Case 1:20-cv-00925-JFB-SRF Document 55 Filed 01/06/21 Page 1 of 6 PageID #: 1201
`
`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,
`
`REDACTED PUBLIC VERSION
`
`C.A. No. 20-925-JFB-SRF
`
`Plaintiffs,
`
`v.
`
`
`
`MINERVA SURGICAL, INC., a Delaware
`corporation,
`
`Defendant.
`
`DEFENDANT’S ANSWERING LETTER BRIEF REGARDING
`DISCOVERY ISSUES FOR JANUARY 5, 2021 TELECONFERENCE
`
`Ian Robert Liston (Del. Bar ID No. 5507)
`WILSON SONSINI GOODRICH & ROSATI PC
`222 Delaware Avenue, Suite 800
`Wilmington, DE 19801
`Telephone: (302) 304-7606
`iliston@wsgr.com
`
`Attorneys for Defendant Minerva Surgical,
`Inc.
`
`Of Counsel:
`
`Edward G. Poplawski
`Erik J. Carlson
`Olivia M. Kim
`WILSON SONSINI GOODRICH & ROSATI PC
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071
`Telephone: (323) 210-2900
`epoplawski@wsgr.com
`ecarlson@wsgr.com
`okim@wsgr.com
`
`Vera M. Elson
`WILSON SONSINI GOODRICH & ROSATI PC
`650 Page Mill Road
`Palo Alto, CA 94304
`Telephone: (650) 493-9300
`velson@wsgr.com
`
`Dated: December 30, 2020
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 55 Filed 01/06/21 Page 2 of 6 PageID #: 1202
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`Dear Judge Fallon:
`
`Defendant Minerva Surgical, Inc. (“Minerva”) hereby respectfully responds to Plaintiffs
`Hologic, Inc. and Cytyc Surgical Products, LLC’s (“Hologic”) motion to compel (D.I. 49). While
`Minerva has opted to rely on an opinion-of-counsel defense, Hologic’s allegation that Minerva
`“refuses to provide discovery into the subject matter of the opinion” (id. at 1) is flatly wrong.
`WSGR has been Minerva’s trial counsel since 2015 when the parties began litigating the same
`’348 patent at issue here in Case No. 1:15-cv-01031 (the “First Action”). In the First Action,
`Minerva also retained separate and independent opinion counsel (Burt Magen of the Vierra Magen
`firm) to evaluate its redesign. Ex. 1 at 1. On January 20, 2017, that firm generated an opinion
`concluding that the redesign does not infringe the ’348 patent. Id. Minerva produced opinion on
`February 1, 2017, the deadline Judge Robinson set for reliance on opinions of counsel. First
`Action, D.I. 134 ¶ 3. Minerva also produced all communications between itself and opinion
`counsel. On April 14 and September 12, 2017, Hologic took two depositions of opinion counsel
`(Exs. 2 and 3), and on April 10 and October 17, 2017, Hologic took two depositions of Minerva’s
`CTO, the recipient of the opinion (Exs. 4 and 5). At no time has WSGR sought to impede or assert
`privilege with respect to Hologic’s extensive discovery into Minerva’s communications with
`opinion counsel, or its subjective good faith beliefs and/or reliance on those communications.
`
` Hologic admits it knew in October 2018—during post-trial briefing in the First Action—
`that Minerva first began shipping its redesign on June 28, 2018. Ex. 6 at 12. Notably, in its post-
`trial proceedings, Hologic contended Minerva’s redesign was an accused device subject to the
`verdict in the First Action, and sought damages on the redesign.1 Yet despite this, at no time during
`those years of litigation did Hologic ever contend that Minerva had waived the privilege as to
`communications with trial counsel on any issue of infringement regarding the redesign. This was
`proper given Minerva’s clean division between the roles of opinion counsel and trial counsel.
`Hologic provides no evidence to the contrary. Seagate is the controlling authority here. In re
`Seagate Tech., LLC, 497 F.3d 1360, 1373 (Fed. Cir. 2007) (“Recognizing the value of a common
`approach . . . we conclude that the significantly different functions of trial counsel and opinion
`counsel advise against extending waiver to trial counsel.”).
`
`Despite having known the date of Minerva’s initial shipments (what Hologic appears to
`call the “launch”) of the redesign for nearly two years, on September 17, 2020 when Hologic
`submitted its proposed scheduling order in this case, it made no mention of the breathtakingly
`invasive discovery into privileged communications with trial counsel it now seeks going back to
`2017. D.I. 13. To the contrary, Hologic represented to this court that virtually all the discovery
`needed regarding the ’348 patent and Minerva’s redesign had already been completed in the First
`Action, and thus it proposed an extremely aggressive trial date of February 22, 2021. D.I. 13 at
`19. Further, at a meet and confer on December 15, 2020, Hologic’s counsel affirmatively
`represented that it would not seek communications with trial counsel, and so Minerva sought to
`confirm the deposition dates it previously provided for its witnesses. Exs. 7 and 8. Three days
`
`1 The Court agreed with Minerva that the redesign was not at issue in the First Action, and consequently,
`in awarding $1,629,304.08 in supplemental damages (First Action, D.I. 621 at ¶ 2), the Court rejected
`Hologic’s Proposed Final Judgment that included the sales of the redesigned product in the First Action
`(D.I. 617 at 5 (proposing supplemental damages of $2,275,160.94); see also D.I. 618 at 1).
`
`1
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`Case 1:20-cv-00925-JFB-SRF Document 55 Filed 01/06/21 Page 3 of 6 PageID #: 1203
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`later, Hologic flip-flopped and sought a full subject matter waiver and discovery into the privileged
`communications between Minerva and trial counsel. Hologic seeks to take the parties back to a
`pre-Seagate world when parties were faced with the Hobson’s choice of relying on an opinion at
`the risk of being deemed to have waived the privilege as to trial counsel. The cases Hologic relies
`upon are readily distinguishable as discussed below. Lastly, Hologic improperly seeks duplicative
`testimony from Csaba Truckai. Accordingly, Hologic’s motion should be denied in its entirety.
`
`I.
`
`The Waiver of Privilege Does Not Extend to Minerva’s Trial Counsel
`
`Hologic’s extraordinary and over-reaching request for Minerva’s communications with its
`trial counsel during the First Action is contrary to binding Federal Circuit precedent. See Seagate,
`497 F.3d at 1374-75 (“asserting the advice of counsel defense and disclosing opinions of opinion
`counsel do not constitute waiver of the attorney-client privilege for communications with trial
`counsel.”) (emphasis added); see also, e.g., Ampex Corp. v. Eastman Kodak Co., No. 04-1373-
`KAJ, 2006 U.S. Dist. LEXIS 48702, at *12 (D. Del. July 17, 2006) (denying a similar motion “as
`an extravagant demand at odds with the generally understood contours of the attorney-client
`privilege”). Hologic ineffectively attempts to distinguish Seagate by implying that prior to the
`instant complaint, WSGR was not trial counsel, but only “advisory counsel.”2 This ignores the
`nature of WSGR’s role in the First Action regarding the same ’348 patent, the same opinion, and
`the same redesign that Hologic maintained post-trial were at issue in the First Action. As noted
`above, WSGR has been trial counsel to Minerva involving this same patent since 2015. Mr.
`Magen, however, has never been or acted as trial counsel for Minerva—only opinion counsel.
`
`Under Seagate and the facts of this case, Hologic fails to provide any legal support for its
`eleventh-hour request to extend the opinion counsel waiver to trial counsel, which if granted in
`any respect (and it should not be) would undermine the feasibility of the current schedule, which
`presumably relied on Hologic’s representations about how little discovery would be needed. In an
`attempt to sidestep Seagate, Hologic cites to Zen Design Grp. Ltd. v. Scholastic, Inc., 327 F.R.D.
`155 (E.D. Mich. 2018), which is distinguishable and not binding on this court. In Zen Design, the
`court ordered production of communications from before any litigation between the parties had
`begun.
`Id. at 158, 162. The Zen Design court noted the “unique facts” of that case (i.e., trial
`counsel had served in an advisory role before litigation). Id. at 164. That is not this case. Here,
`WSGR has served as trial counsel since the litigation began in 2015, and before the issuance of
`the 2017 opinion in question. Indeed, this case is on all fours with the facts of Seagate, where all
`three opinions were only first received by Seagate from opinion counsel after the lawsuit began in
`July of 2000, including a third opinion received years later in February 2003. Seagate, 497 F.3d
`at 1366. Here, as in Seagate, Minerva received the opinion after WSGR became trial counsel, and
`“opinion counsel operated separately and independently of trial counsel at all times.” Id.
`
`Hologic speciously attempts to characterize the burden and prejudice to Minerva associated
`with its demands as reasonable by arguing it only seeks “discovery into events that occurred on or
`before November 9, 2018.” D.I. 49 at 3 n. 3. This is hardly a concession as the ’348 patent expired
`
` D.I. 49 at 3. The entity
`2 Hologic incorrectly claims WSGR, the law firm,
`
`Hologic references is WS Investments Company, LLC,
`. D.I. 49, Ex. 7 at -219001; Ex. 13. Hologic fails to explain
`or provide any support for how this waives privilege as to communications with trial counsel.
`
`2
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`Case 1:20-cv-00925-JFB-SRF Document 55 Filed 01/06/21 Page 4 of 6 PageID #: 1204
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`on November 19, 2018, after which nothing is relevant. Additionally, Hologic’s request presents
`serious proportionality concerns under FED. R. CIV. P. 26 given that this case involves less than
`five months of sales of the Redesigned Minerva EAS (June 28 to November 19, 2018) while
`Hologic’s motion seeks to force Minerva to go back years and comb through communications with
`trial counsel. See Seagate, 497 F.3d at 1367 (vacating waiver as to trial counsel and noting that
`[Plaintiff] Convolve had sought intrusive discovery of trial counsel including communications,
`work product, and going so far as to notice depositions of trial counsel).
`
`Hologic next argues that the Federal Circuit’s distinction in Seagate between trial counsel
`and opinion counsel supports its request. D.I. 49 at 3. It does not. The Federal Circuit explained
`in Seagate that “trial counsel focuses on litigation strategy and evaluates the most successful
`manner of presenting a case to a judicial decision maker. And trial counsel is engaged in an
`adversarial process.” Seagate, 497 F.3d at 1373 (further noting that, “fairness counsels against
`disclosing trial counsel’s communications on an entire subject matter in response to an accused
`infringer’s reliance on opinion counsel’s opinion to refute a willfulness allegation.”).3 WSGR falls
`squarely within the Federal Circuit’s description of the role trial counsel in the First Action during
`the relevant time frame, up to and including handling the trial presentation. Hologic’s argument
`that “WSGR was acting as pre-litigation advisory counsel for Minerva’s ‘informed business
`decisions’ regarding product development and launch” is bare attorney argument. D.I. 49 at 4.
`
`Hologic’s final sword/shield argument was expressly rejected by Seagate. 497 F.3d at
`1373 (noting that protecting trial counsel advice “does not present the classic ‘sword and shield’
`concerns typically mandating broad subject matter waiver.”). Hologic’s motion should be denied.4
`
`II. Minerva’s Discovery Responses Reflect the Proper Scope of Waiver
`
`Hologic incorrectly argues that In re EchoStar Commc’ns Corp., 448 F.3d 1294 (Fed. Cir.
`2006) extends waiver to “all document and communications regarding the same subject matter of
`the Magen opinion.” D.I. 49 at 1. Hologic ignores the Federal Circuit’s decision a year later in
`Seagate that rejected this argument and excluded trial counsel from the scope of waiver. See
`Seagate, 497 F.3d at 1374-75. Further, Hologic fails to mention that Minerva informed Hologic
`that it is not withholding documents within the proper scope of waiver (i.e., excluding trial counsel)
`and already produced such documents during discovery in the First Action. Exs. 7, 8, and 9.
`
`First, as to Topic 19 and RFP 31, neither EchoStar nor John Hopkins support Hologic’s
`request for communications between Minerva’s trial counsel and its board. “EchoStar did not
`consider waiver of the advice of counsel defense as it relates to trial counsel.” Seagate, 497 F.3d
`at 1370. Johns Hopkins explicitly excluded communications with trial counsel from the scope of
`
`3 The district court cases Hologic cites are distinguishable. See Cordis Corp. v. Bos. Sci. Corp., C.A. No.
`03-27-SLR, 2010 WL 331792, at *1 (D. Del. Jan. 28, 2010) (did not address scope of waiver); Krausz
`Indus. Ltd. v. Smith-Blair, Inc. No. 5:12-CV-00570-FL, 2016 WL 10538004, at *9-10 (E.D.N.C. Dec. 13,
`2016) (distinguishable where opinion counsel’s “active, on-going involvement in this litigation blurs the
`lines between the roles of objective advisor and partisan advocate”; also noting that opinion counsel “was
`involved in developing and implementing [defendants’] litigation strategy.” Not the situation in this case.).
`4 To the extent after exhausting all objections and appeals it is found that the waiver extends to Minerva’s
`trial counsel, Minerva reserves the right to elect to withdraw its advice-of-counsel defense and avoid such
`a waiver. See Zen Design, 327 F.R.D. at 165.
`
`3
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`Case 1:20-cv-00925-JFB-SRF Document 55 Filed 01/06/21 Page 5 of 6 PageID #: 1205
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`waiver. Johns Hopkins Univ. v. Alcon Labs., Inc., No. 15-525-SLR/SRF, 2017 WL 3013249, at
`*3 (D. Del. July 14, 2017). As already explained to Hologic, Minerva produced communications
`to Minerva’s board regarding the redesign within the proper scope of waiver for opinion counsel.
`
`Second, Topic 16 and RFPs 24 and 26 relate to Minerva’s reliance on the Magen Opinion.
`Minerva is not withholding communications between Mr. Magen and Minerva or other documents
`regarding the subject matter of the Magen Opinion. Again, Hologic appears to incorrectly suggest
`that EchoStar authorizes discovery of trial counsel communications in contravention of Seagate.
`
`Third, Minerva properly responded to Hologic’s Topics 10-13 and RFP 19. Hologic has
`already obtained full discovery in the First Action as to the original product accused in that case.
`The only remaining discovery in this case relates to the design changes made to the original product
`to arrive at Minerva’s redesign. Indeed, the Magen Opinion focused on “the updates to the design
`of Minerva[’s] Disposable Handpiece.” Ex. 1 at 1.
`
`Fourth, as to Topics 20-22 and RFPs 27 and 28, Hologic has failed to articulate what it
`means to “launch” the redesign and has further failed to show any deficiency in the discovery
`Minerva has already provided and agreed to provide. Instead, the only specific issue Hologic
`identifies is communications with Minerva trial counsel, which is improper as addressed above.
`
`Fifth, Topic 23 and RFP 29 seek irrelevant privileged information. Hologic seeks such
`information based on a false premise: that Minerva “decided to conceal the New Pivot Device’s
`launch.” First, Hologic fails to identify any obligation that would have required Minerva to notify
`the Court or Hologic the day that Minerva began shipping the redesign. And there was none,
`because as the Court acknowledged in denying Hologic’s damages claims, that new product was
`not at issue in the First Action. Nor did Minerva ever “conceal” its sales, which it duly provided
`to Hologic and the Court as part of the post-trial briefing and supplementation. As noted above,
`Hologic admitted that it has known of Minerva’s initial sales of the redesign since October of 2018.
`In this case, so long as it refrains from attempting to pry into any privileged communications with
`trial counsel, Hologic remains free to question Minerva witnesses regarding their reliance on
`communications with opinion counsel in deciding to begin selling the redesign.
`
`III. The Requested Csaba Truckai Deposition is Improperly Duplicative
`
`Albeit a board member, Mr. Truckai was not an employee of Minerva or personally
`involved in the development and sales of the redesign. First Action, D.I. 510 at 1286:10–19
`(Truckai not aware of the design around or the Magen Opinion). The only other discoverable
`information that both Hologic and Minerva identified in Initial Disclosures for Mr. Truckai (Ex.
`10 at 3; Ex. 11 at 3) are subjects that Hologic already had the opportunity to cover, and did cover,
`in the three depositions Hologic took of Mr. Truckai in the First Action. Notably, Hologic does
`not attach the proposed stipulation Minerva sent to Hologic with reasonable limitations on Mr.
`Truckai’s trial testimony. Ex. 12. Hologic ignored the proposal—signaling its intent to burden
`Minerva and Mr. Truckai with a duplicative do-over of Mr. Truckai’s depositions in the First
`Action. Minerva offered its CEO Dave Clapper for deposition who can address the board’s
`discussions regarding the Redesigned Minerva EAS. Thus, Hologic’s motion should be denied.
`
`4
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`Case 1:20-cv-00925-JFB-SRF Document 55 Filed 01/06/21 Page 6 of 6 PageID #: 1206
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`Sincerely,
`
`WILSON SONSINI GOODRICH &
`ROSATI
`Professional Corporation
`
`/s/ Ian R. Liston
`
`Ian R. Liston
`
`cc:
`
`Counsel of Record (via CM/ECF and email)
`
`5
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`