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

Filing 497

MEMORANDUM in Support re #496 MOTION to Compel Continued Deposition Of Michael Borun 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#8 Exhibit H#9 Exhibit I)(Rizzo, Nicole)

RESTRICTED ACCESS - CONTAINS CONFIDENTIAL/PRIVILEGED INFORMTION

mentioned were practicaL.

49

In the course of providmg trial testimony, Boro disclosed Amgen's strategic decisions

Ex. 2, Amgen

not to correct data in the patent application.

Prosecution Strategy I Mr. Boro revealed a non-privileged fact. Patentability v. Hoechst Tr. Mr. Boro disclosed the fact that he leared in1990 Trans. VoL 21, the hexose and 1991 that the 1984 submission of 2854-60 value of the recombinant produce was probably
wrong and that the 1984 submission of

Case 1:05-cv-12237-WGY

the fucose

value for the recombinant and the urinar product was probably wrong.

Document 497-3

Mr. Boro explained generally that "the reason for filing the continuing application is to reserve the original filing date." Mr. Boro disclosed the fact that "at the original filing date (1984) there was no knowledge that this information was wrong."
Amgen v. Hoechst Tr. Trans. VoL. 21, p. 2856, 11.1821.

50

Boro's testimony in the Cour of

Prosecution Strategy

Mr. Boron revealed a non-privileged fact.
He disclosed the fact that he leared of

Ex. 4, Hoechst v. KirinAmgen Tr.
Trans., 450

Patentabilty
value years later.

Filed 06/13/2007

Chancery proceedings in the U.K. disclosed data analysis and strategic considerations in evaluating the results of experiments and presenting data.

the incorrect

Page 1 of 2

"We knew we could not rely on it if you are referrng to the carbohydrate data. We knew we would not rely on the hexose value to establish a difference because there was a question about the validity. It was just a bad
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Moreover, Amgen disclosed the incorrect data to the Board (addressed in the Board's written decision) and considered by the examiner (after he reviewed the Board's decision), and also disclosed in the Fritsch v. Un Interference. See Amgen's Opposition at 16.

EXHIBIT B

MPK 124468-2.041925.0023

RESTRICTED ACCESS - CONTAINS CONFIDENTIAL/PRIVILEGED INFORMATION

experiment. There was too much material out rather than came in. We certainly did not want to rely on the data reflecting fucose content. There the data was wrong both with respect to unnary and recombinant EPO.

Case 1:05-cv-12237-WGY

That was completely missed on 0-

glycosylation. That was not the difference. We would not have relied on it in any event. o and 0 are the same, not different. We could not rely on the hexose."
Ex. 3, Amgen
v. Hoechst

51

Boro disclosed the subject matter of information that Dr. Lin and his co- workers,
Dep. Trans., 63-64

Prosecution Strategy I Mr. Boron described the subject matter involved in

including Dr. Smallng and Dr. Egre, provided him for inclusion in Example LO of

the communications without revealing the actual contents of the privileged communications itself.

Document 497-3

the '933 patent.

He identified (1) who he communicated with (Dr. Lm and Dr. Lin's coworkers); and (2) the general the communcations (re example subject matter of
10 of the '933 patent).

Mr. Boro did not disclose the actual contents of
any privileged communcation

Filed 06/13/2007

52
v. Hoechst

Ex. 3, Amgen

Prosecution Strategy \ Mr. Boron descnbed the subjectmatter involved in
Inventorslup the communcations without revealing the actual

Dep. Trans.,
65

Boro disclosed that he received information from Dr. Browne and possibly Mr. Smallng regarding COS and CHO cell expression, he may have received information from Dr. Egre regarding assay values, characterization of recombinant products and he received information from Dr. Lai

contents of the privileged communications itself.

Page 2 of 2 He identified (1) who he communicated with (Dr. Browne and possibly Mr. Smallmg) and (2) the the communication (COS general subject matter of and CHO cell expression).

concerning purfication.

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MPK 124468-2.041925.0023