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

Filing 495

DECLARATION re #490 MOTION for Summary Judgment That The Claims Of Patents-In-Suit Are Invalid For Double Patenting Over Amgen 016 Patent of Kimberly J. Seluga by F. Hoffmann-LaRoche LTD, Roche Diagnostics GmbH, Hoffmann LaRoche Inc.. (Attachments: #1 Notice Of Filing With Clerks Office Of Exhibits to Declaration of Kimberly J. Seluga in support of Defendants Motion For Summary Judgment That The Claims Of Patents-In-Suit Are Invalid For Double Patenting Over Amgen 016 Patent)(Rizzo, Nicole)

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

Doc. 495

UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS AMGEN INC., Plaintiff, vs. F. HOFFMANN-LA ROCHE LTD; ROCHE DIAGNOSTICS GmbH; and HOFFMANN-LA ROCHE INC. Defendants. ) ) ) ) ) ) ) ) ) ) ) ) )

CIVIL ACTION No.: 05-CV-12237WGY

DECLARATION OF KIMBERLY J. SELUGA IN SUPPORT OF DEFENDANTS' MOTION FOR SUMMARY JUDGMENT THAT THE CLAIMS OF PATENTS-IN-SUIT ARE INVALID FOR DOUBLE PATENTING OVER AMGEN `016 PATENT I, Kimberly J. Seluga, declare under penalty of perjury that: 1. I am an attorney at the law firm of Bromberg & Sunstein LLP and am admitted to

the Bar of the Commonwealth of Massachusetts. I am counsel for Defendants in the abovereferenced case. 2. I make this declaration in support of the Defendants' Motion for Summary

Judgment that the Claims of Patents-in-Suit are Invalid for Double Patenting over Amgen `016 Patent. 3. Attached hereto as Exhibit A is a true and correct copy of U.S. Patent No.

5,441,868 ("the `868 patent"). 4. Attached hereto as Exhibit B is a true and correct copy of U.S. Patent No.

5,618,698 ("the `698 patent"). 5. Attached hereto as Exhibit C is a true and correct copy of U.S. Patent No.

5,756,349 ("the `349 patent").

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Attached hereto as Exhibit D is a true and correct copy of U.S. Patent No.

5,955,422 ("the `422 patent"). 7. Attached hereto as Exhibit E is a true and correct copy of U.S. Patent No.

5,547,933 ("the `933 patent"). 8. Attached hereto as Exhibit F is a true and correct copy of U.S. Patent No.

4,667,016 ("the `016 patent"). 9. Attached hereto as Exhibit G is a true and correct copy of U.S. Patent No. U.S.

Patent No. 4,703,008 ("the '008 patent"). 10. Attached hereto as Exhibit H is a true and correct copy of Amgen Inc. v. Chugai

Pharmaceutical Co. Ltd., 927 F.2d 1200, 18 U.S.P.Q.2d 1016 (Fed. Cir. 1991). 11. Attached hereto as Exhibit I is a true and correct copy of the Brief of Senior Party

Lin, Interference No. 102,097. 12. Attached hereto as Exhibit J is a true and correct copy of Fritsch v. Lin, 21

U.S.P.Q.2d 1739, 1991 WL 332571 (BPAI 1991) (Interference No. 102,097). 13. Attached hereto as Exhibit K are true and correct excerpts of the depositions of

Fu-Kuen Lin in: Fritsch v. Lin, at pages 205-210, 216, 217, 219, and 220, dated April 9, 1991; Amgen v. Chugai, at pages 107 and 108, dated August 15, 1989; and Amgen Inc. v. F. HoffmannLa Roche Ltd., at pages 62-65 and 365 to 368, dated March 28-29, 2007. 14. Attached hereto as Exhibit L is a true and correct copy of the `179 File History,

Paper 33, 1/31/94 Amendment. 15. Attached hereto as Exhibit M is a true and correct copy of the `178 File History,

Paper 19, 1/11/90 Amendment.

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16.

Attached hereto as Exhibit N is a true and correct copy of the Initial Expert

Report of Harvey F. Lodish, Ph.D., dated August 27, 2004. 17. Attached hereto as Exhibit O is a true and correct excerpt of the Manual of Patent

Examining Procedure § 804 (8th ed., Rev. 5, Aug. 2006). 18. Attached hereto as Exhibit P is a true and correct copy of 35 U.S.C.A. § 116

(Thomson/West 2007). 19. Attached hereto as Exhibit Q is a true and correct copy of the `179 File History,

Paper 34, 2/15/94 Office Action. 20. Attached hereto as Exhibit R is a true and correct excerpt of the deposition

testimony of Dr. Julian Davies in In the Matter of Certain Recombinant Erythropoietin (Investigation No. 337-TA-281), at pages 523-24, dated June 21, 1988. 21. Attached hereto as Exhibit S is a true and correct excerpt of the Expert Report of

Professor Randolph Wall, at pages 36-37, 42, and 47, dated November 9, 2000. 22. Attached hereto as Exhibit T is a true and correct copy of the `178 File History,

Paper 34, 12/29/93 Office Action. Executed this 7th day of June 2007 at Boston, Massachusetts.

/s/ Kimberly J. Seluga Kimberly J. Seluga

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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 (NEF) and paper copies will be sent to those indicated as non-registered participants on the June 12, 2007. /s/ Nicole A. Rizzo_____ Nicole A. Rizzo

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List of Exhibits Exhibit A Exhibit B Exhibit C Exhibit D Exhibit E Exhibit F Exhibit G Exhibit H Exhibit I Exhibit J Exhibit K U.S. Patent No. 5,441,868 U.S. Patent No. 5,618,698 U.S. Patent No. 5,756,349 U.S. Patent No. 5,955,422 U.S. Patent No. 5,547,933 U.S. Patent No. 4,667,016 U.S. Patent No. 4,703,008 Amgen Inc. v. Chugai Pharmaceutical Co. Ltd., 927 F.2d 1200, 18 U.S.P.Q.2d 1016 (Fed. Cir. 1991) Brief of Senior Party Lin, Interference No. 102,097 Fritsch v. Lin, 21 U.S.P.Q.2d 1739, 1991 WL 332571 (BPAI 1991) (Interference No. 102,097) Excerpts of the depositions of Fu-Kuen Lin in: Fritsch v. Lin, at pages 205-210, 216, 217, 219, and 220, dated April 9, 1991; Amgen v. Chugai, at pages 107 and 108, dated August 15, 1989; and Amgen Inc. v. F. Hoffmann-La Roche Ltd., at pages 62-65 and 365 to 368, dated March 28-29, 2007 `179 File History, Paper 33, 1/31/94 Amendment `178 File History, Paper 19, 1/11/90 Amendment Initial Expert Report of Harvey F. Lodish, Ph.D., dated August 27, 2004 Manual of Patent Examining Procedure § 804 (8th ed., Rev. 5, Aug. 2006) 35 U.S.C.A. § 116 (Thomson/West 2007) `179 File History, Paper 34, 2/15/94 Office Action Excerpt of the deposition testimony of Dr. Julian Davies in In the Matter of Certain Recombinant Erythropoietin (Investigation No. 337-TA-281), at pages 523-24, dated June 21, 1988

Exhibit L Exhibit M Exhibit N Exhibit O Exhibit P Exhibit Q Exhibit R

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Exhibit S Exhibit T

Excerpt of the Expert Report of Professor Randolph Wall, at pages 36-37, 42, and 47, dated November 9, 2000 `178 File History, Paper 34, 12/29/93 Office Action

03099/00501 681092.1

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