Case 1:23-cv-00758-JLH-SRF Document 143-3 Filed 09/11/24 Page 1 of 7 PageID #: 3295
`Case 1:23-cv-00758-JLH-SRF Document 143-3 Filed 09/11/24 Page 1 of 7 PagelD #: 3295
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`EXHIBIT C
`EXHIBIT C
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`Case 1:23-cv-00758-JLH-SRF Document 143-3 Filed 09/11/24 Page 2 of 7 PageID #: 3296
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MINNESOTA
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`John R. Wilson and
`Wilson Wolf Manufacturing Corporation,
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`Civil No. 13-210 (DWF/FLN)
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`v.
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`Corning, Inc.,
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`Plaintiffs,
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`ORDER
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`Defendant.
`____________________________________________________
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`Sri Sankaran and Tiffany Blofield for Plaintiffs.
`Jeff Barron and Paul Hunt for Defendant.
`____________________________________________________
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`THIS MATTER came before the undersigned United States Magistrate Judge on December
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`23, 2013 on three motions: (1) Defendant’s motion to compel Wilson Wolf Manufacturing
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`Corporation to produce a witness pursuant to Federal Rule of Civil Procedure 30(b)(6) (ECF No.
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`42); (2) Defendant’s motion to alter/amend/supplement pleadings for leave to file first amended
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`answer (ECF No. 60); and (3) Plaintiffs’ motion to compel discovery (ECF No. 85). Plaintiffs assert
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`claims against Defendant for misappropriation of trade secrets, unjust enrichment, breach of
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`contract, and patent infringement related to cell culture technology. Compl., ECF No. 1. Based upon
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`all the files, records and proceedings herein, IT IS HEREBY ORDERED that:
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`A.
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`Defendant’s motion to compel Wilson Wolf Manufacturing Corporation to produce a witness
`for a 30(b)(6) deposition (ECF No. 42) is GRANTED. Defendant is entitled to a 30(b)(6)
`deposition on Topics 1 and 2 as designated in Corning Incorporated’s First Notice of
`Deposition Pursuant to Federal Rule of Civil Procedure 30(b)(6). If, as Plaintiffs fear,
`Defendant utilizes the 30(b)(6) deposition to seek contention interrogatories or ask overly
`detailed questions relating to U.S. Patent Nos. 8,158,426 and 8,158,427, Plaintiffs may
`object in accordance with the Federal Rules of Civil Procedure and seek a protective order.
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`B.
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`Defendant’s motion to alter/amend/supplement pleadings for leave to file a first amended
`answer (ECF No. 60) is DENIED. Under Federal Rule of Civil Procedure 16(b), a party
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`Case 1:23-cv-00758-JLH-SRF Document 143-3 Filed 09/11/24 Page 3 of 7 PageID #: 3297
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`must show “good cause” in order to amend pleadings outside of the time constraints dictated
`by a scheduling order. Fed. R. Civ. P. 16(b); Sherman v. Winco Fireworks, Inc., 532 F.3d
`709, 716 (8th Cir. 2008) (“When a party seeks to amend a pleading after the scheduling
`deadline for doing so, the application of Rule 16(b)’s good-cause standard is not optional.”).
`“A party does not meet the good cause standard under Rule 16(b) if the relevant information
`on which it based the amended claim was available to it earlier in the litigation.” Aviva
`Sports, Inc. v. Fingerhut Direct Mktg., Inc., CIV. 09-1091 JNE/JSM, 2010 WL 4193076 (D.
`Minn. Oct. 7, 2010). Here, Defendant brought a motion to amend its answer on November
`4, 2013, after the Scheduling Order deadline. Defendant seeks to amend its answer to include
`a statute of limitations defense, yet the Complaint clearly alleges specific dates of
`confidential disclosures in 2004 and 2005 (more than six years prior to the filing of the
`Complaint). Accordingly, the relevant information necessary to bring a statute of limitations
`argument was available to Defendant well before this Court’s amended pleadings deadline
`of September 1, 2013. ECF No. 16. Good cause is not present to deviate from the Scheduling
`Order.
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`C.
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`Plaintiffs’ motion to compel discovery (ECF No. 85) is GRANTED in part and DENIED
`in part, as follows:
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`To the extent Plaintiffs seek additional discovery on Document Request 10, “all
`documents describing each type and model number of each Product that has been
`offered, including, but not limited to, brochures, catalogs and other promotional
`materials,” the motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 11, “all
`documents referring or relating to the markets for Products, including, but not limited
`to, the nature, size, structure, and composition of the market and anticipated and
`actual market shares in these markets ,” the motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 12, “industry
`reports regarding Products,” the motion is DENIED as overly broad.
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`To the extent Plaintiffs seek additional discovery on Document Request 13, “all
`documents regarding demand for the patented technology,” the motion is DENIED
`as overly broad.
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`To the extent Plaintiffs seek additional discovery on Document Request 14, “all
`documents regarding demand for each of the Products,” the motion is DENIED as
`overly broad.
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`To the extent Plaintiffs seek additional discovery on Document Request 15, “all
`documents relating to acceptable non-infringing alternatives to the Accused
`Products,” the motion is DENIED as overly broad.
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`2
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`Case 1:23-cv-00758-JLH-SRF Document 143-3 Filed 09/11/24 Page 4 of 7 PageID #: 3298
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`7.
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`8.
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`9.
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`10.
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`11.
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`12.
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`13.
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`14.
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`To the extent Plaintiffs seek additional discovery on Document Request 16, “all
`documents relating to consideration of or efforts to develop alternatives to the
`accused Products,” the motion is DENIED as overly broad.
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`To the extent Plaintiffs seek additional discovery on Document Request 17, “all
`documents relating or referring to customer compliments, complaints, comparisons,
`questions, and surveys and/or questionnaires that discuss Products,” the motion is
`GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 18, “all
`documents relating to factors considered by customers in connection with the
`purchase of Products,” the motion is DENIED as overly broad.
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`To the extent Plaintiffs seek additional discovery on Document Request 19, “all
`documents relating to competition in the market for Products, including but not
`limited to any documents that refer to specific competitors,” the motion is DENIED
`as overly broad.
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`To the extent Plaintiffs seek additional discovery on Document Request 20, “all
`documents regarding Products, including, but not limited to, sales training materials,
`advertising and promotional literature, brochures, catalogs, specification sheets and
`videos,” the motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 21, “all
`documents regarding features, advantages, benefits, weaknesses and limitations of
`each Product,” the motion is DENIED as overly broad.
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`To the extent Plaintiffs seek additional discovery on Document Request 22, “all
`documents regarding performance characteristics of each Product,” the motion is
`DENIED as overly broad.
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`To the extent Plaintiffs seek additional discovery on Document Request 23, “all
`documents pertaining to performance characteristics or data for the Accused
`Products, and comparisons of performance data or characteristics between the
`Accused Products and other Products, including but not limited to metrics such as:
`a) cell per volumetric footprint; b) scalability; c) volumetric waste per growth area;
`d) cell growth per external dimension; e) surface growth area per external dimension;
`f) cell yield; g) processing time; and h) incubator space,” the motion is GRANTED.
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`15.
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`To the extent Plaintiffs seek additional discovery on Document Request 24, “all
`documents relating to the transition of customers to the Accused Products from other
`Products,” the motion is DENIED as overly broad.
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`16.
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`To the extent Plaintiffs seek additional discovery on Document Request 25, “all
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`3
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`Case 1:23-cv-00758-JLH-SRF Document 143-3 Filed 09/11/24 Page 5 of 7 PageID #: 3299
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`17.
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`18.
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`19.
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`20.
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`21.
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`22.
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`23.
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`24.
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`25.
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`26.
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`documents relating to the benefit to customers from using the Accused Products
`rather than other Products,” the motion is DENIED as overly broad.
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`To the extent Plaintiffs seek additional discovery on Document Request 28, “all
`documents relating to the availability and cost of products that may constitute
`acceptable non-infringing alternatives,” the motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 29,
`“projections, forecasts, plans and other analyses related to each Product,” the motion
`is DENIED as overly broad.
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`To the extent Plaintiffs seek additional discovery on Document Request 30, “all
`documents relating to prices, pricing, price setting, changes in pricing, and pricing
`policies for Products,” the motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 31, “all
`documents related to the amount of, and reasons for, price changes for each
`Product,” the motion is DENIED as overly broad.
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`To the extent Plaintiffs seek additional discovery on Document Request 32, “all
`documents referring or relating to the relationship of demand for Products to the
`prices of Products,” the motion is DENIED as overly broad.
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`To the extent Plaintiffs seek additional discovery on Document Request 33, “all
`documents pertaining to the pricing of Products sold to end users, for example by
`entities such as Sigma Aldrich or other third parties or customers of Corning,” the
`motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 34,
`“documents reflecting actual sales units, revenues and average selling prices of each
`Product for each month or year,” the motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 35,
`“documents reflecting actual sales units, revenues and average selling price of each
`Product by customer for each month or year,” the motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 36,
`“documents reflecting actual sales units, revenue and average selling price of each
`Product by geographic territory,” the motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 37,
`“documents reflecting actual sales units, revenue and average selling price and
`related costs for products sold in conjunction with each Product,” the motion is
`GRANTED.
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`4
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`Case 1:23-cv-00758-JLH-SRF Document 143-3 Filed 09/11/24 Page 6 of 7 PageID #: 3300
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`27.
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`28.
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`29.
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`30.
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`31.
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`32.
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`33.
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`34.
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`35.
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`36.
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`To the extent Plaintiffs seek additional discovery on Document Request 38, “price
`lists related to each Product,” the motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 39, “audited
`and internally generated financial statements, including, but not limited to, balance
`sheets, statements of operation or other documents reflecting revenues, expenses or
`profits, cash flow statements, footnotes and exhibits or supplementary information
`for each Product, for each division that relates to Products and for total company,”
`the motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 40,
`“documents reflecting manufacturing costs for each Product, including material,
`labor, overhead and other costs for each Product, including, but not limited to, actual
`costs, standard costs and variances from standard costs,” the motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 41,
`“documents reflecting gross profits, gross margin or standard margin for each
`Product,” the motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 42,
`“documents reflecting detail of costs other than manufacturing costs, including, but
`not limited to, selling, general and administrative, and other costs, for each Product,
`product line, division and total company,” the motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 43,
`“documents relating to estimated or actual R&D expenditures and capital
`investments related to Products,” the motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 44,
`“documents relating to any study, analysis, or characterization of costs as being
`fixed, semi-variable or variable with respect to the volume of production or sales of
`Products,” the motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 45,
`“documents relating to the valuation of intellectual property assets related to
`Products, including but not limited to, materials generated by third parties,” the
`motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 46,
`“documents regarding the impact of the accused technology on Defendant’s sales,
`costs/profits,” the motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 47, “all
`licensing agreements, correspondence or other documents related to contemplated
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`5
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`Case 1:23-cv-00758-JLH-SRF Document 143-3 Filed 09/11/24 Page 7 of 7 PageID #: 3301
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`37.
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`38.
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`39.
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`40.
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`41.
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`42.
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`or executed licenses relating to the Products,” the motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 48, “all
`documents related to licensing policies and practices,” the motion is GRANTED.
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`To the extent Plaintiffs seek additional discovery on Document Request 49, “all
`documents and royalty reports referring to royalties paid or received for intellectual
`property relating to Products,” the motion is GRANTED.
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`To the extent Plaintiffs seek supplementation of Defendant’s response to
`Interrogatory No. 5, “identify all acceptable alternatives to the Accused Products and
`all information pertaining to, supporting or rebutting, any contention that each is an
`acceptable alternative,” the motion is GRANTED.
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`To the extent Plaintiffs seek supplementation of Defendant’s response to
`Interrogatory No. 6, “identify all factors or considerations that Defendant contends
`are relevant to demand for the Accused Products,” the motion is DENIED.
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`The term “Products,” as stated in the above discovery requests, shall be defined as
`HYPERFlask and HYPERStack products, as well as any further products identified
`by Defendant in response to Interrogatory No. 5.
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`To the extent Plaintiffs seek a set date for the completion of document production,
`the motion is GRANTED. Each party shall conclude document production on or
`before March 1, 2014.
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`DATED: January 8 2014
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` s/Franklin L. Noel
` FRANKLIN L. NOEL
`United States Magistrate Judge
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`6
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