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 1006-3

Filed 09/06/2007

Page 1 of 5

EXHIBIT B
UNITED STATES DISTRICT COURT DISTRCT OF MASSACHUSETTS

AMGEN INC., )

Ys. )

)
) )

Plaintiff, ) CIVIL ACTON No.: 05-cv-12237WGY

F. HOFFMANN-LA ROCHE L TD, ROCHE )
DIAGNOSTICS GmbH, AND HOFFMAl\TN-LA )

ROCHE INC., )

Defendants. )
)

PLAINTIFF~S SUPPLEMENTAL RESPONSE TO
DEFENDANTS~ FIRST SET OF INTERROGATORIES (NOS. 1-12)
Pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure ("FRCP"),

Plaintiff/Counter Defendant A.mgen Inc. ("Amgen") hereby supplements its objections and
responses to Defendants' First Set of Imerrogatories (Nos. 1- J 2).

PRELIMINARY STATEMENT
1. Amgen's responses to Defendants' First Set of Interrogatories are made to the

best of Amgen's present knowledge, information and belief. Amgen's responses are subject to
amendment and supplementation should futue investigation

indicate that amendment or

supplementation is necessary. Amgen undertakes no obligation, however, to supplement or
amend these responses other than as required by the Federal Rules of Civil Procedure of the
Local Rules of the United States District Court for the District of

Massachusetts.

2. Amgen's responses to Defendants' First Set oÍlnterrogatories are made according

to information currently in Amgen's possession, cusody and control.
3. To the extent that Amgen responds to Defendants' First Set of Interrogatories by

stating information that private, confidential, highly confidential, proprietary, trade secret or
otherwise protected from disclosure, Amgen wil respond pursuant to the temis of the Protective
Order in this case.

PtTF'S SUlPL. RESPONse TO FIRST

SET Of'NTER.ROGATORIES (1.-12)
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0023

CASE No. 05.cy-12Z37WGY

Case 1:05-cv-12237-WGY

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ITC- R - BLA -00022366-ITC-R -BLA -00039498; ITC-R -B LA -0003 987 5-ITC - R-BLA -0003 9889;
ITC-R-BLA-Q0047373-ITC-R-BLA-OOì 18973; ITC-R-BLA-OOI18975-ITC-R-BLA-00151977;

ITC- R - BLA -00045320-llC-R - BLA -00045 3 28; ITC-R - BLA -0004 5330-- ITC- R - B LA -00045373;

ITC-R - BLA -00000029-1TC-R -BLA -00000193; ITe-R -BLA -00000692-ITC-R -B LA -00006253;

and ITC-R-0009l296-309.

SUPPLEMENTAL RESPONSE TO INTERROGATORY NO.9
Subject to and without waiver of these Specific Objectìons and General Objection set

forth above which are incorporated herein by reference, and with reservation of its right to
supplement or amend its response to this interrogatory after the claims have been construed and

necessary discovery has been received, Aingen incorporates by reference its previous response
and provides the folloVv'Ìng supplemental response to this interrogatory:

Additional documents supportng Amgen's response to this interrogatory include: ITe-R-

00095645-53; ITe-R-00095939-42; the June 13, 2006 "CERA preliminary draft summary
report" produced by Dr. Veng-Pedersen durìng his deposition (no bates number provided); ITeR-00095886-895; and ITC-R-BLA-00007247.

INTERROGATORY NO. 10:
As to each asserted claim of the patents-iii-suit identified in response to IntclTogatory No.

1, descrìbe the reasons why each claim is not rendered invalid under the claims of U.S. Patent
No. 4,703,008 pursuant to obviousness-type double patenting, the reasons for this contention,

including whether 35 U.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 intenogatory.

RESPONSE TO INTERROGATORY NO. 10:
In addition to the foregoing General Objections, Amgen makes the following Specific
Objections to this interrogatory: Amgen specifically objects to this interrogatory on the grounds

that it is unduly burdensome and lacks relevance under Rule 26 in that it seeks information
regarding non-double patenting before Roche has specified any basis that purportedly would
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lI.TF'S SVf'PL. RES1'ONS£ TO FIRST
SET OF INTERROGATORIES (1-12)

CASE NO. 05-¡;-ì2237WGY

Case 1:05-cv-12237-WGY

Document 1006-3

Filed 09/06/2007

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make such infonnation discoverable. As the claimed inventions are presumed valid per 35
U .S.C. § 282, Roche has the burden to specify its contentions, and the bases therefore, that the
Asserted Claims are purportedly invalid for obviousness-type double patenting. Roche's

Interrogatory No. 10 is therefore overly broad and unduly burdensome to the extent that it

requires Amgen to anticipate all arguments and provide "all document and things" before Roche

has specified its contentions and the bases underlying such contentions. When Roche fully and

fairly answers Amgen's Interrogatories Nos. 9, 10, and 11, Amgen wiH be in position to fully
respond to Roche's Interrogatory No. 10. Amgen fuher objects to this interrogaTOry to the

extent that it prematurely calls for the testimony of Amgen's expert witnesses, which by the
Court's order wil be provided in the form ofreport(s) on April 27, 2007.

Subject to and without waiver of these Specific Objections and General Objection set
forth above 'whích are incorporated herein by reference, and with reservation of its rights to
supplement or amend its response to this interrogatory after the claims have been construed and

necessary discovery has been received, Amgen provides the following response to this
interrogatory:

The Asserted Claims are each patentably distinct from the claims of U.S. Patent No.
4,703,008. Specifically, the subject matter as a whole of each Asserted Claim would not have
been obvious at the time the inventions were made to a person having ordinary skil in the art to

which said subject matter pertins, in lightor any particular claim of U.S. Patent No. 4,703,008.

Moreover, many of the patents in suit are exempt by action of 35 U.S.C. § i21 because later
issued claims were subject to a restriction requirement during the prosecution of the application

which issued as U.S. Patent No. 4,703,008, and the later issued claims are consonant with the
examiner's restriction requirement. Evidence establishing such exemption can be found in the
file histories of

Dr. LIn's patents. See, e.g., AM-lTC 00472894-473612; AM-lTC 00460619-

465061; AM-lTC 00445844-446192; Alvf-lTC 00465062-465750; AM-ITC 00474086-474458:

AM-lTC 00518308-5 859J; AM-lTC 00446193-446637; AM-lTC 00473613-474085; AM-lTC

00477099-477563; .:\M-I'1C 00453884-460618; AM-ITC 00508113-508400; AM-ITC
30
MI'K 122051.1.\41925.002,3

PLTF'S SUPPL. RESPONSE TO FIRST SET OF iNTERROGATORIES (1-12)

CASE NO. OS.çv.!2237WGY

Case 1:05-cv-12237-WGY

Document 1006-3

Filed 09/06/2007

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00508847-509548; and AM-ITC 00519544-519809. In addition, the issue of double patenting
was raised and addressed in the prosecution of onc or more of the patents-in-suit as reflected in

the pmsecutÍon histories of those patents. Double patenting does not apply to these patents at
least for the reasons cited therein.
SUPPLEMENTAL RESPONSE TO INTERROGATORY NO.

10

Subject to and without waiver of these Specific Objections and General Objection set

forth above which are incorporated herein by reference, and with reservation of its right to
supplement or amend its response to this interrogatory after the claims have been construed and

necessary discovery has been received, Amgen incorporates by reference its previous response
and provides the following supplemental response to this interrogatory:

V,S, Patents Nos. 5,547,933, 5,621,080, 5,756,349, 5,618,698, and 5,955,422 are exempt
by actiòn of35 V.S.C. § 121 because later issued claims were subject to a restriction requirement
during the prosecution of

the application which later issued as U.S. Patent No. 4,703,008 and the

later issued claims are consonant with the examiner's restriction requirement.

INTERROGATORY NO. 11:

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

RESPONSE TO INTERROGATORY NO.1J:
In addition to the foregoing General Objections, Amgen makes the follo'wing Specific

Objections to this interrogatory: Amgen specifically objects to this interrogatory on the grounds
that it lacks relevance under Rule 26 in that it seeks to label '422 claim I into some generic claim
category. As the claimed inventions are presumed valid per 35 U.S.C. § 282, Roche has the

burden to come forward and specify whether and how any of the claims at issue are purportedly
invalid, incìuding claim 1 of the '422 patent referenced in this interrogatory by making specific

evidentiary showing and not by some general classification, Subject to and without waiver of

l For "product by process claims," reference should be made to M.P.E.P, Section 2113'.

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MPK 122051.2,041925,0023

PLTF'S SUP"L. Rf:SPONSE TO FIRST

SET OF INTERROGATORIES (1-12)

CASE No. 05-cv-12237WGY

Case 1:05-cv-12237-WGY

Document 1006-3

Filed 09/06/2007

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CERTIFICA TE OF SERvlCE VIA ELECTRONIC MAIL
I, William Martinez, hereby declare:

I am a citizen of the United States and a resident of the State of California. I am over the
age of eighteen years, and not a pary to the witÜn action. My business address is McDermott Wil
& Emery LLP, 3150 Porter Drive, Palo Alto, California 94304-1212.
On February 10, 2007, I served a copy of

PLAINTIFF'S SUlPIÆMENTAL RESPONSE

TO FIRST SET OF INTERROGATORIES (NOS. 1-12) by electronic transmission by attaching
the referenced documents to an electronic mail and transmitting the same to the e-mail addresses
indicated below:

I Leora Ben-Ami. Esd. I Patricia A. Carson, Esq.
I ThOmas F. Fleming, Esq.

ílee Carl Bromberg, Esq.

¡ Julia Huston, Esq.

¡Keith E. Toms, Esq.
I BROMBERG & SUN

I Howard 8uh, Esq.
I Peter Fratangelo, ESQ.

STEIN LLP

i KA YE SCHOLER L'LP I 425 Park Avenue

Boston, MA 02110 \125 . [phone] Summer Street TeL
lbrom berg(§bromsun. com

I New York, NY 10022 I Tel: [phone] ¡
i

Ilbenami02kayescholer.com
I pcarson(êkayescholer.com I tfleming(êkayescholer.com
I hsuht&kayescholer.com . pfratange!o(àlkayeschoìer.com

jhustont&bromsun.com ktoms(§bromsun.com

1 declare under penalty of perjury under the lavvs of the United States that the foregoing is
true and correct and that this declaration was executed at Palo Alto, California on February 9,.2007.

Wiliam Martinez

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d ih L

MPK 12!(J5J~2,(r4l92S0U13