Case 1:16-cv-00455-RGA Document 202-1 Filed 07/21/17 Page 1 of 12 PageID #: 17658
`Case 1:16-cv-00455-RGA Document 202-1 Filed 07/21/17 Page 1 of 12 PagelD #: 17658
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`EXHIBIT 1
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`Case 1:16-cv-00455-RGA Document 202-1 Filed 07/21/17 Page 2 of 12 PageID #: 17659
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`1
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`IN THE UNITED STATES DISTRICT COURT
`IN AND FOR THE DISTRICT OF DELAWARE
`- - -
`
`ENZO LIFE SCIENCES, INC.,
` Plaintiff,
` vs.
`ABBOTT LABORATORIES, INC.,
`and ABBOTT MOLECULAR, INC.,
` Defendants.
` vs.
`
`CIVIL ACTION
`NO. 12-274-LPS
`NO. 12-275-LPS
`NO. 12-276-LPS
`NO. 12-104-LPS
`NO. 12-105-LPS
`NO. 12-106-LPS
`NO. 12-433-LPS
`NO. 12-434-LPS
`NO. 12-435-LPS
`NO. 12-505-LPS
`
`:::::::::::::::::::
`
`LUMINEX CORPORATION,
` Intervening
` Defendant
`
`
`
` - - -
`
` Wilmington, Delaware
` Thursday, December 18, 2014
` 3:00 o'clock, p.m.
` ***Telephone conference
`
` - - -
`BEFORE:
`HONORABLE LEONARD P. STARK, Chief Judge
` - - -
`
` Valerie J. Gunning
` Official Court Reporter
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`Case 1:16-cv-00455-RGA Document 202-1 Filed 07/21/17 Page 3 of 12 PageID #: 17660
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`A P P E A R A N C E S :
`
` F A R N A N L L P
` B Y : B R IA N E . F A R N A N , E S Q .
`
` -a n d -
`
` D E S M A R A IS L L P
`B Y : M IC H A E L P . S T A D N IC K , E S Q . a n d
` JO R D A N N . M A LZ , E S Q .
` (N e w Y o rk , N e w Y o rk )
`
`
` C o u n s e l fo r P la in tiff
`
` Y O U N G C O N A W A Y S T A R G A T T & T A Y L O R L L P
` B Y : K A R E N L . P A S C A L E , E S Q .
`
` -a n d -
`
` A R N O L D & P O R T E R L L P
`B Y : W A LL A C E W U , E S Q .
` (L o s A n g e le s , C a lifo r n ia )
`
` C o u n s e l fo r G e n -P ro b e I n c o r p o r a t e d
` in C iv il A ctio n N o . 12 - 1 0 4 - L P S
`
`
`M O R R IS , N IC H O LS , A R S H T & T U N N E L L L L P
`B Y : K A R E N L O U D E N , E S Q .
`
` -a n d -
`
`LA T H A M & W A T K I N S L L P
`B Y : T E R R Y K E A R N E Y , E S Q .
` ( M e n lo P a rk , C a lifo r n ia )
`
` -a n d -
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`LA T H A M & W A T K I N S L L P
`B Y : R Y A N R . W A T K IN S , E S Q .
` ( C o s ta M e s a , C a lifo r n ia )
`
` C o u n s e l fo r L ife T ech n o lo g ie s C o r p o r a t io n
` in C iv il A ctio n N o . 12 - 1 0 5 - L P S
`
`3
`
`A P P E A R A N C E S (C o n tin u e d ) :
`
` R IC H A R D S , L A Y T O N & F I N G E R , P .A .
` B Y : F R E D E R IC K L. C O T T R E L L , III, E S Q .
`
` -a n d -
`
` W I L M E R H A LE
` B Y : R O B E R T J. G U N T H E R , JR ., E S Q . a n d
` O M A R K H A N , E S Q .
` (N e w Y o rk , N e w Y o rk )
`
` C o u n s e l fo r R o ch e M o le c u la r S y s t e m s In c.,
` R o c h e D ia g n o s tics Co r p o ra tio n , R o c h e
` D ia g n o s tic s O p e ra tio n s I n c . in
` C iv il A ctio n N o . 1 2 - 1 0 6 - L P S
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` P O T T E R , A N D E R S O N & C O R R O O N L L P
` B Y : D A V ID E . M O O R E , E S Q .
`
` -a n d -
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` W IN S T O N & S T R A W N L L P
` B Y : M A U R E E N L. R U R K A , E S Q .
` (C h icag o , Illin o is )
`
` C o u n s e l fo r A b b o tt L a b o ra to r ie s a n d
` A b b o tt M o le cu lar In c . in C iv il A c tio n
` N o . 1 2 - 2 7 4 -L P S
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` D L A P I P E R , LL P (U S )
` B Y : D E N IS E S . K R A F T , E S Q .
`
` -a n d -
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` D L A P I P E R L L P ( U S )
` B Y : S T A N L E Y P A N IK O W S K I, E S Q .
` (S a n D ie g o , C a lifo rn ia )
`
` C o u n s e l fo r In t e r v e n o r - D e fe n d a n t a n d
` C o u n terclaim -P la in tiff Lu m in e x C o r p o ra t io n
` in C iv il A ctio n N o . 12 - 2 7 4 - L P S
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`12/22/2014 10:13:33 PM
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`A P P E A R A N C E S (C o n tin u e d ) :
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` M O R R IS , N I C H O L S , A R S H T & T U N N E LL L L P
` B Y : D E R E K J. F A H E N S T O C K , E S Q .
`
` C o u n s e l fo r A ffy m e trix, In c . in
` C iv il A ctio n N o . 12 - 4 3 3 - L P S a n d
` A g ile n t T ech n o lo g ie s , In c. in
` C iv il A ctio n N o . 12 - 4 3 4 - L P S a n d
` S ie m e n s H e a lth c a r e D ia g n o s tic s I n c . in
` C iv il A ctio n N o . 12 - 5 0 5 - L P S
`
`
`
` K A Y E S C H O L E R L L P
` B Y : S E A N M . B O Y L E , E S Q . a n d
` N IC O L E B U C K , E S Q .
` (P a lo A lto , C a lifo r n ia )
`
`
` C o u n s e l fo r A ffy m e trix, In c . in
` C iv il A ctio n N o . 12 - 4 3 3 - L P S a n d
` A g ile n t T ech n o lo g ie s , In c. in
` C iv il A ctio n N o . 12 - 4 3 4 - L P S
`
`
` O R R IC K , H E R R IN G T O N & S U T C L I F F E
` B Y : G E O R G E K A N A B E , E S Q .
`
` C o u n s e l fo r D e fe n d a n t
` S ie m e n s H e a lth c a r e D ia g n o s tic s I n c .
` in C iv il A ctio n N o . 1 2 - 5 0 5 - L P S
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` P R O C E E D I N G S
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`(R E P O R T E R 'S N O T E : T h e fo llo w in g t e l e p h o n e
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`c o n fe r e n c e w a s h e ld in c h a m b e rs , b e g in n in g a t 3 :0 0 p .m .)
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`T H E C O U R T : G o o d a ft e r n o o n , e v e ry b o d y . T h is is
`
`J u d g e S t a r k . W h o is th e r e , p le a s e ?
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`M R . F A R N A N : G o o d a ftern o o n , y o u r H o n o r. B ria n
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`F a r n a n o n b e h a lf o f th e p la in tiff, a n d w ith m e is M ic h a e l
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`S ta d n ick , Jo r d a n M a lz fro m D e s m a ra is in N e w Y o rk C ity .
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`T H E C O U R T : A ll rig h t.
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`M R . C O T T R E L L : Y o u r H o n o r , it's Fred C ottrell in
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`W ilm in g to n , D e la w are, at R ich ard s L a y to n . It's m y p h o n e -in .
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`A ll th e d e fe n d a n ts are o n a n d D e la w are c o u n s e l a n d th e ir
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`c o - c o u n s e l, s o I w ill le t e a c h D e la w a re c o u n s e l in tro d u ce
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`e v e r y o n e .
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`I w ill start fo r R o c h e in 1 2 -1 0 6 , a n d 1 2 -2 7 5 ,
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`a n d m y co -co u n s e l fro m W ilm e r H a le , B o b G u n th e r a n d O m a r
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`K h a n .
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`T H E C O U R T : O k a y .
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`M S . JA C O B S : Y o u r H o n o r, fo r L ife T e c h n o lo g ie s ,
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`w h o file d o n e o f th e m o tio n s to s trik e t o d a y , th is is K a r e n
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`J a c o b s fro m M orris N ich o ls , a n d I h a ve o n th e lin e w ith m e
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`T e r r y K e a r n e y a n d R y a n O w e n s fro m Lath a m & W atkins.
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`T H E C O U R T : O k a y .
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`2 of 19 sheets
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`Case 1:16-cv-00455-RGA Document 202-1 Filed 07/21/17 Page 4 of 12 PageID #: 17661
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`MS. PASCALE: Good afternoon, your Honor. This
`is Karen Pascale from Young Conaway for Gen-Probe in the
`12-104 and Hologic in the 12-276, and presenting argument
`today for Gen-Probe and Hologic.
`THE COURT: Okay.
`MR. MOORE: And, your Honor, David Moore from
`Potter Anderson on behalf of Abbott, and with me on the line
`is Maureen Rurka from Winston & Strawn. They're also
`listening in.
`THE COURT: Okay.
`MS. KRAFT: Your Honor, this is Denise Kraft on
`behalf of Luminex. On the line with me is Stan Panikowski.
` We are also in a similar position of not having
`participated in the motion, but being on the line as
`listening to the proceeding. Thank you.
`THE COURT: Okay.
`MR. FAHENSTOCK: It's Derek Fahenstock from
`Morris Nichols on behalf of Agilent, also on behalf of
`Affymetrix, and with me are Sean Boyle and Nicole Buck from
`Kaye Scholer in Silicon Valley.
`I am also here for Siemens, and with me is
`George Kanabe from Orrick, and neither Agilent, Affymetrix
`nor Siemens has moved so that the record is clear.
`THE COURT: Okay. Thank you. Anybody else?
` Okay. I have my court reporter he with me, and
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`MR. KEARNEY: O Enzo served the contentions at
`issue on September 30th. At that point, the case was almost
`three years old. Pleadings were long closed. Parties'
`claim construction disputes were under consideration by your
`Honor. There were two weeks left of fact discovery.
`At that point, and based on Enzo's prior
`contentions, specific groups of Life's products were at
`issue. Life's TaqMan DNA probe, and beads called the Oligo
`dT beads that are made by Life's subsidiary in Norway, some
`OEM microarrays and glass slides and chip kits that are used
`with Life's DNA sequencing platforms. Those platforms are
`called the Ion Torrent and the Solid Sequencing Systems. In
`fact, Enzo and Life had agreed that Enzo's case would be
`limited to individual representatives of those products.
`A couple days later, Enzo decided to accuse
`three new groups of products of infringing the '197 patent.
`The first group includes over a dozen new and different
`beads made by Dynal. The second and third groups are
`sequencing beads, which are disposable products used with
`the Ion Torrent and solid sequencing platforms.
`Significantly, your Honor, Enzo does not,
`because it cannot argue that these new products are
`functionally similar to or infringe for the same reason as
`any earlier accused product. Instead, Enzo argues that
`these new products are merely additional model names or
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`for the record as a formal matter, I believe we're here on
`just six of the cases. They're related cases. They all
`involve the same plaintiff, Enzo Life Sciences, Inc. versus
`Gen-Probe, Incorporated, Civil Action No. 12-104-LPS. We
`also have versus Hologic, Inc., 120-276-LPS, versus Life
`Technologies Corporation, 12-105-LPS, versus Roche Molecular
`Systems, Inc., et al, 12-106-LPS, and versus Becton
`Dickinson & Company, et al, 12-275-LPS.
`And we're here, as has been alluded to, to
`discuss the motions to strike that had been filed by a
`number of the defendants.
`It sounds as if perhaps each of the moving
`defendants may wish to be heard separately. If that's the
`case, I will ask you to make your comments as un-redundant,
`I guess, for lack of a better word as possible. But in any
`event, let me turn it over first to defendants and see how
`you wish to start.
`MR. KEARNEY: Your Honor, this is Terry Kearney
`from Latham on behalf of Life Technologies, the party who
`filed the three motions that are before your Honor.
`We filed the first. We've communicated with our
`co-counsel and have decided that Life's motion would go
`first, so I will be as brief as possible, not more than
`five, six minutes.
`THE COURT: Okay. Go ahead.
`
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`versions of long accused product lines. We dealt with that
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`in our paper and I'm happy to rest on that unless you have
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`questions about it. But it's just not so. These are
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`brand-new, different products. But Enzo didn't just add new
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`products. Its new contentions are peppered with
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`placeholders for new theories of inducement and doctrine of
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`equivalents.
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`For context, Enzo has not pleaded indirect,
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`either inducement or contributory infringement of the '197
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`patent. And while Enzo included conclusory and circular
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`footnotes about inducement in some of its earlier
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`infringement charts, those scattered footnotes do not
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`provide any substantive information about Enzo's theory of
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`inducement. Enzo's new charts attempt to fill those voids
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`with additional cursory boilerplate.
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`With respect to inducement, Enzo has simply
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`block copied its earlier conclusory footnotes into all of
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`its infringement charts.
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`With respect to the DOE allegation, doctrine of
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`equivalents allegation, Enzo has added to all its charts
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`boilerplate statements asserting little more than the
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`differences between the parties' proposed claim
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`constructions are insubstantial.
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`The prejudice to the Life of adding these new
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`groups of products is specific and significant, your Honor.
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`With respect to the new Dynal beads, Life has already
`interrupted the operation of its Norwegian subsidiary to
`collect, produce and translate documents.
`Enzo has already deposed Dynal employees.
`Licensed Dynal should not be required to provide additional
`expensive discovery for a dozen new products dragged into
`the case at the end of discovery. Enzo's additions of the
`new sequencing beads is also highly prejudicial. Having
`focused Life's attention on chip kits and glass slides for
`the last ten months, Enzo presumably now intends to have its
`experts opine on the beads or some other undescribed
`combination of beads and chips.
`If these new products are added to the case,
`Enzo must, with respect, your Honor, provide detailed claim
`charts explaining its new contentions. Those new claims
`will give rise to additional discovery requests and possibly
`new claim construction disputes. The case will be set back
`to exactly where we were in the spring.
`Enzo's attempt to preserve its supposed theories
`of inducement and DOE is also not harmless. Its boilerplate
`placeholders are completely without substance. There is no
`explanation of how Life induced the infringement of the
`asserted claims. Enzo does not even identify who or what
`directly infringe. These placeholders are going to be
`fertile ground for mischief during expert discovery. Enzo
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`Is it correct that you're not seeking to strike
`every bit of what's in there?
`MR. KEARNEY: That's absolutely correct, your
`Honor. So Life is only complaining about the new products
`that are indisputably dissimilar and cannot be said to
`infringe for the same reason as the earlier products. That
`does not mean that we need a supplemental contention for the
`new products that are function functionally similar. Right?
`Those new products can be added in an expert report or the
`pretrial order stage when the parties are truing up and
`adjusting their damages claims. So, in other words, if
`there are products that infringe for the same way, let us
`know and we'll add those to the list of the pretrial order.
`There's no reason to have a supplemental infringement
`contention relating to those.
`THE COURT: So based on what you've seen in the
`plaintiff's letter, if I were to say your motion is granted,
`are you comfortable that you know what products are in the
`case and what are not in the case or is there still a
`further dispute there?
`MR. KEARNEY: I believe that it is clear.
`THE COURT: Okay. And if, alternatively, I were
`to deny your motion and allow these new products as you
`characterize them to be in the case, give me a sense from
`Life's perspective what that would do to the schedule that I
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`cannot credibly argue that these new products and theories
`can be added to the case without delay and expense.
`So what's Enzo's justification? According to
`Enzo, it could not accuse the new product until it deposed
`Life's witnesses, but Enzo fails to point out anything
`that it learned at those depositions that it didn't already
`know or couldn't have learned from the products themselves
`or detailed technical information about those products,
`which was publicly available in 2012, when Enzo first filed
`suit.
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`its new boilerplate placeholders for inducement in the DOE.
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`Enzo's inability to justify its delay supports the Court's
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`conclusion that Enzo proceeded on timing in conflict with
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`the Court's scheduling order for fact discovery.
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`Life appreciates that whichever way your Honor
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`rules, the result will prejudice one of the two parties, but
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`this situation is Enzo's making, not Life's, and it's Enzo,
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`not Life, that should bear the consequences of Enzo's
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`strategic choices.
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`THE COURT: All right. Mr. Kearney, so one
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`thing you may have seen in all of the plaintiff's responses,
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`they suggest that the defendants are not actually seeking to
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`strike 100 percent of what they served as the supplemental
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`infringement charts in September.
`12/22/2014 10:13:33 PM
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`have in place now.
`MR. KEARNEY: Well, the schedule that you have
`in place right now, your Honor, is, I believe we're waiting
`on the claim construction order and several events follow
`from that. Sixty days out, there's expert, opening expert
`reports. I think there's also on the same day a reduction
`of claim terms at issue or prior art references relied on
`by defendants and expert discovery proceeds from that point
`on.
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`immediately an explanation from, a truly detailed
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`explanation from Enzo as to what their claims are.
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`These are new products that are not covered by
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`the previous charts. We would also need an articulation of
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`what their theory of induced infringement is. It's never
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`articulated directly what infringes the claims, so we really
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`have no idea what that is all about.
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`Following that -- I presume they're going to
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`need some time for that. Following that, we would need some
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`time to propound follow up interrogatories. We would want
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`to collect documents from Dynal. We may need to recall some
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`of Enzo's witnesses. And, in fact, we may need to put in
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`front of your Honor additional claim construction issues.
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`Not all the terms of the claims were construed and so it's
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`unclear from Life's perspective exactly how we would
`accomplish that other than, as I said, we would set the case
`back to something like February or March of this year.
`That said, I think that the other, the other
`defendants have potentially different views on what it would
`take to true up their cases. I don't mean to speak for
`them, but I believe that they were thinking about an
`extension of four months. Whether or not that works for
`Life, I really don't know, your Honor.
`THE COURT: Okay. Thank you. Well, let me hear
`from the other defendants who wanted to be heard. Who is
`next, please?
`MR. GUNTHER: Your Honor, this is Bob Gunther
`from Wilmer Hale, and I'm going to talk on behalf of both
`the Roche and Becton Dickinson defendants.
`Your Honor, I'm not going to repeat anything, at
`least I'm not going to try not to repeat anything that
`Mr. Kearney just covered. In terms of prejudice, in terms
`of the dates of the various -- the various dates that he put
`across, all of those apply equally to Roche and to Becton
`Dickinson.
`With respect to Roche, there are 22 new
`products. With respect to Becton Dickinson, there were 17
`new products.
`In response to your Honor's question, because
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`So the notion that they said we're accusing --
`the first time around we're accusing Roche's Cobas products,
`that does not do it. And we think it's important that both
`the Delaware default rules and the cases talk about, you
`know, specificity requiring sort of, you know, more than
`that, and even the cases talking about making a model number
`wherever possible.
`And so when you look at that and when you look
`at the actual Roche product, the later accused products
`actually do have differences. And this is something we
`started to look at, but they have differences. You know,
`these patents relate, for example, to the probes and where
`the labels are put on the probes. The labels are put on the
`probes in different locations in the newer product and
`different type of labels are used, and that could implicate
`a lot of things, including noninfringement positions,
`including claim construction positions. And so the products
`are, you know, obviously, they are tests that are using PCR
`or realtime PCR, but the way they do it is different.
`And then when we get to the BD products, they're
`actually completely different than the products that they
`accused before. They had never before accused PCR and
`TaqMan products of infringement, and that now represents,
`you know, 17 new products that they've added.
`So this isn't just sort of, you know, kind of a
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`they also said, Enzo also said in responding to our letter
`that it was not, we did not move against all products on
`their supplemental, in their supplemental contentions of
`September 30th, they are correct. There are two products,
`there are two Becton Dickinson MRSA assays, your Honor, that
`we did not move against because their original contentions
`had referenced a MRSA assay, and in their attached
`infringement chart in their initial, in their initial
`infringement contentions back in 2013, they referenced
`these other two tests. So we didn't see those as
`necessarily new, and as a result of that, there are two out
`of the all of the ones that we're moving on that are left
`aside.
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`In terms of -- the only other thing, your Honor,
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`I'd like to say in terms of the BD products and the Roche
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`products is there's an argument that they had sort of
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`accused product lines the first time around and that this
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`time they're just sort of adding additional products within
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`those product lines.
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`If you look at the Roche products, they say,
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`well, they're all Cobas products. Cobas is a brand, it's a
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`trademark, and it's basically used for all of Roche's
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`diagnostic laboratory systems, and there are hundreds of
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`products that have nothing to do with either of the patents
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`in this case that are branded as Cobas.
`5 of 19 sheets
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`MR. GUNTHER: Your Honor, I think, and I'm not
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`sure that that argument was made specifically with respect
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`to either Roche or Becton Dickinson.
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`I think, you know, obviously, there are
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`situations, and I think we all recognize this where
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`because things happen later in the period, that it might
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`be appropriate to supplement, but if you look at the
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`products that, the newly accused products, your Honor.
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`And I will just take a couple of examples to give you a
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`flavor of this.
`Page 14 to 17 of 41
`
`matter of degree. It's really -- it's really a major
`expansion of the case at the very last minute that would
`require us -- you know, we say four months of discovery.
`That's if everybody absolutely put their nose to the
`grindstone, ignored the fact that we have the holidays
`coming up and just pushed through. But I their we just feel
`like we should not have to go through that.
`THE COURT: So you say last minute. One of the
`arguments that plaintiff makes is that this supplementation
`in their view was timely under the governing scheduling
`order. What's your response to that?
`MR. GUNTHER: That it was timely under the
`governing scheduling order?
`THE COURT: That's what I believe they're
`
`arguing.
`
`12/22/2014 10:13:33 PM
`
`

`

`Case 1:16-cv-00455-RGA Document 202-1 Filed 07/21/17 Page 7 of 12 PageID #: 17664
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`With respect to Roche, and if we just think
`about the '180 patent for a moment, there were 11 new
`products, 11 new products accused of infringement. Six of
`them were available and publicly available with information
`about them on Roche's website and in other places prior to
`the date that this lawsuit was filed back in 2012, the
`earliest product going all the way back to 2006. Three of
`the 11 products were ones that were launched by Roche a
`little bit later, but before substantial completion of
`document discovery in this case in March. And nevertheless
`there's a -- there's a period of, you know, almost seven
`months before they then accuse it, accuse those products.
`So while, you know, there are appropriate times
`for supplementation, we think that when you look and when
`you consider the fact that discovery is shown, that they
`were following both Roche and Becton Dickinson from back in
`2005 and 2006. In fact, Roche is currently in a litigation
`with Enzo in the Southern District of New York involving one
`related patent to the '197 patent, one of the
`patents-in-suit here, and that lawsuit has been going on
`since 2004.
`So they've certainly had every incentive to
`watch what we were doing. The documents showed they were
`watching what we were doing, and that's true with respect to
`both Roche and Becton Dickinson, and there's just no
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`technical witnesses have left the company by the time Enzo
`served its supplemental infringement contentions, so to
`include these cases, these products at this late stage would
`severely prejudice Hologic and Gen-Probe. We will have to
`spend additional time, resources and money to essentially
`restart the document discovery again. So had they asserted
`these products earlier, we could have done the document
`discovery and deposition discovery once instead of in
`piecemeal fashion.
`So we ask the Court to strike these 30 newly
`accused products because of the lack of diligence on Enzo's
`part and the prejudice on Hologic Gen-Probe. Thank you,
`your Honor.
`THE COURT: Thank you.
`I think I've now heard from all of the moving
`defendants, so we'll turn to plaintiff. Go ahead, please.
`MR. MALZ: Good afternoon, your Honor. This is
`Jordan Malz from Desmarais LLP for Enzo.
`The defendants have mischaracterized Enzo's
`supplementation. In reality, this was a fairly minor
`supplementation. I just wanted to say a couple of words
`about the supplementation itself and explain why the
`supplementation is timely and why there is absolutely no
`prejudice at all to the defendants.
`So what we did, we added supporting citation to
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`justification for throwing these things in two weeks before
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`the end of fact discovery.
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`THE COURT: All right. Thank you.
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`Do the final moving defendants wish to be heard?
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`MR. WU: Hi, your Honor. Good afternoon. This
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`is Wallace We for Hologic Gen-Probe.
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`Again, I'm not going to repeat what counsel for
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`Life and Roche had already said. There are 30 newly accused
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`products at issue for Hologic and Gen-Probe and these
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`products were publicly sold at least two years ago. In
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`other words, they were on the market at least a year before
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`Enzo served its initial infringement contentions in 2003 and
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`Enzo had monitored Hologic's products and Gen-Probe's
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`products at least since 2006. And in one of our documents,
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`you know, documents we cited, Enzo was specifically
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`aware of the newly accused Hologic products in 2006. That
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`was many, many years before they served 2013 infringement
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`contentions.
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`So there's really no excuse for adding the 30
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`new products at this stage of the cases. And as far as
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`prejudice, it would take us at least six months to complete
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`the document discovery with respect to these 30 newly
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`accused products, and Enzo may also seek deposition
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`discovery again.
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`As we noted in our papers, at least three
`12/22/2014 10:13:33 PM
`
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`reflect ongoing discovery. We updated some of our doctrine
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`of equivalents contentions to reflect the defendants'
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`Markman positions, and we identified some additional model
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`names from the same product lines that were always accused
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`of infringement. What we did not do, we did not add or
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`change any asserted claims. We did not change or present
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`new theories of infringement. And with one exception, which
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`is the case of Becton Dickinson which should be addressed
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`separately, we did not identify any models from families
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`that had not long been accused of infringement.
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`We don't believe that our supplementation is
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`untimely at all, especially in the context of this case. As
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`an initial matter, we provided our supplementation during
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`fact discovery, so this is not a case of a supplementation
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`taking place through expert reports. This was before the
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`close of fact discovery. And each of the defendants has
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`repeated two weeks before the end of fact discovery, two
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`weeks before the end of fact discovery, but there are
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`certain realities that need to be acknowledged in how this
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`case unfurled, which is that discovery in practice did not
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`end on October 15th. Discovery from all parties, including
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`each of the moving defendants, continued for months after
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`Enzo's supplementation and October 15th.
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`For example, each of the defendants, including
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`each of the moving defendants, continued to produce
`Page 18 to 21 of 41
`6 of 19 sheets
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`

`

`Case 1:16-cv-00455-RGA Document 202-1 Filed 07/21/17 Page 8 of 12 PageID #: 17665
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`additional documents well after October 15th. Life, for
`example, produced over 12,000 pages of documents as recently
`as -- and their document production continued frequently as
`last month. This was all after our supplementation.
`Roche has produced 25,000 pages of documents
`after our supplementation as recently as last week. BD
`produced 22,000 pages of documents after our
`supplementation, again as recently as last week. Both
`Gen-Probe and Hologic produced documents last week.
`So document production has continued well past
`October 15th. And, more importantly, depositions themselves
`commenced, they first started at the very end of fact
`discovery, and for some of the defendants on this call,
`continued to take for weeks after October 15th.
`In the case of Life, depositions commenced six
`weeks before the close of fact discovery. Most depositions
`took place in September and they continued well into
`October. So, again, they keep on saying two weeks before
`the close of fact discovery, but most of Life's depositions
`took place within two to six weeks before the close of fact
`discovery.
`
`In the case of Roche and BD, they did not make a
`single witness available for deposition until after
`September 30th, so depositions commenced after our
`supplementation. They start in October, and I actually
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`supplementations of contentions including invalidity
`contentions.
`And the --
`THE COURT: Let me interrupt you there because I
`think you're going a littl