Case 1:20-cv-00925-JFB-SRF Document 10 Filed 08/31/20 Page 1 of 18 PageID #: 68
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
` C.A. No. 20-00925-JFB-SRF
`
`JURY TRIAL DEMANDED
`
`))))))))))))))
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`
`)
`
`HOLOGIC, INC., a Delaware corporation;
`and CYTYC SURGICAL PRODUCTS,
`LLC, a Massachusetts limited liability
`company,
`
`Plaintiff,
`
`v.
`
`MINERVA SURGICAL, INC., a Delaware
`corporation,
`
`Defendants.
`
`DEFENDANT’S ANSWER TO COMPLAINT
`FOR PATENT INFRINGEMENT
`
`Defendant Minerva Surgical, Inc. (“Minerva”) hereby answers the Complaint for Patent
`
`Infringement filed by Hologic, Inc. (“Hologic”) and Cytyc Surgical Products, LLC (“Cytyc”)
`
`(collectively, “Plaintiffs”), as follows:
`
`NATURE OF THE ACTION1
`
`1.
`
`Minerva admits that the Complaint purports to allege an action for infringement of
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`U.S. Patent Nos. 9,095,348 (“the ’348 Patent”). Except as expressly admitted herein, Minerva
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`denies any and all remaining allegations in Paragraph 1 of the Complaint.
`
`1 Minerva reproduces the headings found in the Complaint. The headings do not state any
`allegation against Minerva to which a response is required. To the extent that any allegations are
`included in the headings, Minerva denies such allegations.
`
`

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`PARTIES
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`2.
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`Minerva admits only that, upon information and belief, Hologic is a corporation
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`organized and existing under the laws of the State of Delaware with a principal place of business
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`at 250 Campus Drive, Marlborough, Massachusetts, 01752. Minerva is without knowledge or
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`information sufficient to form a belief as to the truth of the remaining allegations of paragraph 2
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`of the Complaint, and accordingly denies the same.
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`3.
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`Minerva admits only that, upon information and belief, Cytyc is a limited liability
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`company organized and existing under the laws of the Commonwealth of Massachusetts with a
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`principal place of business at 250 Campus Drive, Marlborough, Massachusetts, 01752. Minerva is
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`without knowledge or information sufficient to form a belief as to the truth of the remaining
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`allegations of paragraph 3 of the Complaint, and accordingly denies the same.
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`4.
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`Minerva admits that it is a corporation organized and existing under the laws of the
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`State of Delaware with a principal place of business at 4255 Burton Dr., Santa Clara, CA 95054.
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`JURISDICTION AND VENUE
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`5.
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`Minerva admits that the Complaint purports to set forth a claim for patent
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`infringement arising under the Patent Laws of the United States, Title 35 of the United States Code.
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`Except as expressly admitted, Minerva denies any and all remaining allegations in paragraph 5 of
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`the Complaint.
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`6.
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`Minerva admits that this Court has subject matter jurisdiction pursuant to 28 U.S.C.
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`§§ 1331 and 1338.
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`7.
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`Minerva admits that this Court has personal jurisdiction over Minerva as a
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`Delaware corporation. Except as expressly admitted, Minerva denies any and all remaining
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`allegations in paragraph 7 of the Complaint.
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`-2-
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`

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`8.
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`Minerva admits that venue is proper in this District under § 1391 because Minerva
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`is a Delaware corporation. Except as expressly admitted, Minerva denies any and all remaining
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`allegations in paragraph 8 of the Complaint.
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`BACKGROUND
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`Overview of Endometrial Ablation
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`Minerva admits that one treatment for menorrhagia is a transcervical surgical
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`A.
`
`9.
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`technique, known as endometrial ablation, in which the lining of the uterus is destroyed to prevent
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`further bleeding, such as by using heat, sub-zero temperatures, or electrical energy. Minerva
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`further admits that in the early-1990s, some physicians used endometrial ablation instruments such
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`as an electrified metal ball (a “roller ball”) or wire loop to burn away the endometrial lining of the
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`uterus. Minerva is without knowledge or information sufficient to form a belief as to the truth of
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`the remaining allegations of paragraph 9 of the Complaint, and accordingly denies the same.
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`B.
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`10.
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`The NovaSure System Modernized Endometrial Ablation
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` Minerva admits that Mr. Csaba Truckai was a founder of Novacept, Inc.
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`(“Novacept”) and that Novacept developed the NovaSure system. Minerva further admits that Mr.
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`Truckai served as Novacept’s VP of R&D and as its President for certain times. Minerva is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations of
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`paragraph 10 of the Complaint, and accordingly denies the same.
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`11. Minerva admits the NovaSure device’s applicator treats the entire uterus
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`simultaneously by contacting the endometrium. Minerva further admits that paragraph 11 of the
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`Complaint includes a picture of a handpiece labelled NovaSure. Minerva further admits that the
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`NovaSure device ablates the endometrial lining throughout the cavity and allowed the procedure
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`to be performed in a physician’s office. Minerva is without knowledge or information sufficient
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`-3-
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`

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`to form a belief as to the truth of the remaining allegations of paragraph 11 of the Complaint, and
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`accordingly denies the same.
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`12. Minerva is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations of paragraph 12 of the Complaint, and accordingly denies the same.
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`C.
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`The Patent-In-Suit
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`13. Minerva admits that Plaintiffs purport that the ’348 Patent entitled “Moisture
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`Transport System for Contact Electrocoagulation,” was issued on August 5, 2015 to Csaba
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`Truckai, Russel M. Sampson, Stephanie Squarcia, Alfonso L. Ramirez, and Estela Hilario.
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`Minerva denies that the ’348 Patent was duly and legally issued. Minerva admits that Exhibit A
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`of the Complaint purports to be a true and correct copy of the ’348 Patent. Minerva admits that
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`Hologic claims to have received the ’348 Patent by assignment. Minerva is without knowledge or
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`information sufficient to form a belief as to the truth of the remaining allegations of paragraph 13
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`of the Complaint, and accordingly denies the same.
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`14.
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`15.
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`D.
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`Denied.
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`Denied.
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`Hologic Paid $325 Million To Buy Novacept And Its Patented Technology
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`16. Minerva admits that Mr. Truckai executed an agreement titled “Assignment” on
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`August 1998 that referred to Novacept as “Assignee” and listed U.S. Application No. 09/103,072.
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`Minerva further admits that Plaintiffs thereafter filed the application leading to the ’348 Patent and
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`claimed priority to U.S. Application No. 09/103,072. Minerva further admits that the agreement
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`titled “Assignment” includes the text: “invented certain new and useful improvements as described
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`and set forth in the below-identified application for United States Letters Patent.” Except as
`
`-4-
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`

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`expressly admitted herein, Minerva denies any and all remaining allegations in Paragraph 16 of
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`the Complaint.
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`17. Minerva admits that Cytyc acquired Novacept for $325 million. Minerva further
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`admits that the NovaSure system was one of Novacept’s offerings. Minerva admits that Cytyc
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`claims it received Novacept’s intellectual property by assignment and claims it received the right
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`to continue patent prosecution. Except as expressly admitted herein, Minerva denies any and all
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`remaining allegations in Paragraph 17 of the Complaint.
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`18. Minerva is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations of paragraph 18 of the Complaint, and accordingly denies the same.
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`E.
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`Hologic’s Subsequent Development And Investment In NovaSure
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`19. Minerva is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations of paragraph 19 of the Complaint, and accordingly denies the same.
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`20. Minerva is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations of paragraph 20 of the Complaint, and accordingly denies the same.
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`F.
`
`Mr. Truckai Founded Minerva To Compete Directly With Hologic’s
`NovaSure System With An Infringing Product
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`21. Minerva admits that Mr. Truckai founded Minerva in 2008. Except as expressly
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`admitted, Minerva denies any and all remaining allegations in paragraph 21 of the Complaint.
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`22. Minerva admits that Mr. Truckai was one of the people involved with the
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`development of Generation 1 of the Minerva Endometrial Ablation System (“EAS”). Except as
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`expressly admitted, Minerva denies any and all remaining allegations in paragraph 22 of the
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`Complaint.
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`23. Minerva admits that Mr. Truckai was one of the people involved with portions of
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`the research, development, testing, clinical testing, and regulatory process related to Generation 1
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`-5-
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`

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`of Minerva’s EAS. Minerva further admits that Mr. Truckai received feedback from physicians
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`and directed engineers manufacturing prototypes that preceded Generation 1 of the Minerva EAS.
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`Minerva further admits that Mr. Truckai sent or received emails regarding the physical dimensions
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`of the Plasma Formation Array (“PFA”) for Generation 1 of the Minerva EAS. Minerva further
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`admits that Mr. Truckai was one of the people who attended a meeting regarding revising Software
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`Requirements for Generation 1 of the Minerva EAS. Except as expressly admitted, Minerva denies
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`any and all remaining allegations in paragraph 23 of the Complaint.
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`24. Minerva admits that Mr. Truckai sent or received emails regarding Minerva’s
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`application for an investigational device exemption (IDE) from the FDA, Minerva’s
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`communications with the FDA, and patient selection for clinical trials. Minerva further admits that
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`Mr. Truckai was one of the representatives of Minerva during at least one meeting with the FDA.
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`Except as expressly admitted herein, Minerva denies any and all remaining allegations in
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`Paragraph 24 of the Complaint.
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`25. Minerva admits that Mr. Truckai served as Minerva’s President and CEO at its
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`founding, giving general direction to the company, putting a management team in place, raising
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`sufficient funds, setting the strategic direction of the company, managing the company, and
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`executing the company plan. Minerva further admits that all of the foregoing job responsibilities
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`were related to Generation 1 of the Minerva EAS. Except as expressly admitted, Minerva denies
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`any and all remaining allegations in paragraph 25 of the Complaint.
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`26. Minerva admits that from 2008 and at least through 2019, Mr. Truckai served on
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`Minerva’s Board of Directors. Minerva further admits that Mr. Truckai has a small minority
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`ownership interest in Minerva. Except as expressly admitted herein, Minerva denies any and all
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`remaining allegations in Paragraph 26 of the Complaint.
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`-6-
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`

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`G.
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`The Minerva Endometrial Ablation System (“EAS”)
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`27. Minerva admits that the Minerva EAS has two main components: a disposable
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`handpiece and a radio frequency (RF) Controller. Minerva further admits that the distal end of the
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`disposable handpiece comprises a PFA, which includes an expandable metal frame covered by a
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`silicone membrane. Minerva further admits that the proximal end of the disposable handpiece
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`includes a feature that has sometimes been referred to as a PFA Width Indicator. Except as
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`expressly admitted, Minerva denies any and all remaining allegations in paragraph 27 of the
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`Complaint.
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`28. Minerva admits that paragraph 28 appears to include an annotated picture of
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`Minerva’s EAS showing a callout with the text “PFA width indicator.” Except as expressly
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`admitted, Minerva denies any and all remaining allegations in paragraph 28 of the Complaint.
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`26.2 Minerva admits that the handpiece of the Minerva EAS includes a Red Area, a
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`Green Area, and three rows of dots. Minerva admits that the picture reproduced in this paragraph
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`26 has a callout with the text “Width Indicator Graduations.” Minerva further admits that
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`Minerva’s clinical data excludes women with uteri that are smaller than 2.5 cm. Minerva further
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`admits that one of the reasons the rows of dots were added is because of feedback from physicians.
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`Except as expressly admitted, Minerva denies any and all remaining allegations in this paragraph
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`26 of the Complaint.
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`H.
`
`The Prior Lawsuit And Trial
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`26.3 Minerva admits that Plaintiffs filed a complaint in this Court against Minerva in
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`November 2015 alleging infringement of multiple patents including the ’348 Patent (the “First
`
`2 Paragraph 29 is incorrectly numbered paragraph 26 in the Complaint.
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`3 Paragraph 30 is incorrectly numbered paragraph 26 in the Complaint.
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`-7-
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`

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`Action”). Except as expressly admitted, Minerva denies any and all remaining allegations in this
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`paragraph 26 of the Complaint.
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`29.4 Minerva admits that, before trial, this Court ruled on summary judgment that
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`“Consistent with the court’s claim construction, the court finds that undisputed evidence in the
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`record establishes that Minerva has infringed the asserted claims of Hologic’s patents.
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`Accordingly, the court finds that Hologic’s motion for summary judgment on the issue of
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`infringement should be granted and Minerva’s corresponding motion should be denied.” Except
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`as expressly admitted, Minerva denies any and all remaining allegations in paragraph 29 of the
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`Complaint.
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`30. Minerva admits that as to the ’348 Patent, the Court found “Hologic’s motion for a
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`summary judgment of no invalidity should be granted and Minerva’s corresponding motion should
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`be denied.” Except as expressly admitted, Minerva denies any and all remaining allegations in
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`paragraph 30 of the Complaint.
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`31.
`
` Minerva admits that the Court found assignor estoppel applies to Minerva’s
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`defenses to Hologic’s patent infringement claims in the First Action. Except as expressly admitted,
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`Minerva denies any and all remaining allegations in paragraph 31 of the Complaint.
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`32. Minerva admits that following a July 2018 jury trial, the jury awarded lost profits
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`and reasonable royalty damages to Hologic and Cytyc in the First Action. Except as expressly
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`admitted, Minerva denies any and all remaining allegations in paragraph 32 of the Complaint.
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`33. Minerva admits that the Court denied Minerva’s renewed motion for judgment as
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`a matter of law, Minerva’s motion for a new trial, and Minerva’s motion for an injunction under
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`the Deceptive Trade Practices Act. Minerva further admits that on June 3, 2019, the Court entered
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`4 Paragraph 31 is incorrectly numbered paragraph 29 in the Complaint, and paragraph numbering
`continues from there.
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`-8-
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`

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`judgement against Minerva on Plaintiffs’ claim in the First Action for “infringement of U. S. Patent
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`No. 9,9095,348 in the amount of $4,787,668.23; plus prejudgment interest in the amount of
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`$270,533, plus post-judgment interest at the statutory rate of 2.44% under 35 U.S.C. § 1961(a).”
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`Minerva further admits that the Court entered judgement against Minerva on Plaintiffs’ claim in
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`the First Action for “infringement of U. S. Patent No. 9,9095,348 in the amount of $1,629,304.08
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`in supplemental damages for Minerva’s infringing sales from April 1, 2018, through August 13,
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`2018, plus prejudgment interest on that amount at the prime rate compounded quarterly from the
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`date of infringement to August 13, 2018, plus post-judgment interest thereafter at the legal rate
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`under 28 U.S.C. § 1961 until such time as the judgment is paid.” Except as expressly admitted,
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`Minerva denies any and all remaining allegations in paragraph 33 of the Complaint.
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`34. Minerva admits that on April 22, 2020, a panel of the Federal Circuit Court of
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`Appeals concluded that “the district court did not abuse its discretion in applying assignor
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`estoppel” and affirmed the district court’s grant of summary judgment of no invalidity as to claim
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`1 of the ’348 Patent. Minerva further admits that the panel held that “[b]ecause the district court
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`correctly construed the disputed terms in claim 1 of the ’348 patent,” the panel “affirm[ed] the
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`district court’s grant of summary judgment of infringement.” Except as expressly admitted,
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`Minerva denies any and all remaining allegations in paragraph 34 of the Complaint.
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`I.
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`The Accused “New Pivot” Product
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`35. Minerva admits that it started shipping its redesigned Minerva EAS handpiece
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`starting on June 28, 2018. Minerva denies that it concealed the first shipment of that design or that
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`it did so to avoid having it adjudicated in the First Action. Except as expressly admitted, Minerva
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`denies any and all remaining allegations in paragraph 35 of the Complaint.
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`-9-
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`36. Minerva admits that it conceived the modified design in 2016, after Plaintiffs had
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`commenced the First Action. Minerva further admits it developed prototypes of an EAS handpiece
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`that incorporated a design change such that the grips of the handpiece are not pivotably attached
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`at a pivot point. Except as expressly admitted, Minerva denies any and all remaining allegations
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`in paragraph 36 of the Complaint.
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`37. Minerva admits that the redesigned Minerva EAS handpiece includes changes to
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`the proximal and distal grips of the hand piece and the method and design for the attachment of
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`the grips. Except as expressly admitted, Minerva denies any and all remaining allegations in
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`paragraph 37 of the Complaint.
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`38. Minerva admits that as the proximal and distal grips in the redesigned Minerva EAS
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`handpiece are squeezed together, they slide toward one another, engaging two leaf spring tabs
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`inside the proximal grip. Except as expressly admitted, Minerva denies any and all remaining
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`allegations in paragraph 38 of the Complaint.
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`J.
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`Infringement Of The ’348 Patent By The Accused “New Pivot” Product
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`39. Minerva admits that, in the First Action, this Court ruled on summary judgment
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`that “[c]onsistent with the court’s claim construction, the court finds that undisputed evidence in
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`the record establishes that Minerva has infringed the asserted claims of Hologic’s patents.
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`Accordingly, the court finds that Hologic’s motion for summary judgment on the issue of
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`infringement should be granted and Minerva’s corresponding motion should be denied.” Except
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`as expressly admitted, Minerva denies any and all remaining allegations in paragraph 39 of the
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`Complaint.
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`40.
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`Denied.
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`-10-
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`

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`41. Minerva admits that claim 1 of the ’348 Patent recites in part: “a handle coupled to
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`the proximal portion of the elongate member, wherein the handle comprises a frame, a proximal
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`grip and a distal grip pivotally attached to one another at a pivot point.” Except as expressly
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`admitted, Minerva denies any and all remaining allegations in paragraph 41 of the Complaint.
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`42.
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`Denied.
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`43. Minerva admits that it argued in the First Action that the redesigned Minerva EAS
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`handpiece does not infringe the ’348 Patent and therefore it is a non-infringing design option.
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`Minerva further admits that it moved for summary judgment that the doctrine of equivalents is not
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`applicable to Minerva’s redesign. Except as expressly admitted, Minerva denies any and all
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`remaining allegations in paragraph 43 of the Complaint.
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`K.
`
`Minerva’s Concealment Of Its Commercialization Of The New Pivot Design
`And Its Willful Infringement
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`44.
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`Denied.
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`45. Minerva admits that, in the First Action, it produced in discovery physical protypes
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`of the redesigned Minerva EAS handpiece and related documents to show that it was a non-
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`infringing design option as to the asserted ’348 Patent claims. Except as expressly admitted,
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`Minerva denies any and all remaining allegations in paragraph 45 of the Complaint.
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`46.
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`47.
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`Denied.
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`Denied.
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`48. Minerva admits that on June 20, 2018, after the close of discovery, Plaintiffs filed
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`a letter with the Court requesting documents regarding Minerva’s design-around, prototype
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`handpiece for the accused product, including communications with the FDA regarding the status
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`of any application for approval to market the prototype handpiece. Minerva further admits that on
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`June 22, 2018 it correctly objected to this improper discovery because, at the time, the new design
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`-11-
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`was not (and could not be) accused by Plaintiffs of infringement, as it was not currently in the
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`market. Minerva further admits that it started shipping its redesigned Minerva EAS handpiece
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`starting on June 28, 2018. Minerva denies that any of Minerva’s assertions were misleading or
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`needed correction. Minerva is without knowledge or information sufficient to form a belief as to
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`the truth of when Plaintiffs learned Minerva started shipping its redesigned Minerva EAS
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`handpiece. Except as expressly admitted, Minerva denies any and all remaining allegations in
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`paragraph 48 of the Complaint.
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`49. Minerva admits that one or more of its witnesses testified correctly at deposition
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`that Minerva had not completed verification and validation testing of the redesigned Minerva EAS
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`handpiece and not a single physician had looked at or tested the redesigned handpiece as of the
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`date of the deposition(s). Minerva further admits that it correctly confirmed during discovery that
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`that it had not applied for FDA clearance for this design. Minerva denies that it had any obligation
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`to provide the supplementation Hologic refers to in paragraph 49. Except as expressly admitted,
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`Minerva denies any and all remaining allegations in paragraph 49 of the Complaint.
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`50. Minerva admits the Court ruled on the parties’ summary judgment motions on June
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`28, 2018. Minerva further admits the Court agreed “with Hologic’s position that a ruling on the
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`purported handle redesign would be an improper advisory opinion since the product is not being
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`marketed and is not alleged to be infringing Hologic’s patent.” Minerva further admits that it
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`started shipping its redesigned Minerva EAS handpiece starting on June 28, 2018. Except as
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`expressly admitted, Minerva denies any and all remaining allegations in paragraph 50 of the
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`Complaint.
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`51. Minerva admits that, at the trial in late-July 2018, it correctly distinguished between
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`the redesigned Minerva EAS handpiece on one hand and the one Plaintiffs accused of infringement
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`-12-
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`in the First Action. Minerva further admits that it started shipping its redesigned Minerva EAS
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`handpiece starting on June 28, 2018. Minerva admits that Mr. Truckai testified correctly at trial
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`that he was “not aware of design-around” but Minerva denies that this statement or any other was
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`misleading. Except as expressly admitted, Minerva denies any and all remaining allegations in
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`paragraph 51 of the Complaint.
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`52. Minerva admits it started shipping its redesigned Minerva EAS handpiece starting
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`on June 28, 2018. Minerva admits the Court ruled on the parties’ summary judgment motions on
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`June 28, 2018. Minerva further admits the Court agreed “with Hologic’s position that a ruling on
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`the purported handle redesign would be an improper advisory opinion since the product is not
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`being marketed and is not alleged to be infringing Hologic’s patent.” Minerva further admits that
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`on June 22, 2018 it correctly objected to improper discovery regarding the new design because, at
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`the time, the new design was not (and could not be) accused by Plaintiffs of infringement, as it
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`was not currently in the market. Except as expressly admitted, Minerva denies any and all
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`remaining allegations in paragraph 52 of the Complaint.
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`53.
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`54.
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`Denied.
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`Denied.
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`COUNT I
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`(Defendant’s Infringement of the ’348 Patent)
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`55. Minerva incorporates by reference the above paragraphs of this Answer.
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`56.
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`Denied.
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`57. Minerva admits it has had knowledge the ’348 Patent since at least 2016. Minerva
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`further admits it had knowledge of the NovaSure system. Except as expressly admitted, Minerva
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`denies any and all remaining allegations in paragraph 57 of the Complaint.
`
`-13-
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`58.
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`59.
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`60.
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`61.
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Denied
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`Denied.
`
`Denied.
`
`Denied.
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`PRAYER FOR RELIEF
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`Minerva denies that Plaintiffs are entitled to the relief requested in paragraph 1.
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`Minerva denies that Plaintiffs are entitled to the relief requested in paragraph 2.
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`Minerva denies that Plaintiffs are entitled to the relief requested in paragraph 3.
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`Minerva denies that Plaintiffs are entitled to the relief requested in paragraph 4.
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`Minerva denies that Plaintiffs are entitled to the relief requested in paragraph 5.
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`Minerva denies that Plaintiffs are entitled to the relief requested in paragraph 6.
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`JURY DEMAND
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`62.
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`Plaintiffs demand for a jury trial does not state any allegation against Minerva to
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`which a response is required. To the extent that any allegations are included in the demand,
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`Minerva denies such allegations.
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`AFFIRMATIVE DEFENSES
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`In addition to the affirmative defenses described below, subject to its responses above,
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`Minerva respectfully reserves all right to allege affirmative defenses that become known through
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`the course of discovery.
`
`FIRST AFFIRMATIVE DEFENSE
`(Failure to State Claim)
`
`63.
`
` Plaintiffs Complaint fails to state a claim upon which relief may be granted.
`
`-14-
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 10 Filed 08/31/20 Page 15 of 18 PageID #: 82
`
`SECOND AFFIRMATIVE DEFENSE
`(Noninfringement)
`
`64. Minerva is not infringing and has not infringed, either literally or under the doctrine
`
`of equivalents or in any other way, any valid enforceable claim of the ’348 Patent.
`
`THIRD AFFIRMATIVE DEFENSE
`(Invalidity)
`
`65.
`
`One or more asserted claims of the ’348 Patent are invalid for failing to meet the
`
`conditions for patentability in 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`FOURTH AFFIRMATIVE DEFENSE
`(Prosecution History Estoppel)
`
`66.
`
`One or more asserted claims of the ’348 Patent are and were limited by amendment,
`
`the prior art, and/or by the statements made during their prosecution before the U.S. Patent and
`
`Trademark Office such that Hologic is now estopped and/or otherwise precluded from maintaining
`
`that such claims of the ’348 Patent are of sufficient scope to cover the accused products either
`
`literally or under the doctrine of equivalents.
`
`FIFTH AFFIRMATIVE DEFENSE
`(Safe Harbor)
`
`67.
`
`There is no infringement—directly, by inducement, contributorily or in any other
`
`way—of any valid claim of the ’348 Patent by Minerva for any allegedly infringing activities
`
`falling within the safe harbor under 35 U.S.C. § 271(e).
`
`SIXTH AFFIRMATIVE DEFENSE
`(Obviousness-Type Double Patenting)
`
`68.
`
`The asserted claims of the ’348 Patent are subject to the doctrine of obviousness-
`
`type double patenting. In order to issue, the asserted claims of the ’348 patent should have been
`
`subject to a terminal disclaimer setting their expiration date as April 12, 2016.
`
`-15-
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 10 Filed 08/31/20 Page 16 of 18 PageID #: 83
`
`SEVENTH AFFIRMATIVE DEFENSE
`(Unclean Hands)
`
`69.
`
`Plaintiffs’ claims are barred by the doctrine of unclean hands, including Plaintiffs
`
`filing this lawsuit in bad faith.
`
`REQUEST FOR RELIEF
`
`WHEREFORE, Minerva respectfully requests that the Court:
`
`A.
`
`B.
`
`C.
`
`Enter judgment in favor of Minerva;
`
`Dismiss all of Plaintiffs’ claims in their entirety with prejudice;
`
`Award Minerva its reasonable costs and fees, including attorneys’ fees under 35
`
`U.S.C. § 285; and
`
`D.
`
`Grant any other relief as the Court may deem appropriate and just under the
`
`circumstances.
`
`-16-
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 10 Filed 08/31/20 Page 17 of 18 PageID #: 84
`
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`
` /s/ Ian R. Liston
`Ian R. Liston (#5507)
`222 Delaware Avenue, Suite 800
`Wilmington, DE 19801
`(302) 304-7600
`iliston@wsgr.com
`
`Counsel for Defendant Minerva Surgical, Inc.
`
`Of Counsel:
`
`Vera M. Elson
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 849-3495
`Fax: (650) 493-6811
`velson@wsgr.com
`
`Olivia M. Kim*
`Erik Carlson*
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071
`(323) 210-2900
`okim@wsgr.com
`ecarlson@wsgr.com
`
`*Applications for admission pro hac vice to
`be submitted
`
`Dated: August 31, 2020
`
`-17-
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 10 Filed 08/31/20 Page 18 of 18 PageID #: 85
`
`CERTIFICATE OF SERVICE
`
`I, Ian R. Liston, hereby certify that on August 31, 2020, I caused the foregoing Defendants’
`
`Answer to Complaint for Patent Infringement to be served via electronic mail upon the following
`
`counsel of record:
`
`Karen L. Pascale
`Pilar G. Kraman
`YOUNG CONAWAY STARGATT & TAYLOR LLP
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`kpascale@ycst.com
`pkraman@ycst.com
`
`Counsel for Plaintiffs Hologic, Inc. and
`Cytyc Surgical Products, LLC
`
`Matthew M. Wolf
`Jennifer A. Sklenar
`Marc A. Cohn
`ARNOLD & PORTER LLP
`601 Massachusetts Avenue, N.W.
`Washington, D.C. 20001-3743
`matthew.wolf@arnoldporter.com
`jennifer.sklenar@arnoldporter.com
`marc.cohn@arnoldporter.com
`
`Counsel for Plaintiffs Hologic, Inc.
`and Cytyc Surgical Products, LLC
`
` /s/ Ian R. Liston
`Ian R. Liston (#5507)
`
`