Case 3:14-cv-05499-PGS-LHG Document 43 Filed 07/14/15 Page 1 of 3 PageID: 1132
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`P h o n e :
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`F a x :
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`Em a i l :
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`O r l o f s k y @B l a n k r om e . c om
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`July 14, 2015
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`VIA ECF
`The Honorable Peter G. Sheridan, U.S.D.J.
`United States District Court for the District of New Jersey
`Clarkson S. Fisher Bldg. & U.S. Courthouse
`402 East State Street, Room 7000
`Trenton, NJ 08608
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`Dear Judge Sheridan:
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`Re: United Therapeutics Corporation. v. Sandoz Inc.
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`D.N.J. Case No.: 3:14-cv-05499-PGS-LHG
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`This firm, together with Wilson, Sonsini, Goodrich & Rosati and Boies, Schiller
`& Flexner LLP, represents United Therapeutics Corp. in this matter. The Scheduling
`Order (ECF No. 24) and Amended Scheduling Order (ECF No. 31) mandated that by
`June 3, 2015, the parties complete and file a Joint Claim Construction and Prehearing
`Statement, which would
`include each party’s proposed constructions and an
`“identification of all ... intrinsic evidence [and] any extrinsic evidence” supporting their
`constructions. See Amended Scheduling Order at ¶3; Scheduling Order at ¶11(c). Those
`orders also mandated that parties further file and serve their opening claim construction
`briefs on July 7, 2015. See Amended Scheduling Order at ¶4. The Court thus mandated
`that the parties identify all intrinsic and any extrinsic evidence supporting their claim
`constructions prior to filing their opening claim construction briefs, consistent with L.
`Pat. R. 4.3(b) & 4.5(a).
`
`Despite these orders and without explanation or a showing of good cause, in
`violation of Fed. R. Civ. P. 16(b)(4), Sandoz cited new extrinsic evidence in its opening
`claim construction brief1 — thirty-four days after the deadline to identify such evidence.
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`1 In total, Sandoz cited five new references not identified in the joint statement: (1)
`Remodulin Product Information, Sandoz-Trep 0004334 – 4347, see Defendant’s Opening Claim
`Construction Brief (“Defendant’s Br.”), at 12, fn 6; Martin Decl., Ex. C; (2) Treprostinil I, Trial
`Tr. at 538:23-539:3, see Defendant’s Br. at 12, fn 6; (3) excerpts from UTC’s Infringement
`Contentions (3/23/15), see Defendant’s Br. at 24, fn 10; (4) U.S. Patent No. 6,765,117, see
`Heathcock Decl. at ¶61; (5) Memorandum Decision & Order at 4-6, Treprostinil I, Civil Action
`No. 12-cv-1617 (D.N.J. June 25, 2013) (D.I. 95), see Defendant’s Br. at 3.
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`301 Carnegie Center 3rd Floor Princeton, New Jersey 08540
`A Pennsylvania LLP Stephen M. Orlofsky, New Jersey Administrative Partner
`www.BlankRome.com
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`Boca Raton • Cincinnati • Houston • Los Angeles • New York • Philadelphia • Princeton • San Francisco • Shanghai • Tampa • Washington • Wilmington
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`Case 3:14-cv-05499-PGS-LHG Document 43 Filed 07/14/15 Page 2 of 3 PageID: 1133
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`Hon. Peter G. Sheridan, U.S.D.J.
`July 14, 2015
`Page 2
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`Additionally, in its brief, Sandoz cited only three out of the approximately 30 extrinsic
`evidence references it had disclosed in the Joint Statement. Sandoz’s delay and
`misdirection prejudices UTC’s ability to timely prepare for the rest of the claim
`construction process. Further, UTC lost the opportunity to use their opening brief to
`address Sandoz’s arguments based on the new evidence, and also wasted its time and
`resources briefing arguments stemming from a large number of references ultimately not
`relied on by Sandoz.
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`The requirement in L. Pat. R. 4.3(b) and 4.5(a) that the parties identify all intrinsic
`and any extrinsic evidence well in advance of the opening claim construction briefs is
`part of the carefully ordered process that seeks to prevent precisely the prejudice that
`UTC suffers. These rules exist to further the goal of full, timely discovery, and provide
`all parties with adequate notice and information with which to litigate their cases.
`Voxpath v. LG Electronics, 2012 WL 5818143, No. 2:12-cv-952, at *7 (D.N.J. Nov. 14,
`2012); Rambus Inc. v. Hynix Semiconductor Inc., 569 F.Supp.2d 946, 980 (N.D. Cal.
`2008).2 Sandoz did not disclose that evidence until it was included in its brief, filed the
`same day as UTC’s opening brief. Accordingly, Sandoz’s late disclosure of new
`extrinsic evidence and misdirection regarding the evidence it did cite is improper and
`“not conducive to the orderly progress of this case.” See Rambus, 569.F.Supp.2d at 981.
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`This is not the first time that Sandoz has violated these rules – despite the fact that
`Sandoz is a repeat New Jersey participant and surely knows about the precise
`requirements of the Local Rules. In its Preliminary Proposed Claim Constructions,
`Sandoz included two claim terms that were not timely disclosed, and also failed to
`provide a construction for a term previously identified for construction. Additionally,
`Sandoz filed its non-infringement contentions seventeen days late, requiring UTC to file
`its responsive contentions after the exchange of proposed claim terms – contrary to L.
`Pat. R. 4.1 and the original Scheduling Order (setting the deadline for responsive
`contentions prior to the exchange of terms). Thus, Sandoz’s untimely disclosure and
`misdirection in its opening brief is simply the latest example of Sandoz’s willingness to
`play “legal musical chairs” with the claim construction process. See Rambus, 569
`F.Supp.2d at 980 (noting that similar actions constitute “a kind of legal musical chairs”
`that “thwart the very intention behind the patent local rules”).
`
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`2 “As the District of New Jersey has developed its Local Patent Rules through guidance from
`corresponding rules in the Northern District of California and the Eastern District of Texas...this
`Court has allowed for consideration of those districts’ decisions.” Voxpath, at n. 3.
` 301 Carnegie Center 3rd Floor Princeton, New Jersey 08540
`A Pennsylvania LLP Stephen M. Orlofsky, New Jersey Administrative Partner
`www.BlankRome.com
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`California • Delaware • Florida • New Jersey • New York • Ohio • Pennsylvania • Texas • Washington, DC • Hong Kong
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`Case 3:14-cv-05499-PGS-LHG Document 43 Filed 07/14/15 Page 3 of 3 PageID: 1134
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`Hon. Peter G. Sheridan, U.S.D.J.
`July 14, 2015
`Page 3
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`This Court has broad discretion to address the prejudice to UTC caused by
`Sandoz’s failure to comply with the Local Rules and the Scheduling Orders, see SanDisk
`Corp. v. Memorex Products, Inc., 415 F.3d 1278, 1292 (Fed. Cir. 2005) (holding the trial
`court’s interpretation and enforcement of the local rules is entitled to deference),
`including the ability to exclude the portions of Sandoz’s brief that rely on the improperly
`disclosed and utilized extrinsic evidence, along with the newly disclosed evidence itself,
`see Shire LLC v. Amneal Pharmaceuticals, LLC, No. CIV.A. 11-3781 SRC, 2013 WL
`1932927, at *3 (D. N.J. May 7, 2013) (holding that the court has the authority to exclude
`evidence for failure to follow the procedural schedule). And this Court and courts in the
`Northern District of California have excluded evidence and briefing in similar situations.
`See, e.g., Shire, 2013 WL 1932927, at *7 (striking portions of a party’s claim
`construction brief relying on improperly disclosed expert opinions); SanDisk, 415 F.3d at
`1292 (finding no abuse of discretion in the trial court’s exclusion of untimely claim
`construction arguments); Nordic Naturals, Inc. v. J.R. Carlson Laboratories, Inc. v.
`Carlson Laboratories, Inc., No. C 07-2385 PJH, 2008 WL 2357312, at *11 (N.D. Cal.
`June 6, 2008) (striking an expert declaration where the expert was not previously
`disclosed). In the alternative, this Court has also cured prejudice stemming from
`improper disclosures of evidence during claim construction by granting the prejudiced
`party an extension on filing the reply brief, additional pages in the reply brief to respond
`to the improperly identified evidence, and the ability to introduce new rebuttal evidence.
`See Genentech, Inc. v. Trustees of the University of Pennsylvania, No. 10-CV-02037-
`LHK, 2011 WL 866599, at *2 (N.D. Cal. Mar. 10, 2011).
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`Accordingly, UTC respectfully requests that the Court strike the passages of
`Sandoz’s opening claim construction brief that rely on the newly disclosed evidence as
`well as the new evidence itself. Additionally, UTC respectfully requests that the Court
`inform UTC should it require a formal motion to strike.
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`Respectfully submitted,
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`s/ Stephen M. Orlofsky
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`STEPHEN M. ORLOFSKY
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`cc: Counsel of Record (by ECF)
`
` 301 Carnegie Center 3rd Floor Princeton, New Jersey 08540
`A Pennsylvania LLP Stephen M. Orlofsky, New Jersey Administrative Partner
`www.BlankRome.com
`
`
`California • Delaware • Florida • New Jersey • New York • Ohio • Pennsylvania • Texas • Washington, DC • Hong Kong