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

Filing 1034

RESPONSE to Motion 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 Amgen Inc.. (Rich, Patricia)

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

Doc. 1034

Case 1:05-cv-12237-WGY

Document 1034

Filed 09/10/2007

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UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS ) ) ) Plaintiff, ) ) v. ) ) ) F. HOFFMANN-LA ROCHE ) LTD., a Swiss Company, ROCHE ) DIAGNOSTICS GmbH, a German ) Company and HOFFMANN-LA ROCHE ) INC., a New Jersey Corporation, ) ) Defendants. ) __________________________________________) AMGEN INC.,

Civil Action No.: 05-12237 WGY

AMGEN INC.'S RESPONSE TO ROCHE'S 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

Dockets.Justia.com

Case 1:05-cv-12237-WGY

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Roche's motion in limine (D.I. 1005) seeks to preclude Amgen from asserting 35 U.S.C. § 121 as a defense to Roche's allegations that the `868 and `698 asserted claims are invalid for obviousness-type double patenting ("ODP") over the `008 patent claims. Amgen acknowledges that it will not rely on § 121 as a defense to Roche's ODP attack against the `868 and `698 asserted claims. Instead, Amgen will demonstrate that the `868 and `698 asserted claims are patentably distinct from the `008 claims, as the PTO determined. Although Amgen will not rely on § 121 as a defense to Roche's ODP attack against the `868 and `698 claims, Amgen disagrees with Roche's legal analysis and explanation of these § 121 issues. For example, Amgen disagrees with any suggestion by Roche that U.S. Patent App. No. 07/113,179 was not "filed as a result of" the July 1986 restriction requirement, or that the `179 application was filed "voluntarily." As the Court determined,1 Amgen demonstrated in its summary judgment briefing that the `179 application was filed as a result of the 1986 restriction requirement.2 For that reason, the issued `868 and `698 claims would ordinarily qualify for § 121 protection. The reason they do not is because the issued `868 and `698 claims fall within the Group II classification of the PTO's 1986 Restriction Requirement, and are therefore not consonant with the non-elected invention groups of that restriction requirement. Nonetheless, because the `868 and `698 claimed inventions are patentably distinct from the `008 claimed inventions, Roche's ODP defenses based on the `008 claims should be dismissed.

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See Electronic Order, dated Aug. 27, 2007, granting Amgen's Motion for Summary Judgment of No Obviousness-Type Double Patenting (D.I. 498). 2 See D.I. 499, at 10-12; D.I. 676, at 3-6. 2

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Respectfully Submitted, AMGEN INC., By its attorneys,

Of Counsel: STUART L. WATT WENDY A. WHITEFORD MONIQUE L. CORDRAY DARRELL G. DOTSON KIMBERLIN L. MORLEY ERICA S. OLSON AMGEN INC. One Amgen Center Drive Thousand Oaks, CA 91320-1789 [phone]

/s/ Patricia R. Rich D. DENNIS ALLEGRETTI (BBO#545511) MICHAEL R. GOTTFRIED (BBO#542156) PATRICIA R. RICH (BBO#640578) DUANE MORRIS LLP 470 Atlantic Avenue, Suite 500 Boston, MA 02210 Telephone: [phone] Facsimile: [phone] LLOYD R. DAY, JR. (pro hac vice) DAY CASEBEER MADRID & BATCHELDER LLP 20300 Stevens Creek Boulevard, Suite 400 Cupertino, CA 95014 Telephone: [phone] Facsimile: [phone] WILLIAM GAEDE III (pro hac vice) McDERMOTT WILL & EMERY 3150 Porter Drive Palo Alto, CA 94304 Telephone: [phone] Facsimile: [phone] KEVIN M. FLOWERS (pro hac vice) MARSHALL, GERSTEIN & BORUN LLP 233 South Wacker Drive 6300 Sears Tower Chicago IL 60606 Telephone: [phone] Facsimile: [phone]

September 10, 2007

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Case 1:05-cv-12237-WGY

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CERTIFICATE OF SERVICE I hereby certify that this document, filed through the ECF system will be sent electronically to the registered participants as identified on the Notice of Electronic Filing and paper copies will be sent to those indicated as non-registered participants on the above date. /s/ Patricia R. Rich Patricia R. Rich

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