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

Filing 1156

BRIEF by F. Hoffmann-LaRoche LTD, Roche Diagnostics GmbH, Hoffmann LaRoche Inc. Roche's Bench Memorandum No. 2 that Dr. Orkin Should be Precluded from Testifying to a Claim-By-Claim Analysis of the Patents-In-Suit and/or Offering an Opinion on the Ulitimate Issue of Validity Because These Opinions are not in His Expert Reports. (Fleming, Thomas)

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

Doc. 1156

Case 1:05-cv-12237-WGY

Document 1156

Filed 09/26/2007

Page 1 of 3

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS

AMGEN, INC., Plaintiff, v. Civil Action No. 05-CV-12237 WGY F. HOFFMANN-LA ROCHE, LTD., ROCHE DIAGNOSTICS GMBH, and HOFFMANN-LA ROCHE, INC. Defendants. ROCHE'S BENCH MEMORANDUM NO. 2 THAT DR. ORKIN SHOULD BE PRECLUDED FROM TESTIFYING TO A CLAIM-BY-CLAIM ANALYSIS OF THE PATENTS-IN-SUIT AND/OR OFFERING AN OPINION ON THE ULTIMATE ISSUE OF VALIDITY BECAUSE THESE OPINIONS ARE NOT IN HIS EXPERT REPORTS Neither of the two expert reports submitted by Dr. Orkin in the present action includes (1) a claim-by-claim analysis of the patents-in-suit, such as any discussion of the subject matter or limitations of any specific claim or (2) any opinion on the ultimate issue of validity. In keeping with the clear bounds of expert testimony set by the Court, Dr. Orkin should not now be allowed to testify as to these (or any) opinions that were not disclosed in his expert reports. Throughout these proceedings, the Court has been very clear to both parties that, in the interest of fairness, expert witnesses may not offer direct testimony on opinions that are outside the scope of their expert reports. The Court has been "very strict" (Trial Tr. 1021:14) on keeping the direct testimony of experts to within the bounds of what was disclosed in the expert reports, and has recognized that "that's the only fair way" for direct examination to proceed. (Trial Tr. 728:12). 1
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Case 1:05-cv-12237-WGY

Document 1156

Filed 09/26/2007

Page 2 of 3

In the present case, Dr. Orkin not only submitted a first rebuttal report (see Rebuttal Expert Statement of Stuart H. Orkin, M.D., dated May 11, 2007), but also submitted a second report, specifically designed to supplement the first. (See Supplemental Rebuttal Expert Statement of Stuart H. Orkin, M.D., dated June 1, 2007). Dr. Orkin had ample opportunity in these multiple reports to disclose any and all opinions that he intended to offer at trial. Roche therefore respectfully requests that Dr. Orkin be precluded from offering opinions on or testifying about specific claims, including the subject matter and inventions claimed therein, and also that Dr. Orkin be precluded from offering opinions on the ultimate issue of validity. DATED: September 26, 2007 F. HOFFMANN-LA ROCHE LTD, ROCHE DIAGNOSTICS GMBH, and HOFFMANN-LA ROCHE INC. By its attorneys, /s/ Thomas F. Fleming Leora Ben-Ami (pro hac vice) Patricia A. Carson (pro hac vice) Thomas F. Fleming (pro hac vice) Howard S. Suh (pro hac vice) Christopher T. Jagoe (pro hac vice) Vladimir Drozdoff (pro hac vice) Peter Fratangelo (BBO# 639775) Krista M. Rycroft (pro hac vice) KAYE SCHOLER LLP 425 Park Avenue New York, New York 10022 Tel. [phone] and Lee Carl Bromberg (BBO# 058480) Julia Huston (BBO# 562160) 2

Case 1:05-cv-12237-WGY

Document 1156

Filed 09/26/2007

Page 3 of 3

Keith E. Toms (BBO# 663369) Nicole A. Rizzo (BBO# 663853) BROMBERG & SUNSTEIN LLP 125 Summer Street Boston, MA 02110 Tel. [phone] 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 (NEF) on the above date. /s/ Thomas F. Fleming Thomas F. Fleming

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