Case 1:20-cv-00925-JFB-SRF Document 29 Filed 11/13/20 Page 1 of 9 PageID #: 555
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`HOLOGIC, INC., a Delaware corporation; and
`CYTYC SURGICAL PRODUCTS, LLC, a
`Massachusetts limited liability company,
`
`Plaintiffs,
`
`v.
`
`MINERVA SURGICAL, INC., a Delaware
`corporation,
`
`
`Defendant.
`
`
`
`
`
`
` C.A. No. 20-925-JFB-SRF
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`
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`HOLOGIC, INC. AND CYTYC SURGICAL PRODUCTS, LLC’S
`NOTICE OF 30(b)(6) DEPOSITION OF MINERVA SURGICAL, INC.
`
`PLEASE TAKE NOTICE THAT, pursuant to Rule 30(b)(6) of the Federal Rules of Civil
`
`Procedure, Plaintiffs Hologic, Inc. and Cytyc Surgical Products, LLC (collectively, “Hologic”),
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`by their attorneys, will take the deposition upon oral examination of Defendant Minerva
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`Surgical, Inc. (“Minerva”) through one or more of its officers, directors, or managing agents, or
`
`other persons who consent to testify on their behalf, with regard to the matters set forth in the
`
`attached Schedule A.
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`The depositions will take place at mutually agreeable dates and locations as may be
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`agreed upon by the parties. The depositions will be taken before a qualified notary public or
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`other officer authorized by law to administer oaths. The depositions will be recorded
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`stenographically and will be videotaped. By November 30, 2020, Minerva shall identify those
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`witnesses designated on behalf of Minerva, and shall identify those topics on which each
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`respective witness will testify for Minerva.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`HOLOGIC, INC., a Delaware corporation; and
`CYTYC SURGICAL PRODUCTS, LLC, a
`Massachusetts limited liability company,
`
`Plaintiffs,
`
`v.
`
`MINERVA SURGICAL, INC., a Delaware
`corporation,
`
`
`Defendant.
`
`
`
`
`
`
` C.A. No. 20-925-JFB-SRF
`
`
`
`
`
`HOLOGIC, INC. AND CYTYC SURGICAL PRODUCTS, LLC’S
`NOTICE OF 30(b)(6) DEPOSITION OF MINERVA SURGICAL, INC.
`
`PLEASE TAKE NOTICE THAT, pursuant to Rule 30(b)(6) of the Federal Rules of Civil
`
`Procedure, Plaintiffs Hologic, Inc. and Cytyc Surgical Products, LLC (collectively, “Hologic”),
`
`by their attorneys, will take the deposition upon oral examination of Defendant Minerva
`
`Surgical, Inc. (“Minerva”) through one or more of its officers, directors, or managing agents, or
`
`other persons who consent to testify on their behalf, with regard to the matters set forth in the
`
`attached Schedule A.
`
`The depositions will take place at mutually agreeable dates and locations as may be
`
`agreed upon by the parties. The depositions will be taken before a qualified notary public or
`
`other officer authorized by law to administer oaths. The depositions will be recorded
`
`stenographically and will be videotaped. By November 30, 2020, Minerva shall identify those
`
`witnesses designated on behalf of Minerva, and shall identify those topics on which each
`
`respective witness will testify for Minerva.
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`
`
`
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`
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`Case 1:20-cv-00925-JFB-SRF Document 29 Filed 11/13/20 Page 2 of 9 PageID #: 556
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`
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`YOUNG CONAWAY STARGATT & TAYLOR LLP
`/s/ Karen L. Pascale
`
`
`Karen L. Pascale (#2903)
`Pilar G. Kraman (#5199)
`Rodney Square
`1000 North King Street
`Wilmington, Delaware 19801
`(302) 571-6600
`kpascale@ycst.com
`pkraman@ycst.com
`Attorneys for Plaintiffs, Hologic, Inc.
`and Cytyc Surgical Products, LLC
`
`DATED: November 13, 2020
`
`Of Counsel:
`
`Matthew M. Wolf
`Marc A. Cohn
`Jennifer A. Sklenar*
`ARNOLD & PORTER KAYE SCHOLER LLP
`601 Massachusetts Ave., NW
`Washington, DC 20001-3743
`Telephone: (202) 942-5000
`matthew.wolf@arnoldporter.com
`marc.cohn@arnoldporter.com
`jennifer.sklenar@arnoldporter.com
`
` *
`
` Admitted in NY and CA only; practice
`limited to matters before federal courts and
`federal agencies.
`
`Ryan J. Casamiquela
`ARNOLD & PORTER KAYE SCHOLER LLP
`Three Embarcadero Center
`San Francisco, CA 94111-4024
`Telephone: (415) 471-3100
`ryan.casamiquela@arnoldporter.com
`
`Assad H. Rajani
`ARNOLD & PORTER KAYE SCHOLER LLP
`Five Palo Alto Square
`3000 El Camino Real, Suite 500
`Palo Alto, CA 94306
`Telephone: (650) 319-4500
`assad.rajani@arnoldporter.com
`
`
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`27339286.1
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`Case 1:20-cv-00925-JFB-SRF Document 29 Filed 11/13/20 Page 3 of 9 PageID #: 557
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`
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`SCHEDULE A
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`DEFINITIONS
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`1.
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`The terms “Minerva,” “You,” “Your,” and “Defendant” mean Defendant Minerva
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`Surgical, Inc., including but not limited to any past or present divisions, departments, parents,
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`predecessors, successors, subsidiaries, affiliates, and other organizational or operating units, and
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`past or present officers, directors, employees, agents, representatives, consultants, attorneys, and
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`others acting or purporting to act on its behalf.
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`2.
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`The terms “Hologic” and “Plaintiffs” mean Plaintiffs Hologic, Inc. and Cytyc
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`Surgical Products, LLC, including but not limited to any past or present divisions, departments,
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`parents, predecessors, successors, subsidiaries, affiliates, and other organizational or operating
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`units, and past or present officers, directors, employees, agents, representatives, consultants,
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`attorneys, and others acting or purporting to act on their behalf.
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`3.
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`The term “Lawsuit” means the present case captioned Hologic, Inc. v. Minerva
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`Surgical, Inc., No. 20-925-JFB-SRF (D. Del.).
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`4.
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`The phrase “First Action” means Hologic, Inc. v. Minerva Surgical, Inc., No. 15-
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`1031-JFB-SRF (D. Del.).
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`5.
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`The phrases “Asserted Patent” and “the ’348 Patent” mean U.S. Patent
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`No. 9,095,348.
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`6.
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`The phrase “Minerva EAS” means the Minerva Endometrial Ablation System
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`found to infringe claim 1 of the ’348 Patent in the First Action.
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`7.
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`The phrase “New Pivot Device” means the Minerva Endometrial Ablation System
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`with the “New Pivot” handpiece design, including any Minerva Endometrial Ablation System
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`handpiece sold and/or offered for sale between June 28, 2018 and November 19, 2018, inclusive,
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`that were not adjudicated in the First Action.
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`27339286.1
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`Case 1:20-cv-00925-JFB-SRF Document 29 Filed 11/13/20 Page 4 of 9 PageID #: 558
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`8.
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`The phrase “New Pivot Prototypes” means the prototype handpieces produced in
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`the First Action and marked as Exhibits 7-10 and 19-20 to the deposition of Burt Magen.
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`9.
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`The phrase “Minerva Endometrial Ablation System” means the Minerva
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`Endometrial Ablation System, whether the Minerva Disposable Handpiece and/or Minerva RF
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`Controller portions, and all of its prototypes or versions and any and all components or parts
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`thereof, including without limitation the Minerva EAS, New Pivot Device, and New Pivot
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`Prototypes.
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`10.
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`The phrase “NovaSure systems” means the NovaSure Endometrial Ablation
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`System, including the NovaSure Endometrial Ablation System, Generation 3 (or NovaSure
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`CLASSIC), the NovaSure ADVANCED Endometrial Ablation System, or both.
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`11.
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`The terms “sale,” “sold,” and “purchase” include—in addition to actual or true
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`sales—other sales arrangements such as leases, rentals, consignments, and other similar
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`transactions.
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`12.
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`The term “document” shall have the broadest meaning ascribed to it by Federal
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`Rules of Civil Procedure 26 and 34(a) and refers inclusively to any writing of any kind,
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`including originals and all non-identical copies.
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`13.
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`The term “communication” includes any transfer of information, ideas, opinions,
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`or thoughts by any means, written, oral, or otherwise, at any time or place under any
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`circumstances. The definition is not limited to transfers between persons but also includes other
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`transfers, such as records and memoranda to file; any written letter, memorandum, or other
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`document which was sent by one or more individuals to another or others; any telephone call
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`between one or more individuals and another or others, whether such call was by chance or
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`27339286.1
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`Case 1:20-cv-00925-JFB-SRF Document 29 Filed 11/13/20 Page 5 of 9 PageID #: 559
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`prearranged, formal or informal; and any conversation or meeting between one or more
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`individuals and another, whether such contact was by chance or prearranged, formal or informal.
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`14.
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`The terms “person” or “person(s)” mean any natural person or legal entity,
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`including but not limited to any corporation, partnership, proprietorship, firm group, association,
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`organization, business entity, governmental body, agency, or any agent of any of the foregoing.
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`15.
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`The term “identify” means (a) with respect to a person, to state each person’s full
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`name, present and last known address, telephone numbers, job title, and present employer and (b)
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`with respect to a document, to state the date on which the document was prepared, the nature of
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`the document, the author(s) of the document, the recipient(s) of the document, and the subject
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`matter of the document.
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`16.
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`The terms “relate,” “refer,” “reflect,” “concern,” or “pertain” mean discussing,
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`evidencing, mentioning, memorializing, describing, constituting, containing, analyzing, studying,
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`reporting on, commenting on, recommending, concerning, reflecting, summarizing, relating to,
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`referring to, pertaining to, supporting, refuting, and/or purporting to evidence, mention,
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`memorialize, describe, constitute, contain, concern, reflect, summarize, refer to, support, refute,
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`and/or in any way be relevant to, in whole or in part.
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`17.
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`The terms “any” and “each” shall be understood in either its most or least
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`inclusive sense as will bring within the scope of discovery the discovery request all responses
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`that might otherwise be construed to be outside of its scope.
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`18.
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`The terms “and” and “or” shall be interpreted both conjunctively and
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`disjunctively so as not to exclude any information otherwise within the scope of any discovery
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`request.
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`19.
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`The term “including” means “including, without limitation.”
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`Case 1:20-cv-00925-JFB-SRF Document 29 Filed 11/13/20 Page 6 of 9 PageID #: 560
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`20.
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`The use of the singular form of any word includes the plural and vice versa.
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`1.
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`The structure, composition, function, and operation of the New Pivot Device, or
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`TOPICS
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`any component thereof.
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`2.
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`Any and all differences between any Minerva product sold between June 28, 2018
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`and November 19, 2018, inclusive, and the New Pivot Prototypes.
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`3.
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`Any and all differences between any Minerva product sold between June 28, 2018
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`and November 19, 2018, inclusive, and the Minerva EAS.
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`4.
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`First manufacture, first use, first offer for sale, and first sale of the New Pivot
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`Device.
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`5.
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`Sales of the New Pivot Device, including: revenues, unit sales, gross and net
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`profits, market share, profit margins, and fixed and variable costs.
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`6.
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`The facts supporting or contradicting Your contention that the New Pivot Device
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`does not meet any limitation of the asserted claims of the Asserted Patent.
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`7.
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`The facts supporting or contradicting Your contention that Minerva did not
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`willfully infringe the Asserted Patent with respect to New Pivot Device, including without
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`limitation why Minerva did not know, or why Minerva should not have known, of a high risk of
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`infringement of the Asserted Patent.
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`8.
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`The regulatory approval process for the New Pivot Device, including without
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`limitation pre-approval testing, the preparation and submission of any applications to obtain
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`regulatory approval to market and sell the New Pivot Device, communications with any
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`governmental or regulatory agency concerning the New Pivot Device, and any post-approval
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`submissions or studies.
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`27339286.1
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`Case 1:20-cv-00925-JFB-SRF Document 29 Filed 11/13/20 Page 7 of 9 PageID #: 561
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`9.
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`Any analysis, study, evaluation, research, investigation, or opinions regarding
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`infringement of the Asserted Patent by the New Pivot Prototypes or the New Pivot Device
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`performed by, on behalf of, or at the direction of You.
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`10.
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`Design changes to the New Pivot Device and the New Pivot Prototypes, where the
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`changes were made to design around any of the NovaSure systems.
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`11.
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`Design changes to the New Pivot Device and the New Pivot Prototypes, where the
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`changes were made to design around the technology disclosed or claimed in the Asserted Patent
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`(or its underlying patent application).
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`12.
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`Each instance in which you reviewed or relied on Hologic’s patents or any of the
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`NovaSure systems during the design or development of any feature incorporated into the New
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`Pivot Device and the New Pivot Prototypes.
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`13.
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`Each instance in which you asked any third party to review or rely on Hologic’s
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`patents or any of the NovaSure systems during the design or development of any feature
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`incorporated into the New Pivot Device and the New Pivot Prototypes.
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`14.
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`All work performed by MedRes for the design or development of any feature
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`incorporated into the New Pivot Device and the New Pivot Prototypes.
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`15.
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`Your review, analysis, or reliance on the January 20, 2017 opinion of counsel
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`letter of Burt Magen.
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`16.
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`Your communications with Burt Magen regarding the Asserted Patent or the
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`Minerva Endometrial Ablation System, including the Minerva EAS, New Pivot Prototypes, and
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`New Pivot Device.
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`17.
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`Your beliefs, from the date You began selling the New Pivot Device through
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`November 19, 2018, as to whether You infringed the Asserted Patent.
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`27339286.1
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`Case 1:20-cv-00925-JFB-SRF Document 29 Filed 11/13/20 Page 8 of 9 PageID #: 562
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`18.
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`Your beliefs, from the date You began selling the New Pivot Device through
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`November 19, 2018, as to whether the Asserted Patent was valid.
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`19.
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`Discussions within Minerva or among Minerva’s Board of Directors regarding
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`whether the New Pivot Device or New Pivot Prototypes infringed the Asserted Patent.
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`20.
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`21.
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`22.
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`Your decision to launch the New Pivot Device.
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`Discussions within Minerva regarding whether to launch the New Pivot Device.
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`Your awareness of the launch of the New Pivot Device during the July 2018 jury
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`trial in the First Action, including awareness by Csaba Truckai, David Clapper, Eugene Skalnyi,
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`Dominique Filloux, Thomas Pendlebury, or any personnel from Wilson Sonsini Goodrich &
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`Rosati.
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`23.
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`Discussions or decisions within Minerva regarding whether to disclose the launch
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`of the New Pivot Device to Hologic, the Jury, or the Court in the First Action.
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`27339286.1
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`Case 1:20-cv-00925-JFB-SRF Document 29 Filed 11/13/20 Page 9 of 9 PageID #: 563
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`CERTIFICATE OF SERVICE
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`I, Karen L. Pascale, Esquire, hereby certify that on November 13, 2020, I caused to be
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`electronically filed a true and correct copy of the foregoing document with the Clerk of the Court
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`using CM/ECF (which will send notification that such filing is available for viewing and
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`downloading to all registered counsel), and in addition caused true and correct copies of the
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`foregoing document to be served upon the following counsel of record by electronic mail:
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`Attorneys for Defendant, Minerva Surgical, Inc.:
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`Ian R. Liston
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`222 Delaware Avenue, Suite 800
`Wilmington, DE 19801
`
`Vera M. Elson
`Dale R. Bish
`Christopher D. Mays
`WILSON SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`
`Edward G. Poplawski
`Olivia M. Kim
`Erik J. Carlson
`Neil N. Desai
`WILSON SONSINI GOODRICH & ROSATI
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071
`
`iliston@wsgr.com
`
`velson@wsgr.com
`dbish@wsgr.com
`cmays@wsgr.com
`
`epoplawski@wsgr.com
`okim@wsgr.com
`ecarlson@wsgr.com
`ndesai@wsgr.com
`
`
`
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`November 13, 2020
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` 26950114.1
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`YOUNG CONAWAY STARGATT & TAYLOR, LLP
`/s/ Karen L. Pascale
`
`
`Karen L. Pascale (No. 2903) [kpascale@ycst.com]
`Pilar G. Kraman (#5199) [pkraman@ycst.com]
`Rodney Square
`1000 North King Street
`Wilmington, Delaware 19801
`Telephone: 302-571-6600
`Attorneys for Plaintiffs, Hologic, Inc.
`and Cytyc Surgical Products, LLC
`
`
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