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

Filing 1195

REPLY to Response to Motion re #1098 MOTION in Limine to Preclude Amgen from Introducing the Deposition Testimony of Dr. Edward Harlow, a Roche Expert Witness, Because It Is Irrelevant and Is Inadmissible Hearsay (Leave to File Granted on September 28, 2007) filed by F. Hoffmann-LaRoche LTD, Roche Diagnostics GmbH, Hoffmann LaRoche Inc.. (Seluga, Kimberly)

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

Doc. 1195

Case 1:05-cv-12237-WGY

Document 1195

Filed 09/28/2007

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UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS AMGEN INC., Plaintiff, vs. F. HOFFMANN-LA ROCHE LTD, ROCHE DIAGNOSTICS GMBH, AND HOFFMANN-LA ROCHE INC., Defendants ) ) ) ) ) ) ) ) ) ) ) ) )

CIVIL ACTION No.: 05-CV-12237WGY Leave to file granted on September 28, 2007

REPLY MEMORANDUM IN FURTHER SUPPORT OF DEFENDANTS' MOTION IN LIMINE TO PRECLUDE AMGEN FROM INTRODUCING THE DEPOSITION TESTIMONY OF DR. EDWARD HARLOW, A ROCHE EXPERT WITNESS ON THE ISSUE OF OBVIOUSNESS-TYPE DOUBLE PATENTING WHO WILL NOT BE TESTIFYING AT TRIAL Amgen should not be allowed to introduce the deposition testimony of Dr. Edward Harlow, an expert witness that Roche offered on the issue of obviousness-type double patenting, to the jury for at least the following reasons: (i) Roche did not decide not to call Dr. Harlow in its case-in-chief, as Amgen asserts.

(D.N. 1104, Amgen Opp. at 1). This Court's rulings on Roche's obviousness-type double patenting defenses effectively foreclosed Roche from bringing Dr. Harlow to testify in Roche's invalidity case. Allowing Amgen to present the jury with bits and pieces of Dr. Harlow's deposition outside the context of the overall opinions he was retained to render is entirely unfair to Roche and will confuse and mislead the members of the jury who will not appreciate why Dr. Harlow did not testify for Roche. (ii) The opinions in Dr. Harlow's expert reports are directed to whether the

differences between the claims of of the various Amgen patents would have been obvious in

Dockets.Justia.com

Case 1:05-cv-12237-WGY

Document 1195

Filed 09/28/2007

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light of the prior art. The only analyses that he performed at Roche's request and the only opinions within the scope of his retention by Roche dealt with these limited issues. In that obviousness-type double patenting is no longer a jury issue, any arguably admissible statements are irrelevant to the jury issues in this case and will only serve to confuse the jury. (iii) The statements that Amgen seeks to introduce are inadmissible hearsay.

Dr. Harlow resides within the subpoena power of this Court and Amgen has not shown that he is unavailable to testify in person. If Amgen wants to introduce Dr. Harlow's testimony during its case-in-chief, it should call Dr. Harlow live and Roche should be entitled to conduct "wideopen" cross-examination. (iv) If Amgen introduces Dr. Harlow's deposition testimony, Roche should be

permitted to conduct his cross-examination in person regarding obviousness-type double patenting of the patent claims in suit.

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Case 1:05-cv-12237-WGY

Document 1195

Filed 09/28/2007

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Dated: September 28, 2007 Boston, Massachusetts

Respectfully submitted, F. HOFFMANN-LA ROCHE LTD, ROCHE DIAGNOSTICS GMBH, and HOFFMANN-LA ROCHE INC. By their Attorneys /s/ Kimberly J. Seluga Lee Carl Bromberg (BBO# 058480) Robert L. Kann (BBO# 258025) Julia Huston (BBO# 562160) Keith E. Toms (BBO# 663369) Nicole A. Rizzo (BBO# 663853) Kimberly J. Seluga (BBO# 667655) BROMBERG & SUNSTEIN LLP 125 Summer Street Boston, MA 02110 Tel. [phone] [e-mail] Leora Ben-Ami (pro hac vice) Mark S. Popofsky (pro hac vice) Patricia A. Carson (pro hac vice) Thomas F. Fleming (pro hac vice) Howard S. Suh (pro hac vice) Peter Fratangelo (BBO# 639775) Vladimir Drozdoff (pro hac vice) David L. Cousineau (pro hac vice) KAYE SCHOLER LLP 425 Park Avenue New York, New York 10022 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). Pursuant to agreement of counsel dated September 9, 2007, paper copies will not be sent to those indicated as non registered participants. /s/ Kimberly J. Seluga Kimberly J. Seluga
03099/00501 748038.1

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