Case: 3:17-cv-00446-wmc Document #: 281 Filed: 05/03/19 Page 1 of 8
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF WISCONSIN
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`INGURAN, LLC d/b/a STGENETICS, XY,
`LLC, and CYTONOME/ST, LLC,
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`Plaintiffs/Counterclaim-Defendants,
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`v.
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`ABS GLOBAL, INC., GENUS PLC, and
`PREMIUM GENETICS (UK) LTD,
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`Defendants/Counterclaim-Plaintiffs.
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` Case No. 3:17-cv-446
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`REPLY IN SUPPORT OF MOTION FOR ENTRY OF PARTIAL
`FINAL JUDGMENT UNDER RULE 54(B)
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`Defendants fail to identify any just reason for delay in entering judgment on the adjudicated
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`XY patent, trade secret misappropriation, and ST breach of confidentiality claims. While
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`Defendants repeatedly state that there is “extensive” and “substantial” factual overlap between the
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`pending and adjudicated claims, they fail to identify any actual overlapping factual issues. Instead,
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`they broadly characterize the claims as relating to the “same accused GSS Technology.”
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`Tangential similarities at such a high level of generality are not relevant to determining if claims
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`may be appealed separately under Rule 54(b). In reality, there is almost no overlap in the
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`substantive facts underlying the adjudicated claims—which relate to XY’s fluid media patents and
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`trade secrets—and the pending claims—which relate to Cytonome’s microfluidic patents and an
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`alleged breach of contractual quality control terms.
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`Defendants’ contention that an appeal of the dismissed claims may eventually become moot
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`similarly fails to raise a just reason for delaying the appeal. Even if relevant under the law, which
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`it is not, Defendants’ mootness argument is based purely on speculation about the outcome of a
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`pending inter partes review and Defendants’ unfounded theory that ST would not pursue an appeal
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`Case: 3:17-cv-00446-wmc Document #: 281 Filed: 05/03/19 Page 2 of 8
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`of the dismissed claims if required to wait until after trial. There is no contention that these claims
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`are in fact moot or that the Court’s judgment is not final, nor can Defendants reasonably make
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`such claims.
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`Because there is no just reason to delay the appeal of the adjudicated claims, the Court
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`should grant Plaintiffs’ motion. This is particularly true because an immediate appeal would
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`promote overall judicial economy. While Defendants focus on the posture of this particular
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`lawsuit, they fail to acknowledge the benefit to overall judicial economy in view of the co-pending
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`District of Colorado case. A final resolution of this Court’s decision on written description in the
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`’822 Patent would streamline the issues for that court and have no negative impact on the
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`efficiencies in this court. This is precisely why Judge Martinez specifically “encourag[ed] XY to
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`use [his] order as a basis for requesting Rule 54(b) judgment as to the ’822 Patent” here. Dkt. 273-
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`1, Ex. A at 6.
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`A. The Dismissed Claims Are Separable from the Remaining Claims in the Case,
`Reducing Any Risk of Piecemeal Appeals on Overlapping Issues.
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`Defendants’ brief is heavy on rhetoric, claiming “extensive,” “substantial,” and “striking”
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`factual overlap between the pending claims and the adjudicated claims, but Defendants fail to
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`identify any specific interrelated factual or legal issues that might create a “just reason for delay.”
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`Instead, Defendants refer to the fact that each set of claims generally involves ABS’s “GSS
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`Technology.” Dkt. 278 at 1, 5. Such a generalized and high-level similarity does not create the
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`type of “piecemeal appeal” that courts are concerned with. In HTC Corp. v. IPCom GMBH & Co.,
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`KG, for example, the court certified a Rule 54(b) appeal on two patents while proceeding with a
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`third even though the “technology involved in [all] three patents relate[d] to mobile phones.” 285
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`F.R.D. 130, 132 (D.D.C. 2012). The court reasoned that for Rule 54(b) certification, the “[p]atents
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`de[alt] with different technologies, the infringement evidence for each [wa]s unique, and HTC’s
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`invalidity arguments for each [wa]s distinct.” Id. That is precisely the case here.
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`Contrary to Defendants’ conclusory assertion, there is virtually no substantive factual
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`overlap between the pending and adjudicated claims. The pending Cytonome patents, which are
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`directed to microfluidic sheath flow structures, and the dismissed XY patents, which are directed
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`to media for handling and lessening stress on cells, have different owners, different inventors,
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`different inventive origins, different file histories, involve different technologies, and share none
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`of the same prior art. While ABS does indeed implement both of these families of inventions in
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`aspects of its GSS Technology, the facts underlying the bases for infringement are unrelated for
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`purposes of certification of partial judgment. See, e.g., Interdigital Commc’ns, Inc. v. ZTE Corp.,
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`No. CV 13-009-RGA, 2016 WL 3226011, at *2 (D. Del. June 7, 2016) (“Since there is no overlap
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`between the adjudicated power ramp-up patent infringement claims and the unadjudicated ’244
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`patent infringement claims, I conclude that this first fact favors a certification of partial final
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`judgment.”). Similarly, there is no overlap with respect to the validity of the patents in light of the
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`differences in the claims, filing dates, and alleged prior art. Compare Dkts. 130, 131, 144
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`(describing the infringement and validity theories related to the Cytonome Patents), with Dkts.
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`135, 145 (describing the infringement and validity theories related to the XY Patents).
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`Although Defendants make an effort to distinguish it, WiAV Sols. LLC v. Motorola, Inc.,
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`discussed in Plaintiffs’ motion, is highly instructive. No. 3:09-cv-447, 2010 WL 883748 (E.D. Va.
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`Mar. 9, 2010). Defendants represent that WiAV turned solely on standing, but that is not the case.
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`See Dkt. 278 at 6. In fact, standing was only one “factor” out of several that supported certification
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`of the claims for appeal. WiAV, 2010 WL 883748 at *2, The WiAV court examined differences
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`between the patents-in-suit and the dismissed claims and concluded that “factual distinctions
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`between the claims counsel[ed] in favor of certification.” Id. The key factual distinctions found
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`in WiAV are all present here—including no overlap in inventors, no overlap in disputed claim
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`terms, different prior art references, different invalidity contentions, and different allegations of
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`infringement on the same accused product. See id.
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`There is also no substantive factual overlap between ABS’s pending breach of contract
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`claim and the dismissed trade secret misappropriation and breach claims that might justify delay.
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`ABS does not (and cannot) allege any overlap between the pending claims and the dismissed trade
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`secret claims. And the mere fact that both breach claims stem from the 2012 Agreement alone is
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`insufficient to create an overlapping fact issue. The substance of the 2012 Agreement is not at
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`issue at all in the appeal of the Court’s res-judicata-based decision on XY’s breach claim. In any
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`event, Defendants’ breach of contract counterclaim relates to an entirely different provision of the
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`2012 Agreement. Any overlap between the remaining and dismissed breach of contract claims is
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`purely tangential and should not foreclose Rule 54(b) certification. W.L. Gore & Assocs., Inc. v.
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`Int’l Med. Prosthetics Research Assocs., 975 F.2d 858, 864 (Fed. Cir. 1992) (“[F]actual overlap on
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`only tangential issues or on ‘one aspect’ of a counterclaim is not adequate to show an abuse of
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`discretion.”).
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`B. Defendants’ Speculation Regarding Potential Mootness of Issues Does Not
`Preclude Rule 54(b) Certification.
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`Defendants speculate that subsequent proceedings or litigation strategies might render an
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`appeal of the dismissed claims moot, but ABS’s mischaracterization of the record and its wishful
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`thinking regarding the outcome of the pending inter partes review do not justify delay. As an
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`initial matter, even if true, an attenuated possibility of mootness is not a basis for denying ST’s
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`motion. See Medeva Pharma Suisse A.G. v. Par Pharm., Inc., No. CV 10-4008 (FLW), 2011 WL
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`13147213, at *2 (D.N.J. May 16, 2011) (granting 54(b) certification and explaining that “Plaintiffs’
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`argument that future developments may render the standing issue moot is not persuasive; the Court
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`finds Plaintiffs’ argument too speculative at this juncture to rely upon”). A number of courts have
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`held that Rule 54(b) certification was appropriate even where subsequent proceedings may obviate
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`the need for an appeal. See, e.g., Cadillac Fairview/Cal., Inc. v. United States, 41 F.3d 562, 564
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`n.1 (9th Cir. 1994) (asserting the district court did not abuse its discretion in certifying an appeal
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`despite the fact that subsequent proceedings might render the appeal unnecessary); Cont’l Airlines,
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`Inc. v. Goodyear Tire & Rubber Co., 819 F.2d 1519, 1525 (9th Cir. 1987) (affirming a lower court’s
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`Rule 54(b) judgment despite the possibility that plaintiff may never “appeal the instant judgments
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`if the case had been compelled to go forward”).
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`Moreover, Defendants’ theories for why the appeal may be moot are highly speculative and
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`involve mischaracterizations of the record. First, Defendants theorize that ST “might not” appeal
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`the dismissed claims because ST has allegedly not adequately pursued its damages theories on
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`infringement of the dismissed patents and trade secret theft. Dkt. 278 at 7–8. With respect to
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`damages for infringement of the fluid media patents, at the hearing on summary judgment, the
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`Court invited ST to provide a rebuttal report quantifying damages for the use of ABS’s revised
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`protocols. Dkt. 245 at 38:8–39:13. Less than three weeks later—before ST’s expert had the
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`opportunity to complete the report—the Court entered summary judgment on the XY patent
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`claims. See Dkt. 270. Accordingly, Defendants’ assertion that ST “has not even attempted to
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`provide” a revised report is a gross mischaracterization. See Dkt. 278 at 7. Defendants also
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`criticize Plaintiffs for failing “to disclose quantifiable damages for their trade-secret and breach-
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`of-contract claims.” Id. But this is likewise inaccurate. In a proffer submitted to the Court,
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`Plaintiffs expressly claimed trade secret misappropriation and breach of contract damages in the
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`“$1–2 million range” for each claim. Dkt. 246 at 2–3.
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`Case: 3:17-cv-00446-wmc Document #: 281 Filed: 05/03/19 Page 6 of 8
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`Finally, Defendants’ assertion that “any appeal of this Court’s written description
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`determination” as to the ’822 Patent may be “moot” because the ’822 Patent “may soon be
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`invalidated” by the Patent Office for obviousness, is also rank speculation. Dkt. 278 at 7.
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`Defendants’ assumption that ABS will prevail “in establishing that the claimed invention would
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`have been obvious” simply because the Patent Office has instituted an inter partes review of the
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`’822 Patent goes too far. The Patent Office’s decision to institute inter partes review is far from a
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`guarantee that all challenged claims will be found unpatentable. See, e.g., Dkt. 277-1, Ex. A, ’161
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`Patent Final Written Decision (declining to find certain challenged claims of the ’161 Patent
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`unpatentable after institution of inter partes review). In any event, XY would of course have the
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`option of appealing the PTAB’s decision if it should find the challenged claim of the ’822 Patent
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`unpatentable, regardless of the timing of the appeal from this Court. In fact, an earlier appeal of
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`this Court’s decision might allow for additional efficiencies at the Federal Circuit or the PTAB.
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`C. The Balance of Equities and Overall Judicial Economy Weigh in Favor of
`Certification.
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`The balance of equities and judicial economy weigh in favor of certifying the adjudicated
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`claims for immediate appeal. Defendants contend that the late stage of this particular litigation
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`weighs against certifying the appeal, but ignore the benefit to overall judicial economy when the
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`District of Colorado case is taken into consideration. XY’s claims with respect to the ’822 Patent
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`in that case are presently stayed while other claims are on appeal to the Federal Circuit. See Dkt.
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`273-1, Ex. A at 7. ST’s opening brief in that appeal is due on June 21, 2019. Even if ST obtains
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`a short extension on filing its appeal brief, if this Court grants this motion the appeal of its dismissal
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`of the ’822 Patent will likely be resolved close in time to when the Colorado case is returned to
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`Judge Martinez. Thus, as Judge Martinez recognized, granting the instant motion will enhance
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`judicial economy with respect to the District of Colorado case. Id. at 5. And as discussed above,
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`Case: 3:17-cv-00446-wmc Document #: 281 Filed: 05/03/19 Page 7 of 8
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`because there is no factual overlap between the pending and dismissed claims, this Court would
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`not experience any detriment to judicial economy that would offset the overall benefit.
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`Dated: May 3, 2019
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`Respectfully submitted,
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`/s/ Kirt S. O’Neill
`KIRT S. O’NEILL
`Texas State Bar No. 00788147
`(admitted pro hac vice)
`koneill@akingump.com
`DANIEL L. MOFFETT
`Texas State Bar No. 24051068
`(admitted pro hac vice)
`dmoffett@akingump.com
`GEORGE A. L. ROSBROOK
`Texas State Bar No. 24070141
`(admitted pro hac vice)
`arosbrook@akingump.com
`CLAYTON N. MATHESON
`Texas State Bar No. 24074664
`(admitted pro hac vice)
`cmatheson@akingump.com
`AKIN GUMP STRAUSS HAUER & FELD, LLP
`112 East Pecan, Suite 1010
`San Antonio, Texas 78205
`Telephone: (210) 281-7000
`Facsimile: (210) 224-2035
`
`REHAN M. SAFIULLAH
`Texas State Bar No. 24066017
`(admitted pro hac vice)
`rsafiullah@akingump.com
`THOMAS W. LANDERS IV
`Texas State Bar No. 24102057
`(admitted pro hac vice)
`twlanders@akingump.com
`AKIN GUMP STRAUSS HAUER & FELD, LLP
`1111 Louisiana St., 44th Floor
`Houston, Texas 77002
`Telephone: (713) 220-5800
`Facsimile: (713) 236-0822
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`Case: 3:17-cv-00446-wmc Document #: 281 Filed: 05/03/19 Page 8 of 8
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`SARAH A. ZYLSTRA
`Wisconsin State Bar No. 1033159
`BOARDMAN & CLARK LLP
`One South Pinckney, Suite 410
`P.O. Box 927
`Madison, Wisconsin 53701-0927
`Telephone: (608) 257-9521
`szylstra@boardmanclark.com
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`ATTORNEYS FOR PLAINTIFFS
`INGURAN, LLC /d/b/a STGENETICS,
`XY, LLC, and CYTONOME/ST, LLC
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`CERTIFICATE OF SERVICE
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`I certify that a copy of the foregoing has been served upon all counsel of record via the Court’s
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`CM/ECF system on May 3, 2019.
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`/s/ Kirt S. O’Neill
`Kirt S. O’Neill
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