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 Att. 5

Case 1:05-cv-12237-WGY

Document 320-6

Filed 03/15/2007

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EXHIBIT E

Dockets.Justia.com

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McDermott Emery
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Slrteglc amance will MWe: Chma I. Offce (Sh;;ngli)

Wiliam G. Gaede III

Attorney lit Ltw

wgaode(¡mw.com
650.813,SO~S

March 6, 2007
VIA FACSIM.lLE AN :E-MAIL
Patrcia A. Carson, Esq.

Thomas Flerrng, Esq. Kaye Scholer LLP 425 Park Avenue
New York, NY L0022~3598

Re; Amgen Inc. v. F. Hoffmann-La Ròche Ltd., et ali Case No. 05 Civ.12237 WGY
Dear Pat and Tom:

I write to follow up on our meet and confer on Februar 26 and to further address
Amgen's objections to paricular topics in Roche's First Rule 30(b)(6) Deposition Notice. I note
that in parcular, durg OUT meet and confer of today, Roche was unaware of a number of the

witnesses that Amgen had identit'.. and dates that had been offered in my letter to Tom of
March 1, 2007. Likewise, it seems that Tom disregarded the representations made by Pat during our meet and confer of last week that Roche would simply reserve on some topics, as discussed below. So the record is clear, we address topíc by topic the requested depositions.
· Topic 1

Roche stated that ths topic requires a witness on all characteriations relied upon (even if

not expressly referred to), discussed, or referred to in the Amgen EPO patent prosecution
histories or opposition proceedings in Europe.

Amgen canot prepare a witness to testify on characterizations that are not stated or
referred to anywhere in the prosecution hjstories or oppositions. Moreover, given the volume of

material (well over 120,000 pages) and the more than 20 years over which these varous
proceedings unolded the issue as framed is lacking reasonable paricularty.
As a compromise, Amgen has identified for you last night that it wil produce Dr. Strckland on the experiments he perfonned and declarations he submitted in the US prosecution
or opposition proceedigs. Further, Amgen proposes that Roche identify any other similar

specific documents tht Roche is interested in, and ifreasonable in volume and parcularity, Amgen wil fuer designate a witness on such topic.

0.$. prctce condUeli"lhrough McDermott Wil & Emerj LLP.

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Patricia A. Carson, Esq. Thomas Fleming, Esq. March 6, 2007
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· Topic 2
Roche stated durg our Februar 26 cal that the deposition of

2 would go a long way towar providig testimony on ths topic. Roche therefore opted to
this regard since our meet and confer of

Michael Boru on March

reserve testimony On tlrs topic for the tie being. We have not heard from you specifically in
Februar 26.
· Topic 3

Roche stated that it wants testimony on ths topic regarding all successful and failed
attempts, or alternative strategies, to express human EPO in any cell line with any constict up to 1995, excluding production ofEPO.

We do not l.derstand the relevance of such broad subject matter up to 1995 to the issues
in the case. We ar prepared to provide a deponent on the examples descnbed in the

specification of the Asserted Patents that relate to the expression of human EPO as Amgen can then prepare a witness to testify On that subject. Please confirm.
· Topic 4

With tbis topic Roche is seeking testimony on efforts by Amgen to express a glycoprotei prior to Januar 1~ 1985. We are prepared to provide a deponent on the examples described in the specification of the Asserted Patents that relate to the expression of human EPO as Amgen can rhen prepare a witness to testify on that subject. Pleae confim.
· Topic 5

Roche agreed that the subject matter of Amgen's non-ESA pegylated proteins are not at

issue under Judge Young's Janua 3, 2007 Order, and withdrew the topic in this regard.
However, Roche seeks a witness on the development of peg-EPO and peg-Aranesp, as well as any other ESA at any point in time.

Amgen does not agree that development of peg~Aresp or peg-ESAs (other than peg-

EPO) is relevant to any claim or defense in this case. Roche has not provided a cogent
explanation to the contrary. Nor has Roche provided a cogent explanation of the issues in ths
case on research and development ofpeg-EPO. Nonetheless, per the letter of

we offer Dr. Strckland to testify on peg-Epo subject matter. We are ascerting whether
another short deposition by another deponent in this area wil be requied, and if so, wil notify

Deborah Fishan,

you promptly.

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Patrcia A. Carson, Esq.

Thoma Flemig, Esq.
March 6, 2007
Page 3

· Topic 6

Roche is reauesting a witness on the contrbution of anyone to Lin's inventions. This topic inerently addresses Amgen's contentions with respect to conceptiòn and reduction to practice. Aigen has provided a detailed interrogatory response statig that Lin is the sole inventor and identifyng specific key dates. Such a contention deposition is improper under Roche's faiure to set forth jts Section 102 and 103 defenses. McCormack, parcularly in vjew of It bear emphasis that Amgen has already provided to Roche a detailed time lie of events that the Lin appHcations. See Amgen's Response tò Roche Interrogatory No. resulted in the filig of
3.

underlying facts he directed on the work disclosed in the specificãtion of

NoneIhe1ess, A.gen believes it will designte Dr. Lin on ths topic to djscuss the the Asserted Patents. the countr, and we

However, as discussed today and in my letter oflast week, Dr. Ljn is out of

canot at ths time confirm, but wil do so afer his retu
· Topic 7
This topic seeks testimony on the earliest effective fiing date of each of the assered
clai in Amgen's EPO patents, and surounding facts and circumstances. Roche acknowledged

on whether

that ths essentially is a contention deposition. Roche stated that it wants testiony

Amgen is going to deviate from the positions taken in the interferences and the bases therefore.
the patents in suít is presumed and it is Roche's burden to prove invalidity. Validity of To date, Roche has not disclosed the bases for its §§ 102 and 103 invalidity positions. Once Roche complies wíth its discovery obligations in ths regard, Amgen wil furter supplement its Response to Roche Interrogatory No.3.
· Topic 8

This topic addresses the relationship between Eugene Goldwasser and Amgen, including communcations and the tranfer, exchange, provision or supply ofino:nation, know-how, or
things between them, concerg eryhropoieti in several form, eryopoietin
Tadioimmunoassays, purfication methods, and antibodies. Roche stated that it williroit the tie
fre of

ths topic to prior to 1996.

last night, Dr. Strickland wil be providing testimony On ths topic. Amgen is CUJently ascertaining whether another deponent wil be requied as well to meet its obligation, and if so, WiliiOtify you promptly.
Per Deborah Fishman's letter of

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Thomas Fleming, Esq. March 6, 2007
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.. Topic 9
Roche acknowledged that Amgen has provided the characterition inormation sought

by tlús topic for EPOGENCI, but still seeks characterization information for AranesptI. Roche
indicated that it wil reconsider ths topic since it is gettg Amgen cell

lines. AIgen reiterated its position that chaacterzation information for AresptE is not relevant. Roche has not informed Amgen ofits reconsideration on ths issue, and we understand that arangements are
line to be trnsferred.
· Topic 10

being made for the cell

Topic 10 concerns any comparsons performed by or for Amgen on the active drg
product in AranesplI to any recombinant human eryopoieti. Roche stated its position that this topic is an injunction issue, waranting the broad scope. Argen disagrees, and as framed

wjl not provide a witness on this topic.
· Topic 11

Ths topic seeks facts and circumstances concerning the contention by Argen that Aranesp(ß or its active drug product is covered or falls with any claim of any patent in suit.
Roche stated tht it was entitled to test Amgen's supplemental interrogatory response on this

subject.
The issue is not relevant to the issues of

the Asserted Clais, and ths contention

deposition is improper. Amgen further has provided a response in the form of its Response to Roche Interrogatory No.8.
· Topic 12

With ths topic, Roche requests a witness on all facts and circumstances lrown to Aigen
supporting any Amgen contention that Roche has infrged the patents in suit. Roche stated that

ths topic is proper, as Amgen has asked for a deposition on the same subject.
Roche objected to Amgen's similar deposition topic and refued to provide a witness to

testify. Amgen previously provided a detaied interrogatory response on the snbject matter of this topic. Amgen will provide Helen Torley (March 20) as a witness on the underlyig non~ privileged and non-work product factual InOIDiation that resulted in Amgen filing suit. See also Topics 24 and 25, infra.

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· Topic 13
This topic concern al facts and circumstances known to Amgen that support any

contention that Amgen is entitled to seek injunctive relief againt Roche in this case. Roche

stated that ths topic is diected toward Amgen's business perspective on irreparable harm and why moneta damages are inufficient. Amgen views ths topic as overbroad and seekig a
contention deposition.
Amgen wil provide Helen Torley (previously identified to Roche), Joshua Ofian, and

either Mahesh Krishn or Rober Brenner as the deponents On rhs topic.
· Topic 14

Here Roche requests a witness on all facts and circumstaces known to Amgen
supportng any contention that Amgen is or may be entitled to daages, and details of such damages. Roche stated that it is eDtitled to a witness on Amgen's basis fOT not asserting damages, as well as what possible past daages :might be.

Agai Amgen has not claied damges andtms topic requires AmgeD to speculate about daages jt has not claimed. Amgen will not provide a witness on this topic.
· Topic 15

Topic 15 concerns markets and submarkets in the United States for ESA products, including Amgen's market share and competition with Amgen's ESA products. Roche agreed to limit the time frame of this topic to Januar 1, 2002 and later. Roche stated that it is not seeking testimony on the specifics of the AmgenlOrto agreement, but only on the general breakdown of sales into varous segments under the agreement. Roche does not require testimony on the the clinjcal oncology market. specifics of
Amgen has previously identified Jim Daly (March 27) as the deponent on this topic.
· Topic 16

This topic is addressed to actual or potential substitutes for ESA products for the treatment of anemia in ESRD patients and CKD patients. Roche agreed to limit the time franie oftms topic to Januar i, 2002 and later.

Argen previously identified Helen Torley (March 20) as the deponent on this topic.

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· Topic 17

This topic concerns factors used by Amgen to detemiine pnces for ESA products in the
U.S. Roche agreed to lit the time frame of

ths topic to Januar i, 2002 and later.

Amgen previously identified Fred Manak (March 23) as the deponent on tms subject.
· Topic 18

products in the U.S., the effect of

Roche seeks a witness on governent and private insurance reimbursement for ESA such reimbursement on Amgen sales and marketing strategies
new ESA products on reibursement. .
ths topic to Januar 1, 2002 and later.

for ESA products, and the potential consequences of Roche agreed to lit the tie frme of

Amgen previously identified Helen Torley a.s the deponent on ths topic. Amgen fuer
identifies Fred Manak (March 23), and Joshua O:fman on this topic.
· Topic 19

Aigen's busjness,and marketing plans and sale strategies for ESA products in the U.S. ths topic to Januar I, 2002 this topic. Roche agred to limt the time fre of and later. With respect to Amgen' s plans and strategies for the clirrcal oncology market, as
are the subject of

discussed, Amgen will provide testimon.y only on a high leveL.

Amgen previously identified Bob Aze1by as the deponent on this subject and Roche has requested a new deposition date other than the March 14th date that Anigen offered.
· Topic 20
Topic 20 concerns Amgen's analyses of consequences of

projected sale, market share, or other

the entr ofMIRCERATM into any U.S. market for ESA products. Roche

agreed to liit the time frame ofthis topic to Janua i, 2002 and later.

Amgen previously identified Bob Azelbyas the deponent On this subject and Roche has requested a new deposition date other than the March 14th date that Amgen offered.
· Topic 21

US. markets or Roche requests a witness on stnctue~ parameters, or charactenstics of submakets in which Neulastri£ or NeupogenCl is sold, including Amgen's market share, the new products. Argen agreed to provide a witness extent of competition, and barrers to entr of alleged bundling ofNeulastaCl or NeupogenaD with EPOGENaD on this topic as it relateS to any

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Thomas Flemg, Esq.
March 6, 2007
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and/or Aranesp~ in the Hospital segment. Roche stated that additjonal information on the

Neulasta(I or Neupogen(I markets is relevant. The pares did nor reach agreement on this

parcular issue.
Amgen previously identified Jim Daly (March 27) as the deponent on this subject
· Topic 22

This topic is directed to Amgen's plans, strtegies, or actions for contrcting with Health
Care Provider in US. markets Or submarkets for ESA products) including communcations with

such providers concerng actual or potential purchase ofMICERA TM or other potential market
entrants. Roche agreed to limt the i;me frame ofthis topic to Janua i, 2002 and later.

Amgen previously identified Helen Torley (March 20) On this subject.
· Topic 23

This topic seeks a witness on actual or contemplated linage in a contract or agreement
by Amgcn or discount on a non~ESA Amgen product to a cutomer's purchase of an ESA

product. Roche agreed to lit the tie frame of this topic to January 1 , 2002 and later. This topic is limited to contracts or agreements with Hospitals.

Amgen previously identified Fred Manak (March 23) on tils topic.
· Topics 24 and 25
Topic 24 concemS Argen',S basis for intituting and maÍtaing its case against Roche

before the ITC regardig MIRCERATM. Topic 25 concern Amgen's communications with

anyone, including an attorney, on which Amgen relies to show that its intent in institutig the lTC case against Roche was not an attempt to directly interere with Roche's business by using the proceedig as a competitive weapon. Roche staed that these topics seek a witness on
whether Amgen will use an advice of

counsel defense to Roche's allegation ofshåIlitigation,

which was dismìssed.

Helen Torley (March 20) 'Wll be the witness On these topics as it relates to non-privileged

facts as of the fiing date of the ITC Complait
· Topic 26
Ths topic requests a witness on Amgen's basis for asserting against Roche clai of

the

'080 patent related to the mature erythropoieti amino acid sequence. Roche stated that ths

topic is addressed to sham litigation, not inngement. Atligen's position is that its response and

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supplemental response to Roche's Interogatory No.1 is suffcient to address this contention
deposition topic.

· Topic 27

This topic is directed to Amgen's basis for asserting the '933 patent against Roche. Roche stated that this topic is addressed to sham litigation, not infrngement. Angen's position
is that this is a contention topic and not appropriate for a Rule 30(b)(6) deposition.

Amgen is willng to fuer suplement its reonse to Roche's Interrogatory No. i with
respec to the '933 patent.

· Topic 28
The subject of

this topic is Amgen's gross revenue and varable Or incrementa costs

associated with U.S. sales of any Amgen ESA product, and Atgen's calculations of its profits
on sales of any ESA product. Roche agree to limit the time frame of

this topic to Januar 1,

2004 to the present.
Amgen previously identified Phil Marinell (March 27) and Jeff

Parkhurt (March 30) on

ths topic.
· Topic 29

Topic 29 requests a witness On any communcations with anyone, including an atorney, that Amgen relies On to show it did not intend to mislead the PTO durng prosecution of the BPO patents or interference proceedngs. A.mgen relies on all of its communcations in response to the subject matter of this topic and as such, Aigen objects that the deposîtion topic as framed is
overbroad, vague and ambiguous, lacks reaonable parcularity and is an improper contention
deposition. We note also that Roche recntly

propounded an interrogatory on this issue.

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I look forward to resolving these issues as soon as possible.

Ver truy yours,

.i. ('~ i: _~" Ii & \.U.i11(;- ., (jr:l!t( C- . -, Ll n ~ \ '.¿ Uta
.,

Wiliam G. Gaede, III (trct' )

cc; Mike Gotted, Esq.
Krsta Carer, Esq.

Sandip H. Patel, Esq. Manvin Mayell, Esq.