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

Filing 1420

MOTION in Limine Regarding Flavell No. 6: To Preclude Richard Flavell from Offering Opinions Based on a Claim Construction that is Inconsistent with the Court's Construction of '868 Claim Term "Isolated DNA Sequence Encoding Human Erythropoietin" by Amgen Inc..(Gottfried, Michael)

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

Doc. 1420

Case 1:05-cv-12237-WGY

Document 1420

Filed 10/15/2007

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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

AMGEN'S MOTION IN LIMINE REGARDING FLAVELL NO. 6: TO PRECLUDE RICHARD FLAVELL FROM OFFERING OPINIONS BASED ON A CLAIM CONSTRUCTION THAT IS INCONSISTENT WITH THE COURT'S CONSTRUCTION OF `868 CLAIM TERM "ISOLATED DNA SEQUENCE ENCODING HUMAN ERYTHROPOIETIN" The Court has construed the claim "cells transformed or transfected with an isolated DNA sequence encoding human erythropoietin" to mean: cells that have been genetically modified with isolated DNA containing genetic instructions for human erythropoietin or later generations of these cells that have inherited those instructions.1 In so ruling, the Court rejected Roche's argument that "purified" should be added to "isolated,"2 and recognized that it had construed "isolating" "as not requiring `in pure form.'"3 Having omitted the term "purified" from the construction, the Court's construction allows for, but does not require, that the "isolated" EPO DNA used to transfect the recited cells be "pure."
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Memorandum and Order, dated July 3, 2007, p. 30. See id. at 29 (Table). Id.

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Dockets.Justia.com

Case 1:05-cv-12237-WGY

Document 1420

Filed 10/15/2007

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Contrary to this construction, Roche' expert, Richard Flavell, premises his noninfringement opinion of the `868 claims on a construction that the "isolated" EPO DNA used to transform Roche' CHO cells must be isolated and purified: the cells Roche uses to create its epoetin beta reagent were not "transformed or transfected with an isolated DNA sequence encoding human erythropoietin." . . . [T]he cells used by Roche in the manufacture of CERA were not created using isolated and purified of DNA according to the claim limitation . . . .4 This opinion, however, is contrary to the Court's claim construction. It reads into the claim a limitation that does not exist. Moreover, it reads Dr. Lin's preferred embodiment out of the claims.5 Based on the foregoing, the Court should preclude Dr. Flavell from offering any opinion based on the improper construction of the term "an isolated DNA sequence encoding human erythropoietin." 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

Of Counsel: STUART L. WATT WENDY A. WHITEFORD MONIQUE L. CORDRAY
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5/11/07 Flavell Report at ¶73 (emphasis added). Excerpts from Dr. Flavell's May 11, 2007 Report referenced in this Motion are attached as Exhibit 2 to the Declaration Of Linda SasakiBaxley In Support Of Amgen's Motions Regarding The Testimony Of Richard Flavell, filed herewith.
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See TX 1 at Figure 4 and col. 25:30-25:37 (showing that human EPO DNA, mouse DHFR DNA, viral promoter DNA, plasmid DNA, and carrier DNA are inserted in the CHO cells of Example 10)

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Case 1:05-cv-12237-WGY

Document 1420

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DARRELL G. DOTSON KIMBERLIN L. MORLEY ERICA S. OLSON AMGEN INC. One Amgen Center Drive Thousand Oaks, CA 91320-1889 [phone]

Telephone: Facsimile:

[phone] [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]

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Case 1:05-cv-12237-WGY

Document 1420

Filed 10/15/2007

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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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