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

Filing 734

DECLARATION re #733 MOTION to Strike Matters Raising Unpleaded Allegations Regarding Amgen's Motion for Summary Judgment of No Inequitable Conduct and to Strike Untimely Expert Testimony by Amgen Inc.. (Attachments: #1 Exhibit 1)(Gottfried, Michael)

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

Doc. 734 Att. 1

Case 1:05-cv-12237-WGY

Document 734-2

Filed 07/16/2007

Page 1 of 7

EXHIBIT 1

Dockets.Justia.com

Case 1:05-cv-12237-WGY

Document 734-2

Filed 07/16/2007

Page 2 of 7

USDC - Depo: Sofocleous, Michael 6/22/2007 8:50:00 AM

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 v.

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS ---------------X AMGEN, INC., Plaintiff, : : : : Case No. 05-12237 WGY

F. HOFFMAN-LA ROCHE LTD.,

ROCHE DIAGNOSTICS GmbH, and : HOFFMANN-LA ROCHE, INC. Defendants. ---------------X CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER Herndon, Virginia Friday, June 22, 2007 Videotape Deposition of MICHAEL SOFOCLEOUS, a witness herein, called for examination by counsel for Plaintiff in the above-entitled matter, the witness being duly sworn by SUSAN L. CIMINELLI, a Notary Public in and for the Commonwealth of Virginia, taken at the Hyatt Dulles, 2300 Dulles Corner Boulevard, Herndon, VA, at 8:50 a.m., and the proceedings being taken down by Stenotype by SUSAN L. CIMINELLI, CRR, RPR, and transcribed under her direction. : :

Amgen v. Roche

Page 1

Case 1:05-cv-12237-WGY

Document 734-2

Filed 07/16/2007

Page 3 of 7

USDC - Depo: Sofocleous, Michael 6/22/2007 8:50:00 AM

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25

APPEARANCES:

On behalf of the Plaintiff: CHRISTIAN E. MAMMEN, ESQ. ANDY H. CHAN, ESQ. Day Casebeer Madrid & Batchelder LLP 20300 Stevens Creek Blvd., Suite 400 Cupertino, CA 98014 [phone]

On behalf of the Defendant: THOMAS F. FLEMING, ESQ. DANIEL E. FORCHHEIMER, ESQ. Kaye Scholer LLP 425 Park Avenue New York, NY 10022-3598 [phone]

ALSO PRESENT: SALLY HOLTSLANDER ELLEN HEBERT, Videographer

Amgen v. Roche

Page 2

Case 1:05-cv-12237-WGY

Document 734-2

Filed 07/16/2007

Page 4 of 7

USDC - Depo: Sofocleous, Michael 6/22/2007 8:50:00 AM

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 WITNESS

CONTENTS EXAMINATION BY COUNSEL FOR PLAINTIFF 6, 266, 268 DEFENDANT By Mr. Fleming 261, 267

MICHAEL SOFOCLEOUS By Mr. Mammen

Afternoon Session - Page 130

EXHIBITS SOFOCLEOUS EXHIBIT NO. PAGE NO.

Exhibit 1 April 6, 2007 Sofocleous Expert Report 22 Exhibit 2 Curriculum Vitae, Sofocleous Exhibit 3 U.S. Patent 5,547,933 file history Exhibit 4 37 CFR Section 1.5 Exhibit 5 Patent 5,441,868 file history Exhibit 6 Patent 4,703,008 file history 77 101 115 43 58

Exhibit 7 Declaration of Michael Sofocleous in 158 support of Defendant's motion for summary judgment Exhibit 8 Fifth Edition Forward MPEP Exhibit 9 Fifth Edition Manual of Patent Examination Procedure 186 188

Amgen v. Roche

Page 3

Case 1:05-cv-12237-WGY

Document 734-2

Filed 07/16/2007

Page 5 of 7

USDC - Depo: Sofocleous, Michael 6/22/2007 8:50:00 AM

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25

totality of the circumstances. BY MR. MAMMEN: Q. Now, in your report, you expressed no

opinion as to whether there was any intent to deceive the patent office. Isn't that correct? MR. FLEMING: Objection. Mischaracterizes his report. Mischaracterizes his testimony. THE WITNESS: No. BY MR. MAMMEN: Q. Can you identify for me anywhere in your

report where you have opined that anyone intended to deceive the patent office? MR. FLEMING: Objection. Argumentative. THE WITNESS: I think that's a clear indication of my report. BY MR. MAMMEN: Q. Can you identify anywhere in the report

where you so state? MR. FLEMING: Objection. Argumentative. Asked and answered. THE WITNESS: It's clear from reading my report that there is sufficient evidence and sufficient facts upon which the judge can find intent to deceive. BY MR. MAMMEN:

Amgen v. Roche

Page 196

Case 1:05-cv-12237-WGY

Document 734-2

Filed 07/16/2007

Page 6 of 7

USDC - Depo: Sofocleous, Michael 6/22/2007 8:50:00 AM

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25

Q.

Do you use the words intent to deceive

anywhere in your report? MR. FLEMING: Objection. Vague. THE WITNESS: I think that's a clear implication of my report. BY MR. MAMMEN: Q. report? MR. FLEMING: Objection. Do you want him to read the report to find out? Or is this going to be a memory test? Because now you've asked it five times and he has answered your question so -MR. MAMMEN: He has not answered the question yet. MR. FLEMING: Maybe not to your liking, but he has answered it sufficiently. BY MR. MAMMEN: Q. What's your basis for -- to the extent you Do you use those words anywhere in your

offer any opinion as to intent, what's the basis for your opinion? A. I think the report sets out the facts upon

which the fact finder can conclude there is an intent to deceive. Q. Is whether or not someone intended to

deceive the patent office a matter of patent office

Amgen v. Roche

Page 197

Case 1:05-cv-12237-WGY

Document 734-2

Filed 07/16/2007

Page 7 of 7

USDC - Depo: Sofocleous, Michael 6/22/2007 8:50:00 AM

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25

policy or procedure? MR. FLEMING: Objection. Vague. Incomplete hypothetical. THE WITNESS: I think it would be included within patent office practice, provided the court would permit me to testify on it. BY MR. MAMMEN: Q. Is it your opinion that legal argument can

constitute a misrepresentation within the meaning of Rule 56? A. Q. Yes. What authorities do you rely on for that

proposition? A. Q. It's set forth in my report. Is it your opinion that characterizations

of references that are already before the examiner already -- strike that. Is it your opinion that characterizations of references already of record in the examination can constitute misrepresentation? MR. FLEMING: Objection. Vague. Incomplete hypothetical. THE WITNESS: Mischaracterization of references can constitute inequitable conduct. BY MR. MAMMEN:

Amgen v. Roche

Page 198