Alzheimer's Institute of America v. Elan Corporation PLC et al

Filing 182

JOINT STIPULATED ORDER Regarding Service of AIA's Disclosures, Discovery Responses, Expert Reports, Confidential Filings, and Deposition Transcripts in Pending Actions. Signed by Judge Elizabeth D. Laporte on 05/31/2011. (tmi, COURT STAFF) (Filed on 6/2/2011)

UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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ALZHEIMER’S INSTITUTE OF
AMERICA, INC.,

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Plaintiff,

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vs.
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ELAN PHARMACEUTICALS, INC.,
ELI LILLY AND COMPANY, and THE
JACKSON LABORATORY,

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Defendants.
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Case No. 3:10-CV-00482 (EDL)
JOINT STIPULATED
[PROPOSED] ORDER
REGARDING SERVICE OF AIA’S
DISCLOSURES, DISCOVERY
RESPONSES, EXPERT REPORTS,
CONFIDENTIAL FILINGS, AND
DEPOSITION TRANSCRIPTS IN
PENDING ACTIONS

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IT IS HEREBY STIPULATED AND ORDERED THAT:

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1.

To the extent it has not already done so, Plaintiff Alzheimer’s Institute of America

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(“AIA”) shall, within five (5) business days after entry of this Order, serve upon all Participating

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Defendants1 all of AIA’s discovery responses, required disclosures, expert reports, confidential court

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filings, and deposition transcripts2 of AIA witnesses and any witness whose deposition bears on the

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following issues: claim construction, standing, inventorship, ownership, assignment, invalidity,

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inequitable conduct, patent misuse, license defenses, damages and/or reasonable royalty, (including

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such materials that include Participating Defendants’ designated confidential information, i.e,

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information designated “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL -- ATTORNEYS EYES

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ONLY,” “HIGHLY CONFIDENTIAL -- PROSECUTION BAR,” or otherwise designated under an

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“Participating Defendants” include Elan Pharmaceuticals, Eli Lilly, The Jackson Laboratory, Avid
Radiopharmaceuticals, Trustees for the University of Pennsylvania, Mayo Clinic Jacksonville, Mayo
Foundation for Medical Education and Research, Myriad Genetics, Myriad Pharmaceuticals,
Oklahoma Medical Research Foundation, and CoMentis.
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With respect to Paragraphs 1 and 2 of this Order, the handling of deposition transcripts containing
the designated confidential information of a party other than AIA and the Participating Defendants
shall be governed by the provisions of the protective order entered in the case in which the
deposition was taken.
JOINT STIPULATED [PROPOSED] ORDER REGARDING AIA DISCLOSURES – CASE NO. 3-10-CV-00482 (EDL)

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applicable protective order) that have been served by AIA on any Defendant (or, with respect to

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deposition transcripts, produced by a reporter) in any Participating Action.3

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2.

AIA shall serve upon all Participating Defendants on a going-forward basis its

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discovery responses, required disclosures, expert reports, confidential court filings, and deposition

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transcripts of AIA witnesses and any witness whose deposition bears on the following issues: claim

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construction, standing, inventorship, ownership, assignment, invalidity, inequitable conduct, patent

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misuse, license defenses, damages and/or reasonable royalty (including such materials that include

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Participating Defendants’ designated confidential information, i.e, information designated

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“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL -- ATTORNEYS EYES ONLY,” “HIGHLY

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CONFIDENTIAL -- PROSECUTION BAR,” or otherwise designated under an applicable protective

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order) that are served by AIA on any Defendant (or, with respect to deposition transcripts, produced

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by a reporter) in any Participating Action within three (3) business days of such service.
3.

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AIA shall further identify which Participating Defendant’s confidential information is

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present and the exhibit number of any exhibit in which the Participating Defendants’ designated

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confidential information appears.
4.

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AIA consents that the defendants in the Mayo litigation may disclose AIA’s discovery

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responses, required disclosures, expert reports, confidential court filings, and deposition transcripts

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of AIA witnesses and any witness whose deposition bears on the following issues: claim

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construction, standing, inventorship, ownership, assignment, invalidity, inequitable conduct, patent

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misuse, license defenses, damages and/or reasonable royalty, in that litigation to the defendants in

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the Participating Actions and all Participating Defendants.
5.

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Pursuant to the consent of Participating Defendants, this Order is intended to permit

AIA to disclose Participating Defendants’ confidential information that may be subject to protective

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“Participating Action” means (1) AIA v. Elan Pharmaceuticals, Inc., Civ. No. 3:10-CV-00482
(EDL) (N.D. Cal.), (2) AIA v. CoMentis, Inc., et al., Civ. Nos. 5:09-CV-01366-F (W.D. Okla.), 3:09CV-02772-VRW (N.D. Cal.), and (3) AIA v. Avid Radiopharmaceuticals, et al., Civ. No. 2:10-CV06908-TJS (E.D. Pa.). “Participating Action” does not include Mayo Clinic Jacksonville, et al. v.
AIA, Civ. Nos. 8:05-CV-00639-SDM-TBM, 8:05-CV-01049-SDM-TBM (M.D. Fla.) and AIA v.
Mayo Clinic Jacksonville, et al., 2:03-CV-02645-CM-DJW (D. Kan.), transferred to the M.D. Fla.
and consolidated with 8:05-CV-01049-SDM-TBM.
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JOINT STIPULATED [PROPOSED] ORDER REGARDING AIA DISCLOSURES – CASE NO. 3-10-CV-00482 (EDL)

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orders entered in the other Actions. Participating Defendants consent that AIA’s compliance with

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this Order shall not be construed by Participating Defendants as a breach of any such protective

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orders. Participating Defendants consent that they have reached agreement among themselves as to

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the proper treatment of Participating Defendants’ confidential information by other Participating

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Defendants, and Participating Defendants further consent that AIA shall not be liable for any

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mishandling by Participating Defendants of confidential information that is served by AIA in

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accordance with this Order.

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6.

The Joint Motion to Compel filed by Defendants Elan and Eli Lilly is WITHDRAWN

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without prejudice to defendants’ right to seek relief with respect to AIA’s disclosures in the Mayo

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litigation should AIA and Mayo become unwilling or unable to serve AIA’s disclosures from that

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litigation on the Participating Defendants.

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SO STIPULATED:
Dated: May 27, 2011

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FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP

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By: /s/ Robert F. McCauley

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Robert F. McCauley (SBN 162056)
Stanford Research Park
3300 Hillview Avenue
Palo Alto, CA 94304-1203
Tel: [phone]
Fax: [phone]
[e-mail]

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Attorneys for Defendant
ELI LILLY AND COMPANY

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Of Counsel:
Laura P. Masurovsky
Finnegan, Henderson, Farabow, Garrett
& Dunner, L.L.P.
901 New York Avenue, NW
Washington, DC 20001
Tel: [phone]
Fax: [phone]
[e-mail]

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JOINT STIPULATED [PROPOSED] ORDER REGARDING AIA DISCLOSURES – CASE NO. 3-10-CV-00482 (EDL)

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Dated: May 27, 2011

BRYAN CAVE LLP

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By: /s/ K. Lee Marshall

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K. Lee Marshall (admitted Pro Hac Vice)
Robert Padway (SBN 48439)
Berrie Goldman (SBN 246061)
Two Embarcadero Center, Suite 1400
San Francisco, CA 94111
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]

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Attorneys for Plaintiff
ALZHEIMER’S INSTITUTE OF AMERICA, INC.

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Of Counsel:

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Ameer Gado (admitted Pro Hac Vice)
Benjamin J. Sodey (admitted Pro Hac Vice)
Bryan Cave LLP
One Metropolitan Square, Suite 3600
211 North Broadway
St. Louis, MO 63102
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]

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Dated: May 27, 2011

DICKSTEIN SHAPIRO LLP

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By: /s/ Katie J.L. Scott
Deborah E. Fishman (SBN 197854)
Katie J.L. Scott (SBN 233171)
Assad H. Rajani (SBN 251143)
303 Twin Dolphin Drive, Suite 600
Redwood City, CA 94065
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Defendant
ELAN PHARMACEUTICALS, INC.

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JOINT STIPULATED [PROPOSED] ORDER REGARDING AIA DISCLOSURES – CASE NO. 3-10-CV-00482 (EDL)

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Dated: May 27, 2011

WOLF GREENFIELD & SACK, P.C.

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By: /s/ Michael N. Rader

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Chelsea A. Loughran (admitted Pro Hac Vice)
Michael N. Rader (admitted Pro Hac Vice)
600 Atlantic Avenue
Boston, MA 02210-2206
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]

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Attorneys for Defendant
THE JACKSON LABORATORY

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Of Counsel:
Todd Andrew Noah
DERGOSITS & NOAH LLP
Three Embarcadero Center, Suite 410
San Francisco, CA 94111
Tel: [phone]
Fax: [phone]
[e-mail]

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IT IS SO ORDERED.
S DISTRICT
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lizabeth

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Judge E

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R NIA

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_________________________________________
Hon. Elizabeth D. Laporte
UNITED STATES DISTRICT COURT MAGISTRATE
e
JUDGE
. Laport
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UNIT
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05/31/2011
Dated: ________________

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JOINT STIPULATED [PROPOSED] ORDER REGARDING AIA DISCLOSURES – CASE NO. 3-10-CV-00482 (EDL)