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

Filing 185

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

Doc. 185

Case 3:05-cv-04158-MHP

Document 185

Filed 08/13/2007

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COOLEY GODWARD KRONISH LLP
A T T O R N E Y S A T LAW PALO A L T O

COOLEY GODWARD KRONISH LLP STEPHEN C. NEAL (No. 170085) ([e-mail]) RICARDO RODRIGUEZ (No. 173003) ([e-mail]) MICHELLE S. RHYU (No. 212922) ([e-mail]) Five Palo Alto Square 3000 El Camino Real Palo Alto, CA 94306-2155 Tel: [phone] Fax: [phone] Attorneys for Plaintiff and Counterclaim Defendant THE BOARD OF TRUSTEES OF THE LELAND STANFORD JUNIOR UNIVERSITY and Counterclaim Defendants THOMAS MERIGAN and MARK HOLODNIY

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA

THE BOARD OF TRUSTEES OF THE LELAND STANFORD JUNIOR UNIVERSITY, Plaintiff, v. ROCHE MOLECULAR SYSTEMS, ET AL., Defendants. ROCHE MOLECULAR SYSTEMS, ET AL., Counterclaimants, v. THE BOARD OF TRUSTEES OF THE LELAND STANFORD JUNIOR UNIVERSITY; THOMAS MERIGAN; AND MARK HOLODNIY, Counterclaim Defendants.

Case No. C 05 04158 MHP

STANFORD'S OPPOSITION TO ROCHE'S EMERGENCY MOTION TO ENFORCE COURT ORDER REGARDING EXPERT WITNESS DEPOSITION AND MOTION TO SHORTEN TIME PURSUANT TO CIVIL LOCAL RULE 6-3 REGARDING SAME

Dockets.Justia.com

Case 3:05-cv-04158-MHP

Document 185

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COOLEY GODWARD KRONISH LLP
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Stanford hired Dr. Fred Kramer because he has substantial expertise relating to PCR. Stanford disclosed potential testimony from Dr. Kramer relating to four claim terms: "about 30 cycles," the "presence" and "absence" of "detectable HIV-encoding nucleic acid," and "measuring the HIV RNA copy number." (Docket No. 172, Ex. D.) At the pre-hearing conference, this Court removed the "about 30 cycles" claim term from construction, eliminating the need to rely on Dr. Kramer for that term. (Docket No. 173.) As to the "presence" and "absence" claim terms, Roche identifies Dr. Jeffrey Lifson, but its expert disclosure does not recite any opinions for those terms, thus eliminating the need to rely on Dr. Kramer on those terms as well. (Docket No. 172, Ex. G at 3-4.) This left only the

"measuring" term, which does not require expert testimony to rebut Roche's positions, inter alia, because they are founded on a legally improper attempt to import a limitation from an example in the specification. In addition, this Court made clear at the pre-hearing conference that it already had sufficient familiarity with PCR. (July 30, 2007 Transcript at 3:24-4:3; see also id. at 10:5-6.) Accordingly, Stanford informed Roche that it would not rely on Dr. Kramer in support of its opening brief or to rebut any expert opinions disclosed by Roche. (Docket No. 184, Exs. B, D.) Consistent with this Court's comments at the pre-hearing conference, there is no basis for Roche to force Stanford to undertake the significant expenses that would be required for a deposition of Dr. Kramer.1 Roche argues that Stanford's position is a "tactic" that will prejudice Roche. The opposite is true. Stanford has already confirmed repeatedly that if Roche does not introduce new expert testimony that it has not previously disclosed, then Stanford will not use Dr. Kramer's testimony for any of the claims construction briefing. (Docket No. 184, Exs. B, D.) But Roche will not make this commitment. Allowing Roche to introduce previously

undisclosed testimony in its claims construction brief, while depriving Stanford from responding to that new testimony through Dr. Kramer, would be plainly unfair to Stanford.
1

Stanford has submitted a declaration from its expert Dr. Paul Volberding, who has substantial clinical HIV expertise. (Docket No. 178.) Dr. Volberding's deposition has been scheduled. 1.
STANFORD'S OPPOSITION TO ROCHE'S EMERGENCY MOTION CASE NO. C 05 04158 MHP

Case 3:05-cv-04158-MHP

Document 185

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COOLEY GODWARD KRONISH LLP
A T T O R N E Y S A T LAW PALO A L T O

Roche claims it would not be able to respond to Dr. Kramer's testimony if submitted on Reply. But that problem exists only if Roche decides to introduce new opinions in its brief that it did not previously disclose. Thus, any alleged prejudice to Roche would be of its own making, and under its own control. Roche also ignores the practical but obvious question: on what possible issues could Dr. Kramer be deposed? He has not submitted a declaration, and Stanford has confirmed it will not offer one with respect to the expert disclosures Roche has made to date. Any new issues Roche may attempt to include in its brief are unknown to Stanford or Dr. Kramer. A deposition on such unknown opinions makes no sense. It would be impossible for Dr. Kramer to prepare for issues Roche has not yet disclosed, and would subject him to deposition by ambush. Roche's reliance on the parties' stipulation is misplaced. Stanford did not agree to Roche's strained interpretation of the agreement, which Roche argues should allow it to load its claims construction brief with undisclosed material to which Stanford cannot not respond. Moreover, such an interpretation violates both the letter and spirit of the Patent Local Rules. (Patent Local Rule 4-3.) Furthermore, this Court's decision to remove the "about 30"

limitation, its familiarity with PCR, and its view of the marginal value of expert testimony, all weighed heavily in Stanford's decision that Dr. Kramer's testimony was not necessary for its opening brief. These were made known at the pre-hearing conference and Stanford informed Roche of its decision that same week. Stanford's position is fair. At this juncture, there is simply nothing on which to depose Dr. Kramer. If Roche stays within its disclosures in its brief, there is no need for Stanford to rely on testimony from Dr. Kramer in its reply brief. If Roche adds new opinions, Stanford is entitled to move to strike that testimony and offer rebuttal testimony from Dr. Kramer, who will then be made available for deposition. There is nothing prejudicial in Stanford's position, nor anything so urgent as to justify the inconvenience to the Court of an "emergency" motion. Accordingly, this Court should deny Roche's motions (Docket Nos. 180 and 182).

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STANFORD'S OPPOSITION TO ROCHE'S EMERGENCY MOTION CASE NO. C-05-04158 MHP

Case 3:05-cv-04158-MHP

Document 185

Filed 08/13/2007

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COOLEY GODWARD KRONISH LLP
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Dated: August 13, 2007

COOLEY GODWARD KRONISH LLP by: /s/ Ricardo Rodriguez

Attorneys for Counter Defendants The Board of Trustees of the Leland Stanford Junior University, Thomas Merigan and Mark Holodniy
757964/PA

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STANFORD'S OPPOSITION TO ROCHE'S EMERGENCY MOTION CASE NO. C-05-04158 MHP