Kyowa Hakko Bio, Co., Ltd, et al v. Ajinomoto Co., Ltd. et al

Filing 72

MEMORANDUM OPINION. Signed by Judge Richard A. Lloret on 4/1/2019. (nmg)

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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
Kyowa Hakko Bio, Co., Ltd, et al
Plaintiffs,
v.
Ajinomoto Co., Ltd. et al
Defendants.

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CIVIL ACTION

NO. 17-cv-00313-MSG

MEMORANDUM OPINION
The Defendants (collectively, “Ajinomoto”) want to depose a corporate
representative of the Plaintiffs (collectively, “Kyowa”) under Fed. R. Civ. Pro. 30(b)(6),
in advance of claim construction. See Letter of Chad S.C. Stover dated March 28, 2019
(“Stover letter”). The point of the deposition is to collect information on how Kyowa
determined “average particle size of amino acid crystals added to a medium containing a
microorganism for producing an amino acid,” among other things. See Stover letter
attachment, “Topics for Examination,” ¶ 4. The subject is at the core of the claim
construction dispute. Ajinomoto also wants to question a corporate designee about
Kyowa’s efforts to comply with document production requests. Id., ¶¶ 1-3.
Kyowa objects for various reasons, prime among them that extrinsic evidence of
the kind sought by Ajinomoto is of marginal probative value in a claim construction
proceeding. See Letter of Ronald P. Golden, III dated March 28, 2019 (“Golden letter”).
I held a hearing on the record via telephone conference on Friday, March 29, 2019.
Kyowa makes a legitimate point, but there is a difference between no probative
value and a little probative value. The Federal Circuit holds that extrinsic evidence “may
be useful in claim construction, but it should be considered in the context of the intrinsic
evidence.” Biagro Western Sales, Inc. v. Grow More, Inc., 423 F.3d 1296, 1302 (Fed.

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Cir. 2005). It is true, as Kyowa points out, that expert reports will be available to provide
extrinsic evidence. See Golden letter, at 1-2. That does not mean that deposition
testimony by a corporate representative on the issue of how Kyowa itself measured
average particle size of amino acid crystals will have no value. Experts and courts
sometimes rely on industry practice as background in determining how a person skilled
in the art would have understood claim language. See Eidos Display, LLC v. AU
Optronics Corp., 779 F.3d 1360, 1365 (Fed. Cir. 2015) (“the state of the art for
manufacturing LCD panels always had been to form contact holes for source wiring
connection terminals that are separate from contact holes for gate wiring connection
terminals.”).
It may be that intrinsic evidence will be sufficient to construe the claims. If that is
so, I will not consider extrinsic evidence. See Interactive Gift Exp., Inc. v. Compuserve
Inc., 256 F.3d 1323, 1332 (Fed. Cir. 2001) (“If the meaning of the claim limitations is
apparent from the totality of the intrinsic evidence, then the claim has been construed.
If however a claim limitation is still not clear, we may look to extrinsic evidence to help
resolve the lack of clarity.”). There is no guarantee that the deposition testimony will be
admissible or helpful, but that is often the case when discovery is permitted. See Fed. R.
Civ. Pro. 26(b)(1) (“Information within the scope of discovery need not be admissible in
evidence to be discoverable.”)
The meaning of the phrase “average particle size,” among others, will be the
subject of claim construction. See Doc. No. 68-1 at 2 (Claim Construction Chart). It
seems appropriate, in this case, to permit the deposition to go forward and allow the
parties to use or criticize the utility of the testimony during briefing on claim
construction. I have considered the stakes at issue in the litigation, Kyowa’s superior
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access to the information requested, the parties’ resources, and the potential for the
information elicited at the deposition to be helpful in construing the claim. See Fed. R.
Civ. Pro. 26(b)(1). I find that one 30(b)(6) deposition of seven (7) hours in length is not
a disproportionate burden for Kyowa to bear, if the topics for examination are
narrowed. Id.
Topics 1-3 are stricken. Each of them concerns Kyowa’s responses, so far, to
document requests. This is tangential to claim construction. I do not preclude the
possibility that the subject may be inquired into at some point in this case, but right now
it promises to sidetrack the path to early claim construction.
I will permit topics 4 and 5,1 both of which are relatively discrete and bear
directly on information that may be helpful during claim construction. I will not permit
topic 6, which concerns “Kyowa’s pre-April 12, 2005, experiments in which crystals of
an amino acid were added to a medium containing a microorganism having the ability to
produce the amino acid.” The subject promises to be a general inquisition into
experiments rather than being focused on the specific language at stake in claim
construction. I will permit topic 7, which concerns “[t]he measurements and
experiments reported in the documents that Kyowa has produced in this matter.”
However, I will limit the scope of the topic to “measurements and experiments
[concerning the average particle size of amino acid crystals added to a medium
containing a microorganism for producing an amino acid] reported in the documents

Topic 4 is “Kyowa’s pre-April 12, 2005, measurements and calculations to determine the average particle
size of amino acid crystals added to a medium containing a microorganism for producing an amino acid.”
Topic 5 is “[t]he nature, meaning, and use by Kyowa of the measurements and calculations output by
LMS-24 particle distribution analyzers, pre-April 12, 2005.”
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that Kyowa has produced in this matter.” See Fed. R. Civ. Pro. 26(c)(1)(D) (court may
enter an order “limiting the scope of . . . discovery to certain matters[.]”).
An Order is filed with this Memorandum Opinion.

BY THE COURT:

s/Richard A. Lloret
RICHARD A. LLORET
U.S. MAGISTRATE JUDGE

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