`Case 1:20-cv-00925-JFB-SRF Document 76 Filed 02/23/21 Page 1 of 4 PageID #: 2893
`
`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
`
`
`
`
`PLAINTIFFS’ RESPONSE TO DEFENDANT’S
`NOTICE OF SUBSEQUENT AUTHORITY REGARDING MOTION FOR STAY
`
`Plaintiffs Hologic, Inc. and Cytyc Surgical Products, LLC (collectively, “Hologic”)
`
`
`
`
`
`submit this response to Defendant Minerva Surgical, Inc.’s (“Minerva”) February 23, 2021
`
`Notice of Subsequent Authority (D.I. 75) regarding Minerva’s Motion for Stay (D.I. 60).
`
`Minerva suggests that American Axle & Mfg. v. Neapco Holdings LLC, No. 15-1168-
`
`LPS, 2021 U.S. Dist. LEXIS 29287 (D. Del. Feb. 17, 2021) supports entry of a stay in this case.
`
`Tellingly, Minerva provides the Court no information on the issues in dispute or the procedural
`
`posture of the motion to stay at issue that would make clear that American Axle bears no
`
`resemblance to this case and does not justify a stay here.
`
`In American Axle, Judge Stark granted summary judgment in February 2018, finding all
`
`asserted claims of the ’911 patent invalid under § 101. Id. at *1. In July 2020, the Federal
`
`Circuit affirmed-in-part and vacated-in-part, affirming the Court’s Section 101 invalidity ruling
`
`as to certain claims, but remanding as to other claims. Id. at *2. The plaintiff, American Axle,
`
`filed a petition for a writ of certiorari in the United States Supreme Court, seeking review as to
`
`the claims that had been invalidated under § 101. Id. Judge Stark declined to resume litigation
`
`on the remanded claims and granted the plaintiff’s request for a stay until after the Supreme
`
`
`
`
`
`
`
`Case 1:20-cv-00925-JFB-SRF Document 76 Filed 02/23/21 Page 2 of 4 PageID #: 2894
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`Court concluded its review of the petition. Id. at *6. In other words, Judge Stark declined the
`
`defendants’ request to resume litigation as to eleven asserted claims because nine other asserted
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`claims from the same patent were still on appeal.
`
`The present case is completely different. This case involves a prior litigation on the
`
`merits; American Axle did not. In this case, the Court has already found in the First Action that
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`Minerva’s invalidity defenses as to the ’348 patent failed as a matter of law, that Hologic had
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`demonstrated that the ’348 patent was valid. Accordingly, the Court has (twice) entered Final
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`Judgment dismissing Minerva’s invalidity defenses and counterclaims with prejudice. In
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`American Axle, by contrast, none of the asserted claims had ever been to a trial on the merits and
`
`no trial date had even been set. Id. at *4.
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`Further, Minerva did not petition the Supreme Court regarding its failed invalidity
`
`defenses as in American Axle, but Minerva narrowly petitioned the Supreme Court on the narrow
`
`issue of assignor estoppel. American Axle does not address the situation here, where Minerva
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`seeks to circumvent issue and claim preclusion and demands a stay of a Second Action so it can
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`try to relitigate the invalidity defenses it already lost in the First Action.
`
`- 2 -
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`
`
`
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`Case 1:20-cv-00925-JFB-SRF Document 76 Filed 02/23/21 Page 3 of 4 PageID #: 2895
`
`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
`
`- 3 -
`
`
`DATED: February 23, 2021
`
`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
`
`
`
`
`
`
`Case 1:20-cv-00925-JFB-SRF Document 76 Filed 02/23/21 Page 4 of 4 PageID #: 2896
`
`
`
`CERTIFICATE OF SERVICE
`
`I, Karen L. Pascale, Esquire, hereby certify that on February 23, 2021, 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
`
`using CM/ECF (which will send notification that such filing is available for viewing and
`
`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:
`
`Attorneys for Defendant, Minerva Surgical, Inc.:
`
`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
`
`
`
`
`February 23, 2021
`
`
`
`
`
`
`
`
` Error!
`
`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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