Case 1:20-cv-00925-JFB-SRF Document 70 Filed 02/12/21 Page 1 of 16 PageID #: 2692
`
`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,
`
`C.A. No. 20-925-JFB-SRF
`
`Plaintiffs,
`
`v.
`
`MINERVA SURGICAL, INC., a Delaware
`corporation,
`
`DEFENDANT MINERVA SURGICAL, INC.’S REPLY BRIEF IN SUPPORT OF
`MOTION FOR STAY
`
`Ian R. Liston (#5507)
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`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
`(650) 493-9300
`velson@wsgr.com
`
`Edward G. Poplawski
`Olivia M. Kim
`Erik J. Carlson
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`633 West Fifth Street, 15th Floor
`Los Angeles, CA 90071
`(323) 210-2900
`epoplawski@wsgr.com
`okim@wsgr.com
`ecarlson@wsgr.com
`Dated: February 12, 2021
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 70 Filed 02/12/21 Page 2 of 16 PageID #: 2693
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`INTRODUCTION .............................................................................................................. 1
`
`A STAY IS LIKELY TO SIMPLIFY ISSUES FOR TRIAL ............................................. 2
`
`A.
`
`B.
`
`C.
`
`The Federal Circuit Did Not Decide the Merits of the Section 112 Defenses ........ 2
`
`Hologic’s Issue and Claim Preclusion Arguments Are No Reason to Deny a Stay 4
`
`1.
`
`2.
`
`Hologic’s Issue and Claim Preclusion Arguments Are Premature ............. 4
`
`Hologic’s Issue and Claim Preclusion Arguments Are Incorrect ............... 5
`
`The Appeal in the First Action is Going to Determine or Provide Guidance as to
`Invalidity Issues in This Case ................................................................................. 7
`
`THE STAGE OF THE CASE FAVORS A STAY ............................................................. 8
`
`A STAY WILL NOT CAUSE ANY UNDUE PREJUDICE ............................................. 9
`
`CONCLUSION ................................................................................................................. 10
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`TABLE OF AUTHORITIES
`
`PAGES
`CASES
`Brain Life, LLC v. Elekta Inc., 746 F.3d 1045 (Fed. Cir. 2014) ......................................................4
`Butamax(TM) Advanced Biofuels LLC v. Gevo, Inc., No. 11-54-SLR, 2014 U.S.
`Dist. LEXIS 200342 (D. Del. July 11, 2014)...................................................................................2
`454 Life Scis. Corp. v. Ion Torrent Sys., Inc., No. CV 15-595-LPS, 2016 WL
`6594083 (D. Del. Nov. 7, 2016) ....................................................................................................10
`Diamond Scientific Co. v. Ambico, Inc., 848 F. 2d 1220 (Fed. Cir. 1988) ......................................3
`Dow Chemical Co. v. Nova Chemicals Corp.(Canada), 803 F. 3d 620 (Fed. Cir.
`2015), see also id. at 626 .............................................................................................................4, 5
`Foster v. Hallco Mfg. Co., 947 F.2d 469 (Fed. Cir. 1991) ..............................................................6
`Harries v. Air King Prods. Co., 183 F.2d 158 (2d Cir. 1950) .........................................................5
`Hologic, Inc. v. Minerva Surgical, Inc., 957 F.3d 1256 (Fed. Cir. 2020) ........................................3
`Jean Alexander Cosmetics, Inc. v. L’Oreal USA, Inc., 458 F.3d 244 (3d Cir.
`2006), cert. denied, 549 U.S. 1305, 127 S. Ct. 1878, 167 L. Ed. 2d 364 (2007) .............................5
`Orexo AB v. Actavis Elizabeth LLC, 371 F. Supp. 3d 175 (D. Del. 2019) ......................................6
`Suppan v. Dadonna, 203 F.3d 228 (3d Cir. 2000) ...........................................................................4
`STATUTES
`35 U.S.C. § 102 ................................................................................................................................6
`35 U.S.C. § 103 ................................................................................................................................6
`35 U.S.C. §315(e) (2) .......................................................................................................................4
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`I.
`
`INTRODUCTION
`
`In opposing a stay (D.I. 67), Hologic ignores the significant impact the Supreme Court’s
`
`decision, as well as any subsequent Federal Circuit decision, may have on this case. Hologic’s
`
`self-interest is clear. It wants to proceed through dispositive motions, trial preparation and trial
`
`solely on those issues of interest to Hologic; namely, infringement, willfulness, and damages; even
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`though the upper Courts’ decisions on assignor estoppel and invalidity could completely obviate
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`these issues. In effect, due to the current August 2021 trial date, Hologic seeks a complete
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`bifurcation of the case, including potentially a second trial on invalidity issues. Hologic’s
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`bifurcated approach would be highly wasteful of the resources of the Court and the parties,
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`particularly since even this first trial could be unnecessary if the patent is ultimately held invalid.
`
`A stay would promote efficiency until the parties and the Court have the benefit of any guidance
`
`from the Supreme Court, and/or Federal Circuit if remanded. A stay to determine what, if any,
`
`issues remain to be tried would also be consistent with this Court’s stay of Hologic’s efforts to
`
`enforce the Judgment and Costs from the First Action until all appeals are exhausted. First Action,
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`D.I. 646 at 3. Hologic’s Opposition fails to show that any stay factor supports denial of a stay.
`
`As to simplification of issues, Hologic incorrectly contends that the Federal Circuit has
`
`already rejected Minerva’s invalidity defenses on the merits (Hologic’s futility argument).
`
`Hologic mischaracterizes sub-passages in the Federal Circuit’s opinion to make its futility
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`argument, when a reading of the opinion reveals that the Federal Circuit never reached the merits
`
`of Minerva’s Section 112 defenses. The Federal Circuit affirmed the District Court’s validity
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`determination only because it affirmed that assignor estoppel precluded those defenses.
`
`Hologic also raises the specter of issue and claim preclusion. It asks the Court to analyze
`
`preclusion on the merits even though the validity issues remain in flux due to the appeal. However,
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`it is the analysis of what, if anything, is precluded that is speculative, futile, and premature until
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`the parties and the Court can determine what invalidity questions have dropped out or remain to
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`be litigated. Nevertheless, Minerva previews the inapplicability of those doctrines below.
`
`As to stage of the case, Hologic cannot dispute that a substantial amount of work remains
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`including dispositive motions and trial. Instead, Hologic complains of the rescheduling of four
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`witness depositions—yet those depositions would have been done by now but for Hologic’s
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`unsuccessful eleventh-hour demand for privileged communications with trial counsel.
`
`Finally, Hologic fails to show any undue prejudice. Hologic cannot dispute that its patent
`
`expired years ago. Indeed, the patent at issue expired so long ago that Hologic did not even seek
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`an injunction based on that patent after trial in the First Action. Thus, if it should prevail, money
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`damages would be adequate. For the reasons set forth in Minerva’s opening brief and the reasons
`
`below, Minerva respectfully requests that the Court grant its motion for a stay.
`
`II.
`
`A STAY IS LIKELY TO SIMPLIFY ISSUES FOR TRIAL
`
`The assignor estoppel issue on appeal to the Supreme Court in the First Action leaves the
`
`case “in a state of flux,” which favors a stay. See Butamax(TM) Advanced Biofuels LLC v. Gevo,
`
`Inc., No. 11-54-SLR, 2014 U.S. Dist. LEXIS 200342, at *4 (D. Del. July 11, 2014). The outcome
`
`of the appeal should resolve what validity issues remain, and thus awaiting the outcome is likely
`
`to simplify issues for trial, if not obviate the trial altogether.
`
`A.
`
`The Federal Circuit Did Not Decide the Merits of the Section 112 Defenses
`
`Hologic’s primary response is its misguided futility argument regarding Minerva’s written
`
`description and enablement Section 112 defenses. D.I. 67 at 3-7. Hologic notes that the District
`
`Court addressed Minerva’s Section 112 defenses but incorrectly argues that the Federal Circuit
`
`affirmed on the merits. Id. at 6. There is no section of the Opinion addressing the merits. Hologic
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`relies on two portions of the Opinion. First, Hologic claims the “ Federal Circuit enumerated the
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`District Court’s grant of summary judgment on assignor estoppel separately from its grant of
`
`summary judgment on invalidity.” Id. at 6 (emphasis added). But Hologic’s first cited portion is
`
`from the procedural history of the case. Hologic, Inc. v. Minerva Surgical, Inc., 957 F.3d 1256,
`
`1262-63 (Fed. Cir. 2020). The Federal Circuit did not address Section 112 in the “Discussion”
`
`section of its opinion and was clear that it affirmed the judgment of no invalidity “[b]ecause” of
`
`assignor estoppel, not the merits. Id. at 1269. Hologic’s second cited portion is from the Opinion’s
`
`concluding statement noting that the judgment of no invalidity is affirmed, which is precisely the
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`conclusion that follows from the Federal Circuit’s affirmance that assignor estoppel applied to
`
`preclude Minerva’s Section 112 defenses. Id. at 1274. The Opinion neither lays out the legal
`
`standards relevant to written description or enablement, nor discusses any disclosure in the ’348
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`patent relevant to the core issue of whether the patent adequately describes and/or enables the
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`claimed “applicator head.” Moreover, the Supreme Court presumably understood that Minerva’s
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`appeal was not futile in granting Minerva’s Petition for Certiorari.
`
`Hologic also incorrectly conflates other invalidity theories that Minerva may assert in this
`
`case with the Section 112 defenses on appeal in the First Action. D.I. 67 at 3-7. Hologic notes
`
`that Minerva served invalidity contentions in the First Action, including obviousness-type double
`
`patenting and other prior-art invalidity defenses. D.I. 67 at 3. Hologic also acknowledges that
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`Minerva proceeded through expert discovery and summary judgment on just the Section 112
`
`defenses. D.I. 67 at 4. Federal Circuit authority regarding assignor estoppel at the time foreclosed
`
`Minerva’s prior art invalidity theories because “an assignor should not be permitted to sell
`
`something and later to assert that what was sold is worthless,” such as by asserting a patent is
`
`obvious. Diamond Scientific Co. v. Ambico, Inc., 848 F. 2d 1220, 1224 (Fed. Cir. 1988). Thus,
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`Minerva’s prior art invalidity theories were not addressed by the Court or the jury in the First
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`action. If the Supreme Court overrules the Federal Circuit authority regarding assignor estoppel,
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`Minerva would be free to assert these prior art invalidity theories in this case.
`
`Lastly, Hologic raises Minerva’s IPRs challenging the validity of the ’348 patent as if they
`
`are some barrier to Minerva’s prior art invalidity defenses. D.I. 67 at 3-4. To the contrary. No
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`IPR estoppel bars Minerva’s prior art theories because the IPRs were not instituted. 35 U.S.C.
`
`§315(e) (2) (estoppel only applies to an IPR “that results in a final written decision”).
`
`B.
`
`Hologic’s Issue and Claim Preclusion Arguments Are No Reason to Deny a
`Stay
`
`Hologic delves into the merits of issue and claim preclusion, essentially urging this Court
`
`to summarily determine this issue as part of Minerva’s stay motion. Hologic’s arguments in this
`
`regard are premature and incorrect. More importantly, they only serve to highlight the
`
`inefficiencies in proceeding with this case while validity issues remain in flux.
`
`1.
`
`Hologic’s Issue and Claim Preclusion Arguments Are Premature
`
`After the Supreme Court’s decision in the First Action, then Minerva may assert invalidity
`
`defenses. After Minerva asserts invalidity defenses in this case, then Hologic may raise issue or
`
`claim preclusion as a response to Minerva’s invalidity theories. As to each of issue and claim
`
`preclusion, Hologic bears the “burden of demonstrating the propriety of its application.” Suppan
`
`v. Dadonna, 203 F.3d 228, 233 (3d Cir. 2000); see also Brain Life, LLC v. Elekta Inc., 746 F.3d
`
`1045, 1053 (Fed. Cir. 2014). If Hologic raises issue or claim preclusion, then Minerva may argue
`
`that neither doctrine applies or that an exception applies if the Supreme Court’s decision is an
`
`intervening change in law. Dow Chemical Co. v. Nova Chemicals Corp.(Canada), 803 F. 3d 620,
`
`628 (Fed. Cir. 2015) (“issue preclusion does not apply where ‘a new determination is warranted in
`
`order to take account of an intervening change in the applicable legal context or otherwise to avoid
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`inequitable administration of the laws.’”); see also id. at 626 (“The doctrine of claim preclusion
`
`does not apply as between the claims for the first and second damages periods.”).
`
`Issue and claim preclusion are more appropriately addressed after the Supreme Court (and
`
`the Federal Circuit) have addressed assignor estoppel. Only then will the Court and the parties
`
`have the guidance they need to assess whether Minerva may assert invalidity defenses in this
`
`case—and what invalidity defenses Minerva may assert. At this juncture, the Supreme Court’s
`
`grant of Minerva’s petition leaves invalidity of the ’348 patent in an uncertain state. It would be
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`far more efficient to stay the case and address invalidity of the ’348 patent after those issues have
`
`been fully vetted in the First Action. The alternative—denying stay—would force the Court and
`
`parties to expend significant resources trying only part of the case—resources that will be wasted
`
`if Minerva’s appeal is entirely successful and the ’348 patent is deemed invalid. Hologic’s
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`premature preclusion arguments in opposing stay are also incorrect for the reasons below.
`
`2.
`
`Hologic’s Issue and Claim Preclusion Arguments Are Incorrect
`
`Issue Preclusion. Under Third Circuit precedent there are four “standard requirements”
`
`for issue preclusion: “(1) the identical issue was previously adjudicated; (2) the issue was actually
`
`litigated; (3) the previous determination was necessary to the decision; and (4) the party being
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`precluded from relitigating the issue was fully represented in the prior action.” Jean Alexander
`
`Cosmetics, Inc. v. L’Oreal USA, Inc., 458 F.3d 244, 249 (3d Cir. 2006) (internal quotation marks
`
`and citation omitted), cert. denied, 549 U.S. 1305, 127 S. Ct. 1878, 167 L. Ed. 2d 364 (2007).
`
`Even before reaching the four requirements of issue preclusion the threshold question is:
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`what is the “issue”? As Chief Judge Learned Hand aptly put it when attempting to discern the
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`dimensions of an invalidity “issue” for estoppel purposes: “That issue is as fugitive, impalpable,
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`wayward, and vague a phantom as exists in the whole paraphernalia of legal concepts.” Harries
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`v. Air King Prods. Co., 183 F.2d 158, 162 (2d Cir. 1950). Here the issue could be the same Section
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`112 defenses that Minerva pursued in the First action. It could also be a swath of other types of
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`invalidity defenses involving prior art such as anticipation under 35 U.S.C. § 102, obviousness
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`under 35 U.S.C. § 103, or the judge-made doctrine of obviousness-type double patenting. It could
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`furthermore be invalidity issues related to dependent claim 8, which Hologic dropped before expert
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`reports in the First Action. Ex. at 1.
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`Accordingly, depending on the Supreme Court’s ruling (and the Federal Circuit’s remand)
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`each of these different invalidity theories could be in play in this case. Under those scenarios, no
`
`issue preclusion would apply because no identical issue was previously adjudicated, actually
`
`litigated, or necessary to a previous decision. See Orexo AB v. Actavis Elizabeth LLC, 371 F.
`
`Supp. 3d 175, 184 (D. Del. 2019) (Judge Connolly) (“treating validity as a single issue as a matter
`
`of law conflicts with important policies underlying the issue preclusion doctrine and the federal
`
`patent laws.”); see also id. at 185-186 (distinguishing various invalidity defenses and concluding
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`“[t]here is, in short, no uniformity among the rules that govern the invalidity defenses afforded to
`
`an accused infringer.”)
`
`Claim Preclusion. Claim preclusion is irrelevant to this case. Minerva did not assert
`
`counterclaims of invalidity in this case. Invalidity is only an issue as to Minerva’s defenses to
`
`Hologic’s infringement allegations. D.I. 10 ¶¶ 65-66, 68. “An assertion of invalidity of a patent
`
`by an alleged infringer is not a ‘claim’ but a defense to the patent owner’s “‘claim.’” Foster v.
`
`Hallco Mfg. Co., 947 F.2d 469, 479 (Fed. Cir. 1991). Thus, “claim preclusion applies to invalidity
`
`only if the products in the two lawsuits are ‘essentially the same.’” Orexo, 371 F. Supp. 3d at 182
`
`(quoting Foster, 947 F.2d at 479). Here they are different. Minerva’s redesigned handpiece differs
`
`from its original handpiece and the two products are not essentially the same because Minerva
`
`removed the “pivot point” in its redesigned handpiece, which is an express requirement of all
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`asserted claims. Additionally, the “pivot point” requirement is the very reason the ’348 patent
`
`issued—the Examiner found all other claim elements in the prior art. First Action, D.I. 278 at 45-
`
`46. Thus, Minerva’s redesigned handpiece is not only different, it is critically different. Claim
`
`preclusion does not apply and is certainly not a reason to deny stay.
`
`C.
`
`The Appeal in the First Action is Going to Determine or Provide Guidance as
`to Invalidity Issues in This Case
`
`Hologic argues that because the Supreme Court is “not reviewing the patentability of the
`
`’348 Patent,” the appeal in the First Action cannot “revive” Minerva’s invalidity defenses. D.I. 67
`
`at 13-14. The Supreme Court has already agreed to review the doctrine of assignor estoppel. If
`
`the Supreme Court abolishes the doctrine, or just narrows it such that it does not apply to Minerva,
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`then the Federal Circuit will necessarily need to address the merits of Minerva’s Section 112
`
`defenses. Thus, Minerva’s requested stay is highly analogous to a stay pending instituted IPR
`
`because another tribunal has already agreed to take up an issue affecting the validity of the patent
`
`at issue. Hologic’s suggestion that Minerva’s motion involves speculation like a motion to stay
`
`before institution of an IPR is incorrect. D.I. 67 at 14. Here, the Supreme Court has granted
`
`certiorari, so this case is far more similar to the cases cited in Minerva’s opening brief where the
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`Patent Office had granted institution to review patentability. D.I. 61 at 10-12.
`
`Hologic also incorrectly argues that the Federal Circuit would need to “reopen the appeal”
`
`in order to address an argument the “Federal Circuit has already rejected.” D.I. 67 at 14. The
`
`appeal is currently pending so it need not be “reopened,” and as discussed above, the Federal
`
`Circuit did not affirm or even address the merits of Minerva’s Section 112 defense.
`
`In addition, Hologic’s argument that Minerva has provided “vague assertions” regarding
`
`the likely impact of the Supreme Court’s decision is incorrect. D.I. 67 at 14. Minerva explained
`
`the multiple plausible scenarios in detail in its opening brief. D.I. 61 at 3, 7-9. Hologic’s further
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`argument that Minerva “has insisted on delaying serving any invalidity contentions until later in
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`the case” ignores what happened earlier in this case. D.I. 67 at 14. Hologic fails to acknowledge
`
`that the Court, after hearing from both parties at the Rule 16 conference, recognized that the grant
`
`of Minerva’s petition was a possibility and thus built in an appropriate mechanism to address
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`invalidity “after all appeals from the First Action are exhausted.” D.I. 20 ¶ 2.b.v.
`
`III.
`
`THE STAGE OF THE CASE FAVORS A STAY
`
`Hologic accuses Minerva of “dilatory conduct” in scheduling depositions. D.I. 67 at 15.
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`However, the remaining depositions would have been completed by now but for Hologic’s
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`eleventh hour motion to compel privileged communications with Minerva’s trial counsel going
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`back years (D.I. 49), and after initially representing to the Court that very little discovery remained
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`to be done in support of its aggressive February 2021 proposed trial date (D.I. 13 at 19, 22). It is
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`this flip-flop that has resulted in a delay of the depositions now underway. Regardless, Hologic
`
`ignores the fact that substantial work remains to be done in this case including expert discovery,
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`dispositive motions, pretrial, and trial.
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`Hologic also incorrectly argues that Minerva previously “suggested that this case was far
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`along.” D.I. 67 at 16. In doing so, Hologic refers to Minerva’s opposition to Hologic’s request
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`for leave to file an early summary judgment motion. Nothing in that opposition conflicts with
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`Minerva position here—that summary judgment along with a substantial amount of other work for
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`the Court and the parties lies ahead. Hologic’s request to rush into an early phase of summary
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`judgment followed shortly afterwards by another phase of summary judgment was inefficient even
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`before the Supreme Court took up Minerva’s appeal. Now that the Supreme Court will decide
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`Minerva’s appeal, it will be inefficient to proceed through summary judgment without knowing
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`what invalidity issues will be in play.1
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`Hologic additionally argues that this case is not at an efficient stopping point, incorrectly
`
`suggesting it would be more efficient to have bifurcated proceedings with issues of infringement,
`
`willfulness, and damages proceeding through trial in one phase, while saving the issues of
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`invalidity for a second phase—and one that may obviate the need to address infringement,
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`willfulness, and damages at all. Hologic fails to distinguish the cases Minerva cited in its opening
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`brief while citing no authority supporting its own position that invalidity should be bifurcated. D.I.
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`67 at 17-18. A stay would avoid a needless and inefficient bifurcation of issues in this case.
`
`IV.
`
`A STAY WILL NOT CAUSE ANY UNDUE PREJUDICE
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`Hologic argues this case presents “unique factual circumstances.” D.I. 67 at 18. Then
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`Hologic dives into the merits of its willfulness theory alleging unsupported claims of concealment.
`
`A stay would not foreclose Hologic from pursuing that theory of willfulness at the appropriate
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`time. It need not be considered now. Hologic also claims, without authority, that the “contentious
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`history between the parties” somehow shows it will be unduly prejudiced. D.I. 67 at 18-20.
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`Furthermore, if Hologic’s “contentious history” argument were accepted, it would mean virtually
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`any hard fought case would qualify for the undue prejudice factor. The cases cited in Minerva’s
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`opening brief, which Hologic ignores, show that more is required to establish undue prejudice.
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`E.g. D.I. 61 at 15-18. Here, the only asserted patent is expired, Hologic does not and cannot seek
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`an injunction, and Hologic seeks damages for less than 5 months of sales before the patent expired.
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`Hologic provides no authority supporting its argument that there is any undue prejudice under
`
`1 Hologic’s jab at Minerva regarding a “native version of a design drawing” also does not support
`Hologic’s argument that the case is at an advanced stage. D.I. 67 at 17. Minerva simply
`informed Hologic that this request was untimely and Hologic failed to pursue the issue.
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`these circumstances.
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`Hologic claims its two-year delay in filing this case should be excused because “the parties
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`disputed at the District Court and then at the Federal Circuit whether the sales of the [redesign]
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`should have been part of the damages award in the First Action.” D.I. 67 at 19. But both the
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`District Court and the Federal Circuit recognized that the redesign was not an accused product in
`
`the First Action. First Action, D.I. 635-1 at 24 (“Hologic is not entitled to supplemental damages
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`based on sales of products that Hologic did not accuse of infringement.”); First Action, D.I. 407 at
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`29 (“The court need not address whether Minerva’s ‘new’ handle design would infringe Hologic’s
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`’348 Patent because that design is not at issue.”). Thus, the “jury was not asked to consider the
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`design-around product for purposes of either infringement or determining the damages award.”
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`First Action, D.I. 635-1 at 24. Hologic’s obvious lack of urgency in bringing this action militates
`
`in favor of a stay. Minerva, on the other hand, diligently filed its petition for certiorari months
`
`before the due date and filed its motion for stay at the “ideal time” two weeks after the Supreme
`
`Court granted certiorari to review the doctrine of assignor estoppel. C.f. 454 Life Scis. Corp. v.
`
`Ion Torrent Sys., Inc., No. CV 15-595-LPS, 2016 WL 6594083, at *4 (D. Del. Nov. 7, 2016).
`
`V.
`
`CONCLUSION
`
`Minerva respectfully requests that the Court grant Minerva’s motion to stay.
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`Case 1:20-cv-00925-JFB-SRF Document 70 Filed 02/12/21 Page 14 of 16 PageID #: 2705
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`Dated: February 12, 2021
`
`Respectfully submitted,
`
`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
`(650) 493-9300
`velson@wsgr.com
`
`Edward G. Poplawski
`Olivia M. Kim
`Erik J. Carlson
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`633 West Fifth Street, 15th Floor
`Los Angeles, CA 90071
`(323) 210-2900
`epoplawski@wsgr.com
`okim@wsgr.com
`ecarlson@wsgr.com
`
`- 11 -
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 70 Filed 02/12/21 Page 15 of 16 PageID #: 2706
`
`CERTIFICATE OF SERVICE
`I hereby certify that on February 12, 2021, I caused to be electronically filed a true and
`correct copy of the foregoing documents with the Clerk of the Court using CM/ECF, which will
`send notifications to all registered counsel, and in addition, I caused true and correct copies of the
`foregoing documents to be served upon the following counsel of record by electronic mail:
`
`Via Electronic Mail
`
`Karen L. Pascale
`Pilar G. Kraman
`YOUNG CONAWAY STARGATT & TAYLOR, LLP
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`Telephone: (302) 571-6600
`kpascale@ycst.com
`pkraman@ycst.com
`
`Attorneys for Plaintiffs, Hologic, Inc. and Cytyc
`Surgical Products, LLC
`
`Via Electronic Mail
`
`Matthew M. Wolf
`Marc A. Cohn
`Jennifer A. Sklenar
`ARNOLD & PORTER KAYE SCHOLDER 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
`
`Attorneys for Plaintiffs, Hologic, Inc. and Cytyc
`Surgical Products, LLC
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 70 Filed 02/12/21 Page 16 of 16 PageID #: 2707
`
`Via Electronic Mail
`
`Via Electronic Mail
`
`Ryan J. Casamiquela
`ARNOLD & PORTER KAYE SCHOLER LLP
`Three Embarcadero Center
`San Francisco, CA 94111-4024
`Telephone: (415) 471-3100
`Ryan.casamiquela@arnoldporter.com
`
`Attorneys for Plaintiffs, Hologic, Inc. and Cytyc
`Surgical Products, LLC
`
`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
`
`Attorneys for Plaintiffs, Hologic, Inc. and Cytyc
`Surgical Products, LLC
`
`Dated: February 12, 2021
`
`
`
`/s/ Ian R. Liston
` Ian R. Liston (#5507)
`
`Attorney for Defendant Minerva Surgical, Inc..
`
`-2-
`
`