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

Filing 1417

MOTION in Limine Regarding Flavell No. 3: to Preclude Richard Flavell from Offering Opinions Based on a Claim Construction that is Inconsistent with the Court's Claim Construction of the '933 Patent Claim Term "Non-Naturally Occurring" by Amgen Inc..(Gottfried, Michael)

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

Doc. 1417

Case 1:05-cv-12237-WGY

Document 1417

Filed 10/15/2007

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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., a New Jersey Corporation, Defendants. ) ) ) ) ) ) ) ) ) ) ) ) )

Civil Action No. 05 CV 12237 WGY

AMGEN'S MOTION IN LIMINE REGARDING FLAVELL NO. 3: TO PRECLUDE RICHARD FLAVELL FROM OFFERING OPINIONS BASED ON A CLAIM CONSTRUCTION THAT IS INCONSISTENT WITH THE COURT'S CLAIM CONSTRUCTION OF THE `933 PATENT CLAIM TERM "NON-NATURALLY OCCURRING" As held by the Federal Circuit, the source limitation "non-naturally occurring" "only excludes human EPO from specific sources."1 Specifically, the term "limit[s] only the source from which the EPO is obtained, not the methods by which it is produced."2 Consistent with the affirmed construction of "non-naturally occurring," this Court's July 3, 2007 Markman Order construed "non-naturally occurring," as it appears in the asserted `933 claims, to mean "not occurring in nature."3 Contrary to this construction, Roche's expert, Richard Flavell, construes "non-naturally occurring" to require "that the claimed erythropoietin glycoprotein has a unique glycosylation patterns that differ from EPO

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Amgen Inc. v. Hoescht Marion Roussel, Inc., 314 F.3d 1313, 1329 (Fed. Cir. 2003). Id. at 1330 n.5. D.I. at 32. 1
Dockets.Justia.com

Case 1:05-cv-12237-WGY

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products that occur in nature such as urinary EPO and EPO derived from plasma."4 Based upon this false construction, Dr. Flavell then argues that Amgen has presented no reliable evidence that the epoetin beta in Roche's product differs in structure from either urinary EPO or plasma or serum EPO.5 Dr. Flavell's opinion improperly reads a structural limitation into "non-naturally occurring" that contradicts this Court's construction and improperly transforms that source limitation into a structural limitation. Dr. Flavell should not be permitted to present opinions at trial that ignore and contravene this Court's construction and this Court should preclude him from doing so. Based on the foregoing, Amgen requests that the Court preclude Dr. Flavell from offering any opinions based on the improper construction of the term "non-naturally occurring." Specifically, Dr. Flavell should be precluded from offering the opinions set forth at paragraphs 149-159 of his May 11, 2007 Report.

5/11/2007 Flavell Report, ¶ 149 (at p. 72). Excerpts from Dr. Flavell's May 11, 2007 Report referenced in this Motion are attached as Exhibit 2 to the Declaration Of Linda Sasaki-Baxley In Support Of Amgen's Motions Regarding The Testimony Of Richard Flavell, filed herewith. Dr. Flavell's assertion is patently false since Amgen has thoroughly demonstrated at trial that mammalian cell-produced EPO clearly differs in structure from naturallyoccurring sources. In addition, Dr. Flavell all but admits that his entire opinion is mere speculation by concluding that "For all anyone knows there may be other naturally occurring EPOs that are indistinguishable from epoetin beta..." Id. at ¶ 159 (at p. 78)
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Case 1:05-cv-12237-WGY

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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: [phone] Facsimile: [phone] LLOYD R. DAY, JR DAY CASEBEER MADRID & BATCHELDER LLP 20300 Stevens Creek Boulevard, Suite 400 Cupertino, CA 95014 Telephone: [phone] Facsimile: [phone] WILLIAM GAEDE III McDERMOTT WILL & EMERY 3150 Porter Drive Palo Alto, CA 94304 Telephone: [phone] Facsimile: [phone] KEVIN M. FLOWERS MARSHALL, GERSTEIN & BORUN LLP 233 South Wacker Drive 6300 Sears Tower Chicago IL 60606 Telephone: [phone] Facsimile: [phone]

Of Counsel: STUART L. WATT WENDY A. WHITEFORD MONIQUE L. CORDRAY DARRELL G. DOTSON KIMBERLIN L. MORLEY ERICA S. OLSON AMGEN INC. One Amgen Center Drive Thousand Oaks, CA 91320-1889 [phone]

(emphasis added). 3

Case 1:05-cv-12237-WGY

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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

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