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`April 5, 2021
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`VIA E-FILING
`The Honorable Jennifer L. Hall
`United States District Court
`Federal Building
`844 King Street
`Wilmington, DE 19801
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`Re:
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`Ravgen, Inc. v. Progenity, Inc., (C.A. No. 20-1734-RGA-JLH)
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`Dear Judge Hall:
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`Plaintiff and Defendant in the above-captioned case submit this joint letter addressing
`disputes in the scheduling order filed herewith. This letter also refers to co-pending matters
`Ravgen, Inc. v. Ariosa Diagnostics, Inc., et al. (C.A. No. 20-1646-RGA-JLH); Ravgen, Inc. v.
`Myriad Genetics, Inc., et al. (C.A. No. 20-1730-RGA-JLH); and Ravgen, Inc. v. Illumina, Inc., et
`al. (C.A. No. 20-1644-RGA-JLH) (collectively with
`the above-captioned matter,
`the
`“Litigations”).
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`1.
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`Description of the Case
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`Plaintiff filed this action against Defendant for patent infringement in December 2020.
`Plaintiff alleges infringement of U.S. Patent Nos. 7,332,277 (the “’277 patent”) and 7,727,720 (the
`“’720 patent”). The ’277 and ’720 patents involve technology for the preparation and analysis of
`“free” nucleic acids, including in prenatal and cancer testing applications. Plaintiff’s complaint
`accuses a prenatal test and a monogenetic test offered by Defendant of infringement. Defendant
`asserts, inter alia, defenses of invalidity and non-infringement.
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`2.
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`Scheduling Order Disputes
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`Coordination with Co-Pending Cases
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`Plaintiff and Defendant agree that some degree of coordination between this and the three
`co-pending actions that involve the same two asserted patents will conserve resources. The
`disputes below generally relate to the appropriate extent and mechanics for that coordination.
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`Claim Construction Briefing (Section 12) and Depositions (Section 8(e))
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`Plaintiff’s Position: Ravgen proposes combined, coordinated Markman briefing across
`the co-pending cases to address common questions of law. Each case will construe the same
`language of the same two patents. The terms at issue across the cases will be largely, if not wholly,
`overlapping. Setting limits on such briefing will ensure that the parties focus on the most important
`issues, rather than letting the number of issues Defendants might raise dictate those limits.
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`Ravgen’s proposal for depositions should be adopted because it accounts for the need to
`take discovery from individual defendants on defendant-specific issues, should such issues arise.
`Ravgen’s proposal is also consistent with its proposal in the co-pending cases and would
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`Case 1:20-cv-01734-RGA-JLH Document 13-1 Filed 04/05/21 Page 2 of 3 PageID #: 1209
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`streamline discovery. In particular, Ravgen’s proposal ensures coordination for discovery across
`the cases and avoids undue burden on witnesses from serial depositions.
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`Defendant’s Position: With respect to claim construction briefing and deposition limits,
`Progenity believes that some level of coordination across the four cases is appropriate. At this
`stage, it is premature to state the specific contours of such coordination and to set limits on claim
`construction briefing and depositions, as Plaintiff proposes. Plaintiff currently asserts 170 claims
`from two patents. The accused products in each of the Litigations are unique, perform different
`tasks (e.g. prenatal versus cancer screening), and operate differently. Thus, it is likely that Plaintiff
`will assert different claims in the four Litigations. At this stage, none of the Defendants have any
`information regarding the specific claims that will be asserted against them, including the number
`of claims and the extent to which those claims may or may not overlap with the claims asserted
`against other Defendants.
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`Accordingly, while coordination of claim construction and depositions across the four
`Litigations is appropriate, Progenity proposes that the details be resolved through meet and confer
`at a later date when the scope of the case is better defined. Specifically, for claim construction
`briefing, Progenity proposes that the structure and limits on claim construction briefing be
`specified once the joint claim construction chart is submitted, at which point the parties will know
`which claims and claim terms are at issue with respect to each of the Defendants, and the parties
`will have met and conferred regarding narrowing of claims pursuant to § 7(d) of the proposed
`scheduling order. Progenity proposes that limits on depositions should be set after the asserted
`claims have been identified and claim construction briefing has been completed, which will clarify
`the scope of necessary discovery, including the amount of overlap with other Defendants.
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`Supplementation of Accused Products and Invalidity References (Section 14)
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`Plaintiff’s Position: Supplementation should occur prior to final infringement and
`invalidity contentions to allow the parties to make decisions for final contentions knowing the
`products and prior art at issue. Defendants’ proposal encourages holding back prior art until after
`final infringement contentions and is inconsistent with the Court’s form Scheduling Order.
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`Defendant’s Position: Given the uncertainties regarding the scope of the case and the
`asserted claims along with the potential need for coordination among Defendants in the Litigations,
`Progenity requests that the time to supplement invalidity references be consonant with the deadline
`to serve final contentions. This schedule allows Plaintiff time to review the final contentions
`before selecting the narrowed set of claims and does not cause any prejudice to Plaintiff.
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`Plaintiff proposes that Progenity be required to identify all prior art references no later than
`14 days following issuance of the claim construction order or a month prior to final invalidity
`contentions, which is the same day that Plaintiff proposes that it supplement its identification of
`accused products. Plaintiff’s proposal that Progenity be locked into all prior art references on the
`same day that Plaintiff announces the full list of accused products is unreasonable and prejudices
`Progenity.
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`2
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`Case 1:20-cv-01734-RGA-JLH Document 13-1 Filed 04/05/21 Page 3 of 3 PageID #: 1210
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`Summary Judgment Briefing (Section 16(d))
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`Plaintiff’s Position: Consistent with footnote 2 of the Court’s form Scheduling Order,
`Ravgen proposes coordinated briefing and page limits across the co-pending cases. Ravgen’s
`proposal should be adopted in view of the significant overlap in issues—particularly relating to
`invalidity—across the cases. Defendants’ proposal for wholly separate briefing in all cases should
`be rejected because it fails to acknowledge that overlap. Defendants’ proposal would result in
`1,000 pages of briefing (on just two patents) across the four cases. Defendants note that there may
`be case-specific summary judgment issues relating to noninfringement. Ravgen’s proposal
`accounts for that possibility with page limits above those normally imposed in single cases. Should
`the Court find Ravgen’s proposal to be too limited, Defendants’ concerns could also be addressed
`with separate page limits (e.g., 10 pages) for motions relating to noninfringement in each co-
`pending case.
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`Defendant’s Position: Ravgen proposes that across all four Litigations, the Defendants
`should be collectively limited to 50 pages of summary judgment briefing. This is a highly
`prejudicial and unreasonable proposal that is intentionally calculated to put each Defendant at a
`disadvantage. As noted above, there are unique products accused of infringement in each of the
`Litigations. Under Plaintiff’s dispositive motion proposal, each of the four Defendants would be
`permitted only about 12 pages to present all of their summary judgment positions, including
`distinct non-infringement positions. By statute, Plaintiff is not permitted to have a consolidated
`trial against all of the Defendants across the four Litigations. Consistent with this, it would be
`inappropriate for summary judgment briefing, which is tightly connected to shaping the scope of
`trial, to be effectively consolidated across four cases involving disparate defendants and products.
`Defendants’ proposal includes a meet and confer no later than one month prior to the submission
`of summary judgment briefing during which the parties can explore the extent to which there is a
`possibility of coordination of summary judgment briefing.
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`cc: Counsel of Record (Via E-Filing)
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`Respectfully submitted,
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`/s/ Brian E. Farnan
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`Brian E. Farnan
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`3
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