Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA193170
`ESTTA Tracking number:
`02/16/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92048392
`Plaintiff
`ICU Medical, Inc.
`Kimberly Van Voorhis, Jennifer Taylor
`Morrison & Foerster LLP
`755 Page Mill Rd.
`Palo Alto, CA 94304
`UNITED STATES
`kvanvoorhis@mofo.com, jtaylor@mofo.com
`Opposition/Response to Motion
`Erika L. Yawger
`kvanvoorhis@mofo.com, eyawger@mofo.com
`/ELY/
`02/16/2008
`2008-02-16 Opposition to Mot to Suspend.pdf ( 7 pages )(524141 bytes )
`2008-02-16 Van Voorhis Opp Decl.pdf ( 4 pages )(184284 bytes )
`2008-02-16 Ex A - Van Voorhis Decl.pdf ( 10 pages )(46304 bytes )
`2008-02-16 Ex B - Van Voorhis Decl.pdf ( 2 pages )(89042 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

`
`TRADEMARK
`Docket No. 63145-6001.501
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Registration No. 3,168,566
`Filed: December 22, 2005
`Registered: November 7, 2006
`
`ICU MEDICAL, INC.,
`
`Cancellation No.: 92/048392
`
`Petitioner,
`
`vs.
`
`RYMED TECHNOLOGIES, INC.,
`
`Respondent.
`
`
`
`OPPOSITION TO MOTION TO SUSPEND PROCEEDING
`PENDING OUTCOME OF FEDERAL COURT LITIGATION
`
`I.
`
`INTRODUCTION
`
`Petitioner ICU Medical, Inc. (“ICU”) opposes RyMed Technologies, Inc. (“RyMed”)’s
`
`motion to suspend these proceedings pursuant to TTAB Rule 2.1 l7(a) pending disposition of
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`patent litigation in California. RyMed has failed to tell the Board an important fact:
`
`the
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`“pending” California action is currently stayed and likely to be dismissed in a matter of weeks.
`
`This cancellation proceeding, on the other hand, is well into discovery and moving forward in a
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`timely and efficient manner. There is no reason to stop it now.
`
`RyMed’s statement that it may re-file a dismissed trademark claim in the District of
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`Delaware makes no difference. The standard isn’t whether a claim “will be pending” in district
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`court, but whether it is currently pending. TTAB Rule 2.1l7(a). ICU’s statement that RyMed
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`could bring these claims (including the trademark claim) in Delaware does not mean RyMed will
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`Docket No. 63145-6001.501
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`bring them or that the Delaware court will ultimately hear them. Indeed, during a telephonic
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`hearing with the California court concerning the motion to dismiss the California action, ICU’s
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`counsel made clear that while RyMed’s non-patent claims could be re-filed in Delaware, ICU
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`was not waiving its right to challenge the propriety of those claims, in particular the trademark
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`claims. See Declaration of Kimberly Van Voorhis in Opposition to Motion to Suspend
`
`Proceeding Pending Outcome of Federal Court Litigation (“Van Voorhis Decl.”), 1] 3. ICU does
`
`not currently use the term “neutral” in connection with the sale of its needle-free I.V. Valves.
`
`Van Voorhis Decl., 114. Thus, RyMed has no claim for trademark infringement, and no matter
`
`where it attempts to file one, it should be dismissed.
`
`Given the profoundly uncertain status of RyMed’s district court claim, it is prudent and
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`efficient to proceed in a forum where the issues have been properly defined and are already
`
`moving forward. This is particularly true in this case, where use of the “neutral” mark carries
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`broader implications for the healthcare industry on matters of public health and safety.
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`RyMed’s motion to stay should be denied, and this cancellation proceeding should move
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`forward.
`
`II.
`
`FACTUAL BACKGROUND
`
`On July 27, 2007, ICU sued RyMed for patent infringement in the District of Delaware
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`concerning RyMed’s neutral displacement connector products. Van Voorhis Decl., 1] 2. Several
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`months later, in an effort to frustrate ICU’s choice of forum, RyMed filed a suit for declaratory
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`judgment of non—infringement of ICU’s patents in the Central District of California, and included
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`additional claims for trademark infringement. RyMed simultaneously filed a motion to transfer
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`the Delaware action to California.‘ Van Voorhis Decl., 1] l. ICU promptly filed a motion to
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`dismiss the California action under the first-to—file rule. Van Voorhis Decl., 1] 2.
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`The Delaware court denied RyMed’s motion to transfer on January 23, 2008. Van
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`Voorhis Decl., 1] 1. On January 30, 2008 the California court indicated that it was inclined to
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`dismiss RyMed’s entire California case (including the trademark claims) in light of the Delaware
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`court’s ruling. Van Voorhis Decl. 1] 3. But RyMed asked for a delay, saying that it planned to
`
`move for reconsideration in Delaware. As a result, the district Judge in California has stayed its
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`proceedings. Id.
`
`RyMed filed its motion for reconsideration on February 6, 2008. It rehashes earlier
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`arguments, offering no credible information that the Delaware court could not or did not properly
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`consider the first time. In the almost certain event that the motion is denied, RyMed’s trademark
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`claim in California will be dismissed. And, if RyMed attempts to move the claim to the
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`Delaware action, ICU, because it has stopped using the term “neutral,” will move to dismiss it.
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`Thus, contrary to RyMed’s argument, its trademark claim is not actively pending now, and is
`
`very unlikely to be pending anywhere in the future.2
`
`1 ICU has not yet answered in the California action due to the pending motion to dismiss.
`
`2 RyMed suggests that, notwithstanding ICU’s cessation of its use of the word “neutral,”
`RyMed might file suit to recover damages for past use. This suggestion is unsupported and
`fanciful. Damages in trademark cases are equitable in nature and only recoverable on a showing
`of (i) harm or actual loss to the plaintiff; (ii) direct competition between the parties where the
`defendant’s sales are attributable to the infringing conduct (to recover profits); or (iii) willfulness
`on the part of the defendant (to recover profits). See, e.g., Lindy Pen Co. v. Bic Pen Corp., 982
`F.2d 1400, 1407 (9th Cir. 2003); Blau v. YMIJeanswear, Inc., CV O2-09551, 2003 U.S. Dist.
`LEXIS 27432 at **8-9 (C.D. Cal. Dec. 31, 2003); see also Gucci America, Inc. v. Daffifs, Inc.,
`354 F.3d 228, 239-43 (3d Cir. 2003). RyMed cannot meet any of those factors. RyMed also
`argues that it could file suit over ICU’s continued use of the phrase “neutral displacement,” a
`putative mark that has already been rejected as descriptive. See Petition to Cancel 11 5, Exhibit B.
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`Docket No. 63145-6001.501
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`

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`Typically, TTAB actions can be stayed when a pending district court case is actually
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`moving forward and will dispose of the trademark claims. As discussed above, those
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`circumstances don’t exist here. Proceeding with the present cancellation action, where the trial
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`period opens in early September 2008, remains the most efficient way to resolve the private
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`dispute, as well as the related issues of public health and safety.
`
`III.
`
`ARGUMENT
`
`The suspension of a Board proceeding in view of a civil action is discretionary. See, e.g,
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`Boyds Collection Ltd. v. Herrington & C0., 65 U.S.P.Q.2d 2017, 2018 (TTAB 2003) (denying
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`motion to suspend, noting that “both the permissive language of Trademark Rule 2.1 l7(a)
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`(‘proceedings...may be suspended. . . ’), and the explicit provisions of Trademark rule 2.1 l7(b)
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`make clear that suspension is not the necessary result in all cases.”). In this case, the Board
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`should not suspend for at least four reasons.
`
`First, the Central District of California action has been stayed due to a tentative decision
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`to dismiss it. Trademark Rule 2.l17(a) only applies to “pending” cases that “may have a
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`bearing” on the cancellation proceeding at the TTAB. The California civil action touted by
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`RyMed as “likely determinative federal court litigation” is instead likely to be dismissed. The
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`progress of ICU’s cancellation proceedings should not be stalled when dismissal of the California
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`action in imminent.
`
`RyMed’s argument that ICU agreed to allow it to re-file in Delaware is misleading and
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`ultimately irrelevant. ICU made that agreement while simultaneously warning that it would
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`move to dismiss this claim if re-filed, for a compelling reason: ICU does not presently use the
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`mark “neutral” (although it contends that it and others in the industry should be able to), and
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`therefore RyMed has no claim for infringement. If RyMed actually re-files an infringement
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`claim based on ICU’s use of the term “neutral,” the claim will be specious.
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`Second, judicial economy is best served by proceeding with the cancellation proceedings
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`now. ICU has already served its initial disclosures and is poised to begin discovery. The parties
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`have already held the required discovery conference, and the cancellation proceeding is well
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`underway, with ICU’s trial period scheduled to open in September. In contrast, ICU has not even
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`filed an answer to RyMed’s complaint in the California action, and likely never will. Moreover,
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`if RyMed attempts to re-file its trademark claim in Delaware, ICU will move to dismiss it.
`
`Resolving that motion will take several more months. Thus, by the time the trademark claim
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`becomes an issue in any court, if it ever does, the TTAB proceedings will be nearly complete.
`
`Third, notwithstanding the motion to dismiss, the California action does not presently
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`involve the same legal issues, so even if it were to proceed, the outcome would not necessarily
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`have a bearing on the issues before the Board. The Trademark Manual of Board Procedure
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`(“TMBP”) § 510.02(a) states that “[o]rdinarily, the Board will suspend proceedings in the case if
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`the final determination will have a bearing on the issues before the Board.” The continued
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`registration of RyMed’s “neutral” mark is not an issue presently pending before the District
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`Court in California—only RyMed’s affirmative claim for infringement has thus far been asserted.
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`More importantly, because ICU is no longer using the term “neutral” in connection with the sale
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`of its I.V. connectors, to the extent a trademark case might have gone forward in the Central
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`District of California, it would have been short-lived.
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`Finally, ICU, the healthcare industry and the general public all suffer if RyMed is allowed
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`to continue enforcing its descriptive mark pending the outcome of the civil case. As explained in
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`ICU’s Petition to Cancel, “neutral” is at a minimum descriptive, but also a generic term used by
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`Docket No. 63145-6001.501
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`the medical industry to describe the class of goods for which registration was sought. Because
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`“neutral” is an important descriptive term in the healthcare industry, it is essential that ICU and
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`others be free to use it to accurately describe the relevant products. Stalling this cancellation
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`proceeding could severely impair the industry’s ability to properly refer to and describe these
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`products, raising serious health and safety concerns.
`
`IV.
`
`CONCLUSION
`
`While staying a TTAB proceeding may make practical sense in some cases, this is not
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`one of them. The only “pending” district court action is about to be dismissed, and the present
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`cancellation proceeding is well under way. Delaying this proceeding would only delay the
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`ultimate resolution and would do nothing to preserve judicial resources. RyMed’s motion to
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`suspend proceedings should be denied.
`
`Dated: February 16, 2008
`
`Respectfully submitted,
`
`
`
`Morrison & Foerster LLP
`
`Kimberly N. Van Voorhis
`Erika L. Yawger
`755 Page Mill Road
`Palo Alto, California 94304-1018
`(650) 813-4262 Phone
`(650) 494-0792 Fax
`
`pa-1215442
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`Docket No. 63145-6001.501
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`

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`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing OPPOSITION TO MOTION
`
`TO SUSPEND PROCEEDING PENDING OUTCOME OF FEDERAL COURT LITIGATION
`
`was served on February 16, 2008 by e-mail and first class mail, postage prepaid, on:
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`David P. Gordon
`
`Gordon & Jacobson PC
`
`60 Long Ridge Road, Suite 407
`Stamford, CT 06902-1842
`
`
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`TRADEMARK
`Docket No. 63145-6001.501
`
`Cancellation No.: 92/048392
`
`In the matter of Registration No. 3,168,566
`Filed: December 22, 2005
`Registered: November 7, 2006
`
`ICU MEDICAL, INC.,
`Petitioner,
`
`VS.
`
`RYMED TECHNOLOGIES, INC.,
`
`Respondent.
`
`
`
`ICU Medical, Inc. (“ICU”) in this action against RyMed Technologies, Inc. (“RyMed”). The
`following declaration is based on my personal knowledge. Ifcalled upon to testify, I could and
`would competently testify as to the matters set forth below.
`
`on January 23, 2008.
`
`///
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`pa-1235318
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`Docket No. 63145-6001.501
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`

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`2.
`
`On November 30, 2007, ICU fl
`
`led a motion to dismiss RyMed’s California action
`
`under the first-to-file rule.
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`court concerning the motion to dismiss the California action. During that hearing, ICU’s counsel
`made clear that while RyMed’s non-patent claims could be re-filed in Delaware, ICU was not
`
`///
`
`///
`
`///
`
`///
`
`///
`
`///
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`pa-1235318
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`

`
`ICU does not currently use the term “neutral” in connection with the sale ofits
`5 4.
`need1e—free I.V. Valves. See Declaration ofAlison Burcar in Support ofICU’s Motion to
`Dismiss or in the Alternative Stay, a true and correct copy ofwhich is attached hereto as Exhibit
`
`Dated: February 16, 2008
`
`Respectfully submitted,
`
`I
`
`By:
`
`%
`
`Kimberly N. Van Voorhis
`Morrison & Foerster LLP
`755 Page Mill Road
`Palo Alto, California 94304-1018
`(650) 813-4262 Phone
`(650) 494-0792 Fax
`
`Attorney for Petitioner
`ICU Medical, Inc.
`
`pa-1235318
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`Docket No. 63145-6001.501
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`13 S1A1 +8
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`C1 COURT
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`C ?NTRAT.i
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`C1 OE CAL
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`fiRN:
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`HONORA %L1
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`ANA R.
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`PEA1
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`fiCHNOROG
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`CIIIW
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`No. SA CVO7—1199—MRP(MLGX)
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`fiR'S 1RANSCR_P1 OF
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`1: &PHON
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`LOS ANGfiL gs,
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`BORN A
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`ZDN +8 DAY,
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`JANUARY 30,
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`2008
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`25
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`U.
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`NDY L. N RfiN
`CSR 5059
`&RG,
`S. O"icia1 Court Reporter
`138
`L,
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`312 North Sprir
`California 90012
`Los Angeles,
`www.cindynirenberg.com
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`UNWEDSTATESDETWCTCOURT,CENTRALDETWCTOFCALFORNM
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`EARANCES OF COUNS
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`CAREY):
`LLP
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`AN 3
`
`fiW
`3UNSOW, ATTORNEY AT LAW
`RY C.
`.1. CHfiR AN, ATTORNEY AT LAW
`RO% fiR1 SCO11 WALES, A11ORNEY A1 LAW
`525 Warxet Street
`Suite 3
`600
`San Fra
`qcisco, CA 94105
`415-848-4900
`
`~'.T. fiP {OW CAREY):
`WO RR:
`SON & EOfiRS1fiR
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`RN
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`755 Pag
`CA 94304
`Palo Alto,
`650-813-5600
`
`, ATTORNEY AT LAW
`fiRLY W. VAN VOORHI S,
`AT LAW
`
`fiL WAW, ATTORWEY AT LAW
`e Mill Road
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`LOS ANG:
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`2 DAY,
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`JANUARY 30, 2008
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`lHfi CL%RK:
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`Good morning, Counse .
`
`"n the matter o:
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`case number SA CVO7—ll99—MRP, Rymed Techno ogies, "nc., versus
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`ICU Medical.
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`Counsel, state your appearances for the record.
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`MR. BUNSOW:
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`Good morning, Your Honor. This is Henry
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`BUHSOW
`
`:or Rymed, and with me is —— or are Mr. K.T. Cherian and
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`Hr. Scott Wales.
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`MS. VAN VOORHIS:
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`Good morning, Your Honor. This is
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`Kimberly Van Voorhis representing ICU Medical, and with me are
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`Diana Luo and Dan Wan.
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`T ; COURT:
`
`I called you to avoid having to get
`
`together wi'1 you on the date now set.
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`I want
`
`to just say that
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`have read the decision o:
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`the judge in Delaware, and I
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`am
`
`prepared to dismiss this case.
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`I only have just a slight
`
`problem that
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`I want
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`to talk to you about and that is those
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`claims that have to do with state law causes o: action.
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`They
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`appear to be part o:
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`the patent case, and I want
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`to talk abou
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`what woald happen i-
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`" dismissed —— i-
`
`“ granted this motion
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`dismiss.
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`So let's just start out and ask you, Ms. Van Voorhis,
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`what
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`then?
`
`MS. VAN VOORHIIS: What
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`the e
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`THE COURT: Well, no.
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`MS. VAN VOORH S:
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`CU's position is that all o:
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`claims should be dismissed,
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`so --
`
`TH COURT: Well, but these are without prejudice
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`dismissals, aren't they?
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`MS. VAN VOORHIS:
`
`YES.
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`THE
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`COURT: Well, you would have no objection,
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`would
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`you,
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`on behal
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`o
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`"CU to their amending and adding whatever
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`they want
`
`to from this complain:
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`to the one in Delaware?
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`MS. VAN VOORHIS: Tha:'s certainly trie, Your Honor,
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`with the one caveat that
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`ICU's position is that we don't
`
`believe regardless o: where some of those claims are brought --
`
`‘or example,
`
`the trademark claim,
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`we don't believe that those
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`claims are proper at
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`the outset.
`
`But, certainly,
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`we would not
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`object to allowing Rymed to amend its answer and counterclaim
`
`in
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`Delaware to add any claims that it wishes, provided, you
`
`know,
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`we reserve our right to challenge those claims.
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`T Q
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`COURT:
`
`All right.
`
`Wha:
`
`do you say,
`
`Mr.
`
`3unsow?
`
`MR.
`
`BUNSOW:
`
`Your
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`lonor,
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`011, O__
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`the 21 claims in the
`
`complaint,
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`l3 of them are no,
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`in ,he Delaware action.
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`They do include the sta
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`:e court—based claims that
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`you've alluded to,
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`but
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`they also include non—infringement
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`claims re"
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`ating to our new product which is not and could not
`
`have been in the original
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`Delaware action because it
`
`was not on
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`the market when the
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`Delaware action was
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`filed,
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`so it's really
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`more than just the state court claims.
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`We
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`feel that we've got a right to a determination, at
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`least as to the new produc
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`be fore Your Honor, given Your
`
`Honor's long history with
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`this case.
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`THE COURT: Well,
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`that's not —— is that what you
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`Delaware?
`
`M’. BUNSOW:
`
`NO.
`
`We got sued in Delaware on the
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`product, but t
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`fie case law is very clear that a new product
`
`allow a declaratory judgment action in these circumstances
`
`where we've already been sued on a predecessor product.
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`So a declaratory judgment action --
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`mean,
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`jurisdiction is avai able.
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`"t
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`is part of the California case
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`before Your Honor.
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`It is no,
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`part o_ the complaint that's in
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`DeLaware, and we think it co
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`Jld be disposed of very quickly and
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`very e
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`'iciently given Your
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`ionor's prior involvement and
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`familiarity with this case.
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`As an example,
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`they have sued us on 80, eight zero,
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`individual claims in
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`Delaware and Your Honor's Markman
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`construction in the prior case would eliminate almost 60 o:
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`those from consideration o"
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`in ’ringement.
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`So there is a huge di
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`'erence between what —— i:
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`case is —— if
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`they are bound by what happened in the prior
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`case, given Your Honor's
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`familiarity.
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`And as to our new
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`23
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`product,
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`we would certainLy like to take advantage of
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`those
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`24
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`25
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`judicial
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`e ”iciencies.
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`Now, I'll also mention that we plan to seek
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`reconsideration of Judge Farnan's denial of our motion to
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`transfer;
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`and if
`
`necessary, we are seriously considering taking
`
`a writ because we think it is a very strong motion to transfer.
`
`We think there are legions of reasons why this case should be
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`before Yogr Honor instead of
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`a new judge in a district
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`forum
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`where neither party is a resident and there is almost no
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`activity whatsoever,
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`so --
`
`T Q COURT: Well, what --
`
`go on,
`
`Mr.
`
`3unsow.
`
`Go on.
`
`M’. BUNSOW:
`
`That chapter is not over yet,
`
`is what
`
`am saying. We don't believe that it's a sure thing that this
`
`case is going to go forward
`
`in Delaware at
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`all.
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`We believe that we have at least a fair chance o:
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`persuading Judge Farnan by way of
`
`a motio
`
`for reconsideration
`
`that might better state what we tried to say the first time
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`around.
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`But more importantly,
`
`we think that the case law
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`supports a transfer,
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`and that,
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`frankly,
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`what he has done is an
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`abuse of discretion, and we are strongly recommending to the
`
`client that
`
`they authorize us to
`
`take that by way of
`
`a writ to
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`the CAFC i:
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`necessary.
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`TH
`
`I COURT:
`
`What do you say,
`
`MS.
`
`Van Voorhis?
`
`MS.
`
`VAN VOORHIS:
`
`Several comments in response,
`
`Your
`
`First,
`
`be"
`
`ieve the Court's question was what
`
`to do
`
`about
`
`the state law claims,
`
`and the patent
`
`in:
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`fringement claims
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`are the
`
`federal claims,
`
`and as we've indicated in our opening
`
`brie:
`
`as well as
`
`am looking at our reply brie:
`
`here, at
`
`least on Page
`
`3,
`
`the modi:
`
`fied product
`
`is most certainly covered
`
`by the
`
`Delaware case,
`
`and we have cited a case to support this.
`
`And also Judge Farnan,
`
`don't believe his order
`
`re
`
`ferences or makes any distinction at all between the modified
`
`product and the original product
`
`because they are,
`
`in fact,
`
`the
`
`same and all already covered under the
`
`Delaware action.
`
`So that is my response there on the patent side o:
`
`think that's already very clearly covered by Judge
`
`And with respect to whether to seek a writ,
`
`you know,
`
`COURT:
`
`0
`
`hr
`
`well,
`
`I'm not asking you to comment
`
`about that.
`
`MS.
`
`VAW VOORHI
`
`S:
`
`Okay.
`
`Thank you.
`
`didn't know.
`
`TH
`
`COJRT:
`
`Well,
`
`let's continue the motion,
`
`then,
`
`and let you do wqatever you want
`
`to,
`
`Mr.
`
`3unsow.
`
`don'
`
`think
`
`want
`
`to take a position about this.
`
`want yoa both
`
`to be ab:
`
`_e to eiunciate your positions back
`
`there in
`
`Delaware.
`
`And so
`
`suggest that you stipulate to a
`
`continuance o:
`
`:
`
`the motion,
`
`and we will get together after
`
`Delaware has said something definitive or denied that it will
`
`do so.
`
`BUNSOW:
`
`That's what we would definitely pre'
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`Your Honor. That's fine with us.
`
`Then why don't you do that. Why
`
`ai
`
`T * COURT: Okay.
`
`don't you stipalate and send it in to me.
`
`MR. BUNSOW: All right. We'll write up a stipulation
`
`today and ge'
`
`it over to Ms. Van Voorhis ‘or her approval.
`
`THI COURT:
`
`Is that agreeable, with you, Ms. Van
`
`Voorhis?
`
`MS. VAN VOORH
`
`think i’ that's the Court's
`
`preference,
`
`tha,'s Line.
`
`However,
`
`do think that
`
`ICU has a
`
`very serious patent
`
`injringement claim out here,
`
`and
`
`want
`
`to
`
`express some serious concern about what appears to me to be
`
`just an e
`
`'ort to delay this,
`
`and so
`
`do not want
`
`some
`
`thing --
`
`some type o_
`
`a stipulation that's open—ended.
`
`don't think
`
`that's ‘air.
`
`think we have a very serious infringement case,
`
`and
`
`don't
`
`know ——
`
`don't know what sort o:
`
`timing Rymed is
`
`looking at
`
`i
`
`terms o" bringing --
`
`THI COURT: Well, let's --
`
`MS. VAN VOORHIS:
`
`--
`
`any type o
`
`motion
`
`reconsideration.
`
`don't know how serious that is.
`
`know
`
`it's a very, very high standard, and
`
`think it
`
`would be very
`
`unlikely that Judge Farnan would reconsider.
`
`But,
`
`nevertheless,
`
`my one concern is how long this is going to delay
`
`the ultimate resolution o‘
`
`"CU's case.
`
`TH E COURT: Wei"
`
`"'m going to leave that
`
`want that sent
`
`in to me right away so tha
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`no later than Monday morning. And if you can't continue it --
`
`; you can't figure out a date between you, you call the clerk
`
`and tell her tqat, and then I will continue it.
`
`MR. BUNSOW: Your Honor,
`
`this is Henry 3unsow.
`
`think we could agree on an arbitrary date, say,
`
`30 days, with
`
`the understanding that if either Judge Farnan hasn't acted or
`
`it's still in play, we could either jointly or unilaterally
`
`reques, a further continuance.
`
`I mean, that's the way I'd like
`
`to do it.
`
`Tqat way it's not
`
`'eft up in the air.
`
`THE COURT: That's fine with me.
`
`Is that all right
`
`with you, Ms. Van Voorhis?
`
`MS. VAN VOORHIS:
`
`To be frank, Your Honor, it's
`
`something I'd like to discuss with my team. Mr. Pooley's no
`
`here, and that's something that
`
`" would prefer to discuss wi
`
`"CU, but
`
`I will certainly do so promptly and will
`
`in good faith
`
`discuss it with Rymed's counsel.
`
`THI COJRT:
`
`And so we will hear from you right away?
`
`MS. VAW VOOR I
`
`: Yes.
`
`THI COJRT:
`
`MS. VAW VOOR I
`
`:
`
`. Yes.
`
`Oh, of course, yes.
`
`THI COJRT: All right.
`
`Then we are not —— don't come
`
`on the date now set, and I'll expect
`
`to hear from you. Yes?
`
`MR. BUNSOW: Yes, Your Honor.
`
`MS. VAN VOORHIS: Yes, Your Honor.
`
`THE COURT: All right.
`
`Thank you.
`
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`MS. VAN VOORHIS:
`
`Thank you, Your Honor.
`
`MR. BUNSOW: All right.
`
`Thank you.
`
`(Proceedings concluded.)
`
`hereby certify that pursuant
`
`to Section 753,
`
`Title 28, United States Code,
`
`the foregoing is a true and
`
`correct transcript of the stenographically reported
`
`proceedings held in the above—entitled matter and that the
`
`transcript page format
`
`is in conformance with the
`
`regulations of the Judicial Conference of the United States.
`
`Date: February l, 2008
`
`Cindy L. Nirenberg, CSR No. 5059
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`

`
`C a 8:07-cv—01199-lv'1FlP~VE3K Document 15-2
`
`Filed {)‘E/28/2008
`
`Pagel of 2
`
`1
`
`2
`
`JAMES H. POOLEY (CA SBN 58041)
`Efole mofo.com
`MB
`Y N. VAN VOORHIS (CA SBN 197486)
`kvanvoorhis mofo.com
`3 MARC DA D PETERS (CA SBN 211725)
`md eters mofo.com
`4 M RRIS N & FOERSTER LLP
`755 Pa e Mill Road
`5
`Palo AFLO, California 94304-1018
`Telephone: 650.813.5600
`Facs1m1le: 650.494.0792
`
`6
`
`Attornefi/s for Defendant
`ICU M DICAL, INC.
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`WESTERN DIVISION
`
`RYMED TECHNOLOGIES, INC. a
`Delaware Corporation,
`
`Plaintiff,
`
`V.
`
`ICU MEDICAL, INC., a Delaware
`Corporation,
`
`Defendant.
`
`Case No. SA CV 07-1199 MRP (VBKX)
`
`DECLARATION OF ALISON
`BURCAR IN SUPPORT OF ICU
`MEDICAL INC.'S REPLY BRIEF
`IN SUPPORT OF MOTION TO
`DISMISS OR IN THE
`ALTERNATIVE TO STAY
`PENDING DECISION IN FIRST-
`FILED ACTION
`
`7 8 9
`
`10
`
`l 1
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`Honorable Mariana R. Pfaelzer
`
`Date: February 4,2008
`Time: 10:00 a.m.
`Ctrm:
`l2
`
`BURCAR DECL. I/S/O ICU'S REPLY BRIEF I/S/O MOTION TO DISMISS OR STAY
`Case No. SA CV 07-1199 MRP (VBKx)
`pa-1222910
`
`_1_
`
`

`
`Case 8:C}7~c»'—O119‘E3~lr/EFlP~VBK Document 13-2
`
`Filed Ol.’28/2008
`
`Page 2 CH‘ 2
`
`I, Alison D. Burcar, declare:
`
`I am currently Vice President of Marketing for ICU Medical, Inc. ("ICU").
`
`I submit this declaration in support of ICU's Reply Brief in Support of Motion to
`
`Dismiss or in the Alternative to Stay Pending Decision in First-Filed Action.
`
`I
`
`have personal knowledge of all the facts contained herein and, if called to testify,
`
`could and would competently testify thereto.
`
`1.
`
`I have been employed with ICU since 1995. I became Vice President
`
`of Marketing in August 2002, after having been Marketing Operations Manager
`
`since March 1998.
`
`2.
`
`Since joining ICU in 1995, I have been involved in medical product
`
`sales and marketing. I have developed an expertise in medical sales and
`
`marketing, particularly in the needle-free valve industry. Since 2002, ICU has
`
`sold a swabable, one—piece, needle-free valve called the MicroCLAVE®
`
`Connector.
`
`3.
`
`I understand that RyMed Technologies, Inc.'s ("RyMed") trademark
`
`claims are directed to ICU's use of the term "NEUTRAL" following
`
`"MicroCLAVE®" on its web site and in its marketing literature. ICU has recently
`
`replaced "NEUTRAL" with the term "NEUTRAL DISPLACEMENT," and no
`
`longer uses the term "NEUTRAL" in connection with the "MicroCLAVE®" mark
`
`on both its web site and written marketing materials.
`
`I declare under penalty of perjury under the laws of the United States that
`
`the foregoing is true and correct. Executed on January 28, 2008 in San Clemente,
`
`California.
`
`.z;;<;...——————~
`1/
`
`Alison Burcar
`
`BURCAR DECL. vs/o lCU'S REPLY BRIEF 1/s/o MOTION TO DISMISS on STAY
`Case No. SA CV 07-1199 MRP (VBKX)
`pa-1222910
`
`_2_