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

Filing 1411

MOTION in Limine to Preclude Roche's Expert Dr. Klibanov From Offering Opinions Based On A Construction That Is Inconsistent With The Court's Claim Construction Of The Claim Term "Human Erythropoietin" by Amgen Inc..(Gottfried, Michael)

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Amgen Inc. v. F. Hoffmann-LaRoche LTD et al Doc. 1411 Case 1:05-cv-12237-WGY Document 1411 Filed 10/15/2007 Page 1 of 4 UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS ) ) ) Plaintiff, ) v. ) ) ) F. HOFFMANN-LAROCHE LTD., a Swiss Company, ROCHE DIAGNOSTICS ) ) GMBH, a German Company, and ) HOFFMANN LAROCHE INC., a New ) Jersey Corporation, ) ) Defendants. AMGEN, INC., Civil Action No. 05 CV 12237 WGY MOTION IN LIMINE TO PRECLUDE ROCHE'S EXPERT DR. KLIBANOV FROM OFFERING OPINIONS BASED ON A CONSTRUCTION THAT IS INCONSISTENT WITH THE COURT'S CLAIM CONSTRUCTION OF THE CLAIM TERM "HUMAN ERYTHROPOIETIN" Dr. Klibanov asserts that Roche's CERA product does not infringe the asserted claims of the `933 patent because the EPO in CERA has 165 amino acids rather than 166 amino acids.1 However, Dr. Klibanov's opinion is based upon an improper construction of "non-naturally occurring glycoprotein product," as further limited by the term "DNA sequence encoding human erythropoietin." The `933 claims are product-by-process claims that define the product by a "DNA sequence encoding human erythropoietin" used to make such products: "A non-naturally occurring glycoprotein product of the expression in a mammalian host cell of an exogenous DNA sequence comprising a DNA sequence encoding human erythropoietin": a glycoprotein (not occurring in nature) that is the product of the expression [wherein expression means that the glycoprotein was produced in a cell and recovered from the cell culture] in a mammalian host cell of a DNA sequence that does not originate in the genome of 1 Rebuttal Expert Report of Professor Alexander M. Klibanov, dated May 11, 2007, ¶¶ 259-260. 814932 Dockets.Justia.com Case 1:05-cv-12237-WGY Document 1411 Filed 10/15/2007 Page 2 of 4 the host, and which contains the genetic instructions (or a DNA sequence) encoding human erythropoietin. As set forth in this Court's Markman Memorandum and Order, dated July 3, 2007 ("Markman Order"), "human erythropoietin" means "a protein having the amino acid sequence of human EPO, such as the amino acid sequence of EPO isolated from human urine." Nothing in the claim or the Court's construction of "non-naturally occurring glycoprotein" or "DNA sequence encoding human erythropoietin" refers to a 166 amino acid glycoprotein. Indeed, regarding "human erythropoietin," the Court specifically made plain at trial that its construction "doesn't say anything about 165 or 166. It says what it says."2 Accordingly, this Court should exclude Dr. Klibanov's opinion that CERA does not infringe the `933 patent claims on the grounds that it contains "a 165 amino acid residue,"3 and by this motion, Amgen respectfully requests that the Court preclude Dr. Klibanov from offering any opinion based on the improper construction the claims of the `933 patent. Dated: October 15, 2007 Respectfully Submitted, AMGEN INC., By its attorneys, /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: (857) 488-4200 Facsimile: (857) 488-4201 Of Counsel: STUART L. WATT WENDY A. WHITEFORD MONIQUE L. CORDRAY DARRELL G. DOTSON KIMBERLIN L. MORLEY 2 3 9/24/07 Tr. at 1237:5-7. Rebuttal Expert Report of Professor Alexander M. Klibanov, dated May 11, 2007, ¶260. 2 814932 Case 1:05-cv-12237-WGY Document 1411 Filed 10/15/2007 Page 3 of 4 ERICA S. OLSON AMGEN INC. One Amgen Center Drive Thousand Oaks, CA 91320-1889 (805) 447-5000 LLOYD R. DAY, JR DAY CASEBEER MADRID & BATCHELDER LLP 20300 Stevens Creek Boulevard, Suite 400 Cupertino, CA 95014 Telephone: (408) 873-0110 Facsimile: (408) 873-0220 WILLIAM GAEDE III McDERMOTT WILL & EMERY 3150 Porter Drive Palo Alto, CA 94304 Telephone: (650) 813-5000 Facsimile: (650) 813-5100 KEVIN M. FLOWERS MARSHALL, GERSTEIN & BORUN LLP 233 South Wacker Drive 6300 Sears Tower Chicago IL 60606 Telephone: (312) 474-6300 Facsimile: (312) 474-0448 3 814932 Case 1:05-cv-12237-WGY Document 1411 Filed 10/15/2007 Page 4 of 4 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 no agreement was reached. /s/ Michael R. Gottfried Michael R. Gottfried 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 October 15, 2007. /s/ Michael R. Gottfried Michael R. Gottfried 4 814932

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