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

Filing 623

DECLARATION re #620 MOTION for Summary Judgment that Amgen is Estopped from Asserting Infringment Under the Doctrine of Equivalents of the Asserted Claims of the '933 and '422 Patents (by Keith E. Toms) by F. Hoffmann-LaRoche LTD, Roche Diagnostics GmbH, Hoffmann LaRoche Inc.. (Attachments: #1 Exhibit 1#2 Exhibit 2#3 Exhibit 3#4 Exhibit 4#5 Exhibit 5#6 Exhibit 6#7 Exhibit 7#8 Exhibit 8#9 Exhibit 9#10 Exhibit 10#11 Exhibit 11#12 Exhibit 12#13 Exhibit 13#14 Exhibit 14#15 Exhibit 15#16 Exhibit 16#17 Exhibit 17 (part 1 of 2)#18 Exhibit 17 (part 2 of 2)#19 Exhibit 18 (part 1 of 2)#20 Exhibit 18 (part 2 of 2)#21 Exhibit 19 (part 1 of 2)#22 Exhibit 19 (part 2 of 2)#23 Exhibit 20#24 Exhibit 21#25 Exhibit 22)(Toms, Keith)

Case 1:05-cv-12237-WGY

Document 623-24

Filed 07/03/2007

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Exhibit 20

UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS

AMGEN INC., )

YS. )
DEFENDANTS'

Plaintiff, ) CIVIL ACTION No.: 05-cv-12237WGY
) )

)

F. HOFFMANN-LA ROCHE LTD, ROCHE )
DIAGNOSTICS GmbH, AND HOFFMANN-LA )

ROCHE INC., )
)

Defendants. )
PLi\N'fIFF'S SUPPLEl\NTA:tItSPONSE T() FIRST SET OFIN'fRROGATORIES(NOS. 1-12)

Pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure ("FRCP"),

Plaintiff/Counter Defendant Amgen Inc. ("Amgen") hereby supplements its objections and
responsestoDefendants' First Set oflnterrogatories (Nos. 1-12).

PRELIMINARY STATEMENT
1. Amgen's responses to Defendants' First Set of Interrogatories are

niadeto the

best of Amgen's present knowledge, information and belief. Amgen's responses are subject to

amendment and supplementation should future investigation indicate that amendment or
supplementation is necessary. Amgen undertakes no obligation, however, to supplement or
amend these responses other than as required by the Federal Rules of Civil Procedure of the
Local Rules of the United States District Cour for the District of

Massachusetts.

2. Arrgeilsresponses to Defendants' First Set ofInterrogatoriesare made according
to infornationcurentIy in Aigen' s possession,

ci.stody and control.
of Interrogatories

3. To the extent

that Amgen responc:$ to Defendants' First Set

by

stating information that private, confidential, highly confidential, proprietary, trade secret or
otherwse protected from disclosure, Amgen will respond pursuant to the terms of the Protective
Order in this case.

PLTF'SSUPPL. RESPONSE TO FIRT SET OF INTERROGATORIES (1-12)
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related to Amgen's infringement contentions. Until such time as Amgen has received such
discovery, it canot provide a complete response to this interrogatory. In paricular, Amgen's
abilty to identify persons, documents, and things, including Roche's peg-EPO product, within

Roche's possession, custody or control that relate to the subject matter of this interrogatory is

limited by Roche's failure to provide complete responses to Amgen's outstanding discovery
requests. Amgen also objects that it canot provide a complete response

at this time because the

Cour has not yet constred an of the claim terms that Defendants may contest. Amgenfuher
objects to this interrogatory to the extent that it prematuely calls for the opinions of Amgen's
expert witnesses, which by the Court's order wil be provided in the form of report(s) on April
27, 2007. Amgen objects that the interrogatory is overly broad and unduly burdensome to

identify "all documents and things that support or otherwise refute Amgen' s response to this
interrogatory. "
Sllbject to and

without waiver of theseSpeci:fc Objections and General Objection set

forth above which ar.e incorporated herein by reference, and with

reservation of its right to

supplement or amend its response to this interrogatory afer the claims have been construed and
necessar discovery has been received, Amgen provides the follo\\'Íng response to this
interrogatory:

Amgen wil assert at tral that Roche has directly infrnged or will directly infringe the

following claims of the patents-in~suit: claims 1-2 of U.s. Patent NQ. 5,441,868 ("the '868
patent"); claims 4-9 of U.S. Patent of U.S. Patent No. 5,618,698 ("the.

'698 patent"); claim 7 of
U.S. Patent No. 5,955,422 ("the '422

U.S. Patent No. 5,756,349 ("the '349 patent"); claim 1 of

patent"); claims 3, 7-9, 11-12, and 14 of U.S. Patent No. 5,547,933 ("the '933 patent"); and

claims 3-4 and 6 of U.S. Patent No. 5,621,080 ("the '080 patent") (collectively "the Asserted
Claims").
Amgencontends that Defendants literally infringe each

and every one of the Asserted

Claims, with the sole exception of '080 claims 3-4 and 6. Asto those thee asserted claims of
the '080 patent, at the time Amgen fied its complaint, the '080 claims were

constred to literally

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encompass polypeptides having 166 amino acids and encompass within the doctrine of
equivalents polypeptides having the amino acid sequence of positions 1-165 of Figure 6. Since

Amgen's complaint was fied, the Federal Circuit limited the equivalents that could be covered
by the '080 claims. Ths issue has not been finally adjudicated. Roche has refused

to produce its

peg-EPO product and thus Amgen has been unble to fully characterize that product to determine
whether any of

Roche's peg-EPO product infringes the '080 claims literally or under the doctrine

of equivalents.

Based upon the Cour's prior claim construction orders \\'Íth respect to the patents-in-suit

and Amgen's proposed coritrctions, Amgen currently believes it will not be necessary to prove
infringement at trial under the doctrine ofequivaients with respect to

the remainder of the

Asserted Claims. However, if the Cour adopts a claim construction that would cause
Defendants' peg-EPO product or process to not lierally satisfy a limitation of the Asserted
Claims, Amgen wil prove at trial that Defendants' peg-EPO product or process satisfies such
limitation under the doctrine of equivalents because any differences between Defendants'

product and processes and the claimed products and processes are insubstantial.
Amgen fuher contends that Defendants have induced

or wil induce others to infrnge

each and every one oftle Asserted Clainis by making, using, sellng, offering to sell, or
importing Defendants'peg-EPO. Based upon.

the providedc:scoveryofRoche's actions to date,

Amgen does not currently contend that Defendants are liable for contrbutory infingement ofthe
Asserted Claims.

In response to Defendats' request that Amgen "explain in claim chart form, the

particular element or elements of each claim that Amgen contends are present in Roche's
accused product or processes for making the Roche

product and the constrction of each claim
attched hereto

element, Amgenincorporates by reference the char

as Exhbit A.

In response

to Defendants' request that Amgen "identify the person or persons likely to

have discoverable information regarding this interrogatory," Amgen identifies the following
persons:
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ITC OQ99.1Q45-080; AM-ITC 0099JOSi-o.S3;AM-ITCOl00492J-929;AM-HC 01006613-756;
AM-He 0100.6920-923; and AM-ITC 01007030-037.
Furer information relevant to the failure of the work of Goldwasser is set forth in the

published decisions regarding Dr. Lin's U.S. patents. The pleadings and Amgen's document
production from each of these actions, including Dr. LIn's testimony and that of other relevant
Amgen employees, have been provided to Roche in response to Roche's First Set of

Requests for

the Production of Documents and Things in the ITC proceeding.
SUPPLEMENTAL RESPONSE TO INTERROGATORY NO.

12

Subject to and without waiver of these Specific Objections and General Objection set

forth above which are incorporated herein by reference, and with reservation of its right to
supplement or amend its response to this interrogatory after the claims have been construed and

necessary discovery has been received, Amgen incorporates by reference its previous response
and provides the

following supplementa response to this interrogatory:
experiment did not demonstrate that Dr. Goldwasser's preparation
effective amoiitof human eryropoietin"

The Goldwasser

constituted a "therapeutically

because, for example, it

did not establish that

eryopoietin in Dr. Goldwasser's preparation as administered to the thee

human subjects caused an increase in hematocrit levels, erythocyte mass changes, reticulocyte
response, and/or ferrokinetic effects.

Februar 10, 2007
Of Counsel:

AMGEN INC.,
By itsattomeys,

Stu L. Watt Wendy A. Whteford

Monique L. Cordray Kimberlin
Darell Dotson

AMGEN INC. One Amgen Center Drive Thousand Oaks, CA 91320-l789
Telephone: [phone]

McDERMOTT WILL & EMERY 3150 Porter Drive Palo Alto, CA 94304
Telephone: [phone]
Facsimile: [phone]

wi~~e)
PLTF'SSUPPL.RESPONSE TO FIRST SETQFINTERROGATORIES (1-12)
CASE

D.DENNIS ALLEGRETTI (BBO#5455I 1)
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MIQHAELR. GOTTFRID (BBO#542156) DUAN MORRIS LLP 470 Atlantic Avenue, Suite 500 Boston, MA 02210
Telephones: [phone]
Facsimile: [phone]

LLOYD R. DAY, JR. (pro hac vice) DAVID M. MADRID (pro hac vice) LINDA A. BAXLEY (pro hac vice) DAY CASEBEER MADRID & .SATClILPER LLP
:4()300StevensQreç:kBoulevard,. Suite

400

Cupertino, CA.950 14 Tel~ph()ne: (4Q8)8'73-0i10
Facsimile: [phone]

MICHAEL F. BORUN (pro hac vice) KEVIN M. FLOWERS (pro hac vice) MARSHALL, GERSTEIN & BORUN LLP 233 South Wacker Drive 6300 Sears Tower Chicago IL 60606
Telephone: [phone]
Facsimile: [phone]

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No. 05-cv-12237WGY