Daniel M. Silver
`Partner
`405 N. King Street, 8th Floor
`Wilmington, DE 19801
`T. 302-984-6331
`F. 302-691-1260
`dsilver@mccarter.com
`
`July 3, 2019
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`VIA CM/ECF & HAND DELIVERY
`The Honorable Colm F. Connolly
`J. Caleb Boggs Federal Building
`844 N. King Street
`Wilmington, DE 19801-3555
`
`Re: Genentech, Inc. v. Amgen Inc., C.A. No. 17-1407-CFC (Consolidated) &
`Genentech, Inc. v. Amgen Inc., C.A. No. 18-924-CFC
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`Dear Judge Connolly:
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`Case 1:18-cv-00924-CFC Document 269 Filed 07/03/19 Page 1 of 2 PageID #: 18974
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`I write on behalf of Genentech regarding the Court’s June 28, 2019 order.
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`The most efficient course is to hear live expert testimony regarding
`indefiniteness of the ’869 patent during the December 2019 bench trial in the
`Herceptin case (18-cv-924-CFC). This approach will conserve party and judicial
`resources because the experts who address indefiniteness will likely also address
`infringement and Amgen’s other invalidity defenses. The Court may evaluate the
`expert testimony in context of the parties’ overall presentations regarding the ’869
`patent, and avoid duplication of effort where the same evidence may be relevant to
`infringement and validity.
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`A separate September 2019 hearing would disrupt an already-compressed
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`expert discovery schedule, and would not streamline the case or save resources.1
`The Herceptin case will be in the midst of expert discovery, having exchanged
`opening reports on July 26, 2019 and rebuttal reports on September 6, 2019. The
`Avastin case is also currently scheduled to be in expert discovery at that time. A
`separate September 2019 hearing would not spare the parties any effort on expert
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`1 Indeed, fact discovery is still ongoing in both cases and likely will be for some
`time, notwithstanding the existing scheduling orders. Amgen has failed to comply
`with the Court’s Order regarding the production of documents within the scope of
`the privilege waiver related to the ’869 patent and has unilaterally cancelled
`relevant depositions.
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`Case 1:18-cv-00924-CFC Document 269 Filed 07/03/19 Page 2 of 2 PageID #: 18975
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`The Honorable Colm F. Connolly
`July 3, 2019
`Page 2
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`reports and may in fact create additional work by disrupting the current expert
`discovery schedule.
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`The possible efficiencies of addressing indefiniteness prior to the December
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`2019 Herceptin trial do not outweigh the inefficiencies of a separate hearing
`focused solely on indefiniteness just three months before the Herceptin trial. In
`HIP, Inc. v. Hormel Foods Corp., 2019 WL 2579266 (D. Del. June 24, 2019),
`indefiniteness was case-dispositive because there was only one patent-in-suit.
`Here, however, there are additional patents-in-suit in both cases that would remain
`regardless of an earlier indefiniteness hearing. Moreover, should the Court reject
`Amgen’s indefiniteness defense, the same witnesses would need to return to
`address infringement and Amgen’s other indefiniteness defenses during the
`Herceptin trial.
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`Respectfully Submitted,
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`/s/ Daniel M. Silver
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`Daniel M. Silver (#4758)
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`Word Count: 344
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`cc: Counsel of record (via CM/ECF and electronic mail)
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`ME1 30861839v.1
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