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

Filing 1288

MOTION in Limine to Preclude Testimony By Dr. Vladimir Torchilin Regarding Issues Pertaining Strictly to Invalidity by F. Hoffmann-LaRoche LTD, Roche Diagnostics GmbH, Hoffmann LaRoche Inc..(Fleming, Thomas)

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

Doc. 1288

Case 1:05-cv-12237-WGY

Document 1288

Filed 10/04/2007

Page 1 of 3

UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS AMGEN INC., Plaintiff, v. F. HOFFMANN-LA ROCHE, LTD, ROCHE DIAGNOSTICS GMBH, and HOFFMANN-LA ROCHE INC., Defendants. Civil Action No. 05-CV-12237 WGY

ROCHE'S MOTION IN LIMINE TO PRECLUDE TESTIMONY BY DR. VLADIMIR TORCHILIN REGARDING ISSUES PERTAINING STRICTLY TO INVALIDITY Amgen has indicated that it plans to call expert witness Dr. Vladimir Torchilin to testify during its case-in-chief for the infringement phase of the trial. The Court should preclude Dr. Torchilin from offering any testimony regarding the opinions set forth in his Second Expert Report of May 11, 2007 because it was submitted in rebuttal to Dr. Robert Langer's Expert Report of April 6, 2007 and solely pertains to Roche's invalidity defenses and other issues the Court mooted during the invalidity phase of the trial. (See D.I. 922 (granted Sept. 4, 2007)). Further, the Court should preclude his utilization of and reliance on various demonstratives concerning invalidity issues during his testimony. Pursuant to the parties' agreement, on Wednesday evening, October 3, 2007, Amgen disclosed demonstratives it intends to use in conjunction with the testimony of Dr. Torchilin. It is readily apparent from Amgen's evidentiary disclosure that it plans to have Dr. Torchilin offer opinions set forth in his Second Expert Report, which is directed only at rebutting Roche's invalidity defenses as explained by Dr. Langer. The Court's grant in part of Amgen's summary

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Case 1:05-cv-12237-WGY

Document 1288

Filed 10/04/2007

Page 2 of 3

judgment motion on section 112 validity issues rendered Dr. Langer's testimony on validity issues moot. (D.I. 531). Accordingly, the opinions discussed in Dr. Torchilin's rebuttal expert report, are no longer relevant. In this regard, Amgen has disclosed the following demonstratives, cited only in Dr. Torchilin's validity reports, as exhibits that Dr. Torchilin intends to use in his testimony on infringement: VT50, VT29, VT3, VT45, VT43, VT31, VT33, VT38, VT23, and VT12. Among other things, these exhibits purportedly address whether the Lin patents enable pegylation, and the state of the pegylation art in 1983 and 1984. These demonstratives, together with Dr. Torchilin's entire May 11 report, are completely irrelevant to infringement. As Amgen has already rested its affirmative case on invalidity, it is wholly inappropriate for Dr. Torchilin to backdoor validity evidence during this phase of trial. Such testimony is not timely and will only serve to confuse the jury and should be prohibited under Federal Rule of Evidence 403. Accordingly, the Court should grant Roche's motion in limine precluding Dr. Torchilin from offering any opinions or discussing demonstratives that are disclosed in his Second Expert Report on validity issues. CERTIFICATE PURSUANT TO LOCAL RULE 7.1 I certify that counsel for the parties have conferred in an attempt to resolve or narrow the issues presented by this motion and that no agreement was reached.

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Case 1:05-cv-12237-WGY

Document 1288

Filed 10/04/2007

Page 3 of 3

Dated: October 4, 2007 Boston, Massachusetts Respectfully submitted, F. HOFFMANN-LA ROCHE, LTD, ROCHE DIAGNOSTICS GMBH, and HOFFMANN-LA ROCHE INC. By their attorneys, /s/ Patricia A. Carson 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) Peter Fratangelo (BBO# 639775) KAYE SCHOLER LLP 425 Park Avenue New York, NY 10022 Tel: [phone] Lee Carl Bromberg (BBO# 058480) Timothy M. Murphy (BBO# 551926) Julia Huston (BBO# 562160) 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). Pursuant to agreement of counsel dated September 9, 2007, paper copies will not be sent to those indicated as non registered participants. /s/ Thomas F. Fleming Thomas F. Fleming

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