedule across the four cases and many other
`aspects of coordination. Yet, at this stage, Illumina believes it would be premature to state the
`specific contours of certain aspects of coordination, most importantly with respect to claim
`construction briefing and deposition limits. Across Defendants’ two asserted patents, there are
`170 claims. Each of the Defendants that Ravgen has sued have their own unique products, most
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`Case 1:20-cv-01644-RGA-JLH Document 15-1 Filed 03/31/21 Page 2 of 4 PageID #: 2206
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`of which perform different tasks and operate very differently. Some products, for instance, relate
`to cancer while other products relate to prenatal testing. Likewise, some products utilize array
`technology, while other products utilize various formats of DNA sequencing. It is thus likely that
`RavGen will assert different claims against each Defendant in the four cases. At this stage, none
`of the Defendants have any information regarding the specific claims that will be asserted against
`them, including the number of claims and the extent to which those claims might (or might not)
`overlap with the claims asserted against other Defendants. In these circumstances, it simply is not
`feasible to specify in detail all aspects of how the four cases will be coordinated. Accordingly, as
`set forth below, Illumina proposes that the details of coordination be resolved through meet and
`confer at specific later dates when the scope of the case against each Defendant is better defined.
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`Claim Construction Briefing (Section 12) and Depositions (Section 8(e))
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`Plaintiff’s Position: Ravgen proposes combined, coordinated Markman briefing across
`the co-pending cases to address common questions of law. Each case will construe the same
`language of the same two patents. The terms at issue across the cases will be largely, if not wholly,
`overlapping. Setting limits on such briefing will ensure that the parties focus on the most important
`issues, rather than letting the number of issues Defendants might raise dictate those limits.
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`Ravgen’s proposal for depositions should be adopted because it accounts for the need to
`take discovery from individual defendants on defendant-specific issues, should such issues arise.
`Ravgen’s proposal is also consistent with its proposal in the co-pending cases and would
`streamline discovery. In particular, Ravgen’s proposal ensures coordination for discovery across
`the cases and avoids undue burden on witnesses from serial depositions.
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`Defendants’ Position: With respect to claim construction briefing and deposition limits,
`Illumina believes that some level of coordination across the four cases is appropriate. Yet, at this
`stage, it would be premature to state the specific contours of such coordination and to set the limits
`on claim construction briefing and depositions, as Ravgen proposes. As noted above, across
`Defendants’ two patents, there are 170 claims. Each of the Defendants that Ravgen has sued have
`their own unique products, most of which perform different tasks and operate very differently.
`Accordingly, it is likely that RavGen will assert different claims against each Defendant in the four
`cases. At this stage, none of the Defendants have any information regarding the specific claims
`that will be asserted against them, including the number of claims and the extent to which those
`claims might (or might not) overlap with the claims asserted against other Defendants.
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`Accordingly, while coordination of claim construction and depositions across the four
`cases is appropriate, Illumina proposes that the details be resolved through meet and confer at a
`later date when the scope of the case is better defined. Specifically, for claim construction briefing,
`Illumina proposes that the structure and limits on claim construction briefing be specified once the
`joint claim construction chart is submitted, at which point the parties will know which claims are
`at issue with respect to each of the Defendants and will have met and conferred regarding
`narrowing of claims pursuant to § 7(d) of the proposed scheduling order. As to depositions,
`Illumina proposes that limits be set on April 15, 2022, at which point the asserted claims will have
`been identified and claim construction will have been completed, which will greatly clarify the
`scope of the case.
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`Case 1:20-cv-01644-RGA-JLH Document 15-1 Filed 03/31/21 Page 3 of 4 PageID #: 2207
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`Supplementation of Accused Products and Invalidity References (Section 14)
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`Plaintiff’s Position: Supplementation should occur prior to final infringement and
`invalidity contentions to allow the parties to make decisions for final contentions knowing the
`products and prior art at issue. Defendants’ proposal encourages holding back prior art until after
`final infringement contentions and is inconsistent with the Court’s form Scheduling Order.
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`Defendants’ Position: Given the uncertainties regarding the scope of the case and the
`asserted claims along with the potential need for coordination among Defendants in four cases,
`Illumina requests that the time for Defendants to supplement invalidity references be no later than
`42 days following issuance of the claim construction order, which will be no later than 21 days
`after Defendants make their final supplementation of accused products. Plaintiff proposes that
`Illumina be required to identify all prior art references no later than 14 days following issuance of
`the claim construction order, which is the same day that Plaintiff proposes that it supplement its
`identification of accused products. Plaintiff’s proposal that Defendants be locked into all prior art
`references on the same day that Plaintiff announces the full list of accused products is unreasonable
`and prejudices Defendants.
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`Summary Judgment Briefing (Section 16(d))
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`Plaintiff’s Position: Consistent with footnote 2 of the Court’s form Scheduling Order,
`Ravgen proposes coordinated briefing and page limits across the co-pending cases. Ravgen’s
`proposal should be adopted in view of the significant overlap in issues—particularly relating to
`invalidity—across the cases. Defendants’ proposal for wholly separate briefing in all cases should
`be rejected because it fails to acknowledge that overlap. Defendants’ proposal would result in
`1,000 pages of briefing (on just two patents) across the four cases. Defendants note that there may
`be case-specific summary judgment issues relating to noninfringement. Ravgen’s proposal
`accounts for that possibility with page limits above those normally imposed in single cases. Should
`the Court find Ravgen’s proposal to be too limited, Defendants’ concerns could also be addressed
`with separate page limits (e.g., 10 pages) for motions relating to noninfringement in each co-
`pending case.
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`Defendants’ Position: Ravgen proposes that across all four cases, all of the Defendants
`should be collectively limited to 50 pages of summary judgment briefing. This, however, is a
`highly prejudicial and unreasonable proposal that is intentionally calculated to put each Defendant
`at a disadvantage. As noted above, each of the Defendants that Ravgen has sued have their own
`unique products, most of which perform different tasks and operate very differently. RavGen is
`likely to assert different claims against each Defendant. Under RavGen’s dispositive motion
`proposal, every single Defendant would be hamstrung in its ability to present arguments in favor
`of their summary judgment positions because they would be permitted only about 10 pages to
`present all of their positions. By statute, RavGen is not permitted to have a consolidated trial
`against all of the Defendants across the four cases it has filed. Consistent with this, it would be
`inappropriate for summary judgment briefing, which is tightly connected to shaping the scope of
`trial, to be effectively consolidated across four cases involving disparate defendants and products.
`To the extent there is a possibility of coordination of summary judgment briefing, Defendants
`proposal includes a meet and confer no later than one month prior to the submission of summary
`judgment briefing.
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`Case 1:20-cv-01644-RGA-JLH Document 15-1 Filed 03/31/21 Page 4 of 4 PageID #: 2208
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`cc: Counsel of Record (Via E-Filing)
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`Respectfully submitted,
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`/s/ Brian E. Farnan
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`Brian E. Farnan
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