throbber
Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 1 of 21 PageID #: 3678
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`GUARDANT HEALTH, INC.,
`
`
`
`
`
`FOUNDATION MEDICINE, INC.,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`
`
`
`
`C.A. No. 20-1580 (LPS)
`
`JURY TRIAL DEMANDED
`
`Defendant.
`
`
`
`ANSWER TO FOUNDATION MEDICINE INC.’S COUNTERCLAIMS
`
`Plaintiff Guardant Health, Inc. (“Guardant”), on behalf of itself, by Guardant’s attorneys,
`
`hereby answers the allegations, but not the improper legal conclusions, in Foundation Medicine,
`
`Inc.’s (“FMI”) Counterclaims as follows:
`
`PARTIES
`
`1.
`
`Guardant admits, upon information and belief, that FMI is a corporation organized
`
`and existing under the laws of the State of Delaware, having its principal place of business at 150
`
`Second Street, Cambridge, MA 02141.
`
`2.
`
`Guardant admits that it is a corporation organized and existing under the laws of
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`the State of Delaware, having its principal place of business at 505 Penobscot Dr., Redwood City,
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`CA 94063.
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`JURISDICTION AND VENUE
`
`3.
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`Guardant admits that Foundation Medicine asserts violations of federal antitrust
`
`law, including Section 2 of the Sherman Act, 15 U.S.C. § 2, and counterclaims pursuant to the
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`Declaratory Judgment Act and the Patent Act, Titles 28 and 35 of the United States Code, but
`
`

`

`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 2 of 21 PageID #: 3679
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`denies that there is any basis for such claims. Except as so admitted, Guardant denies the
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`allegations in paragraph 0 of the Counterclaims.
`
`4.
`
`Guardant admits that this Court has jurisdiction over the subject matter of this
`
`action.
`
`5.
`
`6.
`
`7.
`
`Guardant admits that this Court has personal jurisdiction over Guardant.
`
`Guardant admits that venue is proper in this judicial district.
`
`Guardant denies the allegations in paragraph 0 and specifically denies that Guardant
`
`engaged in any misconduct or that its conduct threatens harm to competition.
`
`THE PATENTS-IN-SUIT
`
`Admitted.
`
`Guardant admits it is the owner of the entire right, title, and interest in and to the
`
`Admitted.
`
`Guardant admits it is the owner of the entire right, title, and interest in and to the
`
`Admitted.
`
`Guardant admits it is the owner of the entire right, title, and interest in and to the
`
`Admitted.
`
`Guardant admits it is the owner of the entire right, title, and interest in and to the
`
`Admitted.
`
`Guardant admits it is the owner of the entire right, title, and interest in and to the
`
`8.
`
`9.
`
`’810 patent.
`
`10.
`
`11.
`
`’085 patent.
`
`12.
`
`13.
`
`’086 patent.
`
`14.
`
`15.
`
`’916 patent.
`
`16.
`
`17.
`
`’962 patent.
`
`- 2 -
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`

`

`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 3 of 21 PageID #: 3680
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`18.
`
`19.
`
`’743 patent.
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`20.
`
`21.
`
`’811 patent.
`
`22.
`
`23.
`
`24.
`
`25.
`
`26.
`
`27.
`
`28.
`
`Admitted.
`
`Guardant admits it is the owner of the entire right, title, and interest in and to the
`
`Admitted.
`
`Guardant admits it is the owner of the entire right, title, and interest in and to the
`
`TECHNOLOGY UNDERLYING THE PATENTS IN SUIT
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Guardant admits that the quoted portions of Guardant’s 2019 10-K, 2018 10-K, and
`
`Ex. 22 appear in the documents. Otherwise, denied.
`
`29.
`
`Guardant admits that the quoted portion of the Guardant 2018 S-1 appears in the
`
`document. Otherwise, denied.
`
`30.
`
`Guardant admits that the quoted portion of Ex. 22 appears in the document.
`
`Otherwise, denied.
`
`31.
`
`32.
`
`Denied.
`
`Denied.
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`GUARDANT’S ALLEGED INEQUITABLE CONDUCT
`
`33.
`
`Denied.
`
`- 3 -
`
`

`

`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 4 of 21 PageID #: 3681
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`34.
`
`Guardant admits that the quoted portions of Ex. 9 and Ex. 10 appear in the
`
`documents. Otherwise, denied.
`
`35.
`
`Guardant admits that the quoted portions of Ex. 10 and 12 appear in the documents.
`
`Otherwise, denied.
`
`36.
`
`Guardant admits that the quoted portions of Ex. 11 and 20 appear in the documents.
`
`Otherwise, denied.
`
`37.
`
`38.
`
`39.
`
`40.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Guardant admits that Dr. Eltoukhy was employed by Illumina at the time of the
`
`conception of Guardant’s invention. Otherwise denied.
`
`41.
`
`42.
`
`Denied.
`
`Guardant admits that Dr. Eltoukhy and Dr. Talasaz met as graduate students at
`
`Stanford University and both later worked at Illumina. Otherwise, denied.
`
`43.
`
`Guardant admits that the quoted portions of Ex. 20 appear in the document.
`
`Otherwise denied.
`
`44.
`
`Guardant admits that Dr. Eltoukhy and Dr. Talasaz both worked at Illumina.
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`Otherwise, denied.
`
`45.
`
`Guardant admits that it was incorporated in Delaware by Michael Wiley on
`
`December 9, 2011. Otherwise, denied.
`
`46.
`
`Guardant admits that Dr. Eltoukhy’s and Dr. Talasaz’s names do not appear on the
`
`publicly available initial incorporation document for Guardant Health, Inc. Otherwise, denied.
`
`47.
`
`Denied.
`
`- 4 -
`
`

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`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 5 of 21 PageID #: 3682
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`48.
`
`Guardant admits that Dr. Talasaz left Illumina on June 25, 2012. Otherwise,
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`denied.
`
`49.
`
`50.
`
`Denied.
`
`Guardant admits that the quoted portions of Ex. 20 appear in the document.
`
`Otherwise, denied.
`
`51.
`
`Guardant admits that the quoted portions of Ex. 20 and 22 appear in the documents.
`
`Otherwise, denied.
`
`52.
`
`53.
`
`54.
`
`Denied.
`
`Denied.
`
`Guardant admits that Dr. Hong Gao was an employee of Guardant and that the
`
`quoted portions of Ex. 20 appear in the document. Otherwise, denied.
`
`55.
`
`Guardant admits that the quoted portions of the ’743 patent appear in the document.
`
`Otherwise, Denied.
`
`56.
`
`57.
`
`Denied.
`
`Guardant admits that Dr. Talasaz is the sole inventor of the ’810, ’916, ’822, and
`
`’743 patents. Otherwise, denied.
`
`58.
`
`Guardant admits that the ’734 Application was filed on September 4, 2012 and that
`
`Dr. Talasaz is the sole inventor. Otherwise, denied.
`
`59.
`
`60.
`
`Denied.
`
`Guardant admits that the quoted portions of Ex. 20 appear in the document.
`
`Otherwise, denied.
`
`61.
`
`Guardant admits that the quoted portions of Ex. 2 appear in the document.
`
`Otherwise, denied.
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`- 5 -
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`

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`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 6 of 21 PageID #: 3683
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`62.
`
`Guardant admits that the quoted portions of the ’743 patent appear in the document.
`
`Otherwise, denied.
`
`63.
`
`Guardant admits that the quoted portions of the Patents-in-Suit appear in the
`
`documents. Otherwise denied.
`
`64.
`
`Guardant admits that the quoted portions of Ex. 20 appear in the document.
`
`Otherwise, denied.
`
`65.
`
`Guardant admits that Dr. Eltoukhy left Illumina on January 2, 2013 and that Dr.
`
`Eltoukhy is the CEO of Guardant. Otherwise, denied.
`
`66.
`
`Guardant admits that the quoted portions of Ex. 20 appear in the document.
`
`Otherwise, denied.
`
`67.
`
`68.
`
`Denied.
`
`Guardant admits that Dr. Eltoukhy is not listed, nor is he an inventor of the ’810,
`
`’085, ’086, ’916, ’743, or ’822 patents. Otherwise, denied.
`
`69.
`
`Guardant admits that U.S. Provisional Application No. 61/696,734 (the ’734
`
`Application”) was filed on September 4, 2012 and correctly identified Dr. Talasaz as the sole
`
`inventor. Guardant admits that the ’743,’822, ’810, and ’916 patents claim priority to the ’734
`
`Application.
`
`70.
`
`Guardant admits that on March 23, 2017, Guardant filed U.S. Patent Application
`
`No. 15/467,570 (the “’570 Application”), which eventually issued as the ’743 patent. Otherwise,
`
`denied.
`
`71.
`
`Guardant admits that on April 20, 2017, Guardant filed U.S. Patent Application No.
`
`15/492,659 (the “’659 Application”), which eventually issued as the ’822 patent. Guardant admits
`
`that the ’822 patent claims priority to the ’734 Application filed on September 4, 2012. Guardant
`
`- 6 -
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`

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`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 7 of 21 PageID #: 3684
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`admits that Dr. Talasaz is the sole inventor of the ’659 Application and ’822 Patent. Otherwise,
`
`denied.
`
`72.
`
`Guardant admits that on February 22, 2019, Guardant filed U.S. Patent Application
`
`No. 16/283,629 (the “’629 Application”), which eventually issued as the ’810 patent. Guardant
`
`admits that the ’810 patent claims priority to the ’734 Application filed on September 4, 2012.
`
`Guardant admits that Dr. Talasaz is the sole inventor of the ’629 Application and ’810 Patent.
`
`Otherwise, denied.
`
`73.
`
`Guardant admits that on September 18, 2019, Guardant filed U.S. Patent
`
`Application No. 16/575,128 (the “’128 Application”), which eventually issued as the ’916 patent.
`
`Guardant admits that the ’916 patent claims priority to the ’734 Application filed on September 4,
`
`2012. Guardant admits that Dr. Talasaz is the sole inventor of the ’128 Application and ’916
`
`Patent. Otherwise, denied.
`
`74.
`
`75.
`
`Denied.
`
`Guardant admits that the ’085 and ’086 patents claim priority to U.S. Provisional
`
`Application No. 16/948,530 (the “’530 Application”), filed on March 5, 2014. Guardant admits
`
`that Dr. Eltoukhy is not an inventor of the ’085 and ’086 Patents. Otherwise denied.
`
`76.
`
`Guardant admits that on September 18, 2019, Guardant filed U.S. Patent
`
`Application No. 16/575,079 (the “’079 Application”), which eventually issued as the ’085 patent.
`
`Guardant admits that Dr. Eltoukhy is not an inventor of the ’085 patent. Otherwise, denied.
`
`77.
`
`Guardant admits that on October 4, 2019, Guardant filed 16/593,653 (the “’653
`
`Application”), which eventually issued as the ’086 patent. Guardant admits that Dr. Eltoukhy is
`
`not an inventor of the ’086 patent. Otherwise, denied.
`
`- 7 -
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`

`

`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 8 of 21 PageID #: 3685
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`78.
`
`Guardant admits that the quoted portions of the ’085 patent appear in the document.
`
`Otherwise, denied.
`
`79.
`
`Guardant admits that the quoted portions of the ’086 patent appear in the document.
`
`Otherwise, denied.
`
`80.
`
`Guardant admits that the ’085 and ’086 patents are continuations of U.S. Patent
`
`Application No. 15/669,779 which is a continuation of No. 15/076,565, which issued as U.S.
`
`Patent No. 9,902,992 (the “’992 patent”). Guardant admits that the ’992 patent is a continuation-
`
`in-part of the ’743 and ’822 patents. Otherwise, denied.
`
`81.
`
`Guardant admits that it is asserting the ’992 patent in the Guardant I litigation.
`
`Guardant admits that the priority date of the ’992 patent is March 5, 2014. Otherwise, denied.
`
`82.
`
`83.
`
`Denied.
`
`Guardant admits that the quoted portions of Ex. 20 and Ex. 35 appear in the
`
`document. Otherwise, denied.
`
`84.
`
`Guardant admits that the Patents-in-Suit except for the ’063 patent share the same
`
`title. Otherwise, denied.
`
`85.
`
`86.
`
`87.
`
`Denied.
`
`Denied.
`
`Guardant admits that on December 28, 2013, Guardant filed U.S. Provisional
`
`Application No. 61/921,456 (the “’456 Application”). Guardant admits that on October 14, 2019,
`
`Guardant filed U.S. Patent Application No. 16/601,168 (the “’168 Application”), which eventually
`
`issued as the ’063 patent. Guardant admits that Dr. Eltoukhy is a named inventor on the ’063
`
`patent. Otherwise, denied.
`
`- 8 -
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`

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`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 9 of 21 PageID #: 3686
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`88.
`
`Guardant admits that the ’063 patent issued on October 13, 2020, identifying Drs.
`
`Talasaz, Mortimer, and Eltoukhy as inventors. Guardant admits that the quoted portions of the
`
`’063 patent appear in the document. Otherwise, denied.
`
`89.
`
`Guardant
`
`admits
`
`that
`
`the
`
`’063
`
`patent
`
`incorporates PCT
`
`patent,
`
`PCT/US2013/058061 by reference. Guardant admits that the ’992 patent is a continuation of U.S.
`
`Patent Application No. 14/855,301. Otherwise denied.
`
`90.
`
`91.
`
`Denied.
`
`Guardant admits that the quoted portion of Ex. 32 appears in the document.
`
`Otherwise denied.
`
`92.
`
`93.
`
`94.
`
`Denied.
`
`Denied.
`
`Guardant admits that it utilized a forensics expert to recover corrupted bodiless
`
`emails. Guardant admits that it made available a forensic image of Dr. Eltoukhy’s hard drive to
`
`FMI’s forensic consultant for inspection. Otherwise denied.
`
`95.
`
`96.
`
`Denied.
`
`Guardant admits that the quoted portion of 35 U.S.C. § 115 appears in the statute.
`
`Otherwise, denied.
`
`97.
`
`Guardant admits that the quoted portion of 35 U.S.C. § 116 appears in the statute.
`
`Otherwise, denied.
`
`98.
`
`Guardant admits that the quoted language appears in MPEP § 2157. Otherwise,
`
`denied.
`
`99.
`
`Denied.
`
`100. Denied.
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`- 9 -
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`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 10 of 21 PageID #: 3687
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`101. Denied.
`
`102. Denied.
`
`103. Guardant admits that Dr. Talasaz left Illumina in June 2012. Otherwise, denied.
`
`104. Guardant admits that Dr. Talasaz and Dr. Eltoukhy know their obligations to make
`
`truthful representations to the USPTO regarding inventorship. Otherwise, denied.
`
`105. Denied.
`
`106. Denied.
`
`107. Denied.
`
`108. Denied.
`
`109. Denied.
`
`110. Denied.
`
`111. Denied.
`
`GUARDANT’S ALLEGED ANTITRUST VIOLATIONS
`
`112. Denied. Guardant specifically denies that its founders conspired to defraud the
`
`USPTO.
`
`113. Denied.
`
`114. Denied. Guardant specifically denies that its founders engaged in fraudulent
`
`conduct.
`
`115. Denied.
`
`116. Denied.
`
`117. Denied.
`
`118. Guardant admits that the quoted portions of the Complaint in the Guardant I
`
`litigation appear in the document. Otherwise, denied.
`
`119. Denied.
`
`- 10 -
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`

`

`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 11 of 21 PageID #: 3688
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`120. Guardant admits that Marc Jacobstein was a 30(b)(6) witness. Guardant admits
`
`that the quoted language appears in the transcript. Otherwise, denied.
`
`121. Guardant admits that the quoted language from the deposition of Bill Getty appears
`
`in the transcript. Otherwise, denied.
`
`122. Denied.
`
`123. Denied. Guardant specifically denies that it has monopoly power.
`
`124. Denied.
`
`125. Guardant admits that the quoted language from Ex. 16 and Ex. 20 appears in the
`
`documents. Otherwise, denied.
`
`126. Guardant admits that the quoted language from Ex. 16 appears in the documents.
`
`Otherwise, denied.
`
`127. Guardant admits that the quoted language from Ex. 24 appears in the document.
`
`Otherwise, denied.
`
`128. Denied.
`
`129. Denied. Guardant specifically denies that it has monopoly power.
`
`130. Denied. Guardant specifically denies that its conduct has or will cause harm to
`
`competition.
`
`131. Denied.
`
`132. Denied.
`
`133. Guardant admits that it filed a motion for a preliminary injunction in this case.
`
`Otherwise, denied.
`
`134. Guardant admits that the quoted language from Ex. 16 and Ex. 20 appears in the
`
`documents. Otherwise, denied.
`
`- 11 -
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`

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`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 12 of 21 PageID #: 3689
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`135. Guardant admits that it has settled its litigation with PGDx. Guardant admits that
`
`the quoted language from Ex. 24 appears in the document. Otherwise, denied.
`
`136. Denied.
`
`137. Denied.
`
`138. Denied.
`
`139. Denied.
`
`COUNT I – NONINFRINGEMENT OF THE ’810 PATENT
`
`140. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`141. Denied.
`
`142. Denied.
`
`COUNT II – INVALIDITY OF THE ’810 PATENT
`
`143. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`144. Denied.
`
`145. Denied.
`
`COUNT III – UNENFORCEABILITY OF THE ’810 PATENT
`
`146. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`147. Denied.
`
`148. Denied.
`
`COUNT IV – NONINFRINGEMENT OF THE ’085 PATENT
`
`149. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`- 12 -
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`

`

`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 13 of 21 PageID #: 3690
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`150. Denied.
`
`151. Denied.
`
`COUNT V – INVALIDITY OF THE ’085 PATENT
`
`152. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`153. Denied.
`
`154. Denied.
`
`COUNT VI – UNENFORCEABILITY OF THE ’085 PATENT
`
`155. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`156. Denied.
`
`157. Denied.
`
`COUNT VII – NONINFRINGEMENT OF THE ’086 PATENT
`
`158. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`159. Denied.
`
`160. Denied.
`
`COUNT VIII – INVALIDITY OF THE ’086 PATENT
`
`161. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`162. Denied.
`
`163. Denied.
`
`- 13 -
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`

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`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 14 of 21 PageID #: 3691
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`COUNT IX – UNENFORCEABILITY OF THE ’086 PATENT
`
`164. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`165. Denied.
`
`166. Denied.
`
`COUNT X – NONINFRINGEMENT OF THE ’916 PATENT
`
`167. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`168. Denied.
`
`169. Denied.
`
`COUNT XI – INVALIDITY OF THE ’916 PATENT
`
`170. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`171. Denied.
`
`172. Denied.
`
`COUNT XII – UNENFORCEABILITY OF THE ’916 PATENT
`
`173. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`174. Denied.
`
`175. Denied.
`
`COUNT XIII – NONINFRINGEMENT OF THE ’063 PATENT
`
`176. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`177. Denied.
`
`- 14 -
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`

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`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 15 of 21 PageID #: 3692
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`178. Denied.
`
`COUNT XIV – INVALIDITY OF THE ’063 PATENT
`
`179. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`180. Denied.
`
`181. Denied.
`
`COUNT XV – UNENFORCEABILITY OF THE ’063 PATENT
`
`182. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`183. Denied.
`
`184. Denied.
`
`COUNT XVI – NONINFRINGEMENT OF THE ’743 PATENT
`
`185. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`186. Denied.
`
`187. Denied.
`
`COUNT XVII – INVALIDITY OF THE ’743 PATENT
`
`188. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`189. Denied.
`
`190. Denied.
`
`COUNT XVIII – UNENFORCEABILITY OF THE ’743 PATENT
`
`191. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`- 15 -
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`

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`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 16 of 21 PageID #: 3693
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`192. Denied.
`
`193. Denied.
`
`COUNT XIX – NONINFRINGEMENT OF THE ’822 PATENT
`
`194. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`195. Denied.
`
`196. Denied.
`
`COUNT XX – INVALIDITY OF THE ’822 PATENT
`
`197. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`198. Denied.
`
`199. Denied.
`
`COUNT XXI – UNENFORCEABILITY OF THE ’822 PATENT
`
`200. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`201. Denied.
`
`202. Denied.
`
`COUNT XXII - MONOPOLIZATION
`
`203. Guardant incorporates its responses to the foregoing paragraphs as if fully set forth
`
`herein.
`
`204. Denied.
`
`205. Denied.
`
`206. Denied.
`
`207. Denied.
`
`- 16 -
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`

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`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 17 of 21 PageID #: 3694
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`RESPONSE TO FMI’S PRAYER FOR RELIEF
`
`208. Guardant denies that FMI is entitled to any relief whatsoever, including the relief
`
`stated in paragraphs (a)-(i) in the Counterclaims, either as prayed for in the Counterclaims or
`
`otherwise.
`
`DEMAND FOR JURY TRIAL
`
`209. Guardant admits that FMI demands a trial by jury for all of the issues pled that are
`
`so triable. However, Guardant respectfully submits that such a trial should be unnecessary as
`
`FMI’s claims should be dismissed as a matter of law.
`
`GENERAL DENIAL
`
`210. Guardant further denies each and every allegation in the Counterclaims that is not
`
`specifically admitted, denied, or otherwise responded to in this Answer, including without
`
`limitation any allegations in its “Introduction” or headings.
`
`AFFIRMATIVE DEFENSES
`
`211.
`
`In further response to the Counterclaims and without assuming the burden of proof
`
`on any issue for which FMI bears the burden of proof, Guardant asserts the following additional
`
`affirmative defenses:
`
`FIRST AFFIRMATIVE DEFENSE
`
`(Failure to State a Claim / Judgement as a Matter of Law)
`
`212. FMI fails to state a claim upon which relief can be granted with respect to Counts
`
`Counts XIII and XIV to the extent that, among other things (1) FMI’s allegations and
`
`corresponding evidence fail to demonstrate that all of Guardant’s patents-at-issue are invalid and
`
`unenforceable; (2) FMI’s allegations and corresponding evidence fail to show that Guardant has
`
`“monopoly power”; (3) FMI’s allegations and corresponding evidence fail to demonstrate that
`
`Guardant engaged in any anticompetitive conduct; (4) FMI’s allegations and corresponding
`
`- 17 -
`
`

`

`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 18 of 21 PageID #: 3695
`
`evidence fail to show harm to competition; (5) FMI’s allegations and corresponding evidence fails
`
`to allege injuries that were caused by Guardant’s alleged conduct; (6) FMI’s allegations and
`
`corresponding evidence fails to show that Guardant has “a dangerous probability of acquiring
`
`monopoly power” in a relevant market; and (7) FMI’s allegations and corresponding evidence fails
`
`to demonstrate that Guardant has the specific intent to destroy competition or otherwise
`
`monopolize any relevant market.
`
`213. FMI fails to state a claim upon which relief can be granted with respect to Counts
`
`1, 2, 4, 5, 7, 8, 10, 11, 13, 14, 16, 17, 19, and 20, asserting that declaratory judgments of non-
`
`infringement and invalidity for the Patents-in-Suit is warranted. FMI has failed to allege facts
`
`demonstrating such non-infringement and invalidity and accordingly is not entitled to the relief
`
`requested.
`
`214. FMI fails to state a claim upon which relief can be granted with respect to Counts
`
`3, 6, 9, 12, 15, 18, and 21, which assert that a declaratory judgment of unenforceability is warranted
`
`for the Patents-in-Suit based on alleged inequitable conduct. For example, among other things,
`
`FMI fails to allege facts that demonstrate intent to deceive the PTO and the materiality of the
`
`alleged deception.
`
`SECOND AFFIRMATIVE DEFENSE
`
`(Procompetitive Benefits)
`
`215. The procompetitive benefits of Guardant’s alleged conduct substantially outweigh
`
`its purportedly anticompetitive effects. FMI’s allegations and corresponding evidence risk chilling
`
`procompetitive behavior and expanding improperly the scope of liability under Sherman Act
`
`Section 2. See Verizon Commc'ns Inc. v. Law Offices of Curtis V. Trinko, LLP, 540 U.S. 398, 414
`
`(2004).
`
`- 18 -
`
`

`

`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 19 of 21 PageID #: 3696
`
`THIRD AFFIRMATIVE DEFENSE
`
`(Article III Standing)
`
`216. FMI has suffered no cognizable injury and does not have standing to assert a
`
`Sherman Act claim.
`
`FOURTH AFFIRMATIVE DEFENSE
`
`(Antitrust Standing)
`
`217. FMI lacks standing to bring an antitrust claim because it has not suffered “injury of
`
`the type of the antitrust laws were intended to prevent and that flows from that which makes
`
`defendant’s acts unlawful.” Atl. Richfield Co. v. USA Petroleum Co., 495 U.S. 328, 334 (1990).
`
`Nor has FMI suffered any damages whatsoever.
`
`FIFTH AFFIRMATIVE DEFENSE
`
`(Failure to Mitigate Damages)
`
`218.
`
`If FMI recovers any damages, such award must be reduced by all damages
`
`attributable to FMI’s failure to take appropriate action and mitigate damages prior to and
`
`subsequent to the institution of this action.
`
`SIXTH AFFIRMATIVE DEFENSE
`
`(Due Process)
`
`219. FMI’s claims are barred to the extent FMI seeks damages for claimed attorneys’
`
`fees and costs of defending against Guardant’s patent lawsuit without a jury making that
`
`determination.
`
`SEVENTH AFFIRMATIVE DEFENSE
`
`(No Causation)
`
`220. FMI’s claims fail because it cannot demonstrate that Guardant caused, or was even
`
`a substantial factor in causing, any of FMI’s alleged injury.
`
`- 19 -
`
`

`

`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 20 of 21 PageID #: 3697
`
`EIGHTH AFFIRMATIVE DEFENSE
`
`(Speculative Damages)
`
`221. FMI is not entitled to any damages because its purported claim to damages is far
`
`too speculative.
`
`NINTH AFFIRMATIVE DEFENSE
`
`(Noerr-Pennington Immunity)
`
`222. To the extent any of FMI’s claims, including one or more elements thereof, are
`
`based on government petitioning activity by Guardant, such activity cannot be used as the basis to
`
`prove FMI’s claims because Guardant is immune from antitrust liability for such activity under
`
`the Noerr-Pennington doctrine.
`
`ADDITIONAL AFFIRMATIVE DEFENSES
`
`223. Guardant has not knowingly and intentionally waived any applicable affirmative
`
`defenses and reserves the right to assert additional affirmative defenses as they become known to
`
`it in this matter, including by way of FMI’s final pre-trial disclosures and evidence submitted in
`
`its case-in-chief. Guardant reserves the right to amend this Answer to add, delete, or modify
`
`defenses based upon legal theories that may be or will be divulged through clarification of the
`
`Counterclaims, including additional motion practice, FMI’s final pre-trial disclosures, and
`
`evidence submitted in its case-in-chief.
`
`Guardant respectfully request that the Court grant judgment in its favor and against FMI
`
`on the Counterclaims and the claims set forth in the Complaint, award Guardant the relief requested
`
`in the Complaint, and grant such further relief as the Court deems just and proper.
`
`- 20 -
`
`

`

`Case 1:20-cv-01580-LPS Document 24 Filed 02/04/21 Page 21 of 21 PageID #: 3698
`
`Dated: February 4, 2021
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`FARNAN LLP
`
`
`/s/ Michael J. Farnan
`Brian E. Farnan (Bar No. 4089)
`Michael J. Farnan (Bar No. 5165)
`919 N. Market St., 12th Floor
`Wilmington, DE 19801
`Tel: (302) 777-0300
`Fax: (302) 777-0301
`bfarnan@farnanlaw.com
`mfarnan@farnanlaw.com
`
`Of Counsel:
`
`Edward R. Reines (admitted pro hac vice)
`Derek Walter (admitted pro hac vice)
`WEIL, GOTSHAL &MANGES LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Telephone: (650) 802-3000
`
`Garland T. Stephens (admitted pro hac vice)
`Justin L. Constant (admitted pro hac vice)
`WEIL, GOTSHAL &MANGES LLP
`700 Louisiana, Suite 1700
`Houston, TX 77002
`Telephone: (713) 546-5000
`
`
`Attorneys for Plaintiff Guardant Health, Inc.
`
`
`
`- 21 -
`
`

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