IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Civil Action No. 12-cv-505-LPS
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`ENZO LIFE SCIENCES, INC.,
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`Plaintiff,
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`v.
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`SIEMENS HEALTHCARE
`DIAGNOSTICS INC.,
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`Defendant.
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`PLAINTIFF’S SUPPLEMENTAL INFRINGEMENT CHARTS
`FOR SIEMENS HEALTHCARE DIAGNOSTICS
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`Pursuant to the Court’s Scheduling Order, Plaintiff Enzo Life Sciences, Inc. ("Plaintiff")
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`hereby provides its Supplemental Infringement Charts to Defendant Siemens Healthcare
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`Diagnostics Inc. ("Siemens").
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`Plaintiff contends that Siemens, either alone or in conjunction with others, has directly
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`infringed and continues to directly infringe, literally and/or under the doctrine of equivalents, one
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`or more claims of U.S. Patent No. 7,064,197 (“the ’197 patent”) (the “Patent-in-Suit”) by
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`making, using, offering to sell, selling, and/or importing in or into the United States certain
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`nucleic acid array products, including without limitation: VERSANT® HIV-1 RNA 3.0 Assay
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`(bDNA), VERSANT® HCV RNA 3.0 Assay (bDNA), VERSANT® HBV bDNA 3.0 Assay
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`(RUO), and all other nucleic acid products that use bDNA technology (collectively, “bDNA
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`Products”); VERSANT Tissue Preparation Reagents Kit and all other nucleic acid products that
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`utilize a bead for nucleic acid detection and/or isolation (“VERSANT Products”); and all other
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`nucleic acid array products (collectively, the “Accused Products”). Plaintiff further contends that
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`Siemens has actively induced, and continues to induce, the infringement of one or more claims
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`1
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`Enzo Exhibit 2131
`BD v. Enzo
`Case IPR2017-00181
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`Exhibit 2131 Page 1
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`of the ’197 patent under 35 U.S.C. § 271(b). At all relevant times, Siemens actively, knowingly,
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`and intentionally induced others, including without limitation Siemens’s customers to use, make,
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`sell, offer for sale, and/or import the Accused Products, in a way that Siemens knew or should
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`have known infringes one or more claims of the ’197 patent. Plaintiff further contends that
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`Siemens’s infringement of the’197 patent has been, and continues to be, willful.
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`Plaintiff’s infringement contentions are provided herein without the benefit of full
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`discovery. The claim charts attached herein as Exhibits A and B identify where each limitation
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`of the asserted claims of the ’197 patent is found within the Accused Products. Plaintiff
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`contends that each element of each asserted claim is literally present in the Accused Products
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`unless otherwise indicated. But to the extent that any claim element is found not to be literally
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`embodied in the accused instrumentalities, Plaintiff contends that the Accused Products embody
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`such claim elements under the doctrine of equivalents because there are no substantial
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`differences for each claim element, and the Accused Products perform substantially the same
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`function, in substantially the same way, to achieve substantially the same result. To date,
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`Siemens has not provided non-infringement contentions in this case. Plaintiff reserves the right
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`to supplement its infringement contentions, including doctrine of equivalents contentions, in
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`response to Siemens’s non-infringement contentions.
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`Where a claim element is implemented in the same or substantially the same way for
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`each product of an Accused Product family (e.g., bDNA Products includes VERSANT® HIV-1
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`RNA 3.0 Assay (bDNA), VERSANT® HCV RNA 3.0 Assay (bDNA), and VERSANT® HBV
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`bDNA 3.0 Assay (RUO)), Plaintiff provides an exemplary illustration or description setting forth
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`specifically where the limitation is found in the Accused Products, without repeating the same
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`illustration or description for each version of each Accused Product in the family.
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`2
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`Exhibit 2131 Page 2
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`Plaintiff provides these infringement contentions before fulsome discovery and before the
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`Court’s claim construction ruling. Moreover, depositions are ongoing, and Plaintiff reserves the
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`right to supplement its contentions based on additional relevant information disclosed during
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`depositions and through other means of discovery. And to the extent that Plaintiff receives
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`relevant discovery from third parties, Plaintiff reserves the right to supplement its contentions
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`accordingly. Plaintiff’s infringement contentions are not an admission, adoption, or waiver of
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`any particular claim construction; Plaintiff reserves all rights with respect to claim construction.
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`These infringement charts are based upon information reasonably and presently available
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`to Plaintiff through publicly-available information and Siemens’s production of documents to
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`date. Plaintiff reserves the right, consistent with its obligations under the Federal Rules of Civil
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`Procedure, the Local Rules, the Court’s Scheduling Order, and the Default Standard for
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`Discovery, including Discovery of Electronically Stored Information, to modify, amend, retract,
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`and/or supplement the infringement charts made herein as additional evidence and information
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`becomes available or as otherwise appropriate, including the issuance of the Court’s claim
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`construction ruling.
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`Plaintiff identifies the following asserted claims of the Patent-in-Suit and accused
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`products, as further explained in Exhibits A and B.
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`Asserted Claims of the ’197 Patent
`3, 5, 10, 11, 19, 20, 29, 30, 32, 33, 39-41, 43, 44, 46,
`47, 52, 54, 57, 60, 66, 67, 72, 73, 79-82, 84-86, 91,
`93, 96, 99, 105, 106, 114-119, 122-125, 128, 129,
`136, 141, 143, 146, 149, 226, 227, 229, 231-233,
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`1, 6, 8, 9, 12-17, 19, 38, 62-64, 68-70, 78, 101, 113,
`116, 120, 129, 130, 230
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`Siemens – Accused Products
`bDNA Products. See Ex. A.
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`VERSANT Products. See Ex. B.
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`3
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`Exhibit 2131 Page 3
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`DATED: September 30, 2014
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`/s/ Brian E. Farnan
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`Brian E. Farnan (Bar No. 4089)
`Farnan LLP
`919 North Market Street
`12th Floor
`Wilmington, DE 19801
`(302) 777-0300
`(302) 777-0301
`bfarnan@farnanlaw.com
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`John M. Desmarais (admitted pro hac vice)
`Michael P. Stadnick (admitted pro hac vice)
`Jordan N. Malz (admitted pro hac vice)
`Justin P.D. Wilcox (admitted pro hac vice)
`Peter C. Magic (admitted pro hac vice)
`Joseph C. Akalski (admitted pro hac vice)
`Jessica A. Martinez (admitted pro hac vice)
`Danielle A. Shultz (admitted pro hac vice)
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`(212) 351-3400
`(212) 351-3401
`jdesmarais@desmaraisllp.com
`mstadnick@desmaraisllp.com
`jmalz@desmaraisllp.com
`jwilcox@desmaraisllp.com
`pmagic@desmaraisllp.com
`jakalski@desmaraisllp.com
`jmartinez@desmaraisllp.com
`dshultz@desmaraisllp.com
`Counsel for Plaintiff
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`4
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`Exhibit 2131 Page 4
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