Elan Microelectronics Corporation v. Apple, Inc.

Filing 225

Declaration of Derek Walter In Support of Apple Inc.'s Motion to Compel (1) Discovery Relating to US Sales; (2) Documents Improperly Withheld on the Basis of Privilege; and (3) Inventor Depositions filed byApple, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 3, # 3 Exhibit 5, # 4 Exhibit 6, # 5 Exhibit 7, # 6 Exhibit 9, # 7 Exhibit 10, # 8 Exhibit 15, # 9 Exhibit 22, # 10 Exhibit 24, # 11 Exhibit 28, # 12 Exhibit 29, # 13 Exhibit 30, # 14 Exhibit 31, # 15 Exhibit 32, # 16 Exhibit 33, # 17 Exhibit 36)(Greenblatt, Nathan) (Filed on 5/31/2011)

EXHIBIT 32

Page 1

AMGEN, INC., et. al., Plaintiffs, v. ARIAD PHARMACEUTICALS, INC., et. al.,
Defendants.
Civil Action No. 06-259-MPT
UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
2007 U.S. Dist. LEXIS 35076

May 14, 2007, Decided
May 14, 2007, Filed
SUBSEQUENT HISTORY: Motion granted by Amgen,
Inc. v. Ariad Pharms., Inc., 2008 U.S. Dist. LEXIS 7317
(D. Del., Jan. 31, 2008)

and Fellows of Harvard College, Counter Claimants:
Tiffany Geyer Lydon, Ashby & Geddes, Wilmington,
DE.

PRIOR HISTORY: Amgen, Inc. v. Ariad Pharms., Inc.,
213 Fed. Appx. 990, 2006 U.S. App. LEXIS 32339 (Fed.
Cir., 2006)

For Wyeth, Counter Defendant: Anne Shea Gaza,
Richards, Layton & Finger, Wilmington, DE.

COUNSEL: [*1] For Amgen Inc., a Delaware
corporation, Immunex Corporation, a Washington
corporation, Amgen USA Inc., a Delaware corporation,
Amgen Manufacturing Limited, a Bermuda corporation,
Immunex Rhode Island Corporation, a Delaware
corporation, Plaintiffs: Melanie K. Sharp, LEAD
ATTORNEY, Young, Conaway, Stargatt & Taylor,
Wilmington, DE.
For Ariad Pharmaceuticals Inc., a Delaware corporation,
Defendant, Counter Claimant: John G. Day, Steven J.
Balick, LEAD ATTORNEYS, Tiffany Geyer Lydon,
Ashby & Geddes, Wilmington, DE; Amir A. Naini, Pro
Hac Vice; Christopher M. Newman, Pro Hac Vice; David
I. Gindler, Pro Hac Vice; Elizabeth L. Rosenblatt, Pro
Hac Vice; Morgan Chu, Pro Hac Vice.
For The Whitehead Institute for Biomedical Research,
Defendant: Steven J. Balick, LEAD ATTORNEY,
Tiffany Geyer Lydon, Ashby & Geddes, Wilmington,
DE.
For Massachusetts Institute of Technology, The President

For The Whitehead Institute for Biomedical Research,
Counter Claimant: Steven J. Balick, LEAD ATTORNEY,
[*2] Ashby & Geddes, Wilmington, DE.
For Immunex Rhode Island Corporation, a Delaware
corporation, Amgen Inc., a Delaware corporation,
Immunex Corporation, a Washington corporation,
Amgen USA Inc., a Delaware corporation, Amgen
Manufacturing Limited, a Bermuda corporation, Counter
Defendants: Melanie K. Sharp, Young, Conaway,
Stargatt & Taylor, Wilmington, DE.
JUDGES: Mary Pat Thynge, UNITED STATES
MAGISTRATE JUDGE.
OPINION BY: Mary Pat Thynge
OPINION

MEMORANDUM ORDER
At Wilmington, this 14<th> day of May, 2007.
On May 1, 2007, a hearing was held on various

Page 2
2007 U.S. Dist. LEXIS 35076, *2

discovery matters in this patent declaratory judgment
action. One issue, in which plaintiffs' ("Amgen") claim
that defendants ("ARIAD") refuse to make available
three foreign-based inventors of the '516 patent for
deposition, was not fully addressed during that hearing.
The court allowed further letter submissions regarding
the parties' positions on that issue. Amgen filed its letter
memorandum on May 4 and ARIAD responded on May
8, 2007.
Amgen's Position:
Amgen contends that defendants have the ability,
pursuant to the patent assignment agreements executed
by the inventors-in-question, to compel them to testify
[*3] by deposition. The three individuals are Patrick A.
Baeuerle, Roger Clerc and Lynn M. Corcoran. Two
(Baeuerle and Corcoran) are represented by defense
counsel, and those inventors were voluntarily produced
for deposition in an action instituted by ARIAd against
Eli Lilly concerning the '516 patent. Amgen notes that the
other named inventors confirmed at their depositions that
they were appearing pursuant to their contractual
obligations under the assignment. The section of the
assignment in question is the same in each agreement
executed by the inventor's. The relevant language
provides:
AND, we hereby further agree . . . to
perform any other lawful acts which may
be deemed necessary to secure fully the
aforesaid invention to said ASSIGNEE, . .
. including the execution of applications
for patents in foreign countries, and the
execution
of
substitution,
reissue,
divisional or continuation applications and
preliminary or other statements and the
giving of testimony in any interference or
other proceeding in which said invention
or any application or patent directed
thereto may be involved. (emphasis
added).

Amgen maintains that defendants should "be ordered
[*4] to secure compliance" of those inventors with their
contractual obligations. Amgen has offered to make
arrangements for travel of those individuals to the United
States for deposition.
ARIAD's Postion: 1

1 Although Amgen's May 4 letter was directed
to all defendants, a response was only filed on
behalf of ARIAD. The court will presently
assume that the May 8 response was filed on
behalf of all defendants. If this assumption is
incorrect, then the court concludes that there is no
opposition by the other defendants to Amgen's
request.
ARIAD opposes Amgen's request on the following
bases: none of the inventors is or has ever been an
employee of ARIAD or affiliated with ARIAD. Baeuerle
and Corcoran did post-doctoral work at Whitehead and
Clerc did post-doctoral work at MIT; none are parties or
current officers, directors or managing agents of any
defendant entity; there is no special discovery rule for
foreign inventors; the cases relied upon by Amgen are not
applicable; and for witnesses who are not [*5] parties,
they must be subpoenaed under FRCP 45 or if overseas,
through the procedures of the Hague Convention or other
applicable treaty. ARIAD emphasizes that Amgen has not
requested issuance of Letters of Request or Letters
Rogatory or exercised any effort to obtain evidence
pursuant to the Hague Convention.
ARIAD maintains that the assignment agreement
relates to helping perfect title to the invention, rather than
a contractual obligation on the part of the inventors to
assist ARIAD in infringement or declaratory judgment
actions. It further contends that Amgen is a stranger to
the assignment agreement; there is no evidence that
Amgen is a third party beneficiary to the assignment; and
Amgen has no right to enforce it.
ARIAD seems to suggest that since the ten other
inventors to the patent are available for deposition, there
is no or limited need for the deposition of the
foreign-based inventors. Further, ARIAD represents that
the inventors-in-question have either refused or not
responded to its requests to participate in discovery.
Analysis:
There appears to be no dispute that the inventors in
question are not employees, officers, [*6] directors or
managing agents of defendants. Therefore, under a literal
interpretation, FRCP 30 may not to apply. ARIAD argues
that absent Rule 30, Amgen's only options are the
subpoena powers under Rule 45 or the procedures of the
Hague Convention. Contrary to ARIAD's suggestion, the
analysis of whether the court should require the inventors

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2007 U.S. Dist. LEXIS 35076, *6

appearance does not end at that point. Each inventor
executed an assignment. Their assignment benefits the
defendants. ARIAD emphasizes certain, limited portions
of the assignment clause, and equates the phrase "to
secure fully the aforesaid invention to the ASSIGNEE . . .
including . . . the giving of testimony" to the language of
an assignment in Minebea Co, LTD, et. al. v. Papst, et.
al., a declaratory judgment action, which reads "to render
such assistance . . . as may be necessary to perfect title to
the . . . Patent Rights." 2 The Minebea court found such
language to be "too tenuous . . . to order the appearance
of . . . non-citizen, non-employee witnesses." 3
2 370 F. Supp. 2d 302, 308 (D.D.C. 2005).
[*7]
3 Id.
The court does not agree with ARIAD's analysis of
the assignment language in the present matter and its
comparison with the assignment terms in Minebea. No
where in the inventors' assignment in the present matter is
"perfecting title" mentioned. The assignment under
consideration employs the phrase "to secure fully the . . .
invention." Synonyms for secure include protect, defend
and guard. 4 Amgen's declaratory judgment action is an
attack on the patent which the inventors agreed to defend.
ARIAD's selective quote from the assignment ignores
other pertinent language, that the "giving of testimony" is
specifically required "in any . . . other proceeding in
which said invention . . . or patent . . . may be involved."
Therefore, unlike the assignment in Minebea upon which
ARIAD relies, the assignment in this case is not limited
to assistance which enables the assignee to prosecute
patent applications and other similar procedures. Two
assignments were analyzed by the court in Minibea.
Regarding the second assignment, the court found that
the patentee had the ability to compel [*8] the inventors
to appear at trial and should have made them "available
in the United States for deposition testimony." 5 The
court required the defendant to produce the inventors for
trial by enforcing the assignment agreements or face
sanctions. 6
4 Webster's New Dictionary of Synonyms 1968
which notes in the Introduction at 24a: "A
synonym, in this dictionary, will always mean one
of two or more words in the English language
which have the same or very nearly the same
essential meaning." (emphasis in the original).
5 370 F. Supp.2d at 309. The court reached its

conclusion even though plaintiff had employed
the Hague Convention.
6 Id. at 310.
Moreover, the court finds it highly unlikely that in
drafting the language of the assignment, ARIAD ignored
or was not concerned with protecting the invention from
infringers and the need for the inventors' cooperation in
future litigation.
The In re Nifedipine Capsule Patent Litigation
reached the same conclusion [*9] as Minebea. 7 In that
case, the plaintiff argued that it was "powerless to compel
the inventors to testify in an American-style deposition,"
and suggested that the defendant pursue Letters Rogatory
under German law and the Hague Convention, an
argument very similar to the contention of ARIAD. The
court required plaintiff to produce the inventors for
deposition in the United States, pursuant to the Federal
Rules of Civil Procedure, or be subject to sanctions. The
court specifically rejected that the age of the assignment
mattered because it contained no expiration date for the
inventors' obligation to testify. 8 In the instant action,
there is no time limit on the inventors' obligation under
the assignment.
7
1989 U.S. Dist. LEXIS 11061, 1989 WL
111112 (S.D.N.Y., September 20, 1989), 13
U.S.P.Q.2d 1574.
8 1989 U.S. Dist. LEXIS 11061, [WL] at *1.
ARIAD emphasizes that the inventors executed
the assignment in 1992 and could not be expected
to remain obligated forever; however, the '516
patent has not yet expired.
Contrary to ARIAD's argument, [*10] the inventors'
testimony "is logically relevant to the determination of
this action." 9 ARIAD's contention that ten of the thirteen
inventors are available is evidence that the three
foreign-based inventors' depositions are unnecessary, is
unpersuasive. As clearly shown in the tutorial, the patent
addresses complicated bioscience involving gene
expression, cell structure, transcription factors, such as,
NF-KB and proteins, including IKB, protein synthesis,
DNA,
mRNA,
polymerase,
ubiquitin
ligase,
phosphorylation and other unpronounceable components
or processes. 10 The invention is not a novel recipe for
brownies or chicken soup. 11 Obviously, each inventor's
contribution to the invention or the patent is relevant.
9 Id.

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2007 U.S. Dist. LEXIS 35076, *10

10 During the tutorial, counsel did a very good
job teaching the court about the technology
involved; however, as the court commented at the
close of the hearing, the science requires constant
repetition and re-education.
11 The court's apologizes to Julia Childs and
Emeril.
[*11] As noted previously herein, when ARIAD
instituted proceedings on the '516 patent against Eli Lilly,
two of the inventors-in-question were produced, albeit at
their home turf. The assignment provision means that all
inventors have agreed to testify in any legal proceeding
involving the invention or patent directed thereto, and not
just in those proceedings in which ARIAD would like
them to testify. 12 Therefore,
IT IS ORDERED that:
1. ARIAD shall produce the foreign-based inventors,
Patrick A. Baeuerle and Lynn M. Corcoran, in the United
States for deposition at a time and place agreed to by the
parties. The court expects counsel to reach an agreement
as to location, date and time. Amgen shall pay reasonable

costs for the transportation, food and lodging of those
inventors to attend their depositions.
2. Regarding Roger Clerc, the inventor whose
whereabouts appears to be unknown, ARIAD shall
advise the court on or before May 23, 2007 of defendants'
efforts to locate him and to explain what is meant that
"ARIAD has not been able to contact" him.
3. Amgen shall advise on or before May 23, 2007,
whether it will abide by and consent to this Order
regarding the taking of the depositions [*12] of the two
inventors noted in paragraph 1 in the United States or
whether it intends to proceed through Letters Rogatory
and the Hague Convention.
12 In re Nifedipine Capsule Patent Litigation,
1989 U.S. Dist. LEXIS 11061, 1989 WL 111112
at *1.
Mary Pat Thynge
UNITED STATES MAGISTRATE JUDGE