Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. et al

Filing 180

Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. et al

Doc. 180

Case 3:05-cv-04158-MHP

Document 180

Filed 08/10/2007

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1 PRUETZ LAW GROUP LLP Adrian M. Pruetz (Bar No. 118215) 2 [e-mail] 1600 Rosecrans Avenue, 4th Floor 3 Manhattan Beach, CA 90266 Telephone: [phone] Facsimile: [phone] 5 QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP Brian C. Cannon (Bar No. 193071) 6 [e-mail] Tun-Jen Chiang (Bar No. 235165) 7 [e-mail] m 555 Twin Dolphin Drive, Suite 560 8 Redwood Shores, California 94065-2139 Telephone: [phone] Facsimile: [phone] 10 Attorneys for Defendants and Counterclaimants Roche Molecular Systems, Inc.; Roche Diagnostics 11 Corporation; and Roche Diagnostics Operations, Inc. 12 13 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA CASE NO. C-05-04158 MHP ROCHE'S EMERGENCY MOTION TO ENFORCE COURT ORDER REGARDING EXPERT WITNESS DEPOSITION [DECLARATION OF BRIAN C. CANNON AND [PROPOSED] ORDER CONCURRENTLY FILED]

14 THE BOARD OF TRUSTEES OF THE LELAND STANFORD JUNIOR UNIVERSITY, 15 Plaint iff, 16 vs. 17 ROCHE MOLECULAR SYSTEMS, INC.; 18 ROCHE DIAGNOSTICS CORPORATION; ROCHE DIAGNOSTICS OPERATIONS, INC., 19 Defendants. 20 ROCHE MOLECULAR SYSTEMS, INC. 21 ROCHE DIAGNOSTICS CORPORATION; ROCHE DIAGNOSTICS OPERATIONS, INC., 22 Counterclaimants, 23 vs. 24 THE BOARD OF TRUSTEES OF THE 25 LELAND STANFORD JUNIOR UNIVERSITY; AND THOMAS MERIGAN. 26 Counterclaim Defendants. 27 28
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Case No. 05-CV-04158-MHP ROCHE'S MOTION TO ENFORCE ORDER Dockets.Justia.com

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Background Roche seeks an order enforcing the claim construction expert witness deposition

3 schedule set forth in the Court's August 2, 2007 Order (Docket No. 175). Specifically, Roche 4 seeks an order compelling Stanford to proceed with the deposition of Dr. Fred Kramer on August 5 15, 2007. Stanford now seeks to cancel the August 15 deposition, but will not agree to withdraw 6 Dr. Kramer as a potential testifying expert. In the alternative, if no deposition in accordance with 7 the Court-ordered scheduled is compelled, Roche seeks an order precluding Stanford from relying 8 upon Dr. Kramer in any briefing in connection with claim construction. 9 In this patent infringement action, in which Stanford asserts patents against Roche,

10 the parties are engaged in claim construction discovery and briefing. On July 6, 2007, the parties 11 submitted their Joint Claim Construction Statement to the Court. (Docket No. 172). In that 12 statement, Stanford identified two expert witnesses, Drs. Paul Volberding and Fred Kramer, and 13 provided a summary of their opinions in support of Stanford's claim construction positions. Id. at 14 pages 4-5. As the local rules state, the summary of opinions must be "offered in sufficient detail 15 to permit meaningful deposition of that expert;" Patent L.R. 4-3(d). Under the local rules and the 16 case management order, Roche is scheduled to file a single, responsive brief on claim construction 17 issues, which is due August 29, 2007. Docket No. 161; Patent L.R. 4-5(b). 18 Accordingly, on July 23, 2007, the parties agreed that the deposition of Dr Kramer,

19 would take place on Wednesday, August 15 in Boston, Massachusetts, a location chosen to 20 accommodate Dr. Kramer. (Declaration of Brian C. Cannon, Ex. A). On July 30, 2007, the Court 21 conducted its Claim Construction Prehearing Conference. On July 31, 2007 the parties entered 22 into a formal stipulation regarding the deposition schedule, which the Court executed. Pursuant to 23 the stipulation and order, the deposition of Dr. Kramer was to occur between August 12 and 24 August 20, 2007 -- before Roche's claim construction papers are due. The Court Order provides: 25 26 27 28
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1. The depositions of Stanford's experts Paul Volberding and Fred Kramer will, at a mutually convenient time for the parties, take place after August 12, 2007 but before August 20, 2007. 2. The depositions of Roche's experts John G. Bartlett and Jeffrey D. Lifson will, at a mutually convenient time for the parties, take place after August 31, 2007 but before September 7, 2007. -2Case No. 05-CV-04158-MHP ROCHE'S MOTION TO ENFORCE ORDER

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3. The deposition of any of the aforementioned experts may be canceled if Stanford or Roche does not rely upon the testimony of that expert in its briefing, or if otherwise agreed by the parties.

3 (Docket No. 175). 4 On Friday, August 3, 2007, Stanford informed Roche via email that Stanford would

5 not be submitting a declaration of Dr. Kramer in support of its opening claim construction brief 6 and would not be making him available for deposition on August 15, 2007 -- but reserved the right 7 to offer a declaration of Dr. Kramer in reply to Roche's brief. (Declaration of Brian C. Cannon, 8 Ex. B). On August 6, 2007, Roche objected to canceling Dr. Kramer's deposition unless Stanford 9 agreed to withdraw Dr. Kramer completely as a testifying expert for Plaintiff with respect to claim 10 construction. (Declaration of Brian C. Cannon, Ex. C). In an exchange of letters and emails, 11 through August 10, 2007, Stanford refused to proceed with the deposition and refused to withdraw 12 Kramer as an expert. (Declaration of Brian C. Cannon, Exs. D and E). 13 Roche brings this emergency motion to compel the previously scheduled deposition

14 of Dr. Kramer so that Roche has the opportunity to take his deposition before its responsive papers 15 are due on August 29, 2007. 16 17 Argument The parties agreed to -- and the Court ordered -- an orderly process to take the

18 depositions of the expert witnesses identified by both parties in their claim construction 19 submissions. Both parties' expert depositions were scheduled to occur before their respective 20 briefing is complete so that both parties can address issues that may arise in the depositions in 21 their papers. 22 Having agreed to a schedule and obtained and agreed to a Court Order, Stanford

23 now seeks to postpone one of the depositions until after Roche prepares its papers. This is 24 prejudicial to Roche, violates the Court Order and is inconsistent with the patent procedures of the 25 local rules. 26 The local rules provide that both sides exchange claim construction positions,

27 which has occurred. The rules also provide that both sides identify experts and summarize the 28 witnesses' testimony so that the other side can take "meaningful" deposit ions. See Patent Local
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1 Rule 4-3(d). As the party enforcing the patent, Stanford files the first brief, and is obligated to 2 provide its evidence in support of its position. See Patent Local Rule 4-5(a). Instead of 3 proceeding with the Kramer deposition, Stanford wants to hold back its witness and see what 4 Roche says in opposition. Such a tactic prejudices Roche as Roche cannot respond to the 5 declaration under the briefing schedule set by the local rules and the Court's case management 6 order. For instance, if Stanford submits a Kramer declaration on reply, even if Roche obtains the 7 deposition of Kramer at that time, there is no opportunity to respond -- Roche has only one 8 opportunity to file papers: on August 29, 2007. 9 Stanford has informed Roche that it will not submit a Kramer declaration on reply

10 if Roche does not deviate from its disclosures of the joint claim construction statement. But that is 11 not Stanford's decision to make. Both sides submitted summaries of expert opinions, and both 12 sides agreed to a deposition schedule for those experts. If either side does not comply with the 13 local rules in some manner, the other side can raise that with the Court. The Court Order and local 14 rules explicitly allow Roche the opportunity to take the deposition of Kramer based upon the 15 disclosures submitted by Stanford in the July 6, 2007 Joint Claim Construction Statement. If 16 Stanford agrees to unequivocally withdraw Kramer, then the deposition can be cancelled (as the 17 Order provides). However, Stanford cannot have it both ways. It cannot attempt to cancel the 18 deposition, yet reserve the right to submit a Kramer declaration on reply if Stanford deems it 19 appropriate to do so. 20 Roche simply seeks to enforce the Court's Order. It should not have to file this

21 emergency motion in order to obtain a deposition of a claim construction expert identified in the 22 parties' filings and scheduled by Court Order. Stanford should not be permitted to back out 23 unilaterally fro m its commitments. 24 25 26 27 28
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Case No. 05-CV-04158-MHP ROCHE'S MOTION TO ENFORCE ORDER

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Conclusio n For all the foregoing reasons, Roche respectfully requests that the Court enforce the

3 August 2, 2007 Order and require that Stanford either produce Dr. Kramer for deposition on 4 August 15, or forfeit its ability to submit a declaration from Dr. Kramer at any time in support of 5 claim construction. 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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DATED: August 10, 2007

QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP

By

/s/ Brian C. Cannon (Bar No. 193071) [e-mail] Tun-Jen Chiang (Bar No. 235165) [e-mail] m 555 Twin Dolphin Drive, Suite 560 Redwood Shores, California 94065-2139 Telephone: [phone] Facsimile: [phone] PRUETZ LAW GROUP LLP Adrian M. Pruetz (Bar No. 118215) [e-mail] 1600 Rosecrans Avenue, 4th Floor Manhattan Beach, CA 90266 Telephone: [phone] Facsimile: [phone] Attorneys for Defendants and Counterclaimants Roche Molecular Systems, Inc., Roche Diagnostics Corporation, and Roche Diagnostics Operations, Inc.

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Case No. 05-CV-04158-MHP ROCHE'S MOTION TO ENFORCE ORDER