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

Filing 320

MEMORANDUM in Support re #319 MOTION to Compel Deposition Testimony under Rule 30(b)(6) filed by F. Hoffmann-LaRoche LTD, Roche Diagnostics GmbH, Hoffmann LaRoche Inc.. (Attachments: #1 Exhibit A#2 Exhibit B#3 Exhibit C#4 Exhibit D#5 Exhibit E#6 Exhibit F#7 Exhibit G)(Huston, Julia)

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

Doc. 320

Case 1:05-cv-12237-WGY

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Filed 03/15/2007

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UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS
AMGEN INC.,
Plaintiff,
v.
) ) )

) Civil Action No.: 05 Civ. 12237 WGY
) ) ) ) ) )
)

F. HOFFMANN-LA ROCHE LTD, ROCHE DIAGNOSTICS GmbH, and HOFFMANLA ROCHE INC., Defendants.

MEMORADUM OF LAW IN SUPPORT OF DEFENDANTS' MOTION TO COMPEL DEPOSITION TESTIMONY UNDER RULE 30(b)(6)
Leora Ben-Ami (pro hac vice) Patrcia A. Carson (pro hac vice) Thomas F. Fleming (pro hac vice) Howard S. Suh (pro hac vice) Peter Fratangelo (BBO# 639775)
KA YE SCHOLER LLP

425 Park Avenue New York, New York 10022
TeL. [phone]

Lee Carl Bromberg (BBO# 058480) Julia Huston (BBO# 562160) Keith E. Toms (BBO# 663369) Nicole A. Rizzo (BBO# 663853)
BROMBERG & SUNSTEIN LLP

125 Sumer Street
Boston, MA 02110
TeL. [phone]
Counsel for

F HOFFMANN-LA ROCHE LTD, ROCHE DIAGNOSTICS GMBH, and HOFFMANN-LA ROCHE INe.

March 15 , 2007

Dockets.Justia.com

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I. INTRODUCTION
Roche respectfully asks that the Court compel Amgen to designate witnesses to
testify on topics 1-4, 6-10, and 26-27, as set forth in Roche's Rule 30(b)(6) deposition

notice.

Amgen is engaged in an inexcusable pattern of stonewalling behavior in an effort
to thwar Roche from obtaining relevant testimony on topics essential to Roche's defense.
Roche served its Rule 30(b)(6) notice on Februar 9, 2007, and to ths date, Amgen has

refused to definitively designate a competent witness for topics 1-4,6-10 and 26-27. In

some instances, Amgen has limited the testimony of its designated witnesses so as to
render the testimony useless to Roche's defense. Amgen's objections are unsupported in
fact and unfounded in law, as Roche's 30(b)(6) deposition notice lists topics that are

tailored to discover admissible evidence relevant both to Amgen's claims and Roche's
defenses and counterclaims. Amgen has sought no protective order, and its objections,
whatever their legitimacy, provide no proper basis for refusing to designate a competent
witness.
Amgen is well aware that the close of fact discovery, on April

2, 2007, is drawing

very near, and is using improper means to avoid giving complete testimony, and thus to
impair Roche's preparation of its expert reports and trial presentation.
Roche asks that the Cour see Amgen's behavior for what it is, an unjust attempt
to gain advantage, and order Amgen to provide witnesses knowledgeable on all

deposition topics identified by Roche.

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II. STATEMENT OF FACTS
Roche served its Rule 30(b)(6) notice on February 9, 2007, listing 29 topics for
which Amgen was to produce knowledgeable witnesses on February 27,2007. Ex. A.
In response, Amgen counsel Wiliam Gaede stated that Amgen would not produce

witnesses on February 27 due to its objections. Ex. B, 2/16/2007 letter. On Februar 23,
Amgen served its objections to Roche's 30(b)(6) notice. Ex. C. For staers, Amgen

declined to identify a witness on topics 1-10, 13, 15,25, and 29, offering only to "discuss
a reasonable and particularized scope that meets the requirements of Rule 30(b)( 6)" as a
condition

to providing a witness. With respect to topics 11-12, 14, 26, and 27, Amgen

was yet more obstrctionist, pointing to its interrogatory answers and its responses to
Roche's requests for admission as apparent substitutes for designating a witness. Id

In attempting to justify its refusal to cooperate, Amgen relied on boilerplate
allegations that Roche's topics were "overbroad," "unduly burdensome," and failed to

recite the subject matter with "reasonable particularty." See, e.g., Ex. C at 12. Amgen
fuher anounced that a number of topics sought contentions and were thus not suited to

30(b)(6) testimony. See, e.g., id at 13.

Focusing on the deposition topics at issue in this motion: Following a meet-and-

confer on February 26 and related correspondence, Amgen designated witnesses for

topics 1-8. Exs. D-G, letters from W. Gaede of 2/28, 3/6, 3/9 and 3/13. These
designations fall short of adequacy, in that Amgen imposes strict limitations on witness

testimony at its whim. For example, although Amgen admits that fuher information

exists with respect to topics 1 and 8, it refuses to designate any witness beyond Dr.
Thomas Strickland, and thereby limit testimony to the narow portion of those topics for

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which he possesses personal knowledge. (Ex. G, Gaede 3/13 letter) Similarly, with
respect to topics 6 and 7, Amgen offers a witness to discuss only a small fraction of the
topic, apparently corresponding to that witness's personal knowledge, instead of offering

witnesses whose collective knowledge addresses the entire topic. Id

As fuher ilustration, although topics 3 and 4 properly seek information

regarding Amgen's scientific endeavors related to the asserted patents, Amgen
unilaterally limits the proffered testimony to a narow subset of

that information. Id
with respect to topic

Similarly, Amgen unilaterally limits its proffered testimony

2. Here, Amgen offers a witness to testify with respect only to the "identity and general

role" of individuals involved in prosecution while refusing to offer any witness to address

Amgen's conflcting statements and contentions characterizing recombinant EPO made
throughout the prosecution of

its patents in the U.S. and abroad. i Id

Further, Amgen disputes the relevance of

topics 9 and 10 for seeking information

on Aranesp and refuses to provide a witness for either of these topics. In this Cour's

, order of Januar 3,2007, the Cour accepted Amgen's compromise position with respect

to Aranesp, which required production of documents relating to the structue, activity,
method of production and method of use of Aranesp, plus documents related to whether

Aranesp is covered by Amgen's asserted patents and by Amgen's requested injunctive
relief, among other things. See Amgen's Opposition to Roche's Motion to Compel of

Dec. 29, 2006 (D.N. 201), at page 12, and Jan. 3, 2007 Order on Roche's Motion to
CompeL.

i Roche also believes that testimony on topic 5 should not be limited to PEG-EPO as

insisted by Amgen. This issue wil be the subject of a separate motion.

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Topics 9 and 10 fall squarely within these areas of inquiry that the Cour has
already ordered. For example, topic 9,seeks, inter alia, characterization of

the active drg

substace in Aranesp. This is clearly a 30(b)( 6) topic that falls within the Cour's order

that Amgen produce documents related to the strctue, activity, method of production

and method of use of Aranesp, which Amgen itself acknowledged was relevant and

agreed to produce related documents. Topic 10, in tu, seeks a witness on any
comparisons of the active drug substance in Aranesp to recombinant human

erythropoietin or other ESAs including Roche's accused product. This is clearly relevant

to the structue, activity, method of production and method of use of Aranesp, and to
Amgen's request for injunctive relief agaist Roche's accused product, also ordered by

the Cour to be produced in the January 3 order. In light of this Cour's order accepting
Amgen's position on Aranesp, which Amgen is apparently now trying to change, Roche

believes that ths issue is settled and that it is entitled to the full scope of testimony
requested by Topics 9 and 10.

In addition to refusing to produce a witness to testify with respect to topics 9 and
10, Amgen refuses to provide any witness for topics 26 and 27. These topics, which

seek the basis for Amgen's assertion of certain claims, are relevant to Roche's sham
litigation claims. For these, Amgen suggests, untenably, that its interrogatory answers or

responses to requests for admission are valid substitutes for live testimony. Ex. E at 4
and 7-8.

Amgen's correspondence (Exs. D-G) represents a campaign of niggling
concessions calculated to offer Roche only a fraction of the testimony to

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which it is entitled. Without the Cour's intervention, Amgen's conduct will prevent
Roche from completing proper discovery before the April 2 deadline.

The close of fact discovery, on April 2, Is fast approaching. Roche needs the
testimony from Amgen's designated witness in order to prepare its expert witnesses in
time for expert discovery and to prepare for tral.

III. ARGUMENT
A. ÁMGEN is REQUIRED TO PRODUCE WITNESSES KNOWLEDGEABLE ON
EACH OF ROCHE'S DEPOSITION Topics

Amgen's refusal to produce knowledgeable witnesses on all topics listed by
Roche is a violation of its obligations to make a "conscientious, good faith effort to
designate knowledgeable persons for Rule 30(b)(6) depositions and to prepare them to

fully and unevasively answer questions about the designated subject matter." Starlight
Intl Inc. v.Herlihy, 186 F.R.D. 626, 639 (D. Kan. 1999).

Furer, the scope of discovery is limited only by Fed. R. Civ. P. 26(b)(1), which

states that a par "may obtain discovery regarding any matter, not privileged, that is

relevant to the claim or defense of any pary," and that such relevant inormation "need
not be admissible at the trial if the discovery appears reasonably calculated to lead to the
discovery of

admissible evidence." Fed. R. Civ. P. 26(b)(1).

Because Amgen has, one month afer receiving its notice of 30(b)(6) deposition,
stil

not designated witnesses for all listed topics (see, e.g., Ex. Gat 4-5, re topics 9 and

10, and Ex. C at 20-21 re topics 26-27), it has failed to meet its requirement under the
rule, and is subject to a motion to 'compel discovery and possible sanctions under Rule

37(a)(2)(B). Amgen canot, as it has done here, use its objections as an excuse to evade
its responsibilities to designate a witness.

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Furer, Amgen's attempts to impose testimonial limits are likewise a breach of

Rule 30(b)(6). In re Brand Name Prescription Drugs Antitrust Litig., No. 94 C 897, 1998

WL 808989, *2-3 (N.D. IlL. Nov. 17, 1998) (granting motion to compel where plaintiff

unlaterally limited scope of 30(b )(6) inquiries). Amgen canot decide for itself how it
will answer Roche's topics, as it has done here. See, e.g., Ex. Eat 2 (attempting to limit
the designation on topic 5 to testimony concernngpegylated EPO).

B. AMGEN'S OBJECTIONS ARE BASELESS AND ARE AN ILLEGITIMATE MEANS TO AVOID DESIGNATING WITNESSES

Amgen's objections to the deposition topics, which are largely repeated from

topic to topic with little varation or support, are not supported by the facts and canot be
used to justify its continued evasion and delay.
1. ROCHE'S DEPOSITION Topics AR STATED WITH PARTICULARTY AND TAILORED TO ELICIT RELEVANT EVIDENCE

Amgen has used a blanet objection to almost every topic as "overbroad, vague

and ambiguous" and as "failng to recite with reasonable paricularity the subject matter
on which the witness is being asked to testify." See, e.g., Ex. Cat 8. Such objections are

themselves vague, and do not state with specificity what is objectionable or what har
would arise if Amgen had to answer such questions. See Doe v. Dist. of Columbia, 230

F.RD. 47, 52 (D.n.c. 2005) (denying motion for protective order on the basis of
overbreadth because movant stated no good cause, e.g., what har would come from
allowing the topic).

Amgen's objections to topic 10, for example, are not made with any specificity as

, to what is objectionable. Whle this topic, seekig evidence of comparative experimental

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studies of Amgen, is extensive, it is painstakingly detailed as to its subject matter. Ex. C

at 12-13. There is no doubt as to the intended subject matter, and Amgen's rote
invocation of

"reasonable paricularity" rings very hollow.

Furher, all of

Roche's topics are designed to elicit relevant, admissible evidence.

For example, topic 1 is targeted, with great detail, to address the validity and
enforceabilty of Amgen's United States patents. Ex. Cat 5-6. Roche is allowed

discovery into "any matter, not privileged, that is relevant to the claim or defense of any
pary." Fed. R Civ. P. 26(b)(1). Thus, Amgen's contentions that Roche's topics are

"overbroad" mean little, in the absence of explanation as to why Roche's topics lack
relevance or would overburden Amgen.
2. ROCHE'S DEPOSITION Topics SEEK

FACTS BEHIND AMGEN'S CAUSES OF ACTION, NOT AMGEN'S LEGAL CONTENTIONS

Roche's deposition notice seeks facts from fact witnesses, and does not entail any

inquiry into Amgen's contentions, contrary to Amgen's common refrain, made without

any specificity, that the deposition topics seek "contentions that are not properly the
subject of Rule 30(b)(6) deposition testimony." See, e.g., Ex. C at 13 (objections to

topics No. 10 and 11).
There is nothg improper about Roche seeking deposition testimony on facts

underlying the plaintiff s case, even if similar discovery could be found using other

means. Security Ins. Co. v. Trustmark Ins. Co., 218 F.RD. 29, 34 (D. Conn. 2003)
("(N)othing precludes a deposition either in lieu of or in conjunction with (contention)

interrogatories."). Amgen is in no position to opine on the appropriateness of 30(b)(6)
depositions versus, say, contention interrogatories. There is no doubt that deposition

questions can properly elicit factual testimony, even if such testimony may support a

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paricular legal conclusion. Protective Natl Ins. Co. v. Commonwealth Ins. Co., 137

F.RD. 267, 282 (D; Neb. 1989) (finding that an accountat can adequately testify on
facts known to accountants, even if such facts lead to a legal conclusion); similarly, u.s.
E.E.o.e. v. Caesars Entertainment, Inc., 237 F.RD. 428, 434-35 (D. Nev. 2006) (where

deposition topics cover facts underlying claims and do not inherently call for privileged
information, deposition is a proper means).

By the same token, where the facts sought by Roche's deposition notice can be

elicited from scientists and other Amgen employees with no legal training, the Rule
3 O(b )( 6) deposition is an appropriate discovery tool that cannot be disabled by boilerplate

reference to contentions.
Roche's notice II reality seeks only facts underlying Amgen's claims, not

Amgen's contentions. For example, topic 10, seeking information on comparisons

between two products, can be answered by Amgen researchers and developers without an

understading of Amgen's contentions. Ex. C at 12. Even where a legal contention of

Amgen is implicated, the deposition topics seek only related facts that are known to
Amgen personneL. Ex. Cat 20 (seeking, in topic 26, facts underlying Amgen's assertion

of the '080 patent claims. As such, it is not necessary for such answers to be drafted by
attorneys, nor do such topics threaten to impinge upon Amgen's attorney-client
privileged or work product-protected information.
C. ÁMGEN'S CONTINUED STONEWALLING IN DESIGNATING 30(B)(6) WITNESSES HAs PREJUDICED ROCHE

Amgen is well aware that discovery closes on April 2, 2007. Roche must have
testimony from Amgen in order to adequately prepare its experts, prepare any sumar

judgment motions that may be appropriate, and prepare its case for triaL. Because of

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Amgen's non-compliance with its obligations, Roche is deprived of

essential information.

Facts relating to the earliest effective fiing date for the asserted patent claims, as outlined
in topic 7, is but one of many examples.

Amgen may claim that its objections to the testimony sought by Roche are
legitimate. If Amgen genuinely believed the scope of discovery was ilegitimate, it could

have procured a protective order limiting the scope of its testimony and proceeded with
the deposition subject to such an order. Amgen's failure to do this suggests that it has no
tre basis for resisting discovery, and that Amgen's conduct is calculated, for tactical

reasons, to foil Roche's legitimate discovery objectives.

Regardless of Amgen's motives, its actions have severely impeded Roche's

attempts to support its defenses and counterclaims, A motion to compel Amgen to
designate its witnesses is amply justified under these circumstances.

iv. CONCLUSION
For the reasons set forth above, the Cour should order Amgen to designate
witnesses for Roche's deposition topics 1-4, 6-10 and 26-27, and to fuly prepare said
witnesses as requested in Roche's Rule 3 O(b )( 6) deposition notice.

Dated: March 15,2007 Boston, Massachusetts

Respectfully submitted,

F. HOFFMANN-LA ROCHE LTD, ROCHE DIAGNOSTICS GMBH,

and HOFFMA-LA ROCHE INC.
By its attorneys,

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Isl Julia Huston Lee Carl Bromberg (BBO# 058480) 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]

ktomS(fbromsun.com
Leora Ben-Ami (pro hac vice) Patricia A. Carson (pro hac vice)
Thomas F. Fleming (pro hac vice)

Howard S. Suh (pro hac vice)
Peter Fratagelo (BBO# 639775)
KA YE SCHOLER LLP

425 Park Avenue

New York, New York 10022
TeL. [phone]

CERTIFICATE OF SERVICE

electronically to the registered paricipants as identified on the Notice of

I hereby certify that this document filed though the ECF system will be sent Electronic Filng (NEF) and paper copies will be sent to those indicated as non registered paricipants on

the above date.

Isl Julia Huston
3099/501 635489

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