1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Case No. 07-CV-00097-JLS (RBB)
Dan Lawton (State Bar No. 127342)
Joseph C. Kracht (State Bar No. 228507)
LAWTON LAW FIRM
Emerald Plaza
402 West Broadway, Suite 1860
San Diego, CA 92101
(619) 595-1370 (Telephone)
(619) 595-1520 (Facsimile)
dlawton@lawtonlaw.com (Electronic Mail)
Attorneys for Plaintiff and Counterdefendant AntiCancer, Inc.
UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF CALIFORNIA
ANTICANCER, INC., a California
corporation,
Plaintiff,
v.
CAMBRIDGE RESEARCH &
INSTRUMENTATION, INC., a
Delaware corporation,
Defendant.
_________________________________
AND RELATED COUNTERCLAIMS.
_________________________________
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
Case No. 3:07-CV-00097-JLS (RBB)
PLAINTIFF AND
COUNTERDEFENDANT ANTICANCER,
INC.’S OPPOSITION TO EX PARTE
APPLICATION OF DEFENDANT AND
COUNTERCLAIMANT CAMBRIDGE
RESEARCH & INSTRUMENTATION,
INC., FOR AN ORDER DENYING OR,
IN THE ALTERNATIVE, CONTINUING,
PLAINTIFF ANTICANCER, INC.’S
MOTION FOR SUMMARY JUDGMENT
OF VALIDITY [DOC. # 283]
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 1 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Case No. 07-CV-00097-JLS (RBB)
i
TABLE OF CONTENTS
PAGE
I. INTRODUCTION AND SUMMARY OF ARGUMENT . . . . . . . . . . . . . . . . . . . . . . 1
II. ANTICANCER’S SUMMARY JUDGMENT MOTION IS NOT PREMATURE.
THERE IS NO “RIGHT” TO FACE SUMMARY JUDGMENT ONLY AFTER
FACT DISCOVERY HAS CLOSED AND THE EXPERT WITNESS DISCLOSURE
DEADLINE HAS PASSED . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
III. CRI HAS HAD AMPLE DISCOVERY FOR THE LAST TWO-PLUS YEARS. THE
FEW OPEN DISCOVERY REQUESTS WARRANT NEITHER DENIAL OF
SUMMARY JUDGMENT NOR CONTINUANCE OF THE HEARING . . . . . . . . . 4
A. Completed Discovery . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
B. Discovery Disputes Resolved by Judge Brooks’ April 15 Order (DE 300);
Discovery Ordered Completed by May 7. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
IV. CRI’S PICS PREVENT CRI FROM OFFERING IN OPPOSITION TO SUMMARY
JUDGMENT ANY FACT NOT DISCLOSED IN THOSE PICS. IT FOLLOWS
THAT CRI’S “PENDING” DISCOVERY REQUESTS DO NOT PROMISE ANY
EVIDENCE WHICH WOULD BE RELEVANT OR ADMISSIBLE ON SUMMARY
JUDGMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
V. CRI’S RELIANCE ON McCORMICK-MORGAN v. TELEDYNE IS MISPLACED
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10
VI. CRI’s 56(f) AFFIDAVIT IS DEFICIENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13
A. No Nexus . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
B. CRI Has Not Been Diligent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
VII. CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 2 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Case No. 07-CV-00097-JLS (RBB)
ii
TABLE OF AUTHORITIES
PAGE
CASES
AK Steel Corp. v. Sollac
344 F.3d 1234, 1244 (Fed. Cir. 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
Berger v. Rossignol Ski Co., Inc.
2006 WL 1095914, at *6 (N.D. Cal. Apr. 25, 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . 6, 7, 14
Blanck v. Hagar
360 F.Supp.2d 1137, 1160-1161 (D. Nev. 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
Burke v. Utah Transit Authority
462 F.3d 1253, 1263-1264 (10 Cir. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .th 13
Burlington Northern Santa Fe RR Co. v. Assiniboine & Sioux Tribes
323 F.3d 767, 774 (9 Cir. 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .th 17-18
Celotex Corp. v. Catrett
477 U.S. 317, 323-324, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) . . . . . . . . . . . . . . . . . . . . . 14
Chang v. Dept. of the Navy
314 F.Supp.2d 35, 46-47 (D.D.C. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
Dyson v. Thomas H. Lee Co.
61 F.Supp.2d 13, 42-43 (D.D.C. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
Employers Teamsters Local v. The Clorox Co.
353 F.3d 1125, 1129-1130 (9 Cir. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .th 13, 17
Exxon Research and Engineering Co. v. U.S.
265 F.3d 1371, 1375 (Fed. Cir. 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
Graham v. John Deere Co.
383 U.S. 1, 17, 86 S.Ct 684, 15 L.Ed.2d 545 (1966) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
IXYS Corp. v. Advanced Power Tech., Inc.
2004 U.S. Dist. LEXIS 10934, *8-*9 (N.D. Cal. June 16, 2004) . . . . . . . . . . . . . . . . . . . . . . 7
Kadair, Inc. v. Sony Corporation of America
694 F.2d 1017 (5 Cir. 1983) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .th 18
Kao Corp. v. Unilever U.S., Inc.
441 F.3d 963, 967-968 (Fed. Cir. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
Lucent Techs., Inc. v. Gateway, Inc.
2007 WL 1877982, at *4 (S.D. Cal. June 27, 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . 6, 7, 14
McCormick-Morgan, Inc. v. Teledyne Industries, Inc.
134 F.R.D. 275, 285-288 (N.D. Cal. 1991) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10-11
Merck & Co., Inc. v. MSD Technology, L.P.
434 F.Supp.2d 257, 266 (S.D.N.Y. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 3 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Case No. 07-CV-00097-JLS (RBB)
iii
Metropolitan Life Ins. Co. v. Bancorp Servs., LLC
527 F.3d 1330, 1337 (Fed. Cir. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17-18
MGM Well Services, Inc. v. Mega Lift Systems, LLC
2007 U.S. Dist. LEXIS 5005, at *17-*19 (S.D. Tex. Jan. 24, 2007) . . . . . . . . . . . . . . . . . . . 7
Minemyer v. B-Roc Representatives, Inc.
2009 U.S. Dist. LEXIS 99904, at *29-*36 (N.D. Ill. Oct. 27, 2009) . . . . . . . . . . . . . . . . . . . 6
Monaplastics, Inc. v. Caldor, Inc.
378 F.2d 20, 21 (2d Cir. 1967) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
Nova Measurement Instruments, Ltd. v. Nanometrics, Inc.
2006 U.S. LEXIS 16823, *6-*7 (N.D. Cal. March 23, 2006) . . . . . . . . . . . . . . . . . . . . . . . . 7
O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc.
467 F.3d 1355, 1368 (Fed. Cir. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6, 7, 11, 14
Otto v. Variable Annuity Life Ins. Co.
814 F.2d 1127, 1138 (7 Cir. 1986) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .th 14
Quinn v. Thomas H. Lee Co.
61 F.Supp.2d 13, 18-19 (S.D.N.Y. 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
Realtime Data, LLC v. Packeteer, Inc.
2009 U.S. Dist. LEXIS 114207, at *18-*19 (E.D. Tex. Dec. 8, 2009) . . . . . . . . . . . . . . . . . . 6
Rivera-Torres v. Rey-Hernandez
502 F.3d 7, 8-11 (1 Cir. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .st 18
Ruiz v. A.B. Chance Co.
234 F.3d 654, 662-663 (Fed. Cir. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
Schering Corp. v. Geneva Pharms., Inc.
339 F.3d 1373, 1377-1378 (Fed. Cir. 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
Sensormatic Elec. Corp. v. WG Security Products, Inc.
2006 U.S. Dist. LEXIS 26823, at *6-*7 (E.D. Tex. May 5, 2006) . . . . . . . . . . . . . . . . . . . . . 7
Source Search Technologies, LLC v. Lendingtree, LLC
588 F.3d 1063, 1076 (Fed. Cir. 2009) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
Sprint Communications Co., L.P. v. TheGlobe.com, Inc.
236 F.R.D. 524 (D. Kan. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12
Takeda Chemical Industries, Ltd. v. Mylan Labs., Inc.
459 F.Supp.2d 227, 247-248 (S.D.N.Y. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7-9, 15
Toro Co. v. White Consolidated Indust., Inc.
2003 U.S. Dist. LEXIS 8550 (D. Minn. May 14, 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
Vermont Structural Slate Co. v. Tatko Bros. Slate Co.
233 F.2d 9, 10 (2d Cir.), cert. denied, 352 U.S. 917, 77 S.Ct. 216, 1 L.Ed.2d 123 (1956) . . . 4
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 4 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Case No. 07-CV-00097-JLS (RBB)
iv
RULES AND STATUTES
Federal Rule of Civil Procedure Rule 11 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
Federal Rule of Civil Procedure 30(b)(6) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim
Federal Rule of Civil Procedure Rule 56 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim
21 U.S.C. § 355 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 5 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Counterclaimant Cambridge Research & Instrumentation, Inc.1
Counterdefendant AntiCancer, Inc.2
U.S. patent nos. 6,251,384, 6,759,038, and 6,649,159, respectively.3
All references to Rules are to the Federal Rules of Civil Procedure, except as otherwise4
noted.
Case No. 07-CV-00097-JLS (RBB)
1
I. INTRODUCTION AND SUMMARY OF ARGUMENT.
In this action, CRI seeks via counterclaim to invalidate three of AntiCancer’s1 2
imaging patents: the ‘384 patent, the ‘038 patent, and the ‘159 patent. CRI’s counterclaims3
assert anticipation via prior art, indefiniteness, non-enablement, and inadequacy of written
description. CRI lacks any evidence to support any of these counterclaims. On this basis,
AntiCancer filed a motion for summary judgment of validity eight weeks ago. The hearing
on this MSJ is set for June 24.
On the eve of the deadline for its opposition (April 30), CRI sought relief under Rule
56(f) via ex parte application. CRI seeks either outright denial of AntiCancer’s MSJ or else4
a continuance of the June 24 hearing. “This case is complex,” CRI writes.
This is not true. The case is not complex. It is straightforward. CRI’s application
fails.
First, CRI’s application rests on a false notion. This notion is that summary judgment
should come only at the close of fact discovery, only after the deadline for expert witness
reports have passed, and only with the aid of expert witnesses. Rule 56(a), however,
expressly contemplates summary judgment at any time after the case is 20 days old. This
case is over three years old. Neither Rule 56 nor any case construing it says the Court
improperly grants summary judgment before experts have done their work or after the close
of fact discovery.
Second, the factual premise for CRI’s motion (that CRI has suffered an inability to
complete essential discovery) is false. CRI began discovery in this case over two years ago.
It has served (and gotten responses from AntiCancer to) over 500 discrete written discovery
requests; deposed multiple inventors and third parties; and received over 25 boxes’ worth of
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 6 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Preliminary invalidity contentions.5
Case No. 07-CV-00097-JLS (RBB)
2
documents from AntiCancer. The few still-pending discovery requests which CRI only
recently served will not change the landscape of AntiCancer’s MSJ.
Third, CRI’s own PICs now prevent CRI from proffering any evidence beyond the5
scope of those PICs, thus mooting the discovery CRI now insists it needs. This Court, in this
case (and other courts, in other cases) have ruled that a party’s PICs frame the evidentiary
basis for infringement or invalidity. CRI itself invoked this rule two years ago in seeking and
getting summary judgment of non-infringement against AntiCancer over AntiCancer’s
objection that it needed more discovery. Now facing summary judgment itself, CRI must
face the same music. CRI has had the chance to amend its PICs (and even threatened to seek
leave to amend them) – but has never tried to amend them (and, even now, does not request
leave to amend them). The four corners of CRI’s PICs limit what evidence CRI can proffer
in opposition to AntiCancer’s MSJ. All of CRI’s pending discovery falls outside those four
corners. It follows Rule 56(f) does not allow relief.
Fourth, the Goddard affidavit does not satisfy the standard for relief under Rule 56(f).
It fails to identify how the additional discovery CRI seeks will preclude summary judgment.
It fails to explain why CRI couldn’t have gotten it months or years ago. It highlights a lack
of diligence on CRI’s part in seeking (over the last three years) the discovery it now insists it
needs on the eve of the filing deadline for CRI’s opposition papers.
The last paragraph of CRI’s application reveals a bizarre contradiction. CRI argues
that AntiCancer’s MSJ is a “sham” because it rests on a technical argument and “utterly
ignores the record in this case.” In the next sentence CRI says it should not be obliged to
oppose the MSJ “without the benefit of essential discovery . . .” Both things cannot possibly
be true. If AntiCancer’s MSJ be a sham, then its “sham” nature and the “record in this case”
ought to warrant its denial on the merits. If, on the other hand, CRI needs “essential
discovery” in order to oppose the motion, then the “record in this case” cannot possibly
justify denying the MSJ, and the MSJ can hardly be a “sham.” The request for more
discovery illuminates the reality: that CRI has asserted counterclaims of invalidity with no
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 7 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Case No. 07-CV-00097-JLS (RBB)
3
facts whatsoever to justify them.
CRI has had ample time within which to both (a) discover any facts pertinent to its
invalidity theories and (b) marshal them into a thorough written opposition. In a case over
three years old, AntiCancer is entitled to rely on the Rules and the hearing date which the
system provides. The Court should deny CRI’s ex parte application and leave the hearing on
AntiCancer’s MSJ as scheduled.
II. ANTICANCER’S SUMMARY JUDGMENT MOTION IS NOT PREMATURE.
THERE IS NO “RIGHT” TO FACE SUMMARY JUDGMENT ONLY AFTER
FACT DISCOVERY HAS CLOSED AND THE EXPERT WITNESS DISCLOSURE
DEADLINE HAS PASSED.
Permeating CRI’s application is the notion that summary judgment, if at all, should
only come after fact discovery has closed and the deadline for expert disclosure has passed.
CRI offers no authority for this notion.
There is no authority for the notion. Rule 56(a) expressly contemplates summary
judgment as early as 20 days after commencement of the action. Nothing in the Rule
requires the Court to await the close of fact discovery or expert witness disclosure before
granting summary judgment. The Court’s own grant of summary judgment of non-
infringement in CRI’s favor and against AntiCancer in 2008 in this case starkly illustrates
this.
Even if the law required what CRI implies it does, CRI offers no reason why it
couldn’t have hired and prepared experts to opine on the validity of AntiCancer’s patents
before now. AntiCancer filed its MSJ on February 22 – nearly two months ago. From that
day until CRI filed its ex parte application, seven (7) weeks passed. This was ample time
within which CRI could have hired an expert to render opinions. CRI’s failure to do so
reflects a lack of diligence (as explained further below at pp. 16-18).
CRI writes that “issues of patent validity . . . require expert testimony, as specifically
contemplated by the Scheduling Order.” CRI EPA at p. 7:25-26. This statement is
completely false. The Scheduling Order contemplates no such thing. It simply sets dates for
expert witness disclosure (while not ruling experts are required or that anything they would
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 8 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Case No. 07-CV-00097-JLS (RBB)
4
have to say will be admissible on summary judgment or at trial).
As it is, AntiCancer’s motion presents nothing even amenable to expert witness
testimony. Patent validity is an issue of law. See Graham v. John Deere Co., 383 U.S. 1, 17,
86 S.Ct 684, 15 L.Ed.2d 545 (1966). Courts can and do resolve it on summary judgment,
without the need for expert witness testimony whatsoever. See Monaplastics, Inc. v. Caldor,
Inc., 378 F.2d 20, 21 (2d Cir. 1967); Vermont Structural Slate Co. v. Tatko Bros. Slate Co.,
233 F.2d 9, 10 (2d Cir.), cert. denied, 352 U.S. 917, 77 S.Ct. 216, 1 L.Ed.2d 123 (1956). So
this Court should do on June 24.
III. CRI HAS HAD AMPLE DISCOVERY FOR THE LAST TWO-PLUS YEARS. THE
FEW OPEN DISCOVERY REQUESTS WARRANT NEITHER DENIAL OF
SUMMARY JUDGMENT NOR CONTINUANCE OF THE HEARING.
A. Completed Discovery.
CRI argues, in essence, it has not had the chance to complete discovery
essential to oppose AntiCancer’s MSJ. This is not true.
As CRI admits, it began “propounding written discovery on AntiCancer in February
2008" – over two years ago. See CRI EPA at p. 6:12 (emphasis added). In response,
AntiCancer has produced tens of thousands of pages of documents (over 25 boxes);
answered fifty (50) interrogatories; produced for deposition in San Diego all four (4) of its
inventors (despite the fact only one of them still works for AntiCancer and two of them are
foreign residents who had to travel from Asia for the depositions) and two lawyers who
prosecuted the patents-in-suit; and made arrangements (twice) to produce a 30(b)(6)
representative (before CRI canceled the depositions, twice, on short notice). The total
number of CRI’s discrete written discovery requests (document requests, requests for
admissions, and interrogatories) to which AntiCancer has delivered written responses now
exceeds 500. Lawton dec., ¶ 2. This reality belies the notion that CRI has lacked the fair
opportunity to do discovery in advance of AntiCancer’s MSJ.
B. Discovery Disputes Resolved by Judge Brooks’ April 15 Order (DE 300);
Discovery Ordered Completed by May 7.
Beginning on March 18, CRI began serving what would turn out to be over 200
discrete written discovery requests. Id., ¶ 2. Many (if not most) of these discovery requests
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 9 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Case No. 07-CV-00097-JLS (RBB)
5
had little, if anything, to do with the validity of AntiCancer’s patents. AntiCancer moved for
a protective order. CRI simultaneously moved to compel. DE 296, 297, 298, 299.
Judge Brooks’ ensuing order issued on April 15. DE 300. It granted and denied in
part both parties’ requests. Insofar as relevant to this motion, it:
! quashed CRI’s request for entry onto AntiCancer’s
premises;
! held CRI’s eighty (80) requests for admissions “unduly
burdensome,” but ordered AntiCancer to admit or deny
whether or not deponents in previous lawsuits furnished or
did not furnish corrections to their testimony;
! granted AntiCancer a protective order as to CRI’s
subpoena on UCSD, subject to production of limited
material related only to the patents-in-suit;
! refused CRI’s requests for two (2) days of deposition of
inventor Takashi Chishima (while allowing a single
eleven-hour day on the previously-agreed day of May 8);
! required AntiCancer to serve a response to CRI’s
interrogatory no. 13 (which asks for redundant information
identifying “each person who contributed to the
conception” of the inventions claimed in the patents-in-
suit); and
! obliging AntiCancer to supplement its previously-served
responses to CRI’s interrogatories nos. “8-10" (concerning
the level of ordinary skill in the art and the first instance of
practice of the method claimed in Claim 1 of the ‘159
patent).
DE 300.
Judge Brooks ordered all of this to happen no later than May 7 (five days before CRI’s
opposition to AntiCancer’s MSJ is due), except for the Chishima deposition (previously set
and still set for May 8). Id., p. 11:22. By May 8 CRI will have had full access to the data
these requests yield. Because this day is in advance of CRI’s new deadline for opposing
AntiCancer’s MSJ (May 12), CRI will lack any possible basis for arguing it did not have a
full and fair opportunity to prepare its opposition.
///
///
///
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 10 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Case No. 07-CV-00097-JLS (RBB)
6
IV. CRI’S PICS PREVENT CRI FROM OFFERING IN OPPOSITION TO SUMMARY
JUDGMENT ANY FACT NOT DISCLOSED IN THOSE PICS. IT FOLLOWS
THAT CRI’S REMAINING “PENDING” DISCOVERY REQUESTS DO NOT
PROMISE ANY EVIDENCE WHICH WOULD BE RELEVANT OR ADMISSIBLE
ON SUMMARY JUDGMENT.
Legal theories and evidence not disclosed in the PICs, for all practical purposes, do
not exist. So this Court ruled in this case two years ago. See D.E. 214 (order granting CRI’s
MSJ re non-infringement). In this setting, this ruling is all-important. CRI’s own PICs now
defeat its ex parte application.
In July 2008, when it moved for summary judgment based upon AntiCancer’s
deficient PICs, CRI argued that AntiCancer’s PICs defeated AntiCancer’s ability to proffer
any evidence not disclosed in those PICs on summary judgment. D.E. 166. The Court
agreed:
To the extent that AntiCancer’s opposition seeks to introduce
new theories of infringement based on evidence which
AntiCancer did not disclose in its PICs, the Court again
invokes the principle on which Merck and NIBRI obtained a
finding of non-infringement. Summary judgment is appropriate
against a party who bases its opposition on theories omitted from
its infringement contentions. See O2 Micro Int’l Ltd. v.
Monolithic Power Sys., Inc., 467 F.3d 1355, 1368 (Fed. Cir.
2006) (entering summary judgment for defendant premised on
affirmance of district court’s denial of leave to amend
contentions to add new theory of infringement); Lucent Techs.,
Inc. v. Gateway, Inc., 2007 WL 1877982, at *4 (S.D. Cal. June
27, 2007) (Brewster, J.) (granting summary judgment because
plaintiff could not succeed on infringement theory that plaintiff
did not set forth in its infringement contentions); Berger v.
Rossignol Ski Co., Inc., 2006 WL 1095914, at *6 (N.D. Cal. Apr.
25, 2006) (where plaintiffs conceded at oral argument that they
had offered an “absurd” original infringement contention and
court denied leave to amend, defendant’s motion for summary
judgment of non-infringement was granted).
D.E. 214 at 7:12-25 (emphasis added).
This constraint on new theories and evidence applies with equal force to preliminary
invalidity contentions. Realtime Data, LLC v. Packeteer, Inc., 2009 U.S. Dist. LEXIS
114207, at *18-*19 (E.D. Tex. Dec. 8, 2009) (striking invalidity theories and evidence from
consideration at summary judgment and trial because not disclosed by preliminary invalidity
contentions); Minemyer v. B-Roc Representatives, Inc., 2009 U.S. Dist. LEXIS 99904, at
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 11 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Abbreviated New Drug Application, pursuant to the Hatch-Waxman Act.6
Case No. 07-CV-00097-JLS (RBB)
7
*29-*36 (N.D. Ill. Oct. 27, 2009) (denying defendant’s MSJ re invalidity because of deficient
preliminary invalidity contentions; MSJ on theory not disclosed in PICs was “litigation by
ambush”); MGM Well Services, Inc. v. Mega Lift Systems, LLC, 2007 U.S. Dist. LEXIS
5005, at *17-*19 (S.D. Tex. Jan. 24, 2007) (granting motion to exclude evidence and
argument not disclosed in preliminary invalidity contentions); Sensormatic Elec. Corp. v. WG
Security Products, Inc., 2006 U.S. Dist. LEXIS 26823, at *6-*7 (E.D. Tex. May 5, 2006)
(granting, in part, motion to strike invalidity contentions not contained in PICs); Nova
Measurement Instruments, Ltd. v. Nanometrics, Inc., 2006 U.S. LEXIS 16823, *6-*7 (N.D.
Cal. March 23, 2006) (dictum expressing disapproval of moot MSJ re invalidity that asserts
theories not disclosed by PICs); IXYS Corp. v. Advanced Power Tech., Inc., 2004 U.S. Dist.
LEXIS 10934, *8-*9 (N.D. Cal. June 16, 2004) (granting motion to preclude evidence not
disclosed by preliminary invalidity contentions).
This rule defeats relief under Rule 56(f). This is because the evidence CRI seeks via
its barrage of belated discovery strays far beyond CRI’s PICs. See ibid. These PICs
identified – as the sole basis for CRI’s invalidity claims – 336 pieces of supposed prior art.
CRI has threatened to seek leave to amend these PICs (Lawton dec., ¶ 3) – but has never
done so. CRI’s PICs now limit the evidence it can use to oppose AntiCancer’s summary
judgment motion. O2 Micro, 467 F.3d at 1368; Lucent Techs., Inc., 2007 WL 1877982, at
*4; Berger, 2006 WL 1095914, at *6.
Ironically, CRI well knows it is constrained by its PICs. CRI’s own lawyers know this
from firsthand experience. See Takeda Chemical Industries, Ltd. v. Mylan Labs., Inc., 459
F.Supp.2d 227, 247-248 (S.D.N.Y. 2006) (awarding $11.4 million in attorneys’ fees and
costs upon extraordinary case finding in baseless invalidity claims prosecuted by, and
litigation misconduct committed by, CRI’s counsel); aff’d, 549 F.3d 1381 (Fed. Cir. 2008)).
Takeda started with an ANDA action, in which the companies Alphapharm and6
Mylan asserted a right to manufacture a generic version of Takeda’s patented diabetes drug,
pioglitazone, because the patent was allegedly invalid. Id. at 230-231. In doing so, Mylan –
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 12 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
21 U.S.C. § 355(j)(2)(A)(vii).7
Case No. 07-CV-00097-JLS (RBB)
8
represented by CRI’s current New York counsel – filed a Section 355 statement which both7
certified that Takeda’s patent was invalid for obviousness and identified two prior art
references. Id. at 231, 246. Takeda then challenged the ANDA filing in the district court, in
which the court eventually determined Mylan’s invalidity claims had no basis in fact.
Takeda twice noticed the 30(b)(6) deposition of Mylan to produce a witness able to
testify as to the factual basis of its invalidity claims. Only when ordered to do so by the court
did Mylan produce the witness. Takeda v. Mylan, 2005 U.S. Dist. LEXIS 18573, *2-*6
(S.D.N.Y. Sept. 1, 2005) (opinion and order on Mylan’s motion for reconsideration). As
revealed by the deposition, Mylan had no factual basis for claiming Takeda’s patent invalid.
In the district court’s words, “Mylan filed a Paragraph IV certification in bad faith and with
no reasonable basis to claim that the ‘777 Patent was invalid.” Takeda, 459 F.Supp.2d at
245.
Mylan and its lawyers at the Cohen Pontani firm filed the Section 355 certification
without a prior investigation, without any client evidence, and only a hastily prepared, last
minute invalidity opinion. Id. In short, “Mylan decided to challenge the validity of the ‘777
Patent without any good faith basis to do so.” Id. The only difference between Mylan and
CRI is that Mylan (unlike CRI) paid for a last minute invalidity opinion.
Here, CRI did not even go so far as to provide a last-minute invalidity opinion. In
addition to admitting that it had no evidence and couldn’t vouch for the provenance or
validity of the alleged prior art references, CRI testified at its own 30(b)(6) deposition that it
never secured an invalidity opinion before filing its counterclaims and still has not done so.
Dep. tx. at pp. 52:9-13; 60:4-10; see also 49:12-50:12 (no evidence to support
counterclaims); 50:13-22 (no pre-suit investigation conducted); 69:23-25 (company had no
role in drafting PICs).
Just as CRI is doing now, Mylan tried to shift its focus after its disastrous 30(b)(6)
deposition testimony. By manufacturing discovery disputes about evidence outside the
alleged prior art references, Mylan began trying to build a case that Takeda’s patent should
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 13 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Case No. 07-CV-00097-JLS (RBB)
9
be invalidated for inequitable conduct. The district court forbade this. Takeda, 459
F.Supp.2d at 247-248. In later ruling the case exceptional and awarding attorneys’ fees to
Takeda, the district court wrote:
Mylan’s defense of its aborted effort to make a wholesale
revision to its obviousness theory is utterly frivolous. As this
Court has previously had occasion to point out to Mylan, since an
attack based on obviousness must rely on disclosures made in
prior art, the existence or receipt of Takeda’s internal
documents is irrelevant. Either the invention of pioglitazone
was obvious based on prior art, or it was not.
Id. at 247 (emphasis added).
Takeda then moved successfully to preclude Mylan from presenting evidence at trial
that exceeded the scope of Mylan’s alleged prior art. Takeda, 2005 U.S. Dist. LEXIS 18573,
*1. A bench trial ensued; Takeda prevailed and moved for an exceptional case finding and
award of sanctions, alleging that Mylan lacked a good faith basis in its invalidity claim and
that it engaged in litigation misconduct. Takeda, 459 F.Supp.2d at 230-231. The district
court agreed and awarded Cohen Pontani’s client, Mylan, to pay Takeda $11.4 million in
attorneys’ fees. Takeda, 2007 U.S. Dist. LEXIS 19614, at *46.
Here, it is hard to see how Mylan’s behavior differs substantially from that of CRI’s.
Mylan prosecuted an invalidity theory with no basis in fact, no pre-filing investigation and no
evidence, exactly as CRI is doing now. It appears CRI’s motivation is the same:
The defendants’ performance in this regard provides further
evidence that they well understood that their attacks on the ‘777
Patent were groundless and would only succeed if Takeda did not
expend the effort and resources necessary to shine a light on the
flaws in the defendants’ arguments and if the Court did not spend
the time necessary to learn the relevant science and understand
the evidentiary record created by the trial submissions.
Id. at *44.
In a letter sent in February 2010, AntiCancer warned CRI of the consequences of its
behavior in this case when compared to the behavior of its counsel in the Takeda case.
Lawton dec., ¶ 6; Ex. A. CRI ignored this letter. Lawton dec., ¶ 6.
///
///
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 14 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Case No. 07-CV-00097-JLS (RBB)
10
V. CRI’S RELIANCE ON McCORMICK-MORGAN v. TELEDYNE IS MISPLACED.
CRI exaggerates what it calls the “complex nature of patent litigation[,]” suggesting
the Court lacks the tools with which to decide AntiCancer’s MSJ without a gaggle of experts
and voluminous, yet-to-be-discovered matter. In this context, CRI argues AntiCancer cannot
rely on CRI’s deposition testimony on summary judgment, while supposedly “ignor[ing] the
detailed factual recitations in the invalidity contentions that CRI served in December
2007”:
AntiCancer cannot satisfy its burden as the moving party by
asking the Court to inordinately focus on a deposition, yet ignore
CRI’s detailed preliminary invalidity contentions that, by
themselves, create triable issues of fact that preclude summary
judgment.
CRI EPA at pp. 8:26-28, 9:20-23 (emphasis added).
Here, CRI cites McCormick-Morgan, Inc. v. Teledyne Industries, Inc., 134 F.R.D.
275, 285-288 (N.D. Cal. 1991) for the proposition that “it is typical for a party to rely on its
patent counsel to formulate invalidity contentions in a case like this.” Id. at 9:3-20.
McCormick-Morgan, however, says no such thing. Instead, the court in McCormick-
Morgan held that, “in the limited circumstances of this case, that the most appropriate vehicle
for disclosing the kind of information and argument at issue here is a sensibly crafted set of
contention interrogatories.” McCormick-Morgan, decided in 1991, pre-dated that and this
Court’s adoptions of their respective Patent Local Rules, which now require parties before
that court to serve preliminary infringement/invalidity contentions. In that case, plaintiff
asserted invalidity of defendant’s patent. Id. at 276. Defendant noticed plaintiff’s 30(b)(6)
deposition, which ensued over the course of two days before plaintiff moved for a protective
order. Id. at 277-278.
Plaintiff argued that it was unfair and inefficient to expect its corporate representative
to detail all of its invalidity contentions at an oral deposition, and argued that defendant be
required instead to propound contention interrogatories. Id. at 286-287. The court described
the issue framed by the motion as follows:
[W]hich of the available devices is most appropriate, i.e., which
device [contention interrogatories or deposition] would yield
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 15 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Judge Brooks ordered CRI to present a 30(b)(6) representative capable of testifying on8
the following four deposition topics:
1. Your Counterclaims to Plaintiff AntiCancer, Inc.’s Second Amended Complaint filed in
this action, including, but not limited to, all facts, WRITINGS, ESI AND/OR
communications CONCERNING the invalidity theories in YOUR first, second, third,
fourth, and fifth counterclaims recited therein, and any and all facts, WRITINGS, ESI
AND/OR communications upon which YOU intend to rely on in support of those
counterclaims.
Case No. 07-CV-00097-JLS (RBB)
11
most reliably and in the most cost-effective, least burdensome
manner information that is sufficiently complete to meet the
needs of the parties and the court in a case like this?
Id. at 286.
The court agreed with plaintiff and ordered contention interrogatories, explaining that
“in the particular setting of this case” the corporate representative could not be expected to
set forth all the invalidity contentions in a reliable way. Id. at 287-288. The court, however,
also offered the following caveat (ignored by CRI):
That apparent fact of litigation life [i.e., the often practical
uselessness of attorney-crafted responses to contention
interrogatories] makes us pause, to say the least, before ruling,
even in the limited circumstances of this case, that the most
appropriate vehicle for disclosing the kind of information and
argument at issue here is a sensibly crafted set of contention
interrogatories.
Id. at 287.
Thus, even when it issued 19 years ago, the McCormick-Morgan order had little
precedential value. The Patent Local Rules here supersede what precedential value it might
have. Those rules now require CRI to disclose its invalidity contentions via PICs at an early
stage of the case. See O2 Micro, 467 F.3d at 1365-1366 (the local patent rules in the
Northern District of California were designed to address the problem of contention
interrogatories). Ironically, CRI ignores this truth in relying on McCormick-Morgan.
AntiCancer wasn’t after CRI’s invalidity contentions – it already had those in the form of
CRI’s PICs. At CRI’s 30(b)(6) deposition, AntiCancer sought the facts behind CRI’s PICs,
just as Judge Brooks ordered it could. D.E. 268 (Order of Judge Brooks identifying 30(b)(6)
deposition topics). As is now apparent, there never was a factual or evidentiary basis for8
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 16 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
2. YOUR “Defendants’ Joint Preliminary Invalidity Contentions” served in this Action,
including, but not limited to, all facts, WRITINGS, ESI AND/OR communications relied
upon in the drafting of this document AND/OR supporting the allegations AND/OR
contentions made therein, including, inter alia, Exhibits A through D attached thereto.
3. The alleged invalidity of the PATENTS IN SUIT as asserted by YOU.
4. The prior art produced by YOU in this action insofar as it comprises evidence of
invalidity of any of the PATENTS IN SUIT as asserted by YOU.
Case No. 07-CV-00097-JLS (RBB)
12
CRI’s invalidity contentions in the first place. CRI will have to deal with this reality on
summary judgment as best it can – as AntiCancer had to deal with a similar reality in
opposing CRI’s motion for summary judgment in 2008 based on its own PICs.
In this setting, the more pertinent case is Sprint Communications Co., L.P. v.
TheGlobe.com, Inc., 236 F.R.D. 524 (D. Kan. 2006). In Sprint, defendant in an infringement
action noticed the 30(b)(6) deposition of Sprint concerning the preparation, filing, and
amendments to the patents-in-suit. Sprint, 236 F.R.D. at 526-527. Sprint moved for a
protective order, arguing the only potential designees were attorneys and thus both the
attorney-client privilege and the general prohibition against depositions of opposing counsel
absolved Sprint from testifying. Id. The district court rejected this notion out of hand and
ordered the deposition:
As discussed, supra, personal knowledge of the designated
subject matter by the selected deponent is of no consequence.
Sprint is obligated to produce a deponent who has been
competently prepared by the company to give complete,
knowledgeable and binding answers on behalf of the corporation.
It is Sprint’s decision who to designate as its representative in the
deposition. Sprint is under no obligation to choose an attorney as
its 30(b)(6) designee.
* * *
To that end, Sprint may adequately comply with the Rule
30(b)(6) deposition notice by choosing one or more non-attorney
deponents – regardless of prior and/or personal knowledge
regarding the subject matter – and having them review
memoranda, notes, applications, documents and all other matters
“reasonably available” to the corporation that are related to
preparing, filing and revising each Patent.
Id. at 528-529.
Sprint hardly can come as a surprise to CRI. AntiCancer’s counsel raised this issue
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 17 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Case No. 07-CV-00097-JLS (RBB)
13
directly, on the record, at the conclusion of CRI’s deposition, delivering a copy of the Sprint
decision to CRI’s lawyers. Ex. B at pp. 198:10-203:11. Unfortunately CRI’s counsel
rejected the notion that CRI must present a representative capable of knowledgeably
testifying about the deposition topics (chosen by Judge Brooks) as “absurd” and “ridiculous.”
Id. at pp. 203:12-206:17.
The truth is not “complex.” It is plain. There is no factual basis for CRI’s invalidity
theories; there never was in the first place. By definition, they are baseless. Thus
AntiCancer’s MSJ. Nothing in CRI’s ex parte application warrants any delay in the Court’s
resolution of that motion as scheduled.
VI. CRI’S 56(f) AFFIDAVIT IS DEFICIENT.
CRI fails its burden under Rule 56(f). The affidavit it proffers (of attorney Goddard)
falls far short of what is required.
Rule 56(f) requires CRI to identify how the additional information sought will
preclude summary judgment:
To prevail under this Rule, parties opposing a motion for
summary judgment must make (a) a timely application which (b)
specifically identifies (c) relevant information, (d) where there is
some basis for believing that the information sought actually
exists. The burden is on the party seeking additional discovery to
proffer sufficient facts to show that the evidence sought exists,
and that it would prevent summary judgment. The district court
does not abuse its discretion by denying further discovery if the
movant has failed diligently to pursue discovery in the past, or if
the movant fails to show how the information sought would
preclude summary judgment.
Employers Teamsters Local v. The Clorox Co., 353 F.3d 1125, 1129-1130 (9 Cir. 2004)th
(internal quotes and citations omitted).
The Goddard affidavit does not address how the additional information sought will
preclude summary judgment or why CRI couldn’t have gotten the discovery it now claims it
needs sooner. On this basis alone, the court should deny CRI’s ex parte application. Id.; see
also, Burke v. Utah Transit Authority, 462 F.3d 1253, 1263-1264 (10 Cir. 2006) (affirmingth
district court’s denial of 56(f) relief; 56(f) relief is not automatic and not proper where
supporting affidavit lacks specificity and fails to address relevancy of information sought to
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 18 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Case No. 07-CV-00097-JLS (RBB)
14
oppose pending summary judgment motion); Otto v. Variable Annuity Life Ins. Co., 814
F.2d 1127, 1138 (7 Cir. 1986) (affirming district court’s denial of 56(f) whereth
accompanying affidavit failed to explain party’s lack of diligence); Merck & Co., Inc. v.
MSD Technology, L.P., 434 F.Supp.2d 257, 266 (S.D.N.Y. 2006) (denying 56(f) relief where
evidence sought in patent suit is irrelevant to pending summary judgment motion); Blanck v.
Hagar, 360 F.Supp.2d 1137, 1160-1161 (D. Nev. 2005) (denying 56(f) relief where
supporting affidavit fails to state why discovery could not have been obtained earlier and
how such discovery would preclude summary judgment); Chang v. Dept. of the Navy, 314
F.Supp.2d 35, 46-47 (D.D.C. 2004) (denying 56(f) relief where attachments accompanying
opposition to summary judgment belied professed inability to marshal evidence).
A. No Nexus.
The Goddard affidavit identifies the following data CRI supposedly needs in
order properly to oppose AntiCancer’s MSJ:
! identification of the “ordinary skill in the art” (¶ 7);
! subpoenaed UCSD documents (¶¶ 8-9);
! inspection of various equipment (¶¶ 10, 13);
! documents “regarding the equipment used in the patents” (¶
11); and
! testimony of AntiCancer and Drs. Hoffman, Chishima, Benaron,
and Contag (¶ 12).
None of this evidence, however, will help CRI avoid summary judgment (assuming
arguendo that it exists). This is because CRI’s PICs necessarily limit the evidence now
allowed on summary judgment to the 336 alleged prior art references listed therein. See DE
214 at 7:12-25; O2 Micro, 467 F.3d at 1368; Lucent Techs., Inc., 2007 WL 1877982, at *4;
Berger, 2006 WL 1095914, at *6. For example, in opposing the pending summary judgment
motion, CRI must establish by evidence the existence of a genuine issue of material fact as to
the essential elements of its anticipation theory of invalidity, i.e., that each and every element
of the targeted patent claim is present in a single alleged piece of prior art. See Celotex Corp.
v. Catrett, 477 U.S. 317, 323-324, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (discussing
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 19 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Case No. 07-CV-00097-JLS (RBB)
15
standard for summary judgment generally); Schering Corp. v. Geneva Pharms., Inc., 339
F.3d 1373, 1377-1378 (Fed. Cir. 2003) (applying standard to anticipation theory of invalidity;
granting summary judgment). Nothing but the alleged prior art is at issue. This is according
to CRI’s own PICs.
The same, of course, is true of CRI’s obviousness theory. See Ruiz v. A.B. Chance
Co., 234 F.3d 654, 662-663 (Fed. Cir. 2000) (articulating the essential elements of the claim
of invalidity due to obviousness). CRI knows this (or at least its attorneys do). To reiterate
Takeda, “since an attack based on obviousness must rely on disclosures made in prior art, the
existence or receipt of Takeda’s internal documents is irrelevant. Either the invention
of pioglitazone was obvious based on prior art, or it was not.” Takeda, 459 F.Supp.2d at
247 (emphasis added). Likewise, either AntiCancer’s patented methods are obvious based
upon the alleged prior art identified in CRI’s PICs or they are not. The additional
information sought by CRI is irrelevant to the pending summary judgment motion. Id.
In its affidavit, CRI contends that it’s AntiCancer’s fault that CRI hasn’t yet been able
to secure an expert because AntiCancer hasn’t identified the “ordinary skill in the art.” Once
CRI gets this information, it says, the “expert(s) CRI will retain to testify regarding its
invalidity counterclaims will need time to review and analyze all of the factual information
CRI has obtained from discovery to date”:
CRI’s expert will need to perform a comprehensive review of the
prior art, deposition testimony, and discovery responses in this
action.
Goddard dec. at ¶ 15.
Given CRI’s admissions at its 30(b)(6) deposition – that CRI has no evidence,
performed no investigation, obtained no invalidity opinion – this is quite a statement. It’s
been more than three years since CRI first counterclaimed for invalidity (April 16, 2007).
D.E. 10. Yet, CRI admits even today it hasn’t even a scintilla of evidence to oppose
summary judgment. CRI blames AntiCancer for its blatant failure to conduct a pre-suit
investigation and to call AntiCancer’s summary judgment motion “premature” and a “sham.”
CRI EPA at 10:5. This reflects some chutzpah, which might be less offensive had CRI not so
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 20 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Case No. 07-CV-00097-JLS (RBB)
16
strenuously argued AntiCancer was entitled to no discovery in advance of the hearing on
CRI’s summary judgment motion:
AntiCancer argues that the real problem is the lack of
discovery. [citation omitted.] But no amount of discovery can
cure the defects of AntiCancer’s PICs . . .
DE 166 at p. 10-12 (emphasis added).
Elsewhere:
AntiCancer’s submission of this declaration as purported
evidence of infringement by CRI, which is beyond the
disclosures in its PICs, is an impermissible attempt to do
what this Court has already told CRI [sic] it cannot do –
amend its deficient PICs. AntiCancer is limited to its PICs in
opposing CRI’s motion, and any portions of the Hoffman
declaration purporting to show infringement by CRI have no
relevance in this litigation, do not create a genuine issue of
material fact, and should be disregarded.
DE 168 at p. 2:20-25 (emphasis added).
The Court sustained these arguments. It should now do so again, if for no other
reasons than fairness and fidelity to its prior ruling.
CRI’s application smacks strongly of a double standard. When it serves CRI’s
interest, “evidence” and experts can be found. When it was time for CRI’s motion for
summary judgment of invalidity, CRI had no difficulty finding evidence with which to
support its motion. See D.E. 134 and attachments 1-24. That was almost two years ago.
D.E. 134 (CRI’s motion for summary judgment of invalidity filed June 30, 2008). When it
was time for the parties’ claim construction hearing, CRI had no trouble finding an expert –
Dr. Patricia A. Pesavento, DVM, Ph.D. – whom it not only thought was skilled enough in the
art to present CRI’s claim construction tutorial to this Court, but was also worthy in CRI’s
eyes of submitting an expert opinion affidavit in support of CRI’s “Supplemental Document”
regarding the term metastasis filed on December 11, 2009. D.E. 275 (later stricken by the
Court, but not on Dr. Pesavento’s account).
As with its anticipation and obviousness theories, CRI’s remaining theories of
invalidity render further evidence irrelevant to CRI’s ability (or lack thereof) to oppose the
pending summary judgment motion. As a matter of law, the claim language of the patents-
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 21 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Case No. 07-CV-00097-JLS (RBB)
17
in-suit is not indefinite after the Court itself has construed the terms at Markman. See Source
Search Technologies, LLC v. Lendingtree, LLC, 588 F.3d 1063, 1076 (Fed. Cir. 2009); Exxon
Research and Engineering Co. v. U.S., 265 F.3d 1371, 1375 (Fed. Cir. 2001); Toro Co. v.
White Consolidated Indust., Inc., 2003 U.S. Dist. LEXIS 8550 (D. Minn. May 14, 2003)
(rejecting indefiniteness claim after Markman hearing).
Nor does CRI require access to any further information in order to oppose the pending
summary judgment motion on its two remaining theories of invalidity: lack of enablement
and lack of written description. Both theories require reference to nothing other than the
language of the patent itself. See AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed. Cir.
2003) (re enablement); Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 967-968 (Fed. Cir.
2006) (re written description).
Because CRI has failed to include in its affidavit an explanation of how the
information it seeks will preclude summary judgment, CRI’s application should be denied
and it should be ordered to oppose AntiCancer’s motion for summary judgment.
B. CRI Has Not Been Diligent.
CRI’s 56(f) affidavit is silent on the issue of diligence. This is reason alone to
deny the application. Employers Teamsters Local, 353 F.3d at 1129-1130 (district court
doesn’t abuse its discretion by denying further discovery if movant has failed to show
diligence). CRI had a Rule 11 duty to investigate its claims of invalidity – and secure an
expert invalidity opinion if need be – before filing its counterclaims of invalidity more than
three years ago. D.E. 10 (original answer and counterclaims filed April 16, 2007). It did not
do so. This is not the type of setting for which Rule 56(f) was designed.
CRI’s suggests that 56(f) relief should almost be automatic in this case, citing
Burlington Northern Santa Fe RR Co. v. Assiniboine & Sioux Tribes, 323 F.3d 767, 774 (9th
Cir. 2003) and Metropolitan Life Ins. Co. v. Bancorp Servs., LLC, 527 F.3d 1330, 1337 (Fed.
Cir. 2008). These cases, however, are different from this one in a significant respect. In
Burlington, the non-moving party had moved for summary judgment less than four weeks
after filing suit. Burlington, 323 F.3d at 773. In Metropolitan, the party moving for 56(f)
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 22 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Case No. 07-CV-00097-JLS (RBB)
18
relief was never afforded an opportunity to conduct any discovery. Metropolitan, 527 F.3d at
1337.
In contrast, this case is over three years old. AntiCancer filed it in January 2007. CRI
admits it started serving discovery in February 2008 – over two years ago. CRI has twice
noticed (and then scrubbed) the 30(b)(6) deposition of AntiCancer. (That deposition is now
set for April 22.) The discovery CRI has propounded in the last two years is enormous. This
is not a case like Burlington and Metropolitan.
CRI’s position on this ex parte application seems hard to juxtapose with CRI’s
position two years ago (when it sought summary judgment of invalidity). At that time, CRI
had no difficulty finding evidence to support its motion. See D.E. 134 and attachments 1-24.
Similarly, during claim construction, CRI had no trouble finding an expert – Dr. Patricia A.
Pesavento. CRI thought so highly of Dr. Pesavento that it had her present CRI’s claim
construction tutorial, then submit an unsolicited affidavit (later stricken by the Court) reciting
expert opinions about the meaning of the term “metastasis.” See DE 275.
CRI offers no reason why, three years into this case, it could not have hired an expert
to deal with the issues raised in AntiCancer’s MSJ. There is no such reason. There are
adjectives to describe CRI’s behavior in this setting. “Diligent” is not one of them. CRI’s
lack of diligence defeats relief under Rule 56(f). See, e.g., Rivera-Torres v. Rey-Hernandez,
502 F.3d 7, 8-11 (1 Cir. 2007) (affirming district court’s denial of 56(f) relief; 18 monthsst
sufficient for discovery); Kadair, Inc. v. Sony Corporation of America, 694 F.2d 1017 (5th
Cir. 1983) (affirming district court’s denial of 56(f) relief; 10 months sufficient for
discovery); Dyson v. Thomas H. Lee Co., 61 F.Supp.2d 13, 42-43 (D.D.C. 2000) (denying
56(f) relief; “While claims involving large corporations often involve extensive discovery,
two years is sufficient time to find the small quantum of evidence needed to survive a
summary judgment motion.”); Quinn v. Thomas H. Lee Co., 61 F.Supp.2d 13, 18-19
(S.D.N.Y. 1999) (denying 56(f) relief; one year sufficient time for discovery).
///
///
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 23 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Case No. 07-CV-00097-JLS (RBB)
19
VII. CONCLUSION.
The Court should deny CRI’s Rule 56(f) application.
Respectfully submitted,
Dated: April 19, 2010 LAWTON LAW FIRM
By: s/Dan Lawton
Dan Lawton
Attorneys for Plaintiff and Counterdefendant
AntiCancer, Inc.
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 24 of 25
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
CERTIFICATE OF SERVICE
I hereby certify that a copy of the foregoing:
1. PLAINTIFF AND COUNTERDEFENDANT ANTICANCER, INC.’S
OPPOSITION TO EX PARTE APPLICATION OF DEFENDANT AND
COUNTERCLAIMANT CAMBRIDGE RESEARCH &
INSTRUMENTATION, INC., FOR AN ORDER DENYING OR, IN THE
ALTERNATIVE, CONTINUING, PLAINTIFF ANTICANCER, INC.’S
MOTION FOR SUMMARY JUDGMENT OF VALIDITY [DOC. # 283]; and
2. DECLARATION OF DAN LAWTON IN SUPPORT OF OPPOSITION TO
EX PARTE APPLICATION OF DEFENDANT AND COUNTERCLAIMANT
CAMBRIDGE RESEARCH & INSTRUMENTATION, INC., FOR AN
ORDER DENYING OR, IN THE ALTERNATIVE, CONTINUING,
PLAINTIFF ANTICANCER, INC.’S MOTION FOR SUMMARY
JUDGMENT OF VALIDITY [DOC. # 283]
was this date served upon all counsel of record by electronic transmission through the Case
Management/Electronic Case Filing (CM/ECF) system of the U.S. District Court for the
Southern District of California, and that all parties in this case are represented by counsel
who are CM/ECF participants.
Date: April 19, 2010 By: /s/Dan Lawton
Case 3:07-cv-00097-JLS -RBB Document 301 Filed 04/19/10 Page 25 of 25
