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

Filing 997

MOTION in Limine to Preclude Evidence for Obviousness that Violates 35 USC Sec. 103 Prohibition that "Patentability Shall Not be Negatived By the Manner in Which the Invention was Made" and Which Reflects the Subjective Beliefs of the Inventor by Amgen Inc..(Gottfried, Michael)

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

Doc. 997

Case 1:05-cv-12237-WGY

Document 997

Filed 09/05/2007

Page 1 of 4

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

Civil Action No.: 1:05-cv-12237 WGY

PLAINTIFF AMGEN INC.'S MOTION IN LIMINE NO. 24 TO PRECLUDE EVIDENCE FOR OBVIOUSNESS THAT VIOLATES 35 U.S.C § 103 PROHIBITION THAT "PATENTABILITY SHALL NOT BE NEGATIVED BY THE MANNER IN WHICH THE INVENTION WAS MADE" AND WHICH REFLECTS THE SUBJECTIVE BELIEFS OF THE INVENTOR Plaintiff Amgen Inc. ("Amgen") requests under Federal Rules of Evidence 402 and 403 that this Court preclude Defendants F. Hoffman-La Roche Ltd., Roche Diagnostics GmbH, and Hoffman-La Roche Inc. (collectively "Roche") from referring or introducing evidence for obviousness that would violate the prohibitions of 35 U.S.C. § 103 and case law thereunder interpreting the statute relating to the inadmissibility of the subjective beliefs of the inventor and evidence of conception and reduction to practice to establish obviousness. Roche seeks to introduce such evidence through testimony of its experts, particularly Dr. Lowe, and through the eliciting of such testimony from Amgen witnesses, particularly Dr. Lin. The last sentence of 35 U.S.C. § 103(a) states: "Patentability shall not be negatived by the manner in which the invention was made." Roche seeks to introduce evidence on the manner in which the invention was made. This evidence would cause the Jury to focus on the wrong persons perspective, to focus on the wrong inquiry, and to assess obviousness at the wrong point in time thereby leading the Jury into reversible legal error.

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PLAINTIFF'S MOTION IN LIMINE NO. 24 CIVIL ACTION NO. 1:05-CV-12237 WGY
Dockets.Justia.com

Case 1:05-cv-12237-WGY

Document 997

Filed 09/05/2007

Page 2 of 4

Further, 35 U.S.C. § 103(c)(1) states that "subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of Section 102 of this title, shall not preclude patentability under this section where the subject matter and the clamed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person." Accordingly, Amgen requests that this Court preclude Roche from referring to or offering any evidence at trial any evidence for obviousness that violates 35 U.S.C. § 103. In support of this motion, Amgen submits a brief with an accompanying declaration from William G. Gaede III and exhibits thereto. DATED: September 5, 2007 Respectfully Submitted, AMGEN INC., /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 G. Gaede III (pro hac vice) McDERMOTT WILL & EMERY 3150 Porter Drive Palo Alto, CA 94304 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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PLAINTIFF'S MOTION IN LIMINE NO. 24 CIVIL ACTION NO. 1:05-CV-12237 WGY

Case 1:05-cv-12237-WGY

Document 997

Filed 09/05/2007

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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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PLAINTIFF'S MOTION IN LIMINE NO. 24 CIVIL ACTION NO. 1:05-CV-12237 WGY

Case 1:05-cv-12237-WGY

Document 997

Filed 09/05/2007

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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 non registered participants on the above date. /s/ Michael R. Gottfried Michael R. Gottfried

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