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

Filing 851

MOTION in Limine No. 11: Exclude the 1986 Lai et al. Paper (Roche Trial Exh. 501] Because it is Not Prior Art by Amgen Inc..(Gottfried, Michael)

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

Doc. 851

UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS AMGEN, INC., ) ) Plaintiff, ) ) v. ) ) F. HOFFMANN-LAROCHE LTD., ) a Swiss Company, ROCHE DIAGNOSTICS ) ) GMBH, a German Company, and HOFFMANN LAROCHE INC., a New ) Jersey Corporation, ) ) Defendants. )

Civil Action No. 05 CV 12237 WGY

PLAINTIFF AMGEN'S MOTION IN LIMINE NO. 11: EXCLUDE THE 1986 LAI ET AL. PAPER [ROCHE TRIAL EXH. 501] BECAUSE IT IS NOT PRIOR ART Pursuant to FRE 402 and 403, Plaintiff Amgen Inc. ("Amgen") requests that this Court preclude Defendants F. Hoffmann-La Roche Ltd., Roche Diagnostics GmbH, and Hoffmann-La Roche Inc. (collectively "Roche") from offering as evidence at trial Roche Trial Exhibit No. 501, Lai et al., "Structural Characterization of Human Erythropoietin," J. Biol. Chem. (1986) 261(7):3116-21 ("the 1986 Lai et al. paper"), and any testimony referring or relating to the experiments or results reported in that paper. The 1986 Lai et al. paper was submitted for publication over one and one-half years (and was published over two years) after Dr. Lin filed his first patent application (December 13, 1983), and almost one year after Dr. Lin filed his last application (November 30, 1984). Consequently, the 1986 Lai et al. paper does not qualify as prior art under 35 U.S.C. §§ 102 or 103, and should be excluded as irrelevant under FRE 402. The 1986 Lai et al. paper is also not probative of the level of skill in the art in 1983 or 1984 since it relies on technology, including Dr. Lin's invention, that was not available to one of

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ordinary skill in the art in 1983 or 1984. Therefore, it cannot be probative of what one of ordinary skill in the art in 1983-84 would have reasonably expected to accomplish. Admitting the 1986 Lai et al. paper into evidence will unfairly prejudice the jury's consideration of the prior art and state of the art of protein sequencing in 1983-84. Accordingly, the 1986 Lai et al. paper should be excluded from evidence pursuant to FRE 403. In support of this motion, Amgen submits a brief with an accompanying declaration and exhibit thereto. .

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Respectfully Submitted, Date: August 21, 2007 AMGEN INC., By its attorneys, /s/ Michael R. Gottfried D. DENNIS ALLEGRETTI (BBO#545511) MICHAEL R. GOTTFRIED (BBO#542156) PATRICIA R. RICH (BBO#640578) DUANE MORRIS LLP 470 Atlantic Avenue, Suite 500 Boston, MA 02210 Telephone: [phone] Facsimile: [phone] LLOYD R. DAY, JR. (pro hac vice) DAY CASEBEER MADRID & BATCHELDER LLP 20300 Stevens Creek Boulevard, Suite 400 Cupertino, CA 95014 Telephone: [phone] Facsimile: [phone] WILLIAM GAEDE III (pro hac vice) McDERMOTT WILL & EMERY 3150 Porter Drive Palo Alto, CA 94304 Telephone: [phone] Facsimile: [phone] KEVIN M. FLOWERS (pro hac vice) MARSHALL, GERSTEIN & BORUN LLP 233 South Wacker Drive 6300 Sears Tower Chicago IL 60606 Telephone: [phone] Facsimile: [phone]

Of Counsel: STUART L. WATT WENDY A. WHITEFORD MONIQUE L. CORDRAY DARRELL G. DOTSON KIMBERLIN L. MORLEY ERICA S. OLSON AMGEN INC. One Amgen Center Drive Thousand Oaks, CA 91320-1789 [phone]

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CERTIFICATE PURSUANT TO LOCAL RULE 7.1 I certify that counsel for the parties have conferred in an attempt to resolve or narrow the issues presented by this motion and no agreement was reached. /s/ Michael R. Gottfried Michael R. Gottfried

CERTIFICATE OF SERVICE I hereby certify that this document filed through the Electronic Case Filing (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 nonregistered participants, on the above date. /s/ Michael R. Gottfried Michael R. Gottfried