Case 1:20-cv-00925-JFB-SRF Document 64 Filed 01/28/21 Page 1 of 5 PageID #: 1825
`
`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
`
`DEFENDANT’S OPENING LETTER BRIEF TO
`HONORABLE SHERRY R. FALLON REGARDING
`DISCOVERY ISSUES FOR FEBRUARY 3, 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:
`
`Vera M. Elson
`WILSON SONSINI GOODRICH & ROSATI PC
`650 Page Mill Road
`Palo Alto, CA 94304
`Telephone: (650) 493-9300
`velson@wsgr.com
`
`Edward G. Poplawski
`Olivia M. Kim
`Erik J. Carlson
`WILSON SONSINI GOODRICH & ROSATI PC
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071
`Telephone: (323) 210-2900
`epoplawski@wsgr.com
`okim@wsgr.com
`ecarlson@wsgr.com
`
`Dated: January 28, 2021
`
`1
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`

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`Case 1:20-cv-00925-JFB-SRF Document 64 Filed 01/28/21 Page 2 of 5 PageID #: 1826
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`Dear Judge Fallon:
`
`Defendant Minerva Surgical, Inc. (“Minerva”) hereby respectfully submits its opening
`letter brief in support of its motion for a protective order to briefly suspend the depositions of
`Minerva’s witnesses pending resolution of its motion to stay this action (D.I. 60). The
`teleconference for this motion is set for February 3, 2021 at 11 a.m. 01/13/21 Order.
`
`As Minerva informed this Court (D.I. 57), on January 8, 2021, the U.S Supreme Court
`granted Minerva’s Petition for Certiorari on the issue of assignor estoppel in Hologic, Inc. et al. v.
`Minerva Surgical, Inc., C.A. No. 15-1031-JFB-SRF (the “First Action”). The First Action
`involved the same patent that Plaintiffs Hologic, Inc. and Cytyc Surgical Products, LLC
`(“Hologic”) assert in this case (U.S. Patent No. 9,095,348 (“the ’348 patent”)). On January 11,
`2021, the U.S. Supreme Court further denied Hologic’s Petition for Certiorari on the issue of
`assignor estoppel in the First Action. See D.I. 57. Because the outcome of Minerva’s appeal
`should determine whether or not one or more issues of validity can be asserted in the present action,
`in the interest of efficiency and judicial economy, Minerva filed a motion to stay this action
`pending the exhaustion of the appeals in the First Action on January 22, 2021 (D.I. 60; see also
`D.I. 61 (Opening Brief)).
`
`Before the fact discovery cut-off date of December 30, 2020 (D.I. 20 at ¶ 2), Minerva had
`offered and scheduled the depositions of Minerva’s witnesses: Dave Clapper (CEO); Dominique
`Filloux (Chief Technology Officer); and Dr. Eugene Skalnyi (Chief Medical Officer). On the eve
`of these depositions, however, Hologic for the first time contended that the waiver of opinion of
`counsel extends to trial counsel. Because this dispute impacted the scope of all the depositions of
`Minerva’s witnesses, the parties temporarily suspended these depositions and Hologic filed its
`motion to compel. D.I. 49. On January 5, 2021, the Court, among other things, denied Hologic’s
`request to extend the waiver of opinion of counsel to trial counsel, and also ordered a limited two-
`hour deposition of Csaba Truckai (founder of Minerva and inventor of the ’348 patent). D.I. 56 at
`72:25-76:19, 83:4-21.
`
`Shortly after the Court’s January 5, 2021 Order, Minerva offered to re-schedule the
`depositions of Mr. Clapper, Mr. Filloux, and Dr. Skalnyi, and also to schedule the ordered
`deposition Mr. Truckai. But now that the Supreme Court is going to take up the assignor estoppel
`issue in relating to the ’348 patent, Minerva filed a motion to stay this action. Consequently,
`Minerva respectfully requests that the Court briefly suspend the depositions of Minerva’s
`witnesses until after the Court decides on whether to stay this action. Minerva should not have to
`provide its witnesses yet again if it is later determined that there are validity issues in the case—
`i.e., this brief suspension would prevent undue burden and unnecessary expense on Minerva.
`
`On the other hand, there is no prejudice to Hologic. A brief suspension of these depositions
`should not have any impact on the rest of the case schedule, on which expert discovery is currently
`proceeding. Indeed, Hologic initially did not raise any issues with taking the depositions of
`Minerva’s witnesses after its opening expert reports are due on January 18, 2021 under the current
`Scheduling Order. D.I. 21 at ¶ 2.h.i. Accordingly, there is good cause to briefly suspend the
`depositions of Minerva’s witnesses pending the resolution of Minerva’s motion to stay.
`
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`Case 1:20-cv-00925-JFB-SRF Document 64 Filed 01/28/21 Page 3 of 5 PageID #: 1827
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`I.
`
`The Supreme Court’s Decision on Assignor Estoppel May Impact Whether the
`Invalidity Issues in This Case Can be Litigated
`
`Hologic’s primary argument—in opposing this brief suspension of the depositions (as well
`as a stay of this action)—is that the Supreme Court’s decision on the assignor estoppel issue would
`not impact this action (Hologic’s futility argument). Hologic’s position is that the Federal Circuit
`already affirmed the District Court’s summary judgment ruling of no invalidity of the asserted
`claim of the ’348 patent, thus Minerva would not be able to “resuscitate” its invalidity claims
`relating to the ’348 patent. D.I. 61-1 at 392 (Ex. 12 at 4), 01/12/21 Cohn email.
`
`But this position has no merit. The Federal Circuit made clear why it affirmed the District
`Court’s summary judgment ruling of no invalidity of the asserted claim of the ’348 patent:
`
`Because the district court did not abuse its discretion in applying
`the doctrine of assignor estoppel, we affirm the district court’s
`grant of summary judgment of no invalidity as to claim 1 of the
`’348 patent.
`
`Hologic, Inc. v. Minerva Surgical, Inc., 957 F.3d 1256, 1269 (Fed. Cir. 2020). In ruling that
`assignor estoppel applies, the Federal Circuit did not reach the merits of whether claim 1 of the
`’348 patent is invalid for lack of written description or enablement as decided by the District Court.
`See id. Thus, the underlying Section 112 validity issues remain undecided by the Federal Circuit.
`
`Notably, Hologic made this same meritless futility argument to the Supreme Court. In
`opposing Minerva’s Petition for Certiorari, Hologic argued that “in addition to applying assignor
`estoppel, the district court and the Federal Circuit alternatively considered and rejected Minerva’s
`invalidity challenge on the merits, meaning that Minerva’s entire petition asks for nothing more
`than an advisory opinion.” D.I. 61-1 at 345 (Ex. 8 at 3) (emphasis added), Hologic’s Opposition
`to Minerva’s Petition; see also D.I. 61-1 at 399 (Ex. 13 at 1), Minerva’s Reply in Support of its
`Petition (pointing out the fallacy of Hologic’s futility argument). Presumably, if the Supreme
`Court had agreed with Hologic, it would not have granted Minerva’s Petition. Hologic also made
`the same argument in its Cross-Petition for Certiorari to the Supreme Court. See Ex. A, Hologic’s
`Cross-Petition, at 29 (“Hologic’s cross-petition . . . does not in any way implicate the Federal
`Circuit’s decision as to the ’348 Patent, which is adequately supported not only by the application
`of assignor estoppel but also independently by the Federal Circuit’s separate determination that
`the district court correctly rejected Minerva’s
`invalidity arguments on
`the merits.”).
`Understandably, the Supreme Court denied Hologic’s Petition. See D.I. 57 at Ex. 3 (Supreme
`Court Docket No. 20-631 “Certiorari Denied”).
`
`Accordingly, if the Supreme Court reverses the Federal Circuit’s application of assignor
`estoppel, there are multiple plausible scenarios that could impact the scope of this case. For
`example, if remanded, the Federal Circuit would have to consider whether claim 1 of the ’348
`patent is invalid for lack of written description or enablement under 35 U.S.C. § 112. Guidance
`from either the Supreme Court, the Federal Circuit, or both, as to those defenses could either
`determine or inform the issue of Section 112 in this case. Moreover, even if the single claim at
`issue in the First Action (claim 1) is found to be not invalid, if assignor estoppel no longer applies
`as to Minerva, then Minerva would be free to challenge the validity of all four of the asserted
`
`2
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`Case 1:20-cv-00925-JFB-SRF Document 64 Filed 01/28/21 Page 4 of 5 PageID #: 1828
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`claims in this action (some of which were not tried in the First Action) under other theories of
`invalidity, e.g., under 35 U.S.C. §§ 102, 103, and/or 112. Indeed, the Scheduling Order considers
`this possible scenario, ordering that “Defendant must serve initial invalidity contentions thirty (30)
`days after all appeals from the First Action are exhausted.” D.I. 20 at ¶ 2.b.v.
`
`II.
`
`There is No Prejudice to Hologic Because Briefly Suspending the Depositions Does
`Not Impact the Current Schedule of the Case
`
`On January 5, 2021, the Court resolved the issues on Hologic’s motion to compel relating
`to the depositions of Minerva’s witnesses, including denying Hologic’s motion to extend the
`waiver of privilege of opinion of counsel to trial counsel. See D.I. 56. The next day, Minerva
`provided availabilities of Minerva’s witnesses for depositions: Mr. Clapper (January 29, 2021);
`Mr. Filloux (January 27, 2021); Dr. Skalnyi (January 20, 2021); and Mr. Truckai (January 15,
`2021). Ex. B at 1, 01/06/21 Carlson email. Hologic accepted all the dates except for Mr. Filloux,
`and asked for yet another date for his availability. Id., 01/08/21 Casamiquela email. Notably,
`Hologic did not raise any objection with regards to the offered dates of depositions, despite its
`opening expert reports being due on Monday, January 18, 2021 (D.I. 20 at ¶ 2.h.i)—i.e., prior to
`most of the depositions.
`
`On January 13, 2021, the Court scheduled the teleconference for this motion for February
`3, 2021. Later on that same day, Minerva provided deposition availabilities for Minerva’s
`witnesses after the February 3, 2021 teleconference, in case the Court denied Minerva’s current
`motion: Mr. Clapper (February 19); Mr. Filloux (February 9); Dr. Skalnyi (February 17); and Mr.
`Truckai (February 11). D.I. 61-1 at 389-90 (Ex. 12 at 1-2), 01/13/21 Carlson email. Hologic
`confirmed that it does not have any conflicts with these new proposed dates. Id. at 389 (Ex. 12 at
`1), 01/15/21 Casmiquela email.
`
`Since Hologic did not initially have any objections to taking most of the depositions until
`after Hologic’s opening reports were due, briefly suspending the depositions of Minerva’s
`witnesses until the Court decides on the motion to stay the action would not impact the currently
`proceeding expert discovery. In other words, the case’s current schedule, on which expert
`discovery completes on March 8, 2021 (D.I. 20 at ¶ 2.h.v.), would not be impacted. Therefore,
`there is no prejudice to Hologic. Moreover, suspending those deposition for now would avoid
`disputes—and the concomitant burden to Minerva—of having to deal with future demands to bring
`one or more of those witnesses back yet again when and if the issue of validity is folded into the
`case.
`
`III.
`
`There is Good Cause for a Protective Order to Briefly Suspend the Depositions
`
`“The court may, for good cause, issue an order to protect a party or person from . . . undue
`burden or expense . . .” FED. R. CIV. P. 26(c). There is good cause to grant Minerva’s motion for
`a protective order to briefly suspend the depositions of Minerva’s witnesses. A short suspension
`can prevent undue burden and expense to Minerva—i.e., prevent multiple depositions of the same
`witnesses.
`
`If the Court grants the motion to stay the action after the depositions of Minerva’s
`witnesses have already taken place, the discovery is likely to be re-opened after the exhaustion of
`
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`Case 1:20-cv-00925-JFB-SRF Document 64 Filed 01/28/21 Page 5 of 5 PageID #: 1829
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`the appeals in the First Action, including some or all of the depositions of Minerva’s witnesses.
`As discussed above, the issues in this case would be significantly impacted by the Supreme Court’s
`and/or the Federal Circuit’s decision relating to the ’348 patent. Accordingly, briefly suspending
`the depositions now would avoid undue burden and unnecessary expense that Minerva would
`otherwise likely suffer in the event that the Court decides to stay the case.
`
`On the other hand, if the Court denies Minerva’s motion to stay the action after suspending
`the depositions, then the depositions of Minerva’s witnesses can proceed immediately afterwards,
`without affecting the rest of the case schedule.
`
`IV.
`
`Conclusion
`
`For the foregoing reasons, Minerva respectfully submits that its motion for a protective
`order to briefly suspend the depositions until the resolution of the motion to stay this action be
`GRANTED.
`
`Sincerely,
`
`WILSON SONSINI GOODRICH &
`ROSATI
`Professional Corporation
`
`/s/ Ian R. Liston
`
`Ian R. Listonz
`(Delaware Bar No. #5507)
`
`cc:
`
`Counsel of Record (via CM/ECF and email)
`
`4
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