Free Declaration in Support - District Court of California - California

Case 3:07-cv-02385-PJH

Document 48-5

Filed 02/19/2008

Page 1 of 12

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WILLIAM G. GAEDE I11 (State Bar No. 136184) wgaede~mw.com M C D E M O T T WILL & EMERY LLP 3 150 Porter Drive Palo Alto, CA 94304- 12 12 Telephone: (650) 8 13-5000 Facsimile: (650) 8 13-5100 Attorneys for Defendants ,I. R. Curlson Laboratories, I m . and Me tugenics, fnc. BEHROOZ SHARIATI (State Bar No. 174436) bshariatiGJjonesday .corn JONES DAY 1755 Embarcadero Road Palo Alto, CA 94303 Telephone: (650) 739-3939 Facsimile: (650) 739-3900 Attorneys for Plaintiff Kordic h~aturals. m . I IN THE UNITED STATES DISTRICT COURT IN AND FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

NORDI C NATURALS, INC. Plaintiff,
V

Case No. C-07-2385 MJJ

AMENDED JOINT RULE 26(Q REPORT AMENDED JOINT CASE MANAGEMENT STATEMENT AND ORDER

J.R. CARLSON LABORATORIES, INC. and METAGENICS, INC. Defendants.

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I.

JURISDICTIOY S E R ~ A ~ D ICE This Court has subject matter jurisdiction oxw Plaintiff Xordic Naturals, Inc., ("Kordic

Xaturals") patent infringement case against Defendants J.R. Carlson Laboratories, Inc., ("Carlson Labs") and Metagenics. Inc., ('-Metagenics") (collecti\ely "Defendants") pursuant to 28 U.S.C.

$5 1331 and 1338(a) as Nordic Natural's

claims arise under the patent laws of the Cnited States of

America. and specifkally under 35 U.S.C.

$5 27 1(a), 27 1(b) and 27 1(c). and under Section 43(a) $5 1331, 1338(a), 1367, and 2201.
No

of the Lanharn Act. 15 U.S.C. 5 1 125. This Court has subject matter jurisdiction over Defendants' declaratory judgment eounterclairns under 28 U.S.C. dispute exists regarding personal jurisdiction. Venue is proper in this Court under 28 U.S.C. $5 1391(b) and l400(b). All parties have been served. 11.

DESCRIPTIOX THE CASE OF
Kordic Naturals, Inc. ("Nordic Naturals"), J.R. Carlson Laboratories, Ine. ("Carlson"), and

Metagenics, Inc. ("Metagenics") sell fish oil capsules in the United States market. Nordic Naturals is the assignee of two patents: LJ.S. Patent No. 6 . 3 4 6 3 1 ("'23 1 Patent") issued February 12, 2002 and U.S. Patent No. 6,652,879 ("'879 Patent") issued November 25, 2003. On May 2, 2007, Nordic Naturals filed this suit against Carlson and Metagenies claiming infringement of the '23 1 and '879 Patents. and also asserting a claim of false advertisement under Section 43(a) of the Lanham Act. Speeificallj, Nordic Naturals asserts that Carlson falsely represents that its Lightly Lemon fish oil capsules are lemon flavored and that Metagenics falsely represents that its "EPA-DIZ4 Extra Strength Lemon Flavored Concentrated and Stabilized

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Lemon fish oil capsules are lemon flavored. Metagenics also denies that its EPA-DHA Extra Strength Lemon Flavored Concentrated and Stabilized Purity-Certified, Omega-3 Fish Oil Capsules are lemon flavored. Defendants further assert affirnlatil e defenses and:or declaratory judgment counterclaims including patent ink alidit3, non-infringement, estoppel;laches, and equitable estoppel in regard to the '23 1 and '879 patents. On June 6.2007 Nordic Xaturals filed its Answer to Defendants Counterclaims for Declaratory Judgment of Non-infringement and Invalidity. 111.

THE R ~ ~ C I PFACTUAL P AL ISSUES DISPUTE, ih
The parties dispute the following factual issues: a) Whether Defendants have each infringed or are infringing the Nordic Naturals patents-in-suit; b) Whether the Nordic Naturals patents-in-suit are invalid; c) Whether the Kordic Naturals patents-in-suit are unenforceable; d) Whether Nordic Naturals' infringement claims are barred or limited in whole or in part by equity; e) Whether Nordic Naturals is entitled to damages for Defendants' alleged infringing actions;
f ) Whether Carlson has falsely advertised that its Lightly Lemon fish oil capsules are

lemon flavored in violation of Section 43(a) of the Lanham Act, 15 U.S.C. $1 125(a); g) Wkther Carlson has falsely advertised that other of its products are flavored in

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i) Vi'hether Metagenics has falsely advertised that other of its products are flavored in violation of Section 33(a) of the Lanham Act, 15 U.S.C. $1 125(a);
j)

Whether Nordic Naturals is entitled to an award of damages for alleged harm caused by Defendants' alleged false. misleading and deceptive advertising:

k) Whether injunctive relief is proper; and

1) Whether this case is exceptional under 35 U.S.C. 5285.

I?'.

THEP R I ~ C I P A L LEGAL ISSUES DISPUTE IN

The principle legal issues uhich the parties dispute: a) The meaning of various claim terms of the asserted claims of the Nordic Naturals patents-in-suit; and
b) Whether either party is entitled to attorneys fees and costs pursuant to 35 U.S.C.

$285.

v.

MOTIONS HEARINGS AND Pending Motions. No pending motions are currently in front of the Court in this action. Markman Hearing. Nordic Naturals' claim construction presentation shall go first.

followed by Defendants' presentation(s). If it will be useful to the Court, the parties are willing to present tutorials concerning the underlying technology in this case andior to call live witnesses at the claim construction hearing.
Pre-Trial Motions. The parties anticipate filing motions for summary judgment.

VI.

AMENDMENT PLEADINGS OF

The parties do not contemplate amending the pleadings at this time, nor do the parties

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VIII. Drsc~osUREs The parties have agreed to exchange their initial disclosures pursuant to Fed. R. Civ. P. 26(a) on August 15, 2007.

IX.

DISCOVERY
The parties conducted their Rule 26(f) Conference on July 20,2007. Nordic Naturals has

served Defendants mith interrogatory and document requests. Metagenics and Carlson will serve h'ordic Naturals with interrogatories, document requests, and requests for admission. Disco\ erq in the case is on-going. The parties agree to make the disclosures as required under the Patent Local Rules as described in the proposed schedule set forth below.
Depositions. Each side shall have a total of sixty (60) hours for depositions of individual

fact witnesses and 30(b)(6) witnesses. Each side may allocate its deposition time to individual witnesses or 30(b)(6) witnesses in the manner it sees fit. Whenever possible, Defendants shall jointly take depositions of witnesses in order to minimize the likelihood of duplicative questioning of witnesses.
Expert Discovery. The parties agree that expert disclosures and expert discovery should

take place after the close of fact discovery. Expert depositions do not count against the deposition limits imposed in this case. Each party shall be limited to one seven hour deposition of each expert per expert report.
Discovery Requests. Each side shall be limited to serving 30 interrogatories, and 75

requests for documents and things. There shall be no hard limits on requests for admission,

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Essential information for Defendants to prove their affirmative defenses and counterclaims will be the structure and composition of the accused products, prior art relating to the patents-in-suit, the prosecution histories of the patents-in-suit. the nature and content of the statements and advertising of the accused products, and financial information.
Protective Order. The parties contemplate that a protective order governing the

treatment of confidential information will be required. The parties expect to submit a stipulated protective order that is similar to the model Stipulated Protective Order of the Northern District of California, with various modifications. X.
CLASS ACTIONS

The parties do not anticipate the need for any class certification hearings. XI.
RELATED CASES

There are no related cases. XII.
RELIEF

Nordic Naturals seeks an order to enjoin Defendants from allegedly infringing the patentsin-suit and from making allegedly false representations related to the flavoring of their products. Nordic Naturals also seeks compensatory damages attributable to Defendants' alleged infringement and fake statements in the amount of Nordic Naturals' lost profits and/or based on a reasonable royalty. costs of the suit and attorneys' fees, and prejudgment interest. Defendants seek a declaration that the patents-in-suit are invalid, and unenforceable, and that Defendants do not infringe the patents-in-suit. XIII. SETTLEMENT ADR AND

S\ 1-36910.8

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On July 16, 2007 Metagenics and Carlson filed and served their ADR Certifications. On July 3 1, 2007 Nordic Naturals filed and served its XDR Certification.
XIV. CONSENT MAGISTRATE TO JUDGE

The parties do not consent to have a magistrate judge conduct all further proceedings including trial and entry of judgment.
XV. OTHER REFERENCES

This case is not suitable for reference to binding arbitration, a special master, or the Judicial Panel on Multidistrict Litigation.
XVI. NARROWING ISSUES OF

Defendants anticipate that they may file an early motion for summary judgment that will narrow or dispose of the case.
XVII. EXPEDITED SCHEDULE

Plaintiff and Defendants agree that this case is not suitable for expedited handling.
XVIII. SCHEDULING

The parties propose that the Court adopt the following schedule based on the Court's guidelines, the Federal Rules of Civil Procedure, Local Rules, and Patent Local Rules.
Date / Rule
I

Event

July 20,2007 July 3 1,2007 iFRCP 26(f) & ADR L.R. 3-5; Parties' Stipulation July 3 1,2007 L.R. 16-8(b) & (c) & ADK L.R. 3-5(b) & (c); Court's Order

Discovery Opens Last day to meet and confer re: initial disclosures, early settlement, ADR process selection, and discovery plan prior to Case Management Conference

1 Last day to file Joint ADR Certification with
I
cess or Sotice of Xeed for

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Date / Rule

Event

August 9, 2007 i L.R. 16-10

Last day to file and serve request to participate in Case Management Conference via telephone

August 14,2007 ,' L.R. 16-10; Clerk's Initial Case Management Conference - Courtroom B, h'otice Setting CMC in Reassigned case 15Ih Floor, San Francisco September 7. 2007 iPatent L.R. 3-1. 302 and per Stipulation of all Parties Easr day for Plaintiff to serve Disclosure of Asserted Claims and Preliminary Infringement Contentions and produce or make available for inspection documents in support thereof Last day to amend Complaints and Answers Last day for Defendants to serve Preliminary Invalidity Contentions and produce or make available for inspection documents in support thereof Last day for parties to exchange lists of Proposed Terms and Claim Elements for Claim Construction Last day for parties to exchange Preliminary Claim Constructions and provide preliminary identification of extrinsic evidence Last day for parties to file Joint Claim Construction and Prehearing Statement Last day to complete all discovery relating to Claim Construction Last day for parties to file and serve Opening Claim Construction briefs Last day for parties to file and serve Responsive Claim Construction briefs Last day for parties to file and serve Reply Claim Construction briefs Patent Technology Tutorial Claim Construction

October 26,2007

October 22,2007 Patent L.R. 3-3, 3-4 and per Stipulation of all Parties Novenlber 1 ,2007 i Patent L.R. 4-l(a) and per Stipulation of all Parties November 2 1, 2007 i Patent L.R. 4-2(a) and per Stipulation of all Parties December 2 1,2007 i Patent L.R. 4-3 and per Stipulation of all Parties January 21,2008 i Patent L.R. 4-4 and per Stipulation of all Parties February 4,2008 i Patent L.R. 4-5(a) and per Stipulation of all Parties February 18,2008 / Patent L.R. 4-5(b) and per Stipulation of all Parties February 25,2008 i Patent L.R. 4-5(c) and per Stipulation of all Parties March 5, 2008 at 2 P.M. 2. 2008 / Patent

'

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Date I Rule
30 dajs after -blark~~?an Ruling Patent L.R. 3-6(a)

Event

Last daq for Plaintiff to file and serve Final Infringement Contentions to amend Preliminary Infringement Contentions (if necessary) Last day for Defendant to file and ser-te Final Invalidity Contentions to amend Preliminary Invalidiq Contentions (if necessary) Last day for Defendant to produce documents relating to willfulness Last day to exchange Expert Reports on issue on which the party bears the burden of proof (Disclosure of Expert Testimony) - Fact Discovesy Closes Last day to file motions to compel fact discovery. Last day to exchange Rebuttal Expert Reports Close of Discovery, including depositions of experts

50 cliaj~s after -LIark~?an Ruling Patent L.R. 3-6(b)
50 days after ,tlarknzan Ruling Patent L.R. 3-8 60 f80j days after iblarkmun Ruling

7 days affer exchange ofExpert Reports !L.R. 26-2 14 days after exchange of Expert Reports / FRCP 26(a)(2)(B) 30 days after exchange of Rebuttal Expert Reports 14 days posl discovery cutof 21 days prior to hearing / L.R. 7-3 14 days prior to hearing / L.R. 7-3 July 10, 2008 / 60 days prior to trial L.R. 16-9(a)

7 days post discovery cut-off/ L.R. 26-2 Last day to file motions to compel expert discovery

Last day to file dispositive motions Last day to file oppositions to dispositive motions Last day to file replies in support of dispositive motions Last day for hearing of dispositive motions Last day to meet and confer re preparation and content of joint pretrial conference statement and exchange (but not file or lodge) pretrial materials Last day to file motions in lirnine Last day to file joint pretrial conference statement and

August 1,2008 / 37 days prior to trial August 8, 2008 ; 30 days prior to trial / '

I
/
I

retrial disclosures

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Date / Rule

Event

August 8, 2008 ,' 30 dayspriot. to triul

Last daq for parties to file, serve Joint Proposed Voir Dire, Joint Proposed Jury Instructions. Proposed Verdict Forms, Joint Proposed Findings of FactBeparate Disputed Findings of Fact and Conclusions of Law Pretrial Conference - Courtroom B, 15" Floor, SF Last day to serve all subpoenas for attendance at trial Final Pretrial Conference
TRIAL

August 8,2008 !30 days prior to trial August 19, 2008 . 20 days prior to trial iFRCP 45 August 26,2008 September 8 - 15,2008

XIX. TRIAL
The Court has indicated that it will hold a further Case Management Conference after the Markman Ruling to set the trial date and the remainder of the schedule. The trial is currently scheduled to last one (1) week. All parties have requested that this case be tried to a jury.

XX.

DISCLOSURE NON-PARTY OF INTERESTED ENTITIES PERSOKS OR Nordic Naturals. Pursuant to Civil L.R. 3-16, Nordic Naturals has filed its "Certification

of Interested Entities or Persons" on May 3,2007 and restates that aside from the named parties, there is no such interest to report.
Metagenics. Pursuant to Civil L.R. 3-16, Metagenics will file its "Certification of

Interested Entities or Persons." Metagenics states that aside from the named parties, the following entities or persons have an interest that could be substantially affected by the outcome of the proceeding:

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XXI. SERVICE LIST
ATTORNEYS FOR PLAINTIFF'COUKTER-DEFENDD4NT Nordic Naturals. Inc.
Behrooz Shariati (State Bar No. 174436) bsliariati~~jonesday .corn JONES DAY 175 5 Embarcadero Rd. Palo Alto, CA 94303 Telephone: (650)739-3939 Facsimile: (650)739-3900 William G. Gaede I11 (State Bar No. 136184) [email protected] MCDERMOTT WILL & EMERY LLP 3 150 Porter Drive Palo Alto, CA 94304- 1212 Telephone: (650) 8 13-5000 Facsimile: (650) 8 13-5100

ATTORKEYS FOR DEFENDANTSiCOmTER-PLAINTIFFS J.R. Carlson Laboratories, Inc. and Metagenics, Inc.

Dated: August 17,2007 Respectfully submitted, Respectfully submitted,

By: is/ William G. Gaede William G. Gaede I11 Counsel for Defendants'counter-Plaintiffs J.R. Carlson Laboratories, Inc., Metagenics, Inc.

By:

is/ Behrooz Shariati Behrooz Shariati

Counsel for PlaintiffiCounter-Defendant Nordic Naturals, Inc.

Pursuant to the above Joint Case Management Statement. IT IS SO ORDE