Case 8:20-cv-00847-DOC-JDE Document 48 Filed 08/31/20 Page 1 of 10 Page ID #:474
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`Mieke K. Malmberg [SBN 209992]
`mmalmberg@skiermontderby.com
`SKIERMONT DERBY LLP
`800 Wilshire Boulevard, Suite 1450
`Los Angeles, California 90017
`Telephone: (213) 788-4500
`Facsimile: (213) 788-4545
`
`John M. Hughes [pro hac vice]
`john.hughes@bartlitbeck.com
`John S. Phillips [pro hac vice]
`john.phillips@bartlitbeck.com
`BARTLIT BECK LLP
`1801 Wewatta, Suite 1200
`Denver, Colorado 80202
`Telephone: (303) 592-3100
`Facsimile: (303) 592-3140
`
`Attorneys for Plaintiff
`Colibri Heart Valve LLC
`
`
`[Additonal counsel on signature page]
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`SOUTHERN DIVISION – SANTA ANA
`Case No.: 8:20-cv-00847-DOC-JDE
`COLIBRI HEART VALVE LLC,
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`
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`Plaintiff,
`JOINT RULE 26(f) REPORT
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`
`v.
`Hon. David O. Carter
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`MEDTRONIC COREVAVLE LLC,
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`Scheduling Conference: Sept. 14, 2020
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`Defendant.
`Time: 8:30 A.M.
`Courtroom: 9D
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`JOINT RULE 26(F) REPORT
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`Colibri Heart Valve LLC, Exhibit 2002, Page 1 of 10
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`Case 8:20-cv-00847-DOC-JDE Document 48 Filed 08/31/20 Page 2 of 10 Page ID #:475
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`Plaintiff Colibri Heart Valve LLC (“Colibri”) and Defendant Medtronic
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`CoreValve LLC (“Medtronic”) (collectively, “the parties”) respectfully submit the
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`following joint report in advance of the Court’s scheduling conference in the above-
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`referenced matter. The Parties conducted a Rule 26(f) conference on both July 27,
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`2020 and August 28, 2020.
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`I.
`SUMMARY OF THE CASE, CLAIMS, AND DEFENSES
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`On May 4, 2020, Colibri filed a complaint against Medtronic alleging
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`infringement of U.S. Patent Nos. 9,125,739 (“the ’739 patent”) and 8,900,294 (“the
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`’294 patent”) (Dkt. 1). The ’294 patent and the ’739 patent relate to artificial heart
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`valves and the methods for using them. The accused products consist of Medtronic’s
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`CoreValve™ product line, which are artificial heart valves and delivery systems that
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`are guided through a patient’s artery to the heart, where the artificial valves are
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`implanted to replace diseased or damaged valves. On June 12, 2020, Colibri filed a
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`first amended complaint (“FAC”) (Dkt. 30). Plaintiff seeks relief in the form of
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`damages for infringement of the ’739 and ’294 patents.
`Medtronic has not yet answered the FAC. Medtronic filed a Motion to Dismiss
`the FAC that has been briefed and is set for hearing on September 14, 2020, the same
`day as the scheduling conference.
`II.
`SHORT SYNOPSIS OF THE PRINCIPAL ISSUES IN THIS CASE
`Medtronic’s Motion to Dismiss alleges that Colibri has failed to adequately
`plead indirect and willful infringement of the ’739 patent, and direct, indirect, and
`willful infringement of the ’294 patent. Colibri has opposed some, but not all of the
`grounds for dismissal during the course of briefing.
`Subject to and without waiving their respective positions and arguments, the
`parties assert that some of the disputed issues may include, but are not limited to, the
`following: (i) whether Medtronic has infringed the ’739 and ’294 patents; (ii) whether
`the patents-in-suit are valid; (iii) whether Medtronic willfully infringes the patents-in-
`suit; (iv) the proper construction to be given to disputed claim terms; and (v) whether
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`JOINT RULE 26(F) REPORT
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`Colibri Heart Valve LLC, Exhibit 2002, Page 2 of 10
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`Case 8:20-cv-00847-DOC-JDE Document 48 Filed 08/31/20 Page 3 of 10 Page ID #:476
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`Colibri is entitled to damages and, if so, the amount of those damages.
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`The foregoing synopsis is based on the parties’ current information, additional
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`issues may arise in the course of discovery.
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`III. STATEMENT OF WHETHER PARTIES ARE LIKELY TO BE ADDED
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`AND WHETHER PLEADINGS ARE LIKELY TO BE AMENDED
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`Colibri does not at this time anticipate adding any additional parties. Whether
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`the pleadings are likely to be amended is dependent on the Court’s decision with
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`respect to Medtronic’s Motion to Dismiss.
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`Medtronic does not at this time anticipate adding any additional parties.
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`To the extent either Colibri or Medtronic desires to add additional claims or
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`parties, the Court has ordered that motions for leave to join other parties or to amend
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`pleadings be filed no later than 60 days after the Scheduling Order, and noticed for
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`hearing no later than 90 days after the Scheduling Order.
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`IV.
`ISSUES WHICH MAY BE DETERMINED BY MOTION AND LIST OF
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`CURRENTLY CONTEMPLATED MOTIONS
`As discussed above, Medtronic filed a Motion to Dismiss the FAC that is still
`pending. The Motion addresses the issues of direct, indirect, and willful infringement
`of the ’296 patent, as well as indirect and willful infringement of the ’739 patent, and
`Medtronic has requested that Colibri’s claims be dismissed with prejudice.
`Depending on the Court’s decision with respect to the Motion to Dismiss, the
`remaining issues in this case could be narrowed substantially.
`Medtronic also intends to file petitions for Inter Partes Review of the asserted
`patents in early September. Upon submitting the IPRs to the Patent Trial and Appeal
`Board, Medtronic will then file a Motion to Stay this case pending the outcome of the
`IPRs. Colibri intends to oppose the Motion to Stay.
`The parties believe that resolution of the case likely will be materially advanced
`by a claim construction order. The parties therefore request that the Court schedule a
`claim construction hearing and have proposed dates for the hearing as well as dates for
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`JOINT RULE 26(F) REPORT
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`Colibri Heart Valve LLC, Exhibit 2002, Page 3 of 10
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`Case 8:20-cv-00847-DOC-JDE Document 48 Filed 08/31/20 Page 4 of 10 Page ID #:477
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`claim construction briefings below.
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`For one or both of the patents-in-suit, and depending on the outcome of
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`Medtronic’s pending Motion to Dismiss and the IPRs, the parties expect that they may
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`file motions for summary judgment on the key issues of infringement, validity, willful
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`infringement, and/or various damages issues. The parties also anticipate filing
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`motions in limine and Daubert motions. The parties each respectively anticipate filing
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`these motions after the case has substantially progressed, and most likely not until
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`after the Court’s claim construction decision.
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`V.
`SUMMARY OF SETTLEMENT DISCUSSIONS TO DATE, AND THE
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`PARTIES’ RECOMMENDED SETTLEMENT PROCEDURE
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`The parties had certain settlement discussions prior to the filing of the
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`Complaint. The parties and their representatives are each sophisticated, with
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`extensive experience negotiating resolutions to complex matters and expect that they
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`will engage in settlement discussions as appropriate.
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`The parties also propose to engage in further settlement discussions pursuant to
`the local rules. At the discretion of the Court, and referring to the available settlement
`procedures identified in the Court’s July 17th Order Setting Scheduling Conference
`(Dkt. 43 at 3), the parties agree to settlement procedure 3 using a private mediator.
`The parties believe that to the extent a settlement procedure is ordered by this
`Court, a mediation would be more productive and likely to succeed if conducted,
`subject to the schedule of the mediator, following claim construction and prior to any
`hearing on summary judgment.
`VI. DISCOVERY PLAN1
`A.
`Proposed Discovery Plan
`1.
`No changes need to be made to the form for disclosures under Fed. R.
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`1 Medtronic believes a discovery plan is not required at this time in light of its
`expected IPR filings and Motion to Stay pending resolution of the IPRs. Medtronic
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`JOINT RULE 26(F) REPORT
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`Colibri Heart Valve LLC, Exhibit 2002, Page 4 of 10
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`Case 8:20-cv-00847-DOC-JDE Document 48 Filed 08/31/20 Page 5 of 10 Page ID #:478
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`Civ. P. 26(a). Initial disclosures will be exchanged by the parties ten days after the
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`Court’s decision on Medtronic’s Motion to Dismiss.
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`2. While the parties agree that discovery should take place pursuant to the
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`Federal Rules of Civil Procedure and the Local Rules, the parties also contemplate and
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`agree to the following: (i) expert discovery will follow the conclusion of fact
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`discovery, as set forth below; (ii) infringement and invalidity contentions are
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`contemplated to occur, along with claim construction, per a proposed schedule set
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`forth below; and (iii) the parties will meet and confer in good faith on a stipulation
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`that would avoid or minimize the need for Requests for Admission (“RFAs”) for the
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`sole purpose of authenticating or stipulating to the admissibility of documents.
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`3.
`The parties will prepare a stipulated protective order and order on
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`electronically stored information (“ESI”) to be presented to the Court in due course.
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`4.
`The parties agree that privileged and attorney work product material
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`drafted, created, and/or generated on or after December 5, 2019 need not be identified
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`in a privilege log.
`VII. MANUAL FOR COMPLEX LITIGATION
`This case does not constitute complex litigation and there is no need to utilize
`the Manual for Complex Litigation.
`VIII. TRIAL ESTIMATE
`Colibri has demanded a jury trial on all issues so triable. The parties estimate
`four days for such a jury trial.
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`therefore agrees to the discovery plan below only to the extent that the Court considers
`a discovery plan to be necessary at this time.
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`JOINT RULE 26(F) REPORT
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`Colibri Heart Valve LLC, Exhibit 2002, Page 5 of 10
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`Case 8:20-cv-00847-DOC-JDE Document 48 Filed 08/31/20 Page 6 of 10 Page ID #:479
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`IX. PROPOSED DATES2
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`A. Discovery Cutoff, Motion Cutoff, Pretrial Conference, Trial.
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`The Parties understand that the Scheduling Order requires them to identify four
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`dates, which are as follows: (1) discovery cut-off on May 28, 2021 for fact discovery
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`and September 24, 2021 for expert discovery; (2) motion cut-off on December 6,
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`2021; (3) pretrial conference on January 6, 2022; and (4) jury trial on February 8,
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`2022. The deadlines for these four events are identified in bold in the table of
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`proposed deadlines below. The parties also respectfully propose the following
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`additional deadlines relating to claim construction and expert discovery:
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`Parties’ Proposed
`Date
`October 23, 2020
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`Date Set by Court
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`Event
`Disclosure of Asserted Claims
`and Infringement Contentions
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`and Accompanying Document
`Production
`Last Day to File Motion to Join
`Parties/Amend Pleadings
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`Disclosure of Invalidity
`Contentions and Accompanying
`Document Production
`Exchange of Proposed Terms
`for Construction
`Exchange of Preliminary Claim
`Constructions and Extrinsic
`Evidence
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`60 days after
`Scheduling Order
`(with hearing date no
`later than 90 days
`after)
`November 18, 2020
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`60 days after
`Scheduling Order
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`later than 90 days
`after)
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`November 25, 2020
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`December 11, 2020
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`2 Medtronic believes it is not necessary for the Court to set dates at this time, in light
`of its expected IPR filings and Motion to Stay pending resolution of the IPRs.
`Medtronic therefore agrees to the proposed dates in this section only to the extent that
`the Court considers it to be necessary at this time.
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`JOINT RULE 26(F) REPORT
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`Colibri Heart Valve LLC, Exhibit 2002, Page 6 of 10
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`Event
`Joint Claim Construction and
`Prehearing Statement
`Simultaneous Opening Claim
`Construction Briefs
`Simultaneous Responsive Claim
`Construction Briefs
`Technology Tutorial
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`Claim Construction Hearing
`Fact Discovery Cut-off
`Final Infringement Contentions
`Opening Expert Reports on
`Issues Where the Party has
`Burden of Proof
`Final Invalidity Contentions
`Rebuttal Expert Reports on
`Issues Where the Party Does
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`Not Have Burden of Proof
`Expert Discovery
`Cut-off
`Dispositive and Daubert Motion
`[deadline to file]
`Oppositions to Dispositive and
`Daubert Motions
`Reply to Dispositive and
`Daubert Motions
`Hearing on Dispositive and
`Daubert Motions; Final Motion
`Cut-off (this date refers to the
`last date on which a motion may
`be noticed for hearing and
`should occur on a Monday, the
`same date as hearing on
`dispositive motions)
`Final Pretrial Conference
`[Monday]
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`Parties’ Proposed
`Date
`January 15, 2020
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`February 5, 2021
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`February 26, 2021
`At the Court’s
`discretion
`March 8, 2021
`May 28, 2021
`June 11, 2021
`June 25, 2021
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`July 23, 2021
`July 23, 2021
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`September 24, 2021
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`October 15, 2021
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`October 29, 2021
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`November 12, 2021
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`December 6, 2021
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`January 17, 2022
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`Case 8:20-cv-00847-DOC-JDE Document 48 Filed 08/31/20 Page 7 of 10 Page ID #:480
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`Date Set by Court
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`JOINT RULE 26(F) REPORT
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`Colibri Heart Valve LLC, Exhibit 2002, Page 7 of 10
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`Event
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`Date Set by Court
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`Case 8:20-cv-00847-DOC-JDE Document 48 Filed 08/31/20 Page 8 of 10 Page ID #:481
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`Parties’ Proposed
`Date
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`February 8, 2022
`Jury Trial [Tuesday]
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`The parties’ proposed deadlines for events occurring after May 28, 2021 are provided
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`on the basis of an anticipated decision by the Court on claim construction in late April
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`or May 2021. The parties additionally contemplate that any amendments to the
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`infringement/invalidity contentions at other times than the deadlines specified in the
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`table above would require a stipulation or a showing of good cause.
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`Respectfully submitted,
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`[SIGNATURE PAGE FOLLOWS]
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`8
`JOINT RULE 26(F) REPORT
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`Colibri Heart Valve LLC, Exhibit 2002, Page 8 of 10
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`Case 8:20-cv-00847-DOC-JDE Document 48 Filed 08/31/20 Page 9 of 10 Page ID #:482
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`SKIERMONT DERBY LLP
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`By: /s/ Mieke M. Malmberg
`
`Mieke K. Malmberg [SBN 209992]
`mmalmberg@skiermontderby.com
`800 Wilshire Boulevard, Suite 1450
`
`Los Angeles, California 90017
`Telephone:
`(213) 788-4500
`Facsimile:
`(213) 788-4545
`
`John M. Hughes [pro hac vice]
`john.hughes@bartlitbeck.com
`John S. Phillips [pro hac vice]
`john.phillips@bartlitbeck.com
`BARTLIT BECK LLP
`1801 Wewatta, Suite 1200
`Denver, Colorado 80202
`Telephone: (303) 592-3100
`Facsimile: (303) 592-3140
`
`
`Adam K. Mortara [pro hac vice]
`adam.mortara@bartlitbeck.com
`BARTLIT BECK LLP
`Courthouse Place
`54 West Hubbard Street
`Chicago, IL 60654
`Telephone: (312) 494-4400
`Facsimile: (312) 494-4440
`
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`Attorneys for Plaintiff
`Colibri Heart Valve LLC
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`The signatory above attests that all other
`signatories listed, and on whose behalf the
`filing is submitted, concur in the filing’s
`content and have authorized the filing.
`DLA PIPER LLP
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`By: /s/ Kathryn Riley Grasso
`
`
`Kathryn Riley Grasso [SBN 211187]
`kathryn.riley@dlapiper.com
`DLA Piper LLP
`401 B Street, Suite 1700
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`DATED: August 31, 2020
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`DATED: August 31, 2020
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`Colibri Heart Valve LLC, Exhibit 2002, Page 9 of 10
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`Case 8:20-cv-00847-DOC-JDE Document 48 Filed 08/31/20 Page 10 of 10 Page ID #:483
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`San Diego, CA 92101
`Telephone: (619) 699-2842
`Facsimile: (619) 699-2701
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`Mark D. Fowler [SBN 124235]
`mark.fowler@dlapiper.com
`
`2000 University Ave.
`East Palo Alto, CA 94303
`Telephone: (650) 833-1559
`Facsimile: (650) 833-2001
`
`Martin M. Ellison [SBN 292060]
`martin.ellison@dlapiper.com
`2000 Avenue of the Stars, Suite 400
`Los Angeles, CA 90067
`Telephone: (310) 595-3000
`Facsimile: (310) 595-3300
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`Attorneys for Defendant
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`Medtronic CoreValve LLC
`CERTIFICATE OF SERVICE
`I hereby certify that a true and correct copy of the above and foregoing Joint
`Report Following Fed. R. Civ. P. 26(f) Conference was served on August 31, 2020 to
`all counsel of record who are deemed to have consented to electronic service via the
`Court’s CM/ECF system. Pursuant to Local Rule 5.4(c), any other counsel of record
`will be served by electronic mail delivery.
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`/s/ Mieke K. Malmberg
`Mieke K. Malmberg
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`Colibri Heart Valve LLC, Exhibit 2002, Page 10 of 10
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