Free Reply Memorandum - District Court of California - California

Case 5:08-cv-00133-RMW

Document 180

Filed 06/23/2008

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F.T. Alexandra Mahaney, State Bar No. 125984 WILSON SONSINI GOODRICH & ROSATI Professional Corporation 12235 El Camino Real, Suite 200 San Diego, CA 92130 Telephone: (858) 350-2300 Facsimile: (858) 350-2399 Email: [email protected] Bruce R. Genderson (admitted pro hac vice) Aaron P. Maurer (admitted pro hac vice) Rachel Shanahan Rodman (admitted pro hac vice) Adam D. Harber (admitted pro hac vice) WILLIAMS & CONNOLLY LLP 725 Twelfth St. NW Washington, DC 20005 Telephone: (202) 434-5000 Facsimile: (202) 434-5029 Attorneys for Defendant SENORX, INC. IN THE UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. 08-CV-0133 RMW REPLY IN SUPPORT OF DEFENDANT SENORX, INC.'S OBJECTIONS TO AND MOTION TO STRIKE IMPROPER DOCTRINE OF EQUIVALENTS ARGUMENT Date: June 25, 2008 Time: 2:00 p.m. Courtroom: 6, 4th Floor Judge: Hon. Ronald M. Whyte

HOLOGIC, INC., CYTYC CORP. and HOLOGIC L.P., Plaintiffs, v. SENORX, INC., Defendant.

REPLY IN SUPPORT OF SENORX, INC.'S MOTION TO STRIKE IMPROPER DOCTRINE OF EQUIVALENTS ARGUMENT

CASE NO. 08-CV-0133 RMW

Case 5:08-cv-00133-RMW

Document 180

Filed 06/23/2008

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PRELIMINARY STATEMENT Plaintiffs failed in this case to put all their cards on the table up front, as the Local Rules require. Their Opposition to SenoRx's Motion to Strike does not explain why they should be relieved of the consequences of that decision after SenoRx has deposed all six inventors of the patents-in-suit, filed summary judgment motions, submitted expert reports, and served its final written discovery requests. Nor have Plaintiffs provided any justification for not asserting infringement under the doctrine of equivalents in their Preliminary Infringement Contentions, much less "good cause." Even under Plaintiffs' proposal to amend their infringement contentions within two days of the Court's claim construction order, SenoRx would be forced to defend itself against new theories of infringement asserted a mere two weeks before trial without the benefit of discovery on Plaintiffs' newly asserted theories. This would unfairly prejudice SenoRx. ARGUMENT Plaintiffs' Opposition to SenoRx's Motion to Strike fails to explain why they should be allowed to change their theories of infringement mere weeks before trial. First, Plaintiffs complain that granting the motion to strike would punish them for "agreeing (with SenoRx) to an accelerated pretrial schedule." Pls.' Opp. 1. This is incorrect. It was Plaintiffs, not SenoRx, that filed for a preliminary injunction in this case. Plaintiffs, not SenoRx, sought the greatly accelerated trial schedule. And Plaintiffs, not SenoRx, have the burden under the Patent Local Rules to provide sufficient notice of their infringement contentions to allow SenoRx to adequately defend itself against the charge of patent infringement. Second, Plaintiffs have not addressed the prejudice to SenoRx if they are allowed to add new theories of infringement at this stage of the case. Before receiving any notice that it was defending itself against a doctrine of equivalents claim on the elements at issue here, SenoRx had deposed all six inventors of the patents-in-suit, filed summary judgment motions, submitted expert reports, and served its final written discovery requests. Discovery closes June 25, and the
REPLY IN SUPPORT OF SENORX, INC.'S MOTION TO STRIKE IMPROPER DOCTRINE OF EQUIVALENTS ARGUMENT

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CASE NO. 08-CV-0133 RMW

Case 5:08-cv-00133-RMW

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trial is scheduled to begin in less than three weeks. Plaintiffs have not explained how SenoRx could possibly be expected to defend itself against new infringement contentions at this stage in the case. Third, Plaintiffs offer no explanation for their failure to assert infringement under the doctrine of equivalents in their preliminary contentions. They do not dispute that they have learned no new information about the Contura since serving those contentions. Nor do they explain why the claim elements at issue are different from claims for which Plaintiffs did offer alternative theories of infringement. For instance, Plaintiffs asserted that the claims involving an inner spatial volume were infringed either literally or under the doctrine of equivalents. Indeed, given the schedule of this case, that is the only framework that makes sense. SenoRx's expert reports and Preliminary Invalidity Contentions addressed both parties' claim constructions. There is no excuse for Plaintiffs not to have done the same. Finally, Plaintiffs cannot possibly maintain that they would be surprised if this Court were to rule that terms claiming "a plurality of radioactive solid particles" (claim 12) and "a plurality of solid radiation sources" (claim 17) actually require a plurality of solid particles or solid radiation sources. Indeed, Plaintiffs' own proposed construction was that these terms should receive their "plain meaning." Knowing that the Contura never used more than one radioactive source, Plaintiffs made the express and volitional decision to only assert literal infringement of these claims. To relieve them of the consequences of that decision less than three weeks before trial and after the close of discovery in this case is contrary to this District's Local Rules and would unfairly prejudice SenoRx. CONCLUSION For the foregoing reasons, SenoRx respectfully requests that the Court strike argument regarding the doctrine of equivalents from Plaintiffs' Opposition to SenoRx's Motion for Partial Summary Judgment of Non-Infringement (pages 18-21), and prevent Plaintiffs from changing their theories of infringement at this stage of the case.

REPLY IN SUPPORT OF SENORX, INC.'S MOTION TO STRIKE IMPROPER DOCTRINE OF EQUIVALENTS ARGUMENT

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CASE NO. 08-CV-0133 RMW

Case 5:08-cv-00133-RMW

Document 180

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In addition, Plaintiffs state that they intend to assert new infringement contentions on claim terms in which the Court does not adopt their proposed construction. Pls.' Opp. 6-7 nn.34. For the same reasons discussed above, it is simply too late to allow Plaintiffs to assert new contentions without severely prejudicing SenoRx, and the Court should deny any such request. The only alternative would be to continue the trial to provide SenoRx an opportunity to develop and present a defense to these new contentions.

Dated: June 23, 2008 Respectfully submitted,

By: _____/s/ F.T. Alexandra Mahaney________ F.T. Alexandra Mahaney, State Bar No. 125984 WILSON SONSINI GOODRICH & ROSATI Professional Corporation 12235 El Camino Real, Suite 200 San Diego, CA 92130 Telephone: (858) 350-2300 Facsimile: (858) 350-2399 Email: [email protected] Bruce R. Genderson (admitted pro hac vice) Aaron P. Maurer (admitted pro hac vice) Rachel Shanahan Rodman (admitted pro hac vice) Adam D. Harber (admitted pro hac vice) WILLIAMS & CONNOLLY LLP 725 Twelfth St. NW Washington, DC 20005 Telephone: (202) 434-5000 Facsimile: (202) 434-5029 Attorneys for Defendant SENORX, INC.

REPLY IN SUPPORT OF SENORX, INC.'S MOTION TO STRIKE IMPROPER DOCTRINE OF EQUIVALENTS ARGUMENT

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CASE NO. 08-CV-0133 RMW

Case 5:08-cv-00133-RMW

Document 180

Filed 06/23/2008

Page 5 of 6

Case 5:08-cv-00133-RMW

Document 180

Filed 06/23/2008

Page 6 of 6