Amgen Inc. v. F. Hoffmann-LaRoche LTD et al

Filing 1006

MEMORANDUM in Support re #1005 MOTION in Limine to Preclude Amgen from Asserting that there Was a Restriction Requirement Separating the '008 Patent Claims From the Claims of the '868 and '698 Patents filed by F. Hoffmann-LaRoche LTD, Roche Diagnostics GmbH, Hoffmann LaRoche Inc.. (Attachments: #1 Exhibit A#2 Exhibit B#3 Exhibit C#4 Exhibit D (Part 1 of 3)#5 Exhibit D (Part 2 of 3)#6 Exhibit D (Part 3 of 3)#7 Exhibit E)(Seluga, Kimberly)

Case 1:05-cv-12237-WGY

Document 1006-2

Filed 09/06/2007

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EXHIBIT A
UNITED STATES DISTRICT COURT

. DISTRICT OF MASSACHUSETTS
AMGEN INC.,
Plaintiff,
vs.

)

)
)

CIVIL ACTION No.: 05-cv-12237WGY

F. HOFFMANN-LA ROCHE LTD, ROCHE ) DIAGNOSTICS GmbH, AND HOFFMA- )

) )

LA ROCHE INC., )
Defendants.
) )

DEFENDANTS~ FIRST SET OF INTERROGATORIES (NOS. 1-13)

Pursuant to Federal.Rule of Civil Procedure 33, applicable local rules of the Distrct of
Massachusetts, and the Court's November 7,2007 Scheduling Order, Defendants F. Hoffmann-

La Roche Ltd, Roche Diagnostics GmbH, and Hoffman-La Roche, Inc. (collectively "Roche")
request that Plaintiff .Amgen, Inc. ("Amgen") answer the following interrogatories within thirty
days of service.

DEFINITIONS AND INSTRUCTIONS
Respondents incorporate by reference the Defiitions and Instrctions set forth in
DEFENDANTS' FIRST SET OF REQUESTS FOR

PRODUCTION OF DOCUMENTS AND

THINGS.

INTERROGATORIES

INTERROGATORY NO.1
Separately for each claim of each of

the patents-in-suit, identify whether Amgen alleges

that Roche makes, uses, offers to sell or sells a product that Amgen contends infrnges that claim

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INTERROGATORY NO.7
Describe any attempts by Amgen to modify EPO or G-CSF proteins, including attempts

successful or otherwise to create pegylated compounds using EPO or G-CSF such that the
chemical, physical, pharmacological and/or pharmacokinetic properties of

the chemically

modified compound differs from the EPO or G-CSF starting material and identify all documents
and things that support Amgen's response to this interrogatory.

INTERROGATORY NO.8
Separately for each claim of

the patents-in-suit, identify whether Amgen contends that
the claims

the making, using, offering to sell or selling of ARANESpis is covered by any or all of

of

the patents-in-suit, explain whether the making, using, offering to sell or sale is contended to

be covered literally or by the doctrine of equivalents, and identify all documents and things that
support or otherwise refute Amgen's response to this interrogatory.

INTERROGA TORY NO.9
Describe whether Amgen contends that CERA is not materially changed pursuant to

35 D.S.C. § 271(g) from "human eryhropoietin," as that temi is used in the asserted claims of
the patents-in-suit, any basis and/or evidence, and the identity of all documents and things that
support or otherwise refute Amgen's response to this interrogatory.

INTERROGATORY NO.

10

As to each asserted claim of the patents-in-suit identified in response to Interrogatory No.

1, describe the reasons why each claim is not rendered invalid under the claims ofD.S. Patent

4

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No. 4,703,008 pursuant to obviousness-type double patenting, the reasons for this contention,
including whether 35 D.S.C. § 121 applies as a defense to obviousness-type double patenting,

and the identity of all documents and things that support or otherwise refute Amgen's response
to this interrogatory.

INTERROGATORY

NO.

11

Describe whether Amgen contends that claim 1 ofD.S. Patent No. 5,955,422 is not a
"product by process claim"! and any basis and/or evidence for that contention.

INTERROGATORY NO. 12
Describe whether Amgen contends that the work of Goldwasser2 demonstrated a
"therapeutically effective amount of

human erythropoietin" as these terms were construed in

Amgen, Inc. v. Hoechst Marion Roussel, Inc., Appeal No. 05-1l57 (Fed. Cir. August 3,2006),
any basis and/or evidence for that contention, and the identity of all documents and things that
support or otherwise renite Amgen's response to this interrogatory.

INTERROGATORY NO.

13

ldentifyeach customer, or potential customer, with which Amgen has discussed or
proposed a sole source contract, requirements contract, or any form of

exclusive dealing

arrangement or similar arrangement, for the sale ofEPOGE~ and/or ARANESpis, and identify
any person, including third parties, with knowledge of any such discussion or proposaL.
i For "product by process claims," reference should be made to M.P.E.P. Section 2113.
Purified Human Erythropoietin (HEPO), as descrbed in Amgen, Inc. v. HoecllSt Marion Roussel, Inc., Appeal No. 05~ 1157 (Fed. Cir.
2 This refers to Goldwasser's work relating to the Clinical Study of

August 3, 2006)

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DATED:

December 6, 2006

F. HOFFMANN-LA ROCHE LTD, ROCHE DIAGNOSTICS GMBH, and

HOFFMAN-LA ROCHE INC.
By its attorneys,

Leora Ben-Ami (pro hac vice) . . Patricia A. Carson (pro hac vice) Thomas F. Fleming (pro hac vice) Howard Suh (pro hac vice) KA YE SCHOLER LLP 425 Park Avenue

1W -&/H. 1+

New York, NY 10022 Tel: (2l2) 836-8000
and

Lee Carl Bromberg (BBO# 058480) Julia Huston (BBO# 562160) Keith E. Toms (BBO# 663369) BROMBERG & SUNSTEIN LLP 125 Summer Street Boston, MA 02110
TeL. [phone]

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