Miller et al v. Treado et al

MOTION for Leave to File Reply in Pltffs.' Mot./Dismiss Without Prejudice 132 , in order to, inter alia, inform the Court of Pltffs.' subsequent Offer to Dismiss WITH Prejudice

D. Mass.July 12, 2007

35314_2.DOC - 1 of 3 - IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS PETER J. MILLER, an individual, CLIFFORD HOYT, an individual, and CAMBRIDGE RESEARCH AND INSTRUMENTATION, INC., a Delaware corporation, Plaintiffs, v. PATRICK TREADO, an individual, and CHEMIMAGE CORP., a Delaware corporation, Defendants. Civil Action No. 05-10367-RWZ PLAINTIFFS’ MOTION FOR LEAVE TO FILE A REPLY TO DEFENDANTS’ OPPOSITION [D.E. 138] TO PLAINTIFFS’ MOTION [D.E. 132] TO DISMISS, IN ORDER TO, INTER ALIA, INFORM THE COURT OF PLAINTIFFS’ SUBSEQUENT OFFER TO DISMISS WITH PREJUDICE, AND MEMORANDUM IN SUPPORT THEREOF Pursuant to LR 7.1(b)(3), plaintiffs Cambridge Research and Instrumentation, Inc., Peter J. Miller, and Clifford Hoyt request leave to file a reply brief to the opposition [D.E. 138] of defendants ChemImage and Patrick Treado to plaintiffs’ motion [D.E. 132] to dismiss this action without prejudice pursuant to Rule 41(a)(2). Pursuant to LR 7.1.(b)(1), a memorandum of reasons why this motion should be granted is incorporated herein. The {proposed} reply brief is attached hereto. Case 1:05-cv-10367-RWZ Document 142 Filed 07/12/2007 Page 1 of 3 Plaintiffs’ Motion for Leave to File a Reply to Defs.’ Opp. [D.E. 138] to Pltff.’s Mot./Dismiss [D.E. 132] - 2 of 3 - In support of this motion for leave, plaintiffs state as follows: (1) Since the filing of plaintiffs’ motion [D.E. 132] to dismiss this action without prejudice, plaintiffs have offered to dismiss this action with prejudice, and defendants have rejected that offer. See attached {Proposed} Reply, pp. 1-5. (2) Moreover, defendants’ opposition [D.E. 138] to plaintiffs’ motion [D.E. 132] to dismiss this action without prejudice pursuant to Rule 41(a)(2) contains errors of law and fact, as well as mischaracterizations of plaintiffs’ position and conduct. See attached {Proposed} Reply, pp. 4-11. (3) At least because (a) the details of plaintiffs’ offer, and defendants’ refusal, to dismiss this action with prejudice should be brought to the Court’s attention; and (b) defendants’ opposition [D.E. 138] contains errors and mischaracterizations, plaintiffs respectfully ask the Court’s leave to file the attached {proposed} reply brief to defendats’ opposition [D.E. 138] to plaintiffs’ motion [D.E. 132] to dismiss. (4) Pursuant to LR 7.1(a), plaintiffs sought defenda ts’ assent to the relief requested herein, and defendants refused. WHEREFORE, plaintiffs respectfully ask this Court: 1) grant plaintiffs leave to file the attached reply to defendants’ opposition [D.E. 138] to plaintiffs’ motion [D.E. 132] to dismiss without prejudice; and 2) grant such further relief as this Court deems just, proper, and equitable. Case 1:05-cv-10367-RWZ Document 142 Filed 07/12/2007 Page 2 of 3 Plaintiffs’ Motion for Leave to File a Reply to Defs.’ Opp. [D.E. 138] to Pltff.’s Mot./Dismiss [D.E. 132] - 3 of 3 - Respectfully submitted, PETER J. MILLER, CLIFFORD HOYT, and CAMBRIDGE RESEARCH AND INSTRUMENTATION, INC., By their attorneys: Dated: July 12, 2007 /s/ Teodor Holmberg Martin B. Pavane (admitted pro hac vice) Teodor J. Holmberg (BBO# 634708) COHEN PONTANI LIEBERMAN & PAVANE LLP 551 Fifth Avenue New York, New York 10176 Tel. (212) 687-2770 E-mail: tidge@cplplaw.com Erin E. McLaughlin (BBO# 647750) BROWN RUDNICK BERLACK ISRAELS LLP One Financial Center Boston, MA 02111 E-mail: EMcLaughlin@brownrudnick.com LOCAL RULE 7.1(a)(2) CERTIFICATION Counsel for plaintiffs conferred with counsel for defendants in a good faith attempt to resolve or narrow the issue presented in this motion. Counsel for defendants have not assented to this relief. /s/ Teodor Holmberg Teodor J. Holmberg (BBO# 634708) CERTIFICATE OF SERVICE I hereby certify that the document identified in the top right-hand portion of this page and filed through the ECF system will be sent electronically to the registered participants as identified on the Notice of Electronic Filing (NEF) on July 12, 2007. /s/ Teodor Holmberg Teodor J. Holmberg (BBO# 634708) Case 1:05-cv-10367-RWZ Document 142 Filed 07/12/2007 Page 3 of 3 35323_n.DOC - 1 - 35323_7.DOC IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS PETER J. MILLER, an individual, CLIFFORD HOYT, an individual, and CAMBRIDGE RESEARCH AND INSTRUMENTATION, INC., a Delaware corporation, Plaintiffs, v. PATRICK TREADO, an individual, and CHEMIMAGE CORP., a Delaware corporation, Defendants. Civil Action No. 05-10367-RWZ PLAINTIFFS’ { PROPOSED} REPLY TO DEFENDANTS’ OPPOSITION [D.E. 138] TO PLAINTIFFS’ MOTION [D.E. 132] TO DISMISS THIS ACTIO N WITHOUT PREJUDICE UNDER RULE 41(a)(2) Plaintiffs Cambridge Research and Instrumentation, Inc. Peter J. Miller, and Clifford Hoyt hereby present a {proposed} reply to the opposition [D.E. 138] of defendants ChemImage and Patrick Treado to plaintiffs’ motion [D.E. 132] to dismiss this action without prejudice under Fed.R.Civ.P. 41(a)(2). Case 1:05-cv-10367-RWZ Document 142-2 Filed 07/12/2007 Page 1 of 11 Plaintiffs’ {PROPOSED} Reply to Defs’ Opp. [D.E. 138] to Plaintiffs’ Mot. [D.E. 132] to Dismiss - 2 - I. This Action Is Over Instead of answering plaintiffs’ substantive arguments, defendants’ opposition makes empty accusations of plaintiffs’ supposed misconduct. Plaintiffs will respond to defendants’ mudslinging below (see Sect. VI supra), but first consider what defendants do not dispute: (1) The subject matter plaintiffs invented has been d leted from defendants’ recently allowed reissue application (on which the issue fee was paid in April, and will thus soon issue as a reissue patent). See Pltffs.’ Memo. [D.E. 133] in Supp. of Mot./Dismiss [D.E. 132], p. 3. (2) Plaintiffs’ sole pending claim in this action (for correction of inventorship of the ‘962 patent-in-suit under 35 U.S.C. §256) will be rendere moot upon issuance of the reissue patent, as a matter of law. See Pltffs.’ Memo. [D.E. 133], p. 2, n. 2; see also 35 U.S.C. §252; Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 827 (Fed. Cir. 1984) (“Congress, in this statute, has explicitly limited claim continuity to claims in the reissued patent identical to claims in the original patent.”) (emphasis in original). Thus, when the reissue patent issues, this action will be moot as a matter of law. See Pltffs.’ Memo. [D.E. 133], pp. 2, 3. (3) Defendants’ stated goal for the reissue application was to moot the sole, pending inventorship correction claim in this action. Def’s Memo. in Supp. of Mot. to Stay [D.E. 2], p. 10 (“To the extent that the claims of the ‘962 patent are successfully narrowed in the reissue proceedings … , Plaintiffs’ inventorship and invalidity claims will be mooted.”) (emphasis in original); see also Pltffs.’ Memo. [D.E. 133], pp.2, 3. It is undisputed that this litigation is over, the only dispute is how it will end. Plaintiffs have moved to dismiss the sole pending claim (for cor ecting the inventorship of the ‘962 patent- in-suit) without prejudice. See Pltffs.’ Mot./Dismiss [D.E. 132]. Defendants want the Court to either dismiss this action with prejudice, or, in the alternative, dismiss this action without prejudice, and order plaintiffs to pay defendants’ costs. See Defs.’ Opp. [D.E. 138], p. 16. At least because it is undisputed that the dismissal of this action was the intended result of defendants’ reissue proceeding, plaintiffs’ motion [D.E. 132] to dismiss without prejudice should be granted. However, after defendants objected to dismissing this action without prejudice, and Case 1:05-cv-10367-RWZ Document 142-2 Filed 07/12/2007 Page 2 of 11 Plaintiffs’ {PROPOSED} Reply to Defs’ Opp. [D.E. 138] to Plaintiffs’ Mot. [D.E. 132] to Dismiss - 3 - to avoid wasting more time, effort, and money, plaintiffs offered to dismiss this action with prejudice. But defendants also rejected that offer, unless the unentered and unlitigated state and federal law claims in plaintiffs’ proposed and unentered amended complaint were also “dismissed” with prejudice. See Sect. IV infra; see also Defs.’ Opp. [D.E. 138], p. 16 (asking the Court to “[dismiss] with prejudice Plaintiffs’ Amended Complaint”).1 This case should end, as both parties have agreed. Plaintiffs urge the Court to dismiss the sole pending inventorship correction claim, either without prejudice (as requested in plaintiffs’ motion), or with prejudice (as was offered to defenda ts, and discussed further infra). II. Plaintiffs’ Offer to Dismiss With Prejudice Defendants objected to dismissal without prejudice because of defendants’ alleged concern that they could be forced to “re-litigate” the sole p nding claim to correct the inventorship of the ‘962 patent-in-suit, i.e., that plaintiffs would retain the “right to bring the claim again”. Defs.’ Opp. [D.E. 138], pp. 2, 3, 9. This is impossible, of course, because there will soon be no ‘962 patent-in-suit to correct, and plaintiffs have admitted they did not invent the subject matter claimed in the soon-to-be-issued reissue patent. However, to address defendants’ concern with this “threat” of future “re-litigation”, plaintiffs offered on June 28, 2007 to allay defendants’ fears: Plaintiffs seek defendants' assent to a motion to dismiss with prejudice the sole claim for correction of inventorship under 35 U.S.C. 256 of the '962 patent-in- suit, because this inventorship correction claim will be mooted, by force of law, 1 Defendants’ repeated references to “Plaintiffs’ Amended Complaint” are misleading: there is no amended complaint in this action. Plaintiffs filed a motion for leave to file an amended complaint, ad proposed amended complaint with additional causes of action under state and federal law was attached to that motion. See, generally, Pltff’s Memo. in Supp. of Amd. Cmplt. [D.E. 41]. Plaintiffs’ motion for leave was stayed by the Court. See Order [D.E. 83]. Because plaintiffs’ motion [D.E. 41] for leave to file the amended complaint was never considered or ruledupon, the causes of action stated in the proposed amended complaint were never entered this action. Case 1:05-cv-10367-RWZ Document 142-2 Filed 07/12/2007 Page 3 of 11 Plaintiffs’ {PROPOSED} Reply to Defs’ Opp. [D.E. 138] to Plaintiffs’ Mot. [D.E. 132] to Dismiss - 4 - upon issuance of the reissue patent. Plaintiffs also gree to not sue defendants for correction of inventorship under 35 U.S.C. 256 of the soon-to-be-issued reissue patent, since, as we have already stated on the record, we did not invent the subject matter of the claims in the reissue patent. T. Holmberg’s Jun. 28, 2007 e-mail (Exhibit 1 hereto). Plaintiffs’ offer removes any possibility of plaintiffs’ ever suing defendants again for correction of the inventorship of the soon-to-be-dead ‘962 patent-in-suit or for correction of inventorship of the soon-to-issue reissue patent, while also making clear that the dismissal is limited to the sole pending inventorship correction claim, and has no affect on the unentered and unlitigated state and federal claims in plaintiffs’ proposed amended complaint. III. Defendants Reject Plaintiffs’ Offer to Dismiss With Prejudice Defendants rejected plaintiffs’ offer, stating that they wanted all causes of action related to the inventorship of the ‘962 patent-in-suit dismissed with prejudice. See A. Fitzpatrick’s Jul. 5, 2007 e-mail (Exhibit 2 hereto). In other words, defendants do not merely want dismissal with prejudice of the sole pending inventorship correction claim (which defendants do not dispute will be mooted by the reissue as a matter of law), but also dismissal with prejudice of the causes of action asserted in plaintiffs’ proposed amended complaint—claims which were never even entered into this action, much less litigated. Defendants’ demand that the unentered and unlitigated causes of action in plaintiffs’ proposed amended complaint be “dismissed” with prejudice is unreasonable. Those counts were never entered in this action, and thus cannot be “dismissed”. Moreover, dismissal with prejudice is only warranted for claims against which defendants have been forced to “invest substantial resources to defend itself” by, e.g., preparing and filing an answer to the complaint, performing discovery, engaging in motion practice, etc. Fremaint v. Ford Motor Co., 258 F.Supp.2d 24 Case 1:05-cv-10367-RWZ Document 142-2 Filed 07/12/2007 Page 4 of 11 Plaintiffs’ {PROPOSED} Reply to Defs’ Opp. [D.E. 138] to Plaintiffs’ Mot. [D.E. 132] to Dismiss - 5 - (D.P.R. 2003) (quoted on p. 11 of Defs’ Opp. [D.E. 138]). Defendants have never had to file an answer to plaintiffs’ proposed amended complaint (because it was never entered), have never had to do any discovery on the unentered and unlitigated claims in plaintiffs’ unentered amended complaint, and never had to engage in any motion practice regarding the unentered and unlitigated claims in plaintiffs’ unentered amended complaint (except to oppose the entry of the proposed amended complaint). IV. No Money Should Change Hands, and No More Money Should Be Wasted To the extent that defendants can be considered the victims they describe themselves as in their opposition [D.E. 138], they are the victims of their own success, and not the victims of any conduct on plaintiffs’ part. Defendants “successfully narrowed” the claims in the reissue application of the ‘962 patent-in-suit by deleting the subject matter invented by plaintiffs, thereby mooting the sole pending claim in this action (for correction of the inventorship of the ‘962 patent-in-suit)—which was defendants’ stated goal for the reissue proceeding. See Def’s Memo. in Supp. of Mot. to Stay [D.E. 2], p. 10 (“To the extent that the claims of the ‘962 patent are successfully narrowed in the reissue proceedings … , Plaintiffs’ inventorship and invalidity claims will be mooted.”) (emphasis in original). After defendants stated that the goal for the reissue proceeding was to moot the sole pending inventorship correction claim, plaintiffs asked the Court to stay the reissue proceeding in order to, inter alia, avoid the possible mooting of plaintiffs’ inventorship correction claim. See Pltff’s Memo. in Supp. of Mot. to Enj. [D.E. 12], pp. 5, 11. The Court declined to do so, whereupon this litigation and the reissue proceeding continued in parallel. See Jun. 27, 2005 & Oct. 27, 2005 Elec. Orders. Case 1:05-cv-10367-RWZ Document 142-2 Filed 07/12/2007 Page 5 of 11 Plaintiffs’ {PROPOSED} Reply to Defs’ Opp. [D.E. 138] to Plaintiffs’ Mot. [D.E. 132] to Dismiss - 6 - Contrary to defendants’ accusations that “plaintiffs have offered no legitimate explanation for their ‘need’ to take a dismissal” (Defs.’ Opp. [D.E. 138], p. 10) or that plaintiffs have moved to dismiss this action “to avoid Defendants’ motion f r summary judgment” (Id., p. 11), the “need” for this dismissal is clear and undisputed: defendants’ reissue proceeding has wrought defendants’ intended result of mooting the sole, pending inventorship correction claim in this action. The question should be, why do plaintiffs want to keep on fighting? Contrary to all of the cases cited by defendants, the dismissal in this case was the deliberate and planned result of defendants’ actions. This one fact should be dispositive in granting plaintiffs’ motion to dismiss. And this one fact is poison to any argument that plaintiffs should pay any of defendants’ costs, fees, or expenses. Such a result is abhorrent to any sense of fairness and decency. Moreover, if the Court grants dismissal of the sole, pending inventorship correction claim with prejudice (as discussed above), defendants will have no right to any fees or costs. See, e.g., Nippy, Inc. v. Pro Rok, Inc., 932 F.Supp. 41, 43 (D. Puerto Rico 1996); Cauley v. Wilson, 754 F.2d 769, 772 (7th Cir. 1985) ("Fees are not awarded when a plaintiff obtains a dismissal with prejudice because the defendant cannot be made to defend again.") V. Defendants’ Attacks on Plaintiffs’ Motives and Conduct are Baseless Plaintiffs respond below to the most egregious of the misstatements, misrepresentations, and false implications put forth in defendants’ oppsition. However, if the Court has any further questions concerning plaintiffs’ conduct or motives regarding any aspect of this litigation, plaintiffs respectfully request that the Court grant defendants’ pending motion [D.E. 141] for a hearing with the limited purpose of allowing plaintiffs to rebut any implication that plaintiffs’ claims were “vexatious”, “meritless”, “frivolous”, “specious”, suffered from an “utter lack of proof”, etc. Case 1:05-cv-10367-RWZ Document 142-2 Filed 07/12/2007 Page 6 of 11 Plaintiffs’ {PROPOSED} Reply to Defs’ Opp. [D.E. 138] to Plaintiffs’ Mot. [D.E. 132] to Dismiss - 7 - Defendants’ allegations concerning plaintiffs’ responses to interrogatories range from outright falsehood to deliberately misleading half-truth. See Defs.’ Opp. [D.E. 138], pp. 5, 7-8. First, defendants never filed a motion to compel plaintiffs’ responses to defendants’ contention interrogatories on inventorship. Cf. Defs.’ Opp. [D.E. 138], p. 5. Second, plaintiffs never “evaded responding to Defendants’ contention interrogatory requesting Plaintiffs to identify the bases for their claim of co-inventorship”. Defs.’ Opp. [D.E. 138], p. 5. As is often done, plaintiffs’ initial response stated that “this Interrogatory is premature, as discovery has just begun and no schedule for the exchange of contention interrogatories has been entered. Plaintiffs [will] provide the following preliminary answers, subject to further elucidation and explanation at the appropriate time.” Ex. D to Defs. Opp. [D.E. 138], p. 4. Exactly as promised, plaintiffs subsequently supplemented their response with pages nd pages of detail. See, e.g., Ex. E to Defs. Opp. [D.E. 138], pp. 6-12. Third, defendants’ accusation that “[p]laintiffs failed to identify any specific contribution that they made to the claims of the ‘962 Patent” (Defs.’ Opp. [D.E. 138], p. 5) is patently ridiculous: this litigation began by plaintiffs explicitly identifying the specific contributions of “Miller’s conception of the use of an Evans Split-Element liquid crystal tunable filter ... as recited in claim 4 of the ‘962 patent” and “Hoyt’s conception of the use of a refractive type infinity-corrected microscope objective as the collecting/collimating device ... as recited in claim 3 of the ‘962 patent” in the complaint. See Cmplt. [D.E. 1], p. 7, ¶¶ 32-33. Fourth, defendants imply that the narrowing of plaintiffs’ contentions over the course of this litigation proves some sort of malevolent intent. See Defs.’ Opp. [D.E. 138], p 5. Plaintiffs did narrow their contention of inventorship from 13claims in the ‘962 patent-in-suit down to essentially three claims—Claims 1, 3, and 4, the only claims discussed in the complaint, and the claims around which almost all discovery revolved. This evolution is neither surprising nor Case 1:05-cv-10367-RWZ Document 142-2 Filed 07/12/2007 Page 7 of 11 Plaintiffs’ {PROPOSED} Reply to Defs’ Opp. [D.E. 138] to Plaintiffs’ Mot. [D.E. 132] to Dismiss - 8 - unusual, as one purpose of discovery and pretrial pr ctice is to narrow down the parties’ contentions for trial. Defendants’ contentions have lso evolved over time. For example: (1) Defendants initially contended that the additional claims in plaintiffs’ proposed amended complaint “redress a completely different injury to Plaintiffs than the co-inventorship claim alleged in the initial complaint” and that those unentered and unlitigated claims do not “sustain or relate to” the sole pending inventorship correction claim (Defs.’ Opp. [D.E. 55] to Amd. Cmplt., p. 22); now defendants argue that those claims must be dismissed with prejudice because those claims do relate to the inventorship correction claim (see, e.g., Defs. Opp. [D.E. 138], pp. 2,6). (2) Although defendants stopped their own deponent (a named inventor on the ‘962 patent-in-suit) from testifying concerning novelty on the grounds that novelty was irrelevant to the sole, pending inventorship claim (see Pltffs.’ Memo. [D.E. 93], pp. 2-3; and Ex. 1 thereto); defendants later argued that plaintiff Miller must answer a similar question on novelty in his depositi n (id.). Moreover, although the Court later found that novelty was indeed irrelevant (see Feb. 7, 2007 Elec. Order), defendants have relied on arguments concerning novelty in their recent motion [D.E. 134] for summary judgment. See, generally, Defs.’ Memo [D.E. 135], pp. 8-9 (and n. 4 therein). (3) Although defendants have repeatedly contended that defendants’ reissue proceeding was filed “in response to Plaintiffs’ allegations (in Count 5 [of the original complaint]) that the ‘962 patent was invalid over the prior art” (Defs.’ Opp. [D.E. 138], p. 4), Count 5 (which has been dismissed without prejudice) alleged that the ‘962 patent-in-suit was invalid because of the “offer or sale” statutory bar of 35 U.S.C. §102(b) (Cmplt. [D.E. 1], pp. 10-11), i.e., that defendants’ sales of imaging microscopes before October 13, 1999 rendered th ‘962 patent-in-suit invalid. Defendants have never brought the pre-October 13, 1999 sales of, e.g., defendants’ Falcon Imaging System to the attention of the Patent Office during the reissue proceeding. Returning to the spurious allegations in defendants’ opposition: defendants next provide a chart of “the inconsistencies between Plaintiffs’ written discovery responses and their sworn testimony” and allege that defendants “expended significant time and resources investigating and preparing for depositions of” individuals which defendants had been misled by plaintiffs to believe knew “of Plaintiffs’ alleged contribution(s) to the invention of the ‘962 Patent”. Defs.’ Opp. [D.E. 138], pp. 7-8. First, defendants only deposed one (Barry Logue) of the six people Case 1:05-cv-10367-RWZ Document 142-2 Filed 07/12/2007 Page 8 of 11 Plaintiffs’ {PROPOSED} Reply to Defs’ Opp. [D.E. 138] to Plaintiffs’ Mot. [D.E. 132] to Dismiss - 9 - listed in the chart, and, perhaps more importantly, plaintiffs over a period of months repeatedly advised defendants that Logue’s deposition was unnecessary and sought ways to avoid it. See, e.g., Nov. 13, 2006 and Oct. 30, 2006 T. Holmberg e-mails (Exhibit 3 hereto). Second, defendants’ interrogatory asked plaintiffs to “[i]dentify each person who has knowledge regarding the matters alleged in the Complaint, andseparately identify the subjects of that person’s knowledge”. Ex. E to Defs.’ Opp. [D.E. 138], p. 1. As shown in defendants’ exhibit, plaintiffs answered that question in detail and made it very clear what each of these people knew. Id., pp. 1-2. Third, and most importantly, the depositi n quotes in defendants’ chart are not only consistent with, but in most cases they also support, the description of each witnesses’ knowledge given in plaintiffs’ written responses.2 There is not an iota of evidence that plaintiffs misled defendants in any way regarding the knowledge of these individuals. Although defendants allege that it took “years of discovery, including 9 depositions, numerous interviews with third-party witnesses, and consultation with expensive experts for Defendants to confirm the utter irrelevance of … [documents identified in plaintiffs’ responses to interrogatories] that Plaintiffs originally contended were supportive of their claims” (Defs.’ Opp. [D.E. 138], p. 5), defendants do not bother to identify a single one of these supposedly utterly irrelevant documents. 2 For example, plaintiffs’ written response states: “Dr. Greg Bearman has knowledge of the Plaintiffs’ proposals for, and reduction to practice of, NIR LCTFs for use in remote imaging chemical systems, and has knowledge of his own use of chemical imaging systems using NIR LCTFs provided by Plaintiffs Hoyt and Miller”. Ex. E to Defs.’ Opp. [D.E. 138], p. 2. Defendants’ allegedly incriminating quote from Miller’s deposition: “He would know about the conception and development of other microscopic near infrared imaging systems that I developed for the jet propulsion lab, but not using the Evans design”. Defs.’ Opp. [D.E. 138], chart entry on p. 8. As another example, plaintiffs’ written response states: “Barry Logue has knowledge of technical, programmatic, nd sales discussions between Treado and CRI personnel including the Plaintiffs”. Ex. E to Defs.’ Opp. [D.E. 138], p. 2. Defendants’ allegedly incriminating quote from Logue’s deposition: “Q. Do y u know one way or the other, sitting here today, whether Peter Miller or Clifford Hoyt may have invent d any aspect of a chemical imaging system? A. No.” Defs.’ Opp. [D.E. 138], chart entry on p. 8. Case 1:05-cv-10367-RWZ Document 142-2 Filed 07/12/2007 Page 9 of 11 Plaintiffs’ {PROPOSED} Reply to Defs’ Opp. [D.E. 138] to Plaintiffs’ Mot. [D.E. 132] to Dismiss - 10 - Defendants argue that plaintiffs have an “utter lack of proof” for plaintiffs’ sole, pending inventorship correction claim because plaintiffs “have failed to produce even a single laboratory notebook entry evidencing their alleged work” and, as usual, imply that plaintiffs are lying (“Plaintiff Miller testified that he had ‘lost’ his purported laboratory notebook”). Defs.’ Opp. [D.E. 138], pp. 1-2. Any implication that plaintiffs have not produced evidence of their inventorship claim is manifestly and patently false. Plaintiffs have produced reams of documents and elicited pages upon pages of deposition testimony “evidencing their alleged work”, including, inter alia, the 1996 SBIR Phase II Proposal (produced as Exhibit A to the original complaint), which details the results of the collaboration between plaintiffs and defendants (an undisputed fact), was co-written by plaintiffs and defendants (an undisputed fact), and describes the invention claimed in the ‘962 patent-in-suit; and the deposition testimony of both defendant Treado and plaintiff Miller, which provide very detailed accounts of “plaintiffs’ work”. Defendants spin a fanciful tale about how plaintiffs orced “defendants to expend substantial resources on expert reports”. Defs.’ Opp., p. 8. This is as ridiculous as it sounds. Because the pertinent claim construction in the ‘962 patent-in-suit is relatively straightforward, plaintiffs’ position has always been that expert reports were unnecessary—in fact, plaintiffs made this very argument at the March 22, 2007 status conference before this Court (defendants were arguing for an extension of time to file “rebuttal” expert reports, even though plaintiffs had not filed any opening expert reports). Defendants manage to argue that plaintiffs’ “inexplicabl[e] fail[ure] to serve expert reports” combined with plaintiffs’ designation of possible expert witnesses forced defendants to prepare and serve exp rt reports, five months after plaintiffs declined to file any opening expert reports, four months after plaintiffs explicitly told defendants that plaintiffs were not filing expert reports, and two months after the March 22, 2007 status conference. Case 1:05-cv-10367-RWZ Document 142-2 Filed 07/12/2007 Page 10 of 11 Plaintiffs’ {PROPOSED} Reply to Defs’ Opp. [D.E. 138] to Plaintiffs’ Mot. [D.E. 132] to Dismiss - 11 - VII. Conclusion At least for the reasons above and in plaintiffs’ moving papers, the Court should dismiss the sole pending inventorship correction claim, either without prejudice (as requested in plaintiffs’ motion), or with prejudice (as discussed supra). Respectfully submitted, PETER J. MILLER, CLIFFORD HOYT, and CAMBRIDGE RESEARCH AND INSTRUMENTATION, INC., By their attorneys: Dated: July 12, 2007 /s/ Teodor Holmberg Martin B. Pavane (admitted pro hac vice) Teodor J. Holmberg (BBO# 634708) David P. Badanes (admitted pro hac vice) COHEN PONTANI LIEBERMAN & PAVANE LLP 551 Fifth Avenue New York, New York 10176 E-mail: tidge@cplplaw.com Erin E. McLaughlin (BBO# 647750) BROWN RUDNICK BERLACK ISRAELS LLP One Financial Center Boston, MA 02111 E-mail: EMcLaughlin@brownrudnick.com CERTIFICATE OF SERVICE I hereby certify that the document identified in the top right-hand portion of this page and filed through the ECF system will be sent electronically to the registered participants as identified on the Notice of Electronic Filing (NEF). Dated: July 12, 2007 /s/ Teodor Holmberg Teodor J. 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