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

Filing 1307

Opposition re #1288 MOTION in Limine to Preclude Testimony By Dr. Vladimir Torchilin Regarding Issues Pertaining Strictly to Invalidity filed by Amgen Inc.. (Gottfried, Michael)

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

Doc. 1307

Case 1:05-cv-12237-WGY

Document 1307

Filed 10/04/2007

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

Civil Action No.: 05-CV-12237 WGY

AMGEN INC.'S OPPOSITION TO ROCHE'S MOTION IN LIMINE TO PRECLUDE TESTIMONY BY DR. VLADIMIR TORCHILIN REGARDING ISSUES PERTAINING STRICTLY TO INVALIDITY Despite its title, Roche's Motion in Limine to preclude Dr. Torchilin from providing testimony regarding issues pertaining strictly to invalidity, in fact, seeks much more. Roche attempts to preclude Dr. Torchilin from testifying on anything and everything mentioned in his Second Report, merely because the statements are contained in the report.1 Roche's motion would improperly and prejudicially preclude Dr. Torchilin from testifying with respect to information relevant to infringement contained in his First and Third Reports For matters of convenience, Dr. Torchilin incorporated by reference in his Third Report limited sections of his Second Report related to general principles of pegylation and pegylation technologies.2 This information is directly related to whether Roche's peg-EPO is materially
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Roche's motion states that "the Court should preclude Dr. Torchilin from offering any testimony regarding the opinions set forth in his Second Expert Report of May 1, 2007." 2 Paragraph 5 of Dr. Torchilin's Third Report states "I incorporate by reference into this report all of my First Expert Report and exhibits hereto, as well as paragraphs 10-29, 46-58, and 60-64 (and exhibits thereto) of my Second expert Report that discuss the state of the art of pegylation and technologies, as well as the demonstrative exhibits that are cited to in both Expert Reports. I reserve the right to use the documents and opinions of these paragraphs for any new issues or facts raised by Roche in support of its noninfringement positions that were not disclosed until May 11, 2007."
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PLAINTIFF'S OPP TO DEFT'S MIL TO EXCLUDE TESTIMONY PERTAINING STRICTLY TO INVALIDITY CIVIL ACTION NO. 1:05-cv-12237 WGY
Dockets.Justia.com

Case 1:05-cv-12237-WGY

Document 1307

Filed 10/04/2007

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changed from EPO. Dr. Torchilin should not be precluded from testifying on these issues merely because the information was contained in his Second Report as well as his Third Report. Roche also asks the Court to preclude Dr. Torchilin from using several demonstratives, including VT38, because they allegedly are cited only in his validity reports. Contrary to Roche's representations, demonstrative VT38 is a screen shot from an animation specifically referenced in paragraph 58 of Dr. Torchilin's First Report and explained in detail in that report.3 The animation is also incorporated by reference in paragraph 5 of Dr. Torchilin's Third Report.4 Demonstrative VT38 concerns comparing EPO to Roche's peg-EPO, an issue directly related to infringement. Dr. Torchilin should not be precluded from using VT38 in his testimony. CONCLUSION Pursuant to the foregoing, Amgen respectfully requests Roche's Motion in Limine To Preclude Testimony by Dr. Vladimir Torchilin Regarding Issues Pertaining Strictly to Invalidity be denied. DATED: October 4, 2007 Respectfully Submitted, AMGEN INC., /s/ Michael R. Gottfried 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]

Of Counsel: Stuart L. Watt Wendy A. Whiteford Monique L. Cordray Darrell G. Dotson Kimberlin L. Morley AMGEN INC. One Amgen Center Drive Thousand Oaks, CA 91320-1789 [phone]

Paragraph 58 of Dr. Torchilin's April 6, 2007 expert report states "Roche's attachment of a 30 kDa PEG molecule to the amino group at EPO's N-Terminus or at certain Lysines does not materially change the amino acid sequence, the secondary structure, the tertiary structure, or the carbohydrate structure of EPO. I have attached two animations to my report which show PEG attached to EPO, and a comparison of EPO to peg-EPO. (Exs. 136 and 137,01 8W A_O.mov; 014wa_l-h264.mov 4/3/2007.) These animations are representations of the general spatial behavior of PEG and EPO." 4 As mentioned above, paragraph 5 of Dr. Torchilin's Third Report states "I incorporate by reference into this report all of my First Expert Report and exhibits hereto."
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PLAINTIFF'S OPP TO DEFT'S MIL TO EXCLUDE TESTIMONY PERTAINING STRICTLY TO INVALIDITY CIVIL ACTION NO. 1:05-cv-12237 WGY

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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 G. 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]

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PLAINTIFF'S OPP TO DEFT'S MIL TO EXCLUDE TESTIMONY PERTAINING STRICTLY TO INVALIDITY CIVIL ACTION NO. 1:05-cv-12237 WGY

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

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