Case 1:18-cv-00924-CFC Document 409 Filed 10/11/19 Page 1 of 7 PageID #: 30990
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`GENENTECH, INC.,
`
`v.
`AMGEN INC.,
`
`Plaintiff,
`
`Defendant.
`
`C.A. No. 18-924-CFC
`
`PUBLIC VERSION
`
`DEFENDANT AMGEN INC.’S DISCOVERY DISPUTE LETTER
`
`SMITH, KATZENSTEIN & JENKINS LLP
`Neal C. Belgam (No. 2721)
`Eve H. Ormerod (No. 5369)
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`(302) 652-8400
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
`
`Attorneys for Defendant Amgen Inc.
`
`Of Counsel:
`
`Michelle Rhyu
`Daniel Knauss
`Susan Krumplitsch
`Cooley LLP
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`P (650) 843-5000
`rhyums@cooley.com
`dknauss@cooley.com
`skrumplitsch@cooley.com
`
`Orion Armon
`Cooley LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, CO 80021-8023
`P (720) 566-4000
`oarmon@cooley.com
`
`Eamonn Gardner
`Cooley LLP
`4401 Eastgate Mall
`San Diego, CA 92121-1909
`P (858) 550-6000
`egardner@cooley.com
`
`

`

`Case 1:18-cv-00924-CFC Document 409 Filed 10/11/19 Page 2 of 7 PageID #: 30991
`
`Nancy Gettel
`Amgen Inc.
`One Amgen Center Drive
`Thousand Oaks, CA 91320-1799
`P (805) 447-1000
`ngettel@amgen.com
`
`Dated: October 4, 2019
`
`

`

`Case 1:18-cv-00924-CFC Document 409 Filed 10/11/19 Page 3 of 7 PageID #: 30992
`Case 1:18-cv-00924-CFC Document 409 Filed 10/11/19 Page 3 of 7 PageID #: 30992
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`Dear Judge Connolly:
`
`Amgen respectfully seeks the following relief at the October 16, 2019 discovery hearing:
`(1) continuance of the deposition of named inventor Dr. Sharon Baughman in view of a critical
`late-produced email implicating Dr. Brian Leyland-Jones as inventor of the Dosing Patents and
`related discovery Genentech has resisted providing; (2) production of an unredacted form of this
`email; (3) denial of Genentech’s motion for a protective order preventing deposition of Dr.
`Leyland-Jones: (4) production of documents in the possession of Roche, Genentech’s parent,
`relating to Dr. Leyland—Jones and the Dosing Patents; and (5) production of documents and a
`30(b)(6) witness related to licensing the patents-in—suit. The first fom‘ requests were triggered by
`Genentech’s late production of a key email nearly six weeks after the close of fact discovery.
`Amgen’s request for licensing discovery renews its prior request, which the Court provisionally
`denied but allowed Amgen to revisit if Genentech sought damages or a preliminary injunction.
`
`Genentech Should be Compelled to Provide Discovefl Related to Dr. Brian Leyland—Jones
`
`Genentech continues to withhold non—privileged information that is highly relevant to
`patent validity. This information relates to invention by Dr. Leyland—Jones of the dosing regimen
`claimed in the “Dosing Patents” (U.8. Patent Nos. 6,627,196, 7,371,379, and 10,160,811) as well
`as ownership that stems from invention. On May 9, 2019, Dr. Bauglnnan, a named inventor of the
`Dosing Patents, testified as both a fact witness and Genentech’s 30(b)(6) designee for Deposition
`Topic 7, relating to invention of the Dosing Patents.
`(See Ex. 1, De osition Transcri t of Dr.
`
`” , Ma 9, 2019, at 97212—9829.
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`mgen’s repeate requests were met Wit
`
`
`Genentech’s steadfast refusal to produce the email (or any part of it). (See Ex. 2, Amgen’s 5/30/19
`and 7/ 17/ 19 Letters to Genentech.)
`
`On July 23, 2019, nearly six weeks after fact discovery closed, Genentech produced the
`Baughman email in heavily redacted form. (See Ex. 3, Production Email from Stephanie Lin dated
`7/23/ 19 and GNEBAUGHMAN000001468.) This email is responsive to Amgen’s document
`requests in its subpoena to Dr. Baughman, including Request Nos. 1-2, 4—6, ll, 14, and 17-19.
`(See Ex. 4, Subpoena to Sharon A. Baughman,12/21/ 18.)
`It is also responsive to Amgen’s RFP
`Nos. 1, 3, 8, 9, 12, 16, and 53-56 to Genentech related to inventorship, correspondence with Dr.
`Leyland-Jones, and the clinical trial he led. (See Ex. 5, Amgen’s First Set of Re nests for
`Production, 09/03/2018, and Second Set of Re uests for Production, 11/21/2018.
`
`
`
`

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`Case 1:18-cv-00924-CFC Document 409 Filed 10/11/19 Page 4 of 7 PageID #: 30993
`Case 1:18-cv-00924-CFC Document 409 Filed 10/11/19 Page 4 of 7 PageID #: 30993
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`Amgen
`week after receiving Dr. Baughman’s email
`(Ex. 7, Notice of Deposition.)
`served notice of a deposition subpoena on Dr. Leyland—Jones.
`Genentech blocked the deposition by declaring a discovery dispute and demanding that Dr.
`Leyland-Jones’s deposition be postponed in light of its motion for protective order. (Ex. 8, 8/5/19
`Passamaneck email.)
`
`One
`
`1. Amgen Should Be Permitted to Finish Deposing Dr. Baughman on Inventorship
`
`Under Federal Rule of Civil Procedure 30(a)(2)(A)(ii), leave of court generally is required
`before taking a second deposition of a witness. But the Notes to the 1993 Amendment explain that
`the leave-of-court requirement “does not apply when a deposition is temporarily recessed for
`convenience of counsel or the deponent or to enable additional materials to be gathered before
`resmning the deposition.” The circumstance contemplated by the Notes occurred here: Amgen’s
`counsel requested production of the Baughman email prior to and during her de osition, and
`counsel for Genentech ex lained that it had not been roduced because
`
`
`ounsel for Amgen held open the deposition to preserve Amgen’s
`right to fully examine Dr. Baughman on inventorship after the email was produced. Id. Genentech
`later produced the email but refused to make Dr. Baughman available to conclude her testimony.
`The leave-of-court exception to Rule 30(a)(2)(A)(ii) applies here, so Dr. Baughman’s deposition
`should be compelled without a showing of good cause. But even lmder the good cause standard,
`courts in this District have found good cause for a second deposition where new, relevant
`documents came to light after the first deposition. See Goddard 51’s., Inc. v. Gondal, No. 17—1003—
`CJB, 2019 WL 2491691, at *2-3 (D. Del. June 14, 2019); see also Cox Conuuc’ns. Inc. v. Sprint
`Conunc’ns. Co. LR, No. 12-487-JBF, 2017 WL 11272852, at *4 (D. Del. Aug. 9, 2017).
`
`2. Genentech Should Be Compelled to Produce an Unredacted Version of the Late-
`Produced Email Relied Upon by Dr. Baughman
`
`Genentech should be required to produce the Baughman email, unredacted, given Dr.
`Baughman’s reliance on that email for her 30(b)(6) testimony. In the Third Circuit, a party may
`obtain documents used by a witness prior to testifying when the document was used to refresh the
`witness’s memory, it was used for the plupose of testifying, and the interests of justice require
`production. See Sporck v. Peil, 759 F.2d 312, 317 (3d Cir. 1985); see also In re ML-Lee Acquisition
`Fund II, LP. & ML-Lee Acquisition Fund (Ret. Accounts) II, LP. Sec. Litig., 848 F. Supp. 527,
`567 (D. Del. 1994) (“[I]n accordance with Sporck, the Court will order Mr. Baker to produce those
`documents which he testified refreshed his recollection of certain facts.” ; see also Illomas v. Euro
`
`
`
`
`
`1 y requests t at t e Corut rev1ew t e 1spute emai
`a mnmnum, Amgen respect
`in camera to
`assess whether the email was properly redacted.
`
`3. Amgen Should Be Permitted to Proceed with the Deposition of Dr. Leyland-Jones
`
`

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`Case 1:18-cv-00924-CFC Document 409 Filed 10/11/19 Page 5 of 7 PageID #: 30994
`Case 1:18—cv-00924-CFC Document 409 Filed 10/11/19 Page 5 of 7 PageID #: 30994
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`After the Baughman email was produced, Amgen scheduled a deposition of Dr. Leyland-
`Jones, who was willing to have his deposition taken. (See Ex. 8.) Amgen agreed to postpone the
`deposition pending resolution of Genentech’s challenge to the deposition. District coruts have
`allowed depositions after the close of the fact discovery period when the requesting party has not
`acted in bad faith, and the objecting party will not face significant burden or prejudice. See
`Sepracor Inc. v. Dev LR, No. 06-113—JJF, 2009 WL 2970467, at *1 (D. Del. Sept. 15, 2009.)
`Good cause exists here: (1) Dr. Leyland—Jones is willing to testify; (2) Amgen diligently pursued
`this deposition after receiving the Baughman email; and (3) any prejudice to Genentech arises out
`of Genentech’s objection to the deposition going forward as scheduled, and its delay in providing
`the Baughman email until more than a month after the close of fact discovery.
`
`4. Genentech Should Not Be Permitted to Use Its Corporate Structure to Shield
`
`Relevant Facts From Discovery
`
`Genentech should be compelled to produce relevant and responsive documents in the
`custody of its parent entity, Roche. Starting in April 2019, Amgen served requests for production
`of docmnents related to the Dosing Patents and the B015935 clinical trial, which was sponsored
`by Roche and led b Dr. Le land-Jones.
`,
`.
`
`., Ex. 5, Am en’s RFP Nos. 1, 8, 12, 16, and 53-
`
`Amgen’s 4/3/19 Letter to Genentech, and Genentech’s 4/12/19 Letter to Amgen.) But Genentech
`has sufficient control over Roche to obtain and produce these documents. See Afros S.P.A. v.
`Krauss-Maflei Corp, 113 FRD 127 (D. Del. 1986) (compelling production of documents relating
`to the design and development of the products covered by Defendant’s patents from Defendant’s
`corporate-parent and foreign non-party); see also Steele Software Svs., C011) v. Datan'ck Info.
`Svs. Inc, 237 F.R.D. 561 (D. Md. 2006) (applying Afias to conclude that the documentsin
`
`
`
`Genentech is improperly using its corporate
`its se ectrve production of Roche documents. The parties
`
`were unable to reach resolution following a meet-and-confer on this issue in late July 2019. (See
`Ex. 11, Amgen’s 7/30/19 Letter to Genentech.)
`
`Genentech should be compelled to produce license-related discovefl
`
`The Court should compel Genentech to produce documents and a Rule 30(b)(6) witness
`respecting Genentech’s license agreements. See Ex. 5, RFP Nos. 31 and 65 and Ex. 12, 30(b)(6)
`Topics 29 and 30. (D.I. 192.)l Amgen is entitled to discovery on Genentech’s decision to license
`its patents and the consideration it accepted for licenses. Genentech claims that it has no non—
`privileged information to produce, (EX. 13, 5/ 16/2019 Tr. at 44-46), but has provided no privilege
`log. Amgen should be allowed to test this lmsubstantiated assertion of privilege and explore
`Genentech’s arglunent that the consideration it received (i.e., “time” instead of “money”), see, e.g. ,
`D1. 303 at 9, supports finding that harm from infringement is irreparable and incalculable.
`
`1 Amgen does not presently seek Genentech or Roche’s communications with non—party
`licensees, as the parties agreed to file a stipulation to resolve that issue.
`
`3
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`

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`Case 1:18-cv-00924-CFC Document 409 Filed 10/11/19 Page 6 of 7 PageID #: 30995
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`Respectfully submitted,
`
`/s/ Eve H. Ormerod
`
`Eve H. Ormerod (#5369)
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`Enclosures
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`cc:
`
`Clerk of Court (via hand delivery)
`All Counsel of Record (via email)
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`4
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`

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`Case 1:18-cv-00924-CFC Document 409 Filed 10/11/19 Page 7 of 7 PageID #: 30996
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`CERTIFICATE OF SERVICE
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`I certify that on October 4, 2019, true and correct copies of the Letter to the Honorable
`
`Colm F. Connolly from Eve H. Ormerod Regarding Discovery Disputes and related exhibits were
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`caused to be served by email on the following counsel:
`
`Michael P. Kelly
`Daniel M. Silver
`Alexandra M. Joyce
`MCCARTER & ENGLISH, LLP
`Renaissance Centre
`405 N. King Street, 8th Floor
`Wilmington, DE 19801
`mkelly@mccarter.com
`dsilver@mccarter.com
`ajoyce@mccarter.com
`
` /s/ Eve H. Ormerod
`Eve H. Ormerod (No. 5369)
`
`
`
`