Spectrum Dynamics Medical Limited v. General Electric Company et al, No. 1:2018cv11386 - Document 627 (S.D.N.Y. 2023)

Court Description: ORDER granting 625 Letter Motion to Seal; granting 626 Letter Motion for Leave to File Document. Spectrum's proposed redactions are narrowly tailored to protect competitively sensitive information in accordance with Lugosch v. Pyram id Co. of Onondaga, 435 F.3d 110 (2d Cir. 2006) and its progeny. Accordingly, the motion is GRANTED. The transcript from the 1/5/2023 conference shall incorporate Spectrum's proposed redactions. The Clerk of the Court is respectfully directed to terminate the motions at ECF No. 625 and 626. The filing at ECF No. 626 may remain under seal. SO ORDERED. (Signed by Magistrate Judge Katharine H. Parker on 2/9/2023) (vfr) Transmission to Sealed Records Clerk for processing.

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Spectrum Dynamics Medical Limited v. General Electric Company et al Doc. 627 Case 1:18-cv-11386-VSB-KHP Document 625 Filed 02/07/23 Page 1 of 2 2/9/2023 VIA ECF February 7, 2023 Hon. Katharine H. Parker United States District Judge Southern District of New York Daniel Patrick Moynihan United States Courthouse 500 Pearl Street New York, NY 10007 Re: Spectrum Dynamics Medical Limited (Plaintiff) v. GE et al. (Defendants); Case No.: 18-cv-11386 (VSB) Dear Judge Parker: Pursuant to Federal Rule of Civil Procedure 5.2(e), Your Honor’s Individual Rule of Practice III(d), and the parties’ Stipulated Protective Order (ECF No. 156), Spectrum respectfully requests redaction and filing under seal of certain portions of the January 5, 2023, hearing transcript (ECF No. 618). The proposed redactions are shown in Exhibit 1. Defendants do not object to this request. Throughout the hearing, counsel and Your Honor referenced a GE patent, by number and other identifying information, that Spectrum contends contains misappropriated Spectrum trade secrets. Judge Broderick previously granted Spectrum’s request to redact such information from its First Amended Complaint because “the mere disclosure that GE owns the identified patents containing the trade secrets, with an assertion that they contain misappropriated Spectrum technology, informs potential competitors that Spectrum’s system (the first of its kind on the market) contains some of the features disclosed in such patents.” ECF No. 32 at 1. For the same reason, Judge Broderick also granted Spectrum’s request to redact such information from its Motion for Leave to Amend Complaint. ECF No. 552. For these reasons, Spectrum respectfully requests redaction and filing under seal of the January 5, 2023, hearing transcript. Respectfully Submitted, /s/ Esha Bandyopadhyay Esha Bandyopadhyay (Pro Hac Vice) Fish & Richardson P.C. 500 Arguello Street, Suite 400 Redwood City, CA 94063 Dockets.Justia.com Case 1:18-cv-11386-VSB-KHP Document 625 Filed 02/07/23 Page 2 of 2 Hon. Katharine H. Parker Page 2 Tel: 650 839 5070 Fax: 650 839 5071 Email: bandyopadhyay@fr.com Michael F. Autuoro (MA 2932) Fish & Richardson P.C. 7 Times Square, 20th Floor New York, NY 10036 Tel: 212 765 5070 Fax: 212 258 2291 Email: autuoro@fr.com Roger A. Denning (Pro Hac Vice) Fish & Richardson P.C. 12860 El Camino Real, Suite 400 San Diego, CA 92130 Tel: 858 678 5070 Fax: 858 678 5099 Email: denning@fr.com Adam J. Kessel (Pro Hac Vice) Alexander M. Pechette (Pro Hac Vice) Philip K. Chen (Pro Hac Vice) Fish & Richardson P.C. One Marina Park Drive Boston, MA 02210 Tel: 617 542 5070 Fax: 617 542 8906 Email: kessel@fr.com; pechette@fr.com; pchen@fr.com Spectrum's proposed redactions are narrowly tailored to protect competitively sensitive information in accordance with Lugosch v. Pyramid Co. of Onondaga, 435 F.3d 110 (2d Cir. 2006) and its progeny. Accordingly, the motion is GRANTED. The transcript from the 1/5/2023 conference shall incorporate Spectrum's proposed redactions. The Clerk of the Court is respectfully directed to terminate the motions at ECF No. 625 and 626. The filing at ECF No. 626 may remain under seal. Attorneys for Plaintiff Spectrum Dynamics Medical Limited cc: All counsel of record (via ECF) 2/9/2023 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 1 of 40 EXHIBIT 1 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 2 of 40 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK SPECTRUM DYNAMICS MEDICAL : Docket #18-cv-11386 LIMITED, : Plaintiff, -against- : : GENERAL ELECTRIC COMPANY, et al,: New York, New York Defendant. : January 5, 2023 --------------------------------: CONFERENCE PROCEEDINGS BEFORE THE HONORABLE KATHARINE H. PARKER UNITED STATES MAGISTRATE JUDGE APPEARANCES: For Plaintiff: FISH & RICHARDSON P.C. BY: Michael Frank Autuoro Alexander Pechette 7 Times Square 20th Floor New York, New York 10036 For Defendant: THOMPSON HINE BY: Jesse Leigh Jenike-Godshalk Brian Philip Lanciault, Jr. 300 East Randolph Street Suite 5000 Chicago, Illinois 60601 Transcription Service: AOM Transcription Phone: (631) 334-1445 E-mail: aomtranscription@gmail.com Proceedings recorded by electronic sound recording; Transcript produced by transcription service Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 3 of 40 INDEX E X A M I N A T I O N S Witness None Direct ReDirect Cross E X H I B I T S Exhibit Number None Description ID In Voir Dire ReCross Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 4 of 340 PROCEEDINGS 1 THE DEPUTY CLERK: Calling case 18 Civil 2 11386; Spectrum Dynamics Medical versus General 3 Electric Company. 4 Beginning with counsel for the plaintiffs, 5 could you please make your appearance for the 6 record. 7 MR. AUTUORO: Yes. Good morning, your 8 Honor. 9 for Spectrum Dynamics Medical Limited. Michael Autuoro, from Fish & Richardson, 10 THE COURT: 11 MR. PECHETTE: 12 THE COURT: Hi. Nice to meet you in person. 15 16 Alex Pechette, also from Fish & Richardson. 13 14 Hi. THE DEPUTY CLERK: Counsel for the defendants, please make your appearance. 17 MR. GODSHALK: Yes. This is Jesse 18 Godshalk, from Thompson Hine, on behalf of 19 defendant. 20 MR. LANCIAULT: 21 from Thompson Hine. 22 THE COURT: 23 Okay. Nice to meet everybody in person finally. 24 25 And Brian Lanciault, also So there are a couple things on the agenda. First, I was pleased to see that you Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 5 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 6 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 7 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 8 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 9 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 10 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 11 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 12 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 13 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 14 of13 40 PROCEEDINGS 1 MR. PECHETTE: So the Pei-Herng case from 2 the Federal Circuit held the opposite. 3 addressed this very issue, and it held that the 4 publication -- even if a plaintiff is aware of the 5 publication, the claim to correction of 6 inventorship under Section 256 does not accrue 7 until the patent actually issues. 8 It And in that case, the District Court had 9 held that there was constructive notice of the 10 patent from the date of the publication of the 11 application, and the Federal Circuit reversed that 12 holding. 13 that hold the opposite are not controlling. 14 So the District Court cases that GE cites THE COURT: Okay. Now, if the amendment 15 is granted, what additional documents or 16 depositions do you think would be necessary, and 17 how long do you think it would take to conduct that 18 discovery? 19 MR. PECHETTE: Spectrum has already 20 completed its document production. 21 any other documents that would need to be produced 22 from Spectrum. 23 already taken the deposition of the first named 24 inventor. 25 at this point, I don't think we see the need to We don't see Same with depositions. We've There's two other named inventors, but Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 15 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 16 of15 40 PROCEEDINGS 1 designee on the conception of what we contend are 2 the misappropriated patents. 3 that he be limited in time -- that that deposition 4 be limited in time. 5 THE COURT: 6 7 And we would propose How long do you think would be necessary? MR. PECHETTE: Considering that the other 8 seven patents already at issue only took an hour 9 and 37 minutes on the record, we think that an hour 10 would be sufficient. We would also ask that that 11 deposition be taken remotely, since that witness -- 12 THE COURT: 13 MR. PECHETTE: 14 THE COURT: 15 16 He's in Israel, right? Yes, correct. Okay. All right. Thank you. I'll hear from GE next. MR. GODSHALK: All right, your Honor. I 17 want to start by addressing some specific points 18 that opposing counsel made. 19 the Memry case. 20 distinguishable, and, actually, it's 21 distinguishable on the same grounds as the SpeedFit 22 case, which Spectrum also cites in its briefing. First of all, he cited I think that case is readily 23 In both of those cases, you had a 24 plaintiff who wanted to add additional patents to a 25 Complaint by way of amendment, but the patents that Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 17 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 18 of17 40 PROCEEDINGS 1 opposing counsel. I think that's something of a 2 red herring because what they're comparing here are 3 two figures -- first of all, there are many, many, 4 many figures in each one of these patents, and 5 these are just figures that show an embodiment of 6 the invention. 7 I'm sure of this, that it's not the entirety of 8 these figures that's being claimed. And it may not even be -- actually, I guess the bottom line is, to know what 9 10 is covered by an invention, you have to look -- or 11 by a patent, you have to look at the claims of the 12 patent. 13 not the embodiments that control. 14 background of the invention. 15 themselves. It's not the figures that control. It's It's not the It's the claims So I think just comparing figures from 16 17 various patents is not very telling. 18 patent prosecutors will simply copy and paste 19 figures from prior patents. 20 copy and paste the entire specification, you know, 21 the part of the patent that leads up to the claims, 22 they'll just copy and paste from a prior patent. 23 And that is not to say that they are closely 24 related. 25 Oftentimes, Sometimes they'll even It's just -THE COURT: I'm sorry, I'm going to just Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 19 of18 40 PROCEEDINGS 1 interrupt you for a second to ask about the -- both 2 of these machines photograph internal organs -- 3 MR. GODSHALK: 4 THE COURT: 5 Correct. -- take image of internal organs -- 6 MR. GODSHALK: 7 THE COURT: Correct. -- by having a patient lie 8 down and go into the machine, and cameras are at 9 various places around the body and at various 10 distances from the body to take the image. 11 MR. GODSHALK: 12 THE COURT: 13 And they're both taking images of the same types of organs; is that right? 14 MR. GODSHALK: 15 THE COURT: 16 Correct. different family? 17 Well, yes, but I mean -- So why would there be a I don't understand. MR. GODSHALK: Well, I think that, first 18 of all, in terms of taking images of the same 19 organs, these are both full-body scanners. 20 all of the technology at issue is full-body 21 scanners. 22 take images of any part of the body. 23 24 25 I mean, So we're talking about scanners that can THE COURT: What's the material difference between the two families, if you know? MR. GODSHALK: Well, you know -- Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 20 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 21 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 22 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 23 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 24 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 25 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 26 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 27 of26 40 PROCEEDINGS 1 going to want to ask them about this patent. 2 3 THE COURT: You're going to probe their conception story. 4 MR. GODSHALK: Yes. In preparation for 5 this hearing here today, I spoke with the attorney 6 on our team who deposed Mr. Zilberstein and 7 Mr. Roth, and he said, absolutely, I want to ask 8 them questions. 9 going to want to ask them questions about every 10 If this amendment is allowed, I'm claim in this patent. 11 And I know that opposing counsel has said 12 something about -- that with prior patents, we only 13 spent an hour and 37 minutes, something like that. 14 I don't know where that figure comes from. 15 know what that's based upon. 16 we're going to want to spend significant time with 17 these individuals, you know, questioning them about 18 these two patents. 19 I don't But I would imagine And, lastly, in terms of additional 20 discovery, Spectrum has indicated that if this 21 amendment is allowed, they're going to want to 22 amend their trade secret table again. 23 Honor knows, prior amendments to this trade secret 24 table have been a source of disputes between the 25 parties. As your So, you know, it's certainly possible Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 28 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 29 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 30 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 31 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 32 of31 40 PROCEEDINGS 1 retracted that and said that's not actually true. 2 The order of the inventors doesn't matter. 3 to make clear, the order of the inventors does not 4 matter. Let's see. 5 So just And then, with regard to 6 futility, I just really quickly wanted to note, so 7 opposing counsel said that with regard to futility, 8 it doesn't matter if just one of the claims is 9 futile, that's not enough. 10 case law to that effect. 11 law to that effect. 12 THE COURT: I don't know of any He didn't cite any case Right, but doesn't that mean 13 they could bring one and not the other? 14 a motion to amend, if one of the two claims is 15 futile, then just the non-futile claim could be 16 brought -- 17 MR. GODSHALK: 18 THE COURT: 19 MR. GODSHALK: 20 21 I mean, in Well -- -- in theory, right? Well, that is true, your Honor. THE COURT: And what do you say to 22 Spectrum's statement that Judge Broderick already 23 found that it wasn't futile -- 24 MR. GODSHALK: 25 THE COURT: Yes. -- because wouldn't that be Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 33 of32 40 PROCEEDINGS 1 law of the case? 2 MR. GODSHALK: Yes, your Honor, I do have 3 a response to that. So I know what Judge Broderick 4 ruled in that ruling. 5 2020. 6 this patent was even filed. 7 no reason to believe that when Judge Broderick made 8 that ruling that he was thinking about future 9 issuing patents. That's a ruling from June of That may even be before the application for But, certainly, I have He said nothing in that ruling 10 about patent applications that might be filed after 11 his ruling or patents that might issue after his 12 ruling. 13 does not apply to after issuing patents. 14 ruling that was specific to the patents that were 15 in front of him at the time. 16 That ruling has nothing to do with and It was a One other thing I want to point out before 17 I cede the podium is that -- and this relates to 18 Judge Broderick's prior ruling on a motion to 19 dismiss in this case. 20 Complaint, one of the things that it does is it 21 repleads in toto three claims that were already 22 partially dismissed by Judge Broderick. 23 So the Second Amended So in May of 2019, Spectrum filed its 24 First Amendment Complaint. 25 but one of the claims. We moved to dismiss all So a very broad motion to Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 34 of33 40 PROCEEDINGS 1 dismiss. 2 he granted that motion in part and denied it in 3 part. 4 breach of contract, count 2 for misappropriation of 5 trade secrets and count 13 for fraud on the USPTO, 6 he dismissed those claims in part. 7 Then in June of 2020 Judge Broderick -- And with regard to Spectrum's count 1 for Now, when Spectrum put together its Second 8 Amended Complaint, it didn't account for this 9 ruling at all. It repled these claims in their 10 entirety, including the parts that Judge Broderick 11 had previously dismissed. 12 the Second Amended Complaint is in contravention of 13 this prior order. 14 So I would submit that And I think it's significant, because if 15 they are allowed to file the Second Amended 16 Complaint, we are going to obviously move to 17 dismiss not just the claim that we have noted is 18 futile. 19 prior motion to dismiss to basically redismiss 20 parts of this Complaint that have already been 21 dismissed. 22 this 126-page Second Amended Complaint, which is a 23 significant outlay of resources, not just for us, 24 but the Court is going to have to then rule on the 25 motion to dismiss. We're also going to have to renew our And then we're going to have to answer So it's a significant outlay of Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 35 of34 40 PROCEEDINGS 1 resources for the Court as well. 2 THE COURT: 3 MR. GODSHALK: Okay. So I think, you know, for 4 all these reasons, the Court should deny the 5 motion, that is, unjustified delay, undue prejudice 6 and futility. 7 THE COURT: 8 MR. PECHETTE: 9 Thank you. Your Honor, just a couple of points to address the points raised by opposing 10 counsel. 11 Pei-Herng and Advanced Cardiovascular Systems cases 12 are distinguishable because they were based on 13 laches. 14 were also about laches or the statute of 15 limitations, which is the same. 16 reason for distinction, then their cases also 17 should fall. Opposing counsel mentioned that the The District Court cases that GE cites So if that is a 18 The second thing is they mentioned that 19 Spectrum should have known about the patent from 20 the date of issuance, even applying the standard 21 that Spectrum is advocating for. 22 case -- we filed this motion less than twelve 23 months after the patent issued. 24 that shows that that is not an undue delay. 25 even if we were to measure from the day of the If that were the There's case law So Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 36 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 37 of36 40 PROCEEDINGS 1 amend before the close of fact discovery, before 2 there's any date set for trial and before there's a 3 schedule set for expert discovery, that's not going 4 to significantly delay the resolution of the case. 5 And that's the case here. 6 Also, with respect to discovery, opposing 7 counsel now says that the additional documents they 8 would need to collect would be large. 9 that's an argument that they didn't make in their Again, 10 briefing. 11 argument were heard today, that alone would not be 12 reason to deny leave. 13 It's forfeited. And even if that As far as depositions, we are willing to 14 put Nathaniel Roth up. 15 designee. 16 time at all. 17 transcripts of his deposition, counsel spent an 18 hour and 37 minutes asking him specific questions 19 about -- He's the 30 (b)(6) We don't think it would require much As I said, if you look at the 20 THE COURT: 21 MR. PECHETTE: 22 THE COURT: 23 MR. PECHETTE: Okay, you mentioned that. Yes. What about the other guy? So Yoel Zilberstein, his -- 24 he was only designated as a 30(b)(1) witness, and 25 his seven hours -- they actually exceeded the seven Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 38 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 39 of 40 Case 1:18-cv-11386-VSB-KHP Document 625-1 Filed 02/07/23 Page 40 of39 40 1 C E R T I F I C A T E 2 3 4 I, Adrienne M. Mignano, certify that the 5 foregoing transcript of proceedings in the case of 6 Spectrum v. General Electric Company, et al. 7 Docket#18CV11386, was prepared using digital 8 transcription software and is a true and accurate 9 record of the proceedings. 10 11 12 Signature _________________________ ___________________________ ADRIENNE M. MIGNANO 13 14 15 16 17 18 19 20 21 22 23 24 25 Date: January 6, 2023

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