Takeda Pharmaceutical Co., Ltd. et al v. TWi Pharmaceuticals, Inc.

Filing 129

CASE MANAGEMENT ORDER. Signed by Judge Lucy H. Koh on 12/10/2014. (lhklc3S, COURT STAFF) (Filed on 12/10/2014)

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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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SAN JOSE DIVISION
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TAKEDA PHARMACEUTICAL CO., LTD.,
TAKEDA PHARMACEUTICALS U.S.A.,
INC., AND TAKEDA
PHARMACEUTICALS AMERICA, INC.,

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Plaintiffs,

United States District Court
For the Northern District of California

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v.
TWI PHARMACEUTICALS, INC.,
Defendant.

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Case No.: 13-CV-02420-LHK
CASE MANAGEMENT ORDER

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Plaintiff’s Attorney: Heather Takahashi
Defendant’s Attorney: Don J. Mizerk

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A case management conference was held on December 10, 2014. A further case
management conference was set for March 19, 2015, at 1:30 p.m. The parties shall file their joint
case management statement by March 12, 2015.

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The Court hereby ORDERS Takeda to produce all TAP Pharmaceuticals inventor e-mails
(with attachments) from 2000 to 2008 no later than December 23, 2014, and all TAP licensing
documents no later than January 7, 2015. TWi will consult with Takeda regarding custodians for
the licensing documents. Takeda will produce the documents to TWi on a rolling basis, beginning
as soon as possible.

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As a result, the Court will allow TWi to re-depose the following individuals:
 The six (total) inventors of the ’158 and ’187 Patents;
 The ’158 and ’187 Patent prosecutors (Mr. Yasger, Ms. Mueller, and Mr.
Buonaiuto);
 TAP Pharmaceuticals CEO Watkins;
 Mr. Yasger (both as to licensing and as to patent prosecution);
 Mr. Frapaise; and
 Individuals associated with the 2006-2007 development of dissolution protocol for
TAP’s New Drug Application.
All depositions, except for the inventor who resides in New York City, shall be held in
Chicago. The Court hereby ORDERS that Takeda shall bear the following expenses for any of the
above depositions:
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Case Nos.: 13-CV-02420-LHK
CASE MANAGEMENT ORDER

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Court reporter;
Videographer; and
TWi attorney travel expenses, including airfare and hotel, for deposition of the
inventor residing in New York City (if necessary).

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The Court adopts Judge Grewal’s recommendation and allows Takeda to reassert claim 7 of
the ’187 Patent in exchange for dropping claim 8. See ECF No. 128. TWi stipulated that there are
no corresponding changes to its invalidity contentions.

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Upon further reflection, the Court allows Takeda to reassert claim 6 of the ’187 Patent
in light of TWi’s filing of an amended ANDA. See ECF No. 124, Takeda’s Second Case
Narrowing Statement.

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The following ELEVEN claims are now being asserted in the case:
 ’158 Patent: claims 1, 2, 3, and 6
 ’187 Patent: claims 1, 2, 5, 6, 7, 11, and 16

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United States District Court
For the Northern District of California

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TWi stipulated that only the following THREE prior art references will be used at trial:
 Akiyama reference (three versions);
 Dietrich reference; and
 Offer for sale.
The parties agreed to meet and confer regarding Takeda’s possible filing of a motion to
strike in part TWi’s expert report(s) as to anticipation by the Dietrich reference and enablement
under section 112. If Takeda files the motion, the hearing date shall be March 19, 2015, at 1:30
p.m. The parties shall determine their own briefing schedule, with Takeda’s reply due no later than
March 5, 2015.
The Court amended the case schedule as follows:

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Scheduled Event

Date

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December 22, 2014

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Parties Serve Rebuttal Expert Reports and
Produce Related Documents/Materials
Deadline for Takeda to Produce TAP Inventor E-mails

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Deadline for Takeda to Produce TAP Licensing Documents

January 7, 2015

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Parties Serve Reply Expert Reports

January 9, 2015

Close Expert Discovery

January 23, 2015

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Deadline for Takeda to File and Serve a Narrowed List of
Asserted Claims

February 1, 2015
(max 7 claims)

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Last Day to File Dispositive Motions

February 19, 2015

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Last Day to File Reply Supporting Takeda’s Motion to Strike
(if necessary)

March 5, 2015

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Further CMC

March 19, 2015, at 1:30 p.m.

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Hearing on Takeda’s Motion to Strike (if necessary)

March 19, 2015, at 1:30 p.m.

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Hearing on Dispositive Motions

April 9, 2015, at 1:30 p.m.

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Deadline for Takeda to File and Serve a Narrowed List of
Asserted Claims

April 16, 2015
(max 5 claims)

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Case Nos.: 13-CV-02420-LHK
CASE MANAGEMENT ORDER

December 23, 2014

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Final Pretrial Conference

May 14, 2015, at 1:30 p.m.

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Bench Trial

June 2, 2015, at 9:00 a.m.

Length of Trial

7 days

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IT IS SO ORDERED.

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Dated: December 10, 2014

_________________________________
LUCY H. KOH
United States District Judge

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United States District Court
For the Northern District of California

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Case Nos.: 13-CV-02420-LHK
CASE MANAGEMENT ORDER