Case 1:18-cv-00924-CFC Document 392 Filed 10/04/19 Page 1 of 21 PageID #: 29215
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`GENENTECH, INC.,
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`v.
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`AMGEN INC.,
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`Plaintiff,
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`Defendant.
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`
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`C.A. No. 18-924-CFC
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`OPENING BRIEF IN SUPPORT OF GENENTECH, INC.’S MOTION FOR SANCTIONS
`PURSUANT TO FEDERAL RULE OF CIVIL PROCEDURE 37(b)
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`
`Michael P. Kelly (#2295)
`Daniel M. Silver (#4758)
`Alexandra M. Joyce (#6423)
`MCCARTER & ENGLISH, LLP
`Renaissance Centre
`405 North King Street, 8th Floor
`Wilmington, DE 19801
`(302) 984-6300
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`Attorneys for Genentech, Inc.
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`Of Counsel:
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`Daralyn J. Durie
`Adam R. Brausa
`DURIE TANGRI LLP
`217 Leidesdorff St.
`San Francisco, CA 94111
`(415) 362-6666
`
`William F. Lee
`Lisa J. Pirozzolo
`Emily R. Whelan
`Kevin Prussia
`Andrew J. Danford
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`60 State Street
`Boston, MA 02109
`(627) 526-6000
`
`Robert J. Gunther Jr.
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`7 World Trade Center
`250 Greenwich Street
`New York, NY 10007
`(212) 230-8800
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`ME1 31545773v.1
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`PUBLIC VERSION FILED: October 4, 2019
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`Case 1:18-cv-00924-CFC Document 392 Filed 10/04/19 Page 2 of 21 PageID #: 29216
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`TABLE OF CONTENTS
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`PAGE
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`INTRODUCTION ....................................................................................................... 3
`BACKGROUND ......................................................................................................... 4
`A.
`Amgen’s Attempts to Limit the Scope of the Privilege Waiver ......................... 4
`B.
`the Validity of the Dosing Patents .................................................................... 7
`LEGAL STANDARD ................................................................................................. 10
`ARGUMENT .............................................................................................................. 11
`A.
`Court’s Discovery Order Regarding Privilege Waiver ...................................... 11
`B.
`Testimony That Amgen Willfully Suppressed .................................................. 12
`1.
`Amgen has acted willfully and in bad faith ........................................... 14
`2.
`Genentech is prejudiced by Amgen’s litigation misconduct .................. 14
`3.
`effective ............................................................................................... 15
`CONCLUSION ........................................................................................................... 17
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`The proposed sanction of deeming certain facts established is
`reasonable, narrowly tailored, and lesser sanctions would not be
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`Ms. Kwasigroch Refuses to Testify About Her Work Product Relating to
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`Amgen Should Be Held in Contempt for Deliberating Violating the
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`The Court Should Deem Facts Established Relating to the Deposition
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`I.
`II.
`III.
`IV.
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`V.
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`Case 1:18-cv-00924-CFC Document 392 Filed 10/04/19 Page 3 of 21 PageID #: 29217
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`Cases
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`TABLE OF AUTHORITIES
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`PAGE(S)
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`Alexsam, Inc. v. IDT Corp.,
`715 F.3d 1336 (Fed. Cir. 2013) ...................................................................................... 11
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`Coca-Cola Bottling Co. of Shreveport v. Coca-Cola Co.,
`110 F.R.D. 363 (D. Del. 1986) ...................................................................................... 11
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`Drone Techs., Inc. v. Parrot S.A.,
`838 F.3d 1283 (Fed. Cir. 2016) ........................................................................................ 9
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`In re EchoStar Communications Corp.,
`448 F.3d 1294 (Fed. Cir. 2006) .................................................................................. 3, 10
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`Harris v. City of Philadelphia,
`47 F.3d 1311 (3d Cir. 1995) ............................................................................................ 9
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`Insurance Corp. of Ireland, Ltd. v. Compagnie des Bauxites de Guinee,
`456 U.S. 694 (1982) ............................................................................................ 8, 10, 11
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`Schindler Elevator Corp. v. Otis Elevator Co.,
`No. 09-cv-0560 (DMC), 2011 WL 4594225 (D.N.J. Mar. 24, 2011), report
`and recommendation adopted, No. 09-CV-0560 (DMC-JAD), 2011 WL
`4594958 (D.N.J. Sept. 30, 2011) .................................................................................... 11
`
`In re Seagate Technology, LLC,
`497 F.3d 1360 (Fed. Cir. 2007) ...................................................................................... 10
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`Estate of Spear v. Comm’r of Internal Revenue,
`41 F.3d 103 (3d Cir. 1994) ...................................................................................... 11, 12
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`Other Authorities
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`Fed. R. Civ. P. 37 .................................................................................................... 1, 8, 9, 11
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`Case 1:18-cv-00924-CFC Document 392 Filed 10/04/19 Page 4 of 21 PageID #: 29218
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`I.
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`INTRODUCTION
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`Plaintiff Genentech, Inc. (“Genentech”) respectfully moves for an order holding
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`Defendant Amgen Inc. (“Amgen”) in contempt of this Court’s June 20, 2019 Order Granting
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`Plaintiff’s Motion to Compel (D.I. 259) (hereinafter, the “Order”) and entering sanctions
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`pursuant to Rule 37(b) of the Federal Rules of Civil Procedure by deeming certain facts
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`established.
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`Amgen asserts the advice of counsel as a defense to willful patent infringement. It seeks
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`to use privileged communications as a sword, and the Court correctly held that it therefore
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`cannot assert privilege as a shield. Amgen has waived privilege regarding the subject matter of
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`its opinion letters.
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`The Court twice rejected Amgen’s attempt to limit the scope of its waiver to exclude in-
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`house counsel communications and work product that were not shared with Amgen’s
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`“decisionmakers.” The Court correctly held that Amgen seeks to use privileged communications
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`as a sword, and Amgen—as a corporate entity—has placed its supposed good-faith reliance on
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`such communications at issue. Amgen itself includes Amgen’s in-house counsel, and the Court
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`thus expressly included Amgen’s in-house counsel within the scope of the waiver in its Order.
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`The Court affirmed its ruling when it rejected Amgen’s motion for re-argument on this issue.
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`Amgen has deliberately defied this Court’s Order. It produced heavily redacted
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`documents on September 4, 2019, and then began producing witnesses for depositions. During
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`the deposition of Lois Kwasigroch—one of Amgen’s in-house counsel
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`—Amgen instructed the witness not to answer any questions to the extent they called
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`for communications or work product not conveyed to a small set of individuals that Amgen has
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`chosen to dub the company’s business “decisionmakers.”
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`These instructions violated the Court’s Order. They prevented Genentech from exploring
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`Ms. Kwasigroch’s state of mind, and prevented discovery into whether Amgen, not merely a
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`handful of carefully curated individuals, had a good faith belief that the asserted patents were
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`invalid and/or not infringed. Amgen should therefore be held in contempt, and the Court should
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`issue sanctions deeming certain facts admitted at trial relating to Ms. Kwasigroch’s knowledge of
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`and opinions regarding the validity of certain patents-in-suit that fall within the scope of the
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`Court’s Order, as set forth in the enclosed Proposed Order.
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`II.
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`BACKGROUND
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`A.
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`Amgen’s Attempts to Limit the Scope of the Privilege Waiver
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` Amgen announced its
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`intention to rely on these opinions of counsel in an effort to defend itself from a charge of willful
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`infringement. Genentech then requested the production of documents to test whether Amgen in
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`fact was relying on those opinions in good faith. Declaration of Daralyn J. Durie (“Durie Decl.”)
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`Ex. 1, Letter from Danford to Rhyu (June 3, 2019). Amgen produced a limited set of documents,
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`but refused to produce communications with and among Amgen’s in-house counsel and related
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`work product that were not provided to the specific individuals who were supposedly making the
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`ultimate decision to launch Kanjinti. See Durie Decl. Ex. 2, Letter from Gardner to Danford
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`Case 1:18-cv-00924-CFC Document 392 Filed 10/04/19 Page 6 of 21 PageID #: 29220
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`(June 11, 2019).
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`Genentech moved to compel. D.I. 254. In its responsive letter, Amgen argued that
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`“Genentech is not entitled to work product not shared with opinion counsel or Amgen
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`decisionmakers . . . .” D.I. 255 at 2. Counsel for Amgen pressed this argument at length during
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`the June 18, 2019 discovery conference in an attempt to exclude the work product of its in-house
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`lawyers regarding the waived subject matter, arguing that the scope of the waiver was limited to
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`a small group of individuals that Amgen would select to make the ultimate launch decision. See
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`Durie Decl. Ex. 3, Hr’g Tr. at 41:12-50:9, 69:16-82:6, June 18, 2019. The Court disagreed: “In
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`my mind the decision-maker, I did not see the case [referring to In re EchoStar Communications
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`Corp., 448 F.3d 1294 (Fed. Cir. 2006)] define a decision-maker as confined to one person or as
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`not including in-house counsel. Amgen is the decision-maker and Amgen’s ultimate decisions
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`are informed by the knowledge of [] a number of people within its organization. That includes
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`in-house counsel.” Id. at 41:21-42:1 (emphases added).
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`On June 20, 2019, the Court issued a formal order granting Genentech’s motion to
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`compel. The Court confirmed that Amgen’s production of its opinion letters “effected a subject
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`matter waiver of Amgen’s attorney-client privilege concerning (i) infringement and validity of
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`the ’869 patent; and (ii) validity of the ’196, ’379, and ’811 patents.” Order at 1, D.I. 259. The
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`Court ordered that the subject matter waiver “extends to Amgen’s in-house counsel.” Id. The
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`only scope limitation placed on the subject matter waiver was that it did “not extend to
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`communications with outside trial counsel.” Id. Amgen was ordered to produce responsive
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`documents no later than July 2, 2019, including communications with and among Amgen’s in-
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`house counsel concerning the opinion letters and any assessments of the infringement and/or
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`validity of the patents. The Order was served on both outside counsel for Amgen and Ms.
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`Kwasigroch. Durie Decl. Ex. 4, NEF for D.I. 259 at 1.
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`Amgen did not obey this Order and failed to produce any documents by the court-ordered
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`deadline. Nor did it seek a stay. Instead, Amgen filed a motion for reargument—raising the very
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`same arguments regarding uncommunicated in-house counsel work product that the Court had
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`considered and rejected. D.I. 266 at 3-9. In doing so, Amgen recognized the scope of the
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`privilege waiver regarding in-house work product adopted by the Court: “The Court ruled that
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`disclosure of the Opinion[] Letters resulted in waiver of in-house counsel’s deliberations about
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`the subject matter of the Opinion Letters, regardless of whether the deliberations were
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`communicated to any client/decision-makers as Amgen.” Id. at 7 (citing Durie Decl. Ex. 3, Hr’g
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`Tr. at 46:2-50:2). Additionally, Amgen acknowledged that the “Court’s Orders provide that [t]he
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`waiver extends to communications pre-dating the Opinion Letters and extends to Amgen’s in-
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`house counsel,’ including work product that was not communicated to decision-makers
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`concerning the subject matter addressed in the opinions.” Id. at 3 (quoting Order, D.I. 259)
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`(emphasis added) (first alteration in original).
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`On August 28, 2019, the Court denied Amgen’s motion for reargument, because “the
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`errors Amgen raise[d] generally repeat[ed] the same points Amgen advocated at the discovery
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`conference,” which the Court had “already fully considered and addressed.” D.I. 345 at 3. The
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`Court again ordered Amgen to produce documents falling within the scope of the privilege
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`waiver, this time by September 4, 2019. Id. at 4. The Order was again served on both Amgen
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`and Ms. Kwasigroch. Durie Decl. Ex. 5, NEF for D.I. 345 at 3. Once again, Amgen did not
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`request a stay or file a writ of mandamus. Instead, Amgen produced heavily redacted documents
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`that reflect, to a limited extent, communications among its in-house counsel related to the subject
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`matter of the opinions.2 See, e.g., Durie Decl. Ex. 6, AMGKAN03002837-56; Ex. 7,
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`AMGKAN03002583-612; Ex. 8 at AMGKAN02999058-97; Ex. 9, AMGKAN02988860-99; Ex.
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`10, AMGKAN02989139-225.
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`B. Ms. Kwasigroch Refuses to Testify About Her Work Product Relating to the
`Validity of the Dosing Patents
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`The Court’s Order also directed Amgen to make available for deposition any in-house
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`counsel involved in obtaining the opinion letters or providing advice regarding infringement
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`and/or validity of the patents at issue. Id. at 2. Amgen produced Ms. Kwasigroch for deposition
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`on September 17, 2019. At her deposition, Amgen’s outside counsel repeatedly instructed Ms.
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`Kwasigroch not to answer any questions to the extent they called for mental impressions or
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`attorney–client communications that were not communicated by Amgen’s in-house attorneys to
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`the company’s “business decision makers.” See, e.g., Durie Decl. Ex. 11, Kwasigroch Dep. Tr.
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`at 15:6-11; 19:19-23; 28:6-9; 29:3-6; 32:2-5; 33:12-15; 34:18-21; 36:1-4; 41:5-9; 44:7-10; 47:25-
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`48:2; 52:25-53:3; 69:18-22; 70:20-71:1; 74:6-9; 74:17; 80:22-25; 85:24-86:4; 86:20-87:1; 87:11-
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`13; 87:21-88:2; 89:19-23; 90:4-5; 90:25-91:4; 92:6-10; 92:22-25; 94:7-12; 95:2-10; 95:17-21;
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`97:20-24. Ms. Kwasigroch confirmed that she would follow her counsel’s instructions. See id.
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`at 20:5-8.
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`At her deposition, Genentech attempted to elicit testimony about Ms. Kwasigroch’s
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`assessment of the validity of the ’196, ’379, and ’811 patents, which cover particular dosing
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`regimens. The validity of two of the dosing patents had been challenged in multiple IPRs, which
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`culminated in final written decisions on October 3, 2018, upholding the validity of the ’196 and
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`’379 patents (the related ’811 patent issued on December 25, 2018).
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`2 Genentech intends to formally raise the appropriateness of these redactions prior to the
`discovery conference currently set for October 16, 2019.
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`Amgen counsel maintained these instructions throughout the deposition (and Ms.
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`Kwasigroch continued to follow them),
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`Ms. Kwasigroch continued to refuse to answer questions about statements in documents
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`produced as a result of Amgen’s privilege waiver throughout the deposition.
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`III. LEGAL STANDARD
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`Rule 37(b)(2) grants district courts broad discretion to fashion appropriate sanctions for a
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`party’s failure to comply with a discovery order. The Court may issue an order that “designated
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`facts [shall] be taken as established for the purposes of the action, as the prevailing party claims.”
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`Fed. R. Civ. P. 37(b)(2)(A)(i). Rule 37(b)(2) also authorizes the Court to hold the party failing to
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`cooperate with the discovery order in contempt. Fed. R. Civ. P. 37(b)(2)(A)(vii). Sanctions
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`must be just and “specifically related to the particular ‘claim’ which was at issue in the order to
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`provide discovery.” Insurance Corp. of Ireland, Ltd. v. Compagnie des Bauxites de Guinee, 456
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`U.S. 694, 707 (1982).
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`IV. ARGUMENT
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`Amgen’s instructions and Ms. Kwasigroch’s refusal to answer questions violate the
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`Court’s Order (D.I. 259). Amgen therefore should be sanctioned under Rule 37(b)(2).
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`A.
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`Amgen Should Be Held in Contempt for Deliberately Violating the Court’s
`Discovery Order Regarding Privilege Waiver
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`Contempt sanctions are warranted based on Amgen’s violation of this Court’s Order.
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`The contempt sanction authorized by Rule 37(b)(2) is appropriate when (1) a valid court order
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`existed, (2) the defendant had knowledge of the order, and (3) the defendant disobeyed the
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`order. Harris v. City of Philadelphia, 47 F.3d 1311, 1326 (3d Cir. 1995).3 Each condition is
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`satisfied here.
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`First, a valid court order existed. See Order, D.I. 259 at 1 (expressly ordering that the
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`privilege waiver “extends to Amgen’s in-house counsel” without any exception for work product
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`not communicated to business decision makers).
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`Second, Amgen and Ms. Kwasigroch knew of the Court’s Order. Ms. Kwasigroch is
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`Senior Counsel at Amgen
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`. She
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`was served with a copy of both this Court’s original Order and this Court’s order on the motion
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`for reargument. Durie Decl. Exs. 4-5 at 1, 3.
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`Third, Amgen and Ms. Kwasigroch disobeyed the Order by refusing to answer questions
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`except with respect to communications with persons Amgen chooses to call “decisionmakers.”
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`Amgen’s instructions willfully disregarded the Court’s Order, which explicitly rejected Amgen’s
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`3 The Federal Circuit applies regional circuit law when reviewing discovery rulings and the
`imposition of sanctions. Drone Techs., Inc. v. Parrot S.A., 838 F.3d 1283, 1297 (Fed. Cir. 2016).
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`Case 1:18-cv-00924-CFC Document 392 Filed 10/04/19 Page 13 of 21 PageID #: 29227
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`attempt to limit the scope of its waiver to communications with business persons. Amgen twice
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`tried to persuade the Court to adopt a narrow scope of waiver. When the Court (correctly)
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`rejected Amgen’s position, Amgen rejected the Order. That is contempt.4
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`As Genentech explained in its letter submitted in support of its motion to compel, both
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`EchoStar, 448 F.3d at 1299 and In re Seagate Technology, LLC, 497 F.3d 1360, 1372 (Fed. Cir.
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`2007) forbid Amgen’s selective approach to waiver. D.I. 254 at 1-2. Nor should Amgen be
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`heard to complain that the Court’s Order was unclear, since Amgen itself premised its motion for
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`reargument on its understanding that the “Court ruled that disclosure of the Opinion[] Letters
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`resulted in waiver of in-house counsel’s deliberations about the subject matter of the Opinion
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`Letters, regardless of whether the deliberations were communicated to any client/decision-
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`makers as Amgen.” D.I. 266 at 7 (citing Durie Decl. Ex. 3, Hr’g Tr. at 46:2-50:2). The Court’s
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`denial of Amgen’s motion for reargument should have put an end to Amgen’s efforts to shield
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`this material from discovery. Instead, Amgen has engaged in yet more self-help, which warrants
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`a finding of contempt.
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`B.
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`The Court Should Deem Facts Established Relating to the Deposition
`Testimony That Amgen Willfully Suppressed
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`Amgen’s instructions to Ms. Kwasigroch not to answer questions directed to her mental
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`impressions regarding the validity of the dosing patents were improper in view of the Court’s
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`Order defining the scope of the privilege waiver. In Compagnie des Bauxites de Guinee, the
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`4 At the September 23, 2019, deposition of Stuart Watt, Amgen’s Vice President of Law and
`Intellectual Property Officer, Amgen’s counsel did not instruct Mr. Watt not to answer on the
`same grounds as Ms. Kwasigroch.
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`Case 1:18-cv-00924-CFC Document 392 Filed 10/04/19 Page 14 of 21 PageID #: 29228
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`Supreme Court held that a district court did not abuse its discretion when it deemed jurisdictional
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`facts as established as a Rule 37(b)(2) discovery sanction. 456 U.S. at 707. The Court held that
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`as long as the sanction is just and specifically related to the claims at issue in the discovery order,
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`due process concerns are satisfied. Id. To evaluate whether this standard is met, three factors are
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`considered: “1) culpability (including willfulness and bad faith, and whether the client was
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`responsible or solely the attorney); 2) prejudice; and 3) whether lesser sanctions would have been
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`effective.” Estate of Spear v. Comm’r of Internal Revenue, 41 F.3d 103, 111 (3d Cir. 1994);5 see
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`also Schindler Elevator Corp. v. Otis Elevator Co., No. 09-cv-0560 (DMC), 2011 WL 4594225,
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`at *14 (D.N.J. Mar. 24, 2011), report and recommendation adopted, No. 09-CV-0560 (DMC-
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`JAD), 2011 WL 4594958 (D.N.J. Sept. 30, 2011) (balancing the Estate of Spear factors and
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`deeming certain facts regarding obviousness established as a sanction under Rule 37(b)(2) for
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`plaintiff’s refusal to provide discovery relating to secondary considerations of non-obviousness);
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`Coca-Cola Bottling Co. of Shreveport v. Coca-Cola Co., 110 F.R.D. 363, 371 (D. Del. 1986)
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`(issuing a preclusion order under Rule 37(b)(2)(A), where defendant refused to provide relevant
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`information about its formula).
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`Amgen’s conduct warrants treating certain facts that Amgen prevented Genentech from
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`probing at Ms. Kwasigroch’s deposition as established at trial.
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`5 The Federal Circuit affirmed a district court’s decision to sanction a party’s failure to provide
`complete discovery by establishing, for the purpose of the action, that an adverse inference must
`be drawn from the withheld items. Alexsam, Inc. v. IDT Corp., 715 F.3d 1336, 1345 (Fed. Cir.
`2013) (upholding the sanction under a more stringent Fifth Circuit standard that also considers
`whether the violating party has made “empty promises” and whether it has been warned of
`possible sanctions). In that case, the violating party failed to disclose a number of its potentially
`infringing products in response to interrogatories. Id. The district court deemed a number of the
`violating party’s products as infringing the patents-in-suit. Id. The court reasoned that the
`sanction was just because the violation had “caused [the plaintiff] severe prejudice in preparing
`its case for trial,” and that the sanction bore a substantial relationship to the violation of
`withholding discovery. Id. (internal quotation marks omitted) (citation omitted).
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`1.
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`Amgen has acted willfully and in bad faith
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`Amgen has willfully violated the Court’s Order by attempting to limit the scope of the
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`privilege waiver in the same way that Amgen argued for, and lost on, in its motion for
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`reargument. That motion demonstrates that Amgen understood “[t]he waiver extends to
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`communications pre-dating the Opinion Letters and extends to Amgen’s in-house counsel,
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`including work product that was not communicated to decision-makers concerning the subject
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`matter addressed in the opinions.” D.I. 266 at 3 (quoting Order, D.I. 259) (emphasis added)
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`(first alteration in original).
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`2.
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`Genentech is prejudiced by Amgen’s litigation misconduct
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`The “prejudice” factor ensures that the violating party does not “gain a strategic
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`advantage at trial by refusing to provide information it is required to provide . . . .” Estate of
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`Spear, 41 F.3d at 115. Amgen has unfairly and substantially prejudiced Genentech’s ability to
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`prepare for trial. Over three months have passed since this Court ruled that Amgen’s privilege
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`waiver extended to in-house counsel. Amgen first refused to comply with the Court’s Order
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`while its motion for reargument was pending. Having lost that motion, Amgen has continued to
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`refuse to provide witness testimony on information that is squarely within the scope of the
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`waiver. Fact discovery closed over three months ago, on June 10, 2019, and trial is less than
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`three months away, but Genentech is still without critical information necessary to prepare its
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`case. Additional deposition time with Ms. Kwasigroch would be insufficient to cure the
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`prejudice Genentech has suffered, given the stage of the case and Amgen’s ongoing interference
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`with Genentech’s ability to develop facts relating to Amgen’s willful infringement. Furthermore,
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`Ms. Kwasigroch was able to avoid answering Genentech counsel’s questions and has now had
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`time to prepare answers to those questions in consultation with her counsel. See D. Del. LR 30.6
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`(prohibiting counsel from consulting with the deponent regarding the substance of the
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`testimony). Amgen should not be allowed to benefit from its misconduct by using privileged
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`communications as sword and putting its alleged good faith belief in the invalidity of the dosing
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`patents at issue, while simultaneously using privilege as a shield to block Genentech’s discovery
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`into the understanding of those individuals most likely to have developed Amgen’s beliefs. This
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`is the precise problem the Court’s Order was designed to resolve months ago, but Amgen
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`ignored it.
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`3.
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`The proposed sanction of deeming certain facts established is
`reasonable, narrowly tailored, and lesser sanctions would not be
`effective
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`Even though Amgen’s discovery misconduct is egregious, Genentech proposes limited
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`sanctions to deem certain facts established based on specific testimony to which Genentech is
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`entitled but Ms. Kwasigroch refused to provide in violation of the Court’s Order. The requested
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`sanctions are both just, in view of Amgen’s conduct, and specifically relate to the discovery at
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`issue in the Court’s June 20, 2019 Order. Lesser sanctions, such as additional deposition time
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`with Ms. Kwasigroch, would not be effective, in view of Amgen’s repeated disregard of the
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`Court’s Order and the significant prejudice Amgen’s conduct has caused Genentech, as
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`discussed above. The sanctions Genentech seeks specifically relate to three categories of
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`questions as to which Ms. Kwasigroch was instructed not to answer:
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`First, Ms. Kwasigroch refused to testify regarding her assessment of the PTAB’s final
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`written decisions upholding the validity of the ’196 and ’379 patents. See Durie Decl. Ex. 11,
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`Kwasigroch Dep. Tr. at 32:25-33:16.
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` The instructions to Ms. Kwasigroch precluded Genentech from testing whether
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`Amgen relied in good faith on those opinions,
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`Second, documents produced by Amgen pursuant to the Court’s Order indicate that
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`Amgen’s in-house counsel believed
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`Third, by repeatedly instructing Ms. Kwasigroch not to answer any questions implicating
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`her analysis that was not communicated to “business decision makers,” Amgen prohibited
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`Genentech from probing Ms. Kwasigroch’s assessment of the validity of the ’196, ’379, and ’811
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`patents.
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`In view of the totality of Amgen’s improper privilege instructions during Ms.
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`Kwasigroch’s deposition relating to these three lines of questioning, Genentech respectfully
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`requests that the following facts be deemed established:
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`Case 1:18-cv-00924-CFC Document 392 Filed 10/04/19 Page 18 of 21 PageID #: 29232
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`1. Ms. Kwasigroch was not aware of any errors in the PTAB’s analysis regarding the
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`validity of the ’196 and ’379 patents;
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`2. Ms. Kwasigroch was not aware of any invalidity arguments or any prior art that was
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`not presented to and considered by the PTAB when it found that the ’196 and ’379
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`patents are not invalid; and
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`3. Ms. Kwasigroch did not have a basis for believing that the ’196, ’379, and ’811
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`dosing patents are invalid.
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`Additionally, Genentech respectfully requests that it be granted leave to submit a request
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`for attorneys’ fees and costs incurred in connection with Ms. Kwasigroch’s deposition and this
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`Motion.
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`V.
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`CONCLUSION
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`For the foregoing reasons, the Court should hold Amgen in contempt and enter an order
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`deeming the facts set forth in the Proposed Order established for the purpose of this action.
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`Dated: September 24, 2019
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`
`Of Counsel:
`
`Daralyn J. Durie
`Adam R. Brausa
`DURIE TANGRI LLP
`217 Leidesdorff St.
`San Francisco, CA 94111
`(415) 362-6666
`
`William F. Lee
`Lisa J. Pirozzolo
`Emily R. Whelan
`Kevin Prussia
`Andrew J. Danford
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`60 State Street
`Boston, MA 02109
`(627) 526-6000
`
`
`
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`
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`ME1 31545773v.1
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`Respectfully Submitted,
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`
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`/s/ Daniel M. Silver
`Michael P. Kelly (#2295)
`Daniel M. Silver (#4758)
`Alexandra M. Joyce (#6423)
`MCCARTER & ENGLISH, LLP
`Renaissance Centre
`405 North King Street, 8th Floor
`Wilmington, DE 19801
`(302) 984-6300
`
`Attorneys for Genentech, Inc.
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`Robert J. Gunther Jr.
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`7 World Trade Center
`250 Greenwich Street
`New York, NY 10007
`(212) 230-8800
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`Case 1:18-cv-00924-CFC Document 392 Filed 10/04/19 Page 20 of 21 PageID #: 29234
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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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`document were caused to be served on September 24, 2019 on the following counsel in the
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`manner indicated:
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`VIA EMAIL:
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`Neal C. Belgam
`Eve H. Ormerod
`Jennifer M. Rutter
`SMITH, KATZENSTEIN & JENKINS, LLP
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`(302) 652-8400
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
`jrutter@skjlaw.com
`
`
`Orion Armon
`COOLEY, LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, CO 80021-8023
`(720) 566-4119
`oarmon@cooley.com
`
`
`Eamonn Gardner
`COOLEY, LLP
`4401 Eastgate Mall
`San Diego, CA 92121-1909
`(858) 550-6086
`egardner@cooley.com
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`Case 1:18-cv-00924-CFC Document 392 Filed 10/04/19 Page 21 of 21 PageID #: 29235
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`
`Michelle Rhyu
`Susan Krumplitsch
`Daniel Knauss
`Philip H. Mao
`Alexandra Leeper
`Lauren Krickl
`Benjamin S. Lin
`Alissa M. Wood
`COOLEY, LLP
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`(650) 843-5287
`rhyums@cooley.com
`skrumplitsch@cooley.com
`dknauss@cooley.com
`pmao@cooley.com
`aleeper@cooley.com
`lkrickl@cooley.com
`blin@cooley.com
`amwood@cooley.com
`
`Nancy Gettel
`Brian Kao
`Lois Kwasigroch
`AMGEN, INC.
`One Amgen Center Drive
`Thousand Oaks, CA 91320-1799
`(805) 447-1000
`ngettel@amgen.com
`bkao@amgen.com
`loisk@amgen.com
`
`Xiaoxiao Xue
`1299 Pennsylvania Avenue, NW, Suite 700
`Washington, DC 20004-2400
`(202) 842-7809
`xxue@cooley.com
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`Attorneys for Defendant Amgen Inc.
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`
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`Dated: September 24, 2019
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`/s/ Daniel M. Silver
`Daniel M. Silver (#4758)
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