Case 1:18-cv-00924-CFC Document 284 Filed 07/12/19 Page 1 of 25 PageID #: 21476
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`GENENTECH, INC. and CITY OF HOPE,
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`Plaintiffs,
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`AMGEN INC.,
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`Defendant.
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`__________________________________________)
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`GENENTECH, INC. and CITY OF HOPE
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`Plaintiffs and Counterclaim Defendants,
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`AMGEN INC.,
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`Defendant and Counterclaim Plaintiff.
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`__________________________________________)
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`PLAINTIFFS’ OPPOSITION TO AMGEN’S
`MOTION FOR PARTIAL REARGUMENT
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`C.A. No. 17-1407-CFC
`(CONSOLIDATED)
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`C.A. No. 18-924-CFC
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`Dated: July 5, 2019
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`OF COUNSEL:
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`Paul B. Gaffney
`David I. Berl
`Thomas S. Fletcher
`Kyle E. Thomason
`Teagan J. Gregory
`Charles L. McCloud
`Kathryn S. Kayali
`WILLIAMS & CONNOLLY LLP
`725 Twelfth Street, N.W.
`Washington, D.C. 20005
`(202) 434-5000
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`Attorneys for Plaintiff Genentech, Inc.
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`MCCARTER & ENGLISH, LLP
`Michael P. Kelly (# 2295)
`Daniel M. Silver (# 4758)
`Alexandra M. Joyce (#6423)
`Renaissance Centre
`405 N. King Street, 8th Floor
`Wilmington, DE 19801
`Tel.: (302) 984-6300
`Fax: (302) 984-6399
`mkelly@mccarter.com
`dsilver@mccarter.com
`ajoyce@mccarter.com
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`Attorneys for Plaintiffs Genentech, Inc.
`and City of Hope
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`PUBLIC VERSION FILED: July 12, 2019
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`Case 1:18-cv-00924-CFC Document 284 Filed 07/12/19 Page 2 of 25 PageID #: 21477
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`Daralyn J. Durie
`Adam R. Brausa
`Eric C. Wiener
`Eneda Hoxha
`DURIE TANGRI
`271 Leidesdorff Street
`San Francisco, CA 94111
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`Attorneys for Plaintiffs Genentech, Inc.
`and City of Hope
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`2
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`Case 1:18-cv-00924-CFC Document 284 Filed 07/12/19 Page 3 of 25 PageID #: 21478
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`TABLE OF CONTENTS
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`BACKGROUND .............................................................................................................................1
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`ARGUMENT ...................................................................................................................................3
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`I.
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`THE COURT DID NOT ERR IN DEFINING THE SCOPE OF WAIVER. ......................3
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`A.
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`B.
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`The Proposed Exception Is Legally Unjustified. .....................................................4
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`Amgen’s Proposal Invites Confusion and Gamesmanship. .....................................8
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`THE COURT SHOULD NOT REWARD AMGEN’S SELF-HELP..................................8
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`THE COURT SHOULD NOT REVISIT BIFURCATION.................................................9
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`II.
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`III.
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`CONCLUSION ..............................................................................................................................10
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`ME1 30867856v.1
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`Case 1:18-cv-00924-CFC Document 284 Filed 07/12/19 Page 4 of 25 PageID #: 21479
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`TABLE OF AUTHORITIES
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`FEDERAL CASES
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`B.B. ex rel. Catherine B. v. Del. Coll. Preparatory Acad., No. CV 16-806-CFC,
`2019 WL 949204 (D. Del. Feb. 27, 2019) .................................................................................3
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`Collaboration Properties, Inc. v. Polycom, Inc., 224 F.R.D. 473 (N.D. Cal. 2004) .......................7
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`Convolve, Inc. v. Compaq Computer Corp., No. 00-5141(GBD)(JCF), 2007 WL
`4205868 (S.D.N.Y. Nov. 26, 2007) ...........................................................................................6
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`Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 498 F. Supp. 2d 734
`(D. Del. 2007) ..........................................................................................................................10
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`Deere & Co. v. AGCO Corp., No. CV 18-827-CFC, 2019 WL 668492 (D. Del.
`Feb. 19, 2019) ............................................................................................................................9
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`Dentsply Int’l, Inc. v. Kerr Mfg. Co., 42 F. Supp. 2d 385 (D. Del. 1999) .......................................3
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`Electro Sci. Indus., Inc. v. Gen. Scanning, Inc., 175 F.R.D. 539 (N.D. Cal. 1997) .........................6
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`Hydranautics v. FilmTec Corp., 306 F. Supp. 2d 958 (S.D. Cal. 2003) ..........................................5
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`In re EchoStar Commc’ns Corp., 448 F.3d 1294 (Fed. Cir. 2006) ..........................................3, 4, 6
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`In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc), abrogated on
`other grounds by Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923
`(2016) .................................................................................................................................2, 4, 6
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`Johns Hopkins Univ. v. Alcon Labs., Inc., No. CV 15-525-SLR/SRF, 2017 WL
`3013249 (D. Del. July 14, 2017)................................................................................................4
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`Medtronic Inc. v. Edwards Lifesciences Corp., No. CV 11-1650(JNE/JSM), 2013
`WL 12149252 (D. Minn. Nov. 8, 2013) ....................................................................................7
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`Plano Encryption Techs., LLC v. Alkami Tech., Inc., Nos. 2:16-cv-1032-JRG,
`2:16-cv-1072-JRG, 2017 WL 8727249 (E.D. Tex. Sept. 22, 2017) ..........................................5
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`Saint-Gobain/Norton Indus. Ceramics Corp. v. Gen. Elec. Co., 884 F. Supp. 31
`(D. Mass. 1995)..........................................................................................................................6
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`Schering Corp. v. Amgen, Inc., 25 F. Supp. 2d 293 (D. Del. 1998) ............................................3, 5
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`SenoRx, Inc. v. Hologic, Inc., 920 F. Supp. 2d 565 (D. Del. 2013) ...............................................10
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`Sonos, Inc. v. D&M Holdings Inc., No. CV 14-1330-WCB, 2017 WL 5633204
`(D. Del. Nov. 21, 2017) ...........................................................................................................10
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`ii
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`Case 1:18-cv-00924-CFC Document 284 Filed 07/12/19 Page 5 of 25 PageID #: 21480
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`Steelcase Inc. v. Haworth, Inc., 954 F. Supp. 1195 (W.D. Mich. 1997) .........................................7
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`Stryker Corp. v. Intermedics Orthopedics, Inc., 96 F.3d 1409 (Fed. Cir. 1996) .............................5
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`Thorn Emi N. Am., Inc. v. Micron Tech., Inc., 837 F. Supp. 616 (D. Del. 1993) ............................7
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`TV Interactive Data Corp. v. Microsoft Corp., No. C 02 02385 JSW, 2005 WL
`1910929 (N.D. Cal. Aug. 10, 2005) ...........................................................................................5
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`Wisc. Alumni Research Foundation v. Apple, Inc., No. 14-062-WMC, 2015 WL
`5009880 (W.D. Wisc. Aug 20, 2015) ........................................................................................7
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`iii
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`Case 1:18-cv-00924-CFC Document 284 Filed 07/12/19 Page 6 of 25 PageID #: 21481
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`Amgen’s Motion for Reargument consists of points it already made or could have made
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`before or during the June 18, 2019 hearing. But even were this something besides a second bite
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`at the apple, the Court should reject Amgen’s plea to narrow the scope of its waiver. Asserting
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`advice of counsel effects a broad waiver with narrow exceptions, not the other way
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`around. Under established precedent and notions of basic fairness, Plaintiffs are entitled to all of
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`the materials covered by the Court’s June 20th Orders. D.N. 407; D.I. 259.1
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`The Court also should deny the two other requests Amgen smuggles into its motion—to
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`extend the date for production (a deadline Amgen brazenly has ignored already) and to bifurcate
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`discovery and trial.
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`BACKGROUND
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`This dispute follows from Amgen’s attempt to avoid the consequences of invoking advice
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`of counsel to contest claims of willful infringement. After Amgen produced opinions from
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`counsel alleging that certain patents-in-suit are invalid and/or not infringed, Genentech sought
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`discovery regarding the subject matter of these opinion letters. See Exs. 1-3. Amgen opposed
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`production of the following categories of materials: (i) documents predating the opinion letters;
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`(ii) communications with outside litigation counsel and in-house counsel working with them; and
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`(iii) documents not provided to (or reflecting information not communicated to) an unidentified
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`group of “decision-makers” within Amgen’s “senior management” who would decide when to
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`launch its biosimilars. When Genentech moved to compel, Amgen fully briefed all of these
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`objections, and repeated and expanded on them during the lengthy hearing the Court conducted
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`on June 18.
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`1 For clarity, Genentech adopts Amgen’s citation format and uses “D.N.” to refer to docket
`entries in the Avastin case and “D.I.” to refer to docket entries in the Herceptin case. As Amgen
`filed identical Motions in the two cases, Genentech cites only to the Avastin version, D.N. 423.
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`ME1 30867856v.1
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`1
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`Case 1:18-cv-00924-CFC Document 284 Filed 07/12/19 Page 7 of 25 PageID #: 21482
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`At that hearing, the Court rejected the argument that because Amgen was asserting advice
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`of counsel only as to prospective conduct—i.e., a launch at risk—it could withhold production of
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`materials that pre-dated the opinion letters. The Court agreed with Genentech that Amgen’s
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`assertion makes no sense: it is the party’s knowledge at the time of infringement that matters,
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`and Amgen “can’t unring the bell” and simply forget all of the legal advice it received before
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`March 2019 on the same subject matter as the opinion letters. Ex. 4 at 13:19-25; 36:13-19.
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`Citing In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc), abrogated on
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`other grounds by Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016), the Court agreed
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`with Amgen that on this record its waiver did not extend to “trial counsel,” but rejected Amgen’s
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`attempt to broaden this waiver exception to cover in-house counsel who entered appearances.
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`The Court found that Seagate used the term “trial counsel” “synonymously with outside
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`counsel,” id. at 38:11-14; see also id. at 40:25-41:2, and explained that expanding this exception
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`to in-house counsel may lead to “[abusive] practices,” with “companies having in-house counsel
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`just willy-nilly enter their appearances” to shield their communications. Id. at 40:16-41:2.
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`Finally, the Court rejected Amgen’s withholding of materials not provided to, or not
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`reflecting advice provided to, the narrow, unidentified group of “senior management” that
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`Amgen said would decide when to start selling its biosimilars. The Court in particular
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`considered and rejected Amgen’s plea to exclude the work-product of its in-house lawyers
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`regarding the waived subject matter unless it was communicated to these “decision-makers.” It
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`explained that “Amgen is the decision-maker and Amgen’s ultimate decisions are informed by
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`the knowledge of . . . a number of people within its organization. That includes in-house
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`counsel.” Ex. 4 at 41:21-42:1.
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`2
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`Case 1:18-cv-00924-CFC Document 284 Filed 07/12/19 Page 8 of 25 PageID #: 21483
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`Amgen requested a production deadline of July 16. When Genentech expressed concern
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`that this would delay the case schedules, the Court compromised, ordering a “rolling production”
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`of documents with all the contemplated discovery to be completed by July 2. Id. at 83:17-85:6.
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`The Court’s written orders two days later memorialized its rulings. D.N. 407; D.I. 259.
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`Amgen did not seek a stay of the production order to consider its options but instead has
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`ignored the Orders. It has yet to produce a single document—not even the documents covered
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`by the objections Amgen withdrew before the motion was heard—and has cancelled numerous
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`depositions on the ground that proceeding without the documents Amgen has refused to produce
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`would be inefficient. In an attempt to preserve the existing case schedules as much as possible,
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`Genentech has served this Opposition seven days before it is due.
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`ARGUMENT
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`Motions for reargument are granted only “sparingly,” and in very narrow circumstances.
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`B.B. ex rel. Catherine B. v. Del. Coll. Preparatory Acad., No. CV 16-806-CFC, 2019 WL
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`949204, at *3 (D. Del. Feb. 27, 2019). Litigants should seek relief under Local Rule 7.1.5 only
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`“(1) where the court has patently misunderstood a party, (2) where the court has made an error
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`not of reasoning, but of apprehension, or (3) where the court has made a decision outside the
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`scope of the issues presented to the court by the parties.” Dentsply Int’l, Inc. v. Kerr Mfg. Co.,
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`42 F. Supp. 2d 385, 419 (D. Del. 1999). Amgen has disregarded these requirements with a
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`motion that “simply rehashes materials and theories already briefed, argued and decided.”
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`Schering Corp. v. Amgen, Inc., 25 F. Supp. 2d 293, 295 (D. Del. 1998). Worse, it has treated its
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`motion as a de facto stay of the Orders it challenges. The Court should deny it.
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`I.
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`THE COURT DID NOT ERR IN DEFINING THE SCOPE OF WAIVER.
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`Invoking advice of counsel waives privilege over documents, communications, and
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`testimony on the same subject matter. In re EchoStar Commc’ns Corp., 448 F.3d 1294, 1299
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`3
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`Case 1:18-cv-00924-CFC Document 284 Filed 07/12/19 Page 9 of 25 PageID #: 21484
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`(Fed. Cir. 2006). The waiver is not a narrow one: “[P]arties asserting an opinion-of-counsel
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`defense to a willfulness claim in a patent infringement suit are subject to a broad subject-matter
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`waiver of work product protection and attorney-client privilege relating to the opinion of counsel
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`as to noninfringement and invalidity of an asserted patent.” Johns Hopkins Univ. v. Alcon Labs.,
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`Inc., No. CV 15-525-SLR/SRF, 2017 WL 3013249, at *3 (D. Del. July 14, 2017). The “broad
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`scope” of this waiver is “grounded in principles of fairness” and aims to “prevent[] the
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`inequitable result of a party disclosing favorable communications while asserting the privilege as
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`to less favorable ones.” In re Seagate, 497 F.3d at 1372. The limited exception to this rule,
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`articulated by the Federal Circuit in Seagate,2 concerns litigation advice from outside trial
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`counsel. Id. at 1373.
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`Amgen again proposes to narrow this “broad waiver” even further, to justify withholding
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`documents unless they were shared with unidentified “senior management” “decision-makers,”
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`including specifically “work product of its in-house counsel that was not communicated.” D.N.
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`423-1 at 1; D.I. 266-1 at 1. The Court should again deny the request.
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`A.
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`1.
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`The Proposed Exception Is Legally Unjustified.
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`As a preliminary matter, this is exactly the sort of recycled argument not properly
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`raised under Local Rule 7.1.5. Amgen already argued in its June 14 letter that “Genentech is not
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`entitled to unshared work product of in-house or outside counsel, as it has no bearing on
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`Amgen’s state of mind.” D.N. 398 at 2; see also D.I. 255 at 1-2. At the hearing the Court
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`considered and rejected this position twice, once during the normal course of argument, Ex. 4 at
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`41:12-50:9, and then again, near the end, when Amgen’s counsel urged the Court to reverse its
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`ruling, id. at 69:16-82:6. “[A] motion for reargument can never be allowed to encourage a never
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`2 Federal Circuit law governs the scope of attorney-client privilege and work product waiver
`triggered by an advice-of-counsel defense to a willfulness claim. EchoStar, 448 F.3d at 1298.
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`4
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`Case 1:18-cv-00924-CFC Document 284 Filed 07/12/19 Page 10 of 25 PageID #: 21485
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`ending polemic between litigants and the Court,” yet that is precisely what Amgen’s (now
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`second) bid for reconsideration risks. Schering Corp, 25 F. Supp. 2d at 295. It should be
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`rejected on this basis alone.
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`2.
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`Amgen’s argument remains dependent on a flawed premise—“that ‘the actor’
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`within a corporation [accused of willful infringement] is the individual or individuals who have
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`authority to and who make the decision.” D.N. 423 at 4. Amgen cites Halo for the
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`uncontroversial proposition that willfulness depends on the defendant’s state of mind at the time
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`of the challenged conduct, but Halo never said (as Amgen suggests) that an accused willful
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`infringer’s state-of-mind is limited to the state of mind of a handful of “decision-makers.” To
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`the contrary, it is clear that a company’s “knowledge” for purposes of assessing willfulness can
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`be determined by looking to the knowledge possessed by a number of employees, including in-
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`house counsel. See Stryker Corp. v. Intermedics Orthopedics, Inc., 96 F.3d 1409, 1415 (Fed.
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`Cir. 1996) (finding defendant had knowledge of patent when in-house counsel learned of it).
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`Other courts have reached similar conclusions regarding an accused infringer’s scienter, both in
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`and outside of the willfulness context. See, e.g., Plano Encryption Techs., LLC v. Alkami Tech.,
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`Inc., Nos. 2:16-cv-1032-JRG, 2:16-cv-1072-JRG, 2017 WL 8727249, at *6 (E.D. Tex. Sept. 22,
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`2017); TV Interactive Data Corp. v. Microsoft Corp., No. C 02 02385 JSW, 2005 WL 1910929,
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`at *2 (N.D. Cal. Aug. 10, 2005); Hydranautics v. FilmTec Corp., 306 F. Supp. 2d 958, 964 (S.D.
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`Cal. 2003). Documents within the company expressing views on patent infringement or validity
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`are not irrelevant to Amgen’s state of mind just because they were not shared with whatever
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`executive at the time is charged with making the launch decision. If Amgen wants to disown
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`contradictory advice, it can do so when its witnesses are cross-examined.
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`5
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`Case 1:18-cv-00924-CFC Document 284 Filed 07/12/19 Page 11 of 25 PageID #: 21486
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`3.
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`It follows that the state of mind of in-house counsel working on the dispute is the
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`proper subject of discovery when a defendant waives privilege. Documents relating to the
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`infringement or validity of patents-in-suit “located in the files of a party’s in-house lawyers
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`would appear to bear directly on that party’s state of mind—and, therefore, would be
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`discoverable once the party elects to rely on an advice of counsel defense.” Electro Sci. Indus.,
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`Inc. v. Gen. Scanning, Inc., 175 F.R.D. 539, 545 n.4 (N.D. Cal. 1997); see also Saint-
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`Gobain/Norton Indus. Ceramics Corp. v. Gen. Elec. Co., 884 F. Supp. 31, 34 (D. Mass. 1995)
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`(work product prepared at direction of in-house counsel discoverable to the extent it reflects the
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`views of counsel on patent validity). Subjecting these materials to discovery would hardly
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`“eviscerate the work product privilege entirely for in-house counsel.” D.N. 423 at 3. That
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`protection exists and is maintained—until such time the defendant waives it by arguing, on the
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`basis of legal advice it received, that it believed the patents were invalid or not infringed.
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`4.
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`None of Amgen’s cases justify revisiting this issue.
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`-- The Court already considered Convolve, Inc. v. Compaq Computer Corp., No. 00-
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`5141(GBD)(JCF), 2007 WL 4205868 (S.D.N.Y. Nov. 26, 2007), decided on remand from
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`Seagate. When Amgen cited the decision in its pre-hearing letter and argued it at length at the
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`June 18 hearing, the Court found it unpersuasive, and for good reason. The statement on which
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`Amgen relies, that “waiver does ‘not extend to work product that was not communicated to the
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`alleged infringer,’” quotes Seagate, see 2007 WL 4205868, at *3 (quoting In re Seagate, 497
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`F.3d at 1370), which in turn cites EchoStar, but neither of those Federal Circuit decisions
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`concerned protections available to in-house counsel communications or work product. In re
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`Seagate, 497 F.3d at 1366 n. 2 (“We do not address the trial court’s discovery orders pertaining
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`to Seagate’s in-house counsel.”); In re EchoStar, 448 F.3d at 1297 n.2 (“No in-house counsel
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`6
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`Case 1:18-cv-00924-CFC Document 284 Filed 07/12/19 Page 12 of 25 PageID #: 21487
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`documents are at issue in the petition.”). They held instead that waiver does not extend to
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`outside counsel work product uncommunicated to the client. The in house counsel at issue here
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`is the client; the concept of uncommunicated work product is inapposite in this context.
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`-- Medtronic Inc. v. Edwards Lifesciences Corp., No. CV 11-1650(JNE/JSM), 2013 WL
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`12149252 (D. Minn. Nov. 8, 2013), another magistrate judge opinion, relied almost entirely on
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`Convolve. Id. at *10-11 & n.7. It is unpersuasive for the same reasons.
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`-- Collaboration Properties, Inc. v. Polycom, Inc., 224 F.R.D. 473 (N.D. Cal. 2004),
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`found communications between two engineers employed by the defendant and its trial counsel
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`outside the scope of waiver, id. at 476, citing (i) concerns about trial counsel communications
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`(concerns later acted upon by the Federal Circuit in Seagate) and (ii) the patentee’s ability to
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`depose the engineers directly about their views of the patents-in-suit. Id. at 476 & n.3. Amgen
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`seizes on the court’s additional question as to whether the engineers’ views could be imputed to
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`the defendant, but the magistrate judge who authored the decision did not support that point
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`except with an indirect citation to Rule 30(b)(6). Id. at 476. This single, unsupported statement,
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`unnecessary to the outcome of the case, cannot bear the weight Amgen would have it carry.
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`-- Wisc. Alumni Research Foundation v. Apple, Inc., No. 14-062-wmc, 2015 WL
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`5009880 (W.D. Wisc. Aug 20, 2015), relied on Seagate to prohibit discovery of in-house counsel
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`on his communications with trial counsel; no citation appears in the portion apparently limiting
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`discovery beyond communications with opinion counsel. Id. at *2 n.4
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`-- Thorn Emi N. Am., Inc. v. Micron Tech., Inc., 837 F. Supp. 616 (D. Del. 1993) and
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`Steelcase Inc. v. Haworth, Inc., 954 F. Supp. 1195, 1198 (W.D. Mich. 1997), addressed only
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`whether waiver reached outside counsel uncommunicated work product, a question that has been
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`settled since EchoStar and is not disputed here.
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`7
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`Case 1:18-cv-00924-CFC Document 284 Filed 07/12/19 Page 13 of 25 PageID #: 21488
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`B.
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`Amgen’s Proposal Invites Confusion and Gamesmanship.
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`Amgen ignores the practical difficulties presented by its proposal. Courts would have to
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`determine on a case-by-case (and infringement-by-infringement) basis who these “decision-
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`makers” are. The unworkability of this path was laid bare at the June 18 hearing. Despite
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`repeated questions from the Court, Amgen was unable to identify with any particularity even its
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`own “decision-makers.” Ex. 4 at 75:19-77:17, 78:16-25.
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`3 D.N. 423 at 5-7.
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`As the Court correctly observed, Amgen’s approach also would incentivize questionable
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`strategic behavior. “[I]f you invest money in developing [a product] and the patents are in front
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`of you, you intentionally stick your head in the sand and you hire a brand-new decision-maker to
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`come into the company to make a decision or something, that doesn’t seem right to me.” Ex. 4 at
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`29:23-30:2. “I don’t think you can segregate within Amgen just, you know, certain individuals
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`because you didn’t like the advice that individual A got, so let’s bring in individual B to make
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`the decision.” Id. at 36:19-24. A company could defend against a charge of willful infringement
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`by offering a dubious opinion letter all while shielding from disclosure even substantial concerns
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`exchanged among in-house counsel and other non-“decision-makers” about the weakness of the
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`company’s position. No decision endorses this absurd construction of the waiver doctrine.
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`II.
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`THE COURT SHOULD NOT REWARD AMGEN’S SELF-HELP.
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`Although it “requests” additional time to comply even if the Court’s Orders are
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`3 Amgen does not identify which of its in-house attorneys are “decision-makers” or offer a
`factual basis therefore, yet remarkably, Amgen criticizes Genentech for its failure to do so. Even
`were this Genentech’s burden, the supposed failure of evidence is not for lack of trying.
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`Case 1:18-cv-00924-CFC Document 284 Filed 07/12/19 Page 14 of 25 PageID #: 21489
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`unchanged, Amgen already has taken matters into its own hands. As of this filing, Amgen has
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`yet to produce a single document, not even those materials identified on its privilege logs and
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`already collected for logging purposes, or the materials covered by the objections Amgen
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`withdrew before the hearing. Compounding the problem, Amgen has unilaterally cancelled, on
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`little notice, important depositions bearing on substantive issues of infringement and remedies,
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`citing the Orders it believes it can ignore with impunity, and is refusing to reschedule them until
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`the Court rules on this Motion.
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`Courts do not reward parties who engage in self-help. Amgen’s conduct is especially
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`galling where the Court had already rejected Amgen’s request for additional time to comply. Ex.
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`4 at 83:17-85:6. Certainly its counsel was not too overworked to prepare a motion rearguing its
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`case or to continue to depose Genentech witnesses who, unlike Amgen’s, continue to appear on
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`their noticed dates. D.N. 422, 427; D.I. 265. The Court should deny the request.
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`III. THE COURT SHOULD NOT REVISIT BIFURCATION.
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`Amgen also deploys its Motion for Reargument to revisit scheduling decisions made long
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`ago when Judge Sleet conducted four scheduling conferences at the outset of these litigations.
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`There is no good reason to bifurcate discovery or trial, and the Court should deny the request.
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`It would be inefficient to require two depositions of witnesses whose testimony is
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`implicated by the waiver order, one now and the second following the Court’s ruling on the Rule
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`7.1.5 motion. There are more than a dozen witnesses in this category, not including experts,
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`some of whom likely will be subjected to multiple depositions as well. Nor is it correct, as
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`Amgen suggests, that materials over which it has waived have no relevance beyond willfulness.
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`The defendant’s state of mind is highly relevant to induced infringement, see Deere & Co. v.
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`AGCO Corp., No. CV 18-827-CFC, 2019 WL 668492, at *7-8 (D. Del. Feb. 19, 2019), and this
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`discovery also may bear on, inter alia, copying and other objective indicia of non-obviousness,
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`Case 1:18-cv-00924-CFC Document 284 Filed 07/12/19 Page 15 of 25 PageID #: 21490
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`see Sonos, Inc. v. D&M Holdings Inc., No. CV 14-1330-WCB, 2017 WL 5633204, at *2 (D. Del.
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`Nov. 21, 2017). Amgen’s proposal to bifurcate trial is unworkable for the same reason—these
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`materials may be relevant and admissible at trial even were willfulness tried separately.
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`Indeed, Amgen does not even try to satisfy Rule 42(b) with a showing that “bifurcation
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`will avoid prejudice, conserve judicial resources, and enhance juror comprehension of the issues
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`presented in the case.” SenoRx, Inc. v. Hologic, Inc., 920 F. Supp. 2d 565, 567 (D. Del. 2013).
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`Each consideration actually counsels against separate trials. Bifurcation would prejudice
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`Genentech through the “inevitable delay . . . of two separate trials,” a prejudice that “cannot be
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`mitigated by any action short of denying the request for separate trials.” Id. at 568-69. It would
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`waste judicial resources by requiring additional trial time, repeat testimony from the same
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`witnesses, and potentially a second jury. And a trial excluding one issue—willfulness—will
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`hardly make the trials meaningfully less complex. The case for “bifurcation should be
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`particularly compelling and prevail only in exceptional cases.” Crown Packaging Tech., Inc. v.
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`Rexam Beverage Can Co., 498 F. Supp. 2d 734, 736 (D. Del. 2007). These are not such cases.
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`Finally, the irony of Amgen’s justification cannot pass without comment. Were Amgen
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`sincere about “avoid[ing] disruption of upcoming case deadlines,” D.N. 423 at 9, it would not
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`have cancelled so many noticed depositions on the basis of Court Orders it did not seek to stay or
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`disregarded the Court’s command that a “rolling” production be completed by July 2. That
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`Amgen has not even provided documents it agreed to produce, or covered by portions of the
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`Orders Amgen did not challenge, speaks volumes about its supposed fidelity to “case deadlines.”
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` Genentech respectfully requests that the Court deny Amgen’s Motion for Partial
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`CONCLUSION
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`Reargument.
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`Case 1:18-cv-00924-CFC Document 284 Filed 07/12/19 Page 16 of 25 PageID #: 21491
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`Respectfully submitted,
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`MCCARTER & ENGLISH, LLP
`
` /s/ Daniel M. Silver
`Michael P. Kelly (#2295)
`Daniel M. Silver (#4758)
`Alexandra M. Joyce (#6423)
`Renaissance Centre
`405 N. King Street, 8th Floor
`Wilmington, DE 19801
`Tel.: (302) 984-6300
`Fax: (302) 984-6399
`mkelly@mccarter.com
`dsilver@mccarter.com
`ajoyce@mccarter.com
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`Attorneys for Plaintiffs Genentech, Inc.
`and City of Hope
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`Dated: July 5, 2019
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`OF COUNSEL:
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`Paul B. Gaffney
`David I. Berl
`Thomas S. Fletcher
`Kyle E. Thomason
`Teagan J. Gregory
`Charles L. McCloud
`Kathryn S. Kayali
`Jonathan S. Sidhu
`WILLIAMS & CONNOLLY LLP
`725 Twelfth Street, N.W.
`Washington, D.C. 20005
`(202) 434-5000
`
`Attorneys for Plaintiff Genentech, Inc.
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`Daralyn J. Durie
`Adam R. Brausa
`Eric C. Wiener
`Eneda Hoxha
`DURIE TANGRI
`271 Leidesdorff Street
`San Francisco, CA 94111
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`Attorneys for Plaintiffs Genentech, Inc.
`and City of Hope
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`Case 1:18-cv-00924-CFC Document 284 Filed 07/12/19 Page 21 of 25 PageID #: 21496
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`Case 1:18-cv-00924-CFC Document 284 Filed 07/12/19 Page 24 of 25 PageID #: 21499
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`Case 1:18-cv-00924-CFC Document 284 Filed 07/12/19 Page 25 of 25 PageID #: 21500
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`CERTIFICATE OF SERVICE
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`The undersigned counsel hereby certifies that true and correct copies of the foregoing
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`
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`document were caused to be served on July 5, 2019 on the following counsel in the manner
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`indicated:
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`VIA EMAIL:
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`Melanie K. Sharp
`James L. Higgins
`YOUNG CONAWAY STARGATT & TAYLOR, LLP
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`msharp@ycst.com
`jhiggins@ycst.com
`
`Steven M. Bauer
`Kimberly A. Mottley
`Gourdin W. Sirles
`PROSKAUER ROSE LLP
`One International Place
`Boston, MA 02110-2600
`(617) 526-9600
`sbauer@proskauer.com
`kmottley@proskauer.com
`gsirles@proskauer.com
`
`Siegmund Y. Gutman
`Amir A. Naini
`David M. Hanna
`Michelle M. Ovanesian
`PROSKAUER ROSE LLP
`2029 Century Park East
`Los Angeles, CA 90067-3206
`(310) 557-2900
`sgutman@proskauer.com
`anaini@proskauer.com
`dhanna@proskauer.com
`movanesian@proskauer.com
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`Attorneys for Defendant Amgen Inc.
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`Dated: J