Case 1:14-cv-02396-PGG-MHD Document 176-6 Filed 10/01/19 Page 1 of 11
`Case 1:14-cv-02396—PGG-MHD Document 176-6 Filed 10/01/19 Page 1 of 11
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`EXHIBIT F
`EXHIBIT F
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`Case 1:14-cv-02396-PGG-MHD Document 176-6 Filed 10/01/19 Page 2 of 11
`Case 1:04-cv-04046-RJS Document 129 Filed 11/12/13 Page 1 of 10
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`USDSSDNY
`DOCUl\1El";T
`ELFCTf;) n·,:rr.... /I r r'<7 I-I1 1-D
`DOC#:
`------------------
`DATE FILED: 11- \2 -'?
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`........... ·".)t1J,.'-I-1.L..J.!
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`~J......;.i~
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`No. 04 Civ. 4046 (RJS)
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`ORDER
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`ROCHE DIAGNOSTICS GMBH, et al.,
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`Plaintiffs,
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`-v-
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`ENZO BIOCHEM, INC., et al.,
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`Defendants.
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`RICHARD J. SULLIVAN, District Judge:
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`The Court is in receipt of the attached joint letter submitted by Enzo Biochem, Inc., Enzo
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`Life Sciences (together with Enzo Biochem, Inc., "Enzo"), Roche Diagnostics GmbH, and Roche
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`Molecular Systems, Inc. (together with Roche Diagnostics GmbH, "Roche"). Enzo seeks to
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`strike supplemental invalidity contentions that Roche filed after the relevant deadline and to
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`compel production of licenses, consumer agreements, and sales and financial information related
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`to certain Roche products. The Court will address Enzo' s requests in turn.
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`I. BACKGROUND
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`On February 7, 2013, the Court issued a Scheduling Order that called for infringement
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`contentions by Enzo "on or before April 15, 2013" and invalidity contentions from Roche "on or
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`before May 17,2013." (Doc. No. 99.) Notably, Roche proposed the deadlines for infringement
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`and invalidity contentions and reminded the Court that the "benefits of exchanging infringement
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`contentions early in the discovery period cannot be seriously contested: Early contentions 'force
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`parties to crystallize their theories early in the case,' 'to identifY the matters that need to be
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`resolved,' and to 'streamline discovery by mandating the disclosures that are core to patent cases,
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`Case 1:14-cv-02396-PGG-MHD Document 176-6 Filed 10/01/19 Page 3 of 11
`Case 1:04-cv-04046-RJS Document 129 Filed 11/12/13 Page 2 of 10
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`thus reducing the need for interrogatories, document requests, and contention depositions. '" (Jt.
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`Letter from Enzo and Roche, dated Feb. 5, 2013, at 5, 5 n.4 (quoting Federal Judicial Center,
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`Patent Case Management Guide 2-9, 5-6, 5-7 (2009)).)
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`After those important early deadlines passed, on June 11, 2013, the Court ordered the
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`parties to apprise the Court of the status of discovery, including the parties' progress toward
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`interim deadlines. (Doc. No. 114.) The parties submitted a letter on June 18,2013, explaining
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`that they "believe[ d] that discovery [was] proceeding on pace and expect[ ed] to meet all of the
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`deadlines set forth in the Court's Scheduling Order." (Jt. Letter from Enzo and Roche, dated
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`June 18, 2013, at 1.) The parties have since requested and received short extensions of the
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`discovery deadlines set by the Court (Doc. Nos. 115, 123), but at no time have they sought to
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`extend the time for filing contentions or sought leave to make supplemental contentions
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`submissions. Accordingly, the time for infringement and invalidity contentions concluded in
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`spring 2013, fact discovery closed October 21, 2013, and briefing for claim construction will
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`begin November 15,2013.
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`II. SUPPLEMENTAL INVALIDITY CONTENTIONS
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`Although the time for infringement and invalidity contentions has long passed, the parties
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`have both sought to supplement their contentions. On September 5, 2013, the parties submitted
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`a joint letter in which they disputed whether Enzo could seek discovery for products that were
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`not listed in its April 15, 2013 infringement contentions.
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`In light of the age and history of this
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`case, the Court ruled that Enzo "failed to accuse [those products] in the operative document that
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`list[ ed its] infringement contentions," and that Enzo could not "proceed with an infringement
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`case against products [it] did not accuse." (Doc. No. 122 at 3; see Doc. No. 120 at 2.) Now
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`Roche seeks to supplement its invalidity contentions, but the same rule applies: The Court will
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`2
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`Case 1:04-cv-04046-RJS Document 129 Filed 11/12/13 Page 3 of 10
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`not permit Roche to posit new invalidity contentions after the May 17, 2013 deadline. Enzo has
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`not been permitted to add new infringement contentions, and Roche will not be permitted to
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`supplement its invalidity contentions.
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`If Roche needed more time to research or respond to
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`Enzo's accusations, then it should have sought an extension before the May 17, 2013 deadline
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`an interim deadline Roche emphatically advocated - or at the very least before now, nearly half a
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`year later. Accordingly, IT IS HEREBY ORDERED THAT Enzo's motion to strike Roche's
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`supplemental contentions is GRANTED. I
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`III. DISCOVERY DISPUTES
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`The parties also dispute whether Roche should be compelled to produce licenses and
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`agreements related to the Elecsys/ECL products accused of infringing the • 523 patent. The
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`discovery standard is broad, and Enzo is entitled to "discovery regarding any nonprivileged
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`matter that is relevant to" its claims or defenses even if the discovered material is "not . . .
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`admissible at the trial [so long as it] appears reasonably calculated to lead to the discovery of
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`admissible evidence." Fed. R. Civ. P. 26(b)(l). The Court concludes that licensing agreements
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`for ElecsyslECL-related products and reagent/instrument agreements for Elecsys-related products
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`meet this broad standard. Accordingly, IT IS FURTHER ORDERED THAT Roche shall
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`produce this discovery.
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`The Court notes that Roche relies on All v. Medtronic, No. 2:04 Clv. 370 (LED), 2006 WL 278868, *5-6 (E.D.
`I
`Tex. 2006), for the proposition that the Court would be justified in permitting supplemental invalidity contentions
`even though it previously denied supplemental infringement contentions. Medtronic is different than this case.
`There, the Court was dealing with requests for supplemental contentions ajier the claim construction hearing, and the
`court reasoned that the "addition of prior art references post Markman do not have the same implications upon
`Markman briefing and arguments as the addition of a patent claim," which would result in irremediable prejudice to
`the defending party. The posture of this case is different, and the Court's rationale is different. The Court has
`taken a firm position on the deadlines imposed by its Scheduling Order, and neither party sought to amend that Order
`with respect to contentions. Because more than five months has elapsed since the relevant deadlines, the Court
`rejects the argument that there is good cause for either party to raise additional contentions.
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`3
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`Case 1:04-cv-04046-RJS Document 129 Filed 11/12/13 Page 4 of 10
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`Enzo also mentions that "Roche has failed to produce financial/revenue information for
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`the Elecsys e 170 instruments and/or for the first few years of infringing sales after launch (Le.,
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`pre-2000)." From this vague statement, the Court is clearly not in a position to determine
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`whether Roche has withheld relevant discovery with regard to financial or revenue information.
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`Accordingly, IT IS FURTHER ORDERED THAT Roche need not produce financial or revenue
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`information unless Enzo demonstrates the relevance of such information to Enzo's claims or
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`defenses or that the information is likely to lead to admissible evidence at trial.
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`IV. CONCLUSION
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`For the reasons set forth above, Enzo's motion to strike Roche's supplemental invalidity
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`contentions is granted, as is its motion to compel production of licenses and agreements relating
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`to the Elecsys/ECL products accused of infringing the '523 patent. Enzo's remaining discovery
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`requests are denied.
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`SO ORDERED.
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`DATED:
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`November 11, 2013
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`New York, New York ~~ CHARD J. SULLIVAN
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`UNITED STATES DISTRICT JUDGE
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`4
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`Case 1:14-cv-02396-PGG-MHD Document 176-6 Filed 10/01/19 Page 6 of 11
`Case 1:04-cv-04046-RJS Document 129 Filed 11/12/13 Page 5 of 10
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`IIGreenbergTraurig
`
`BY E-MAIL (sullivannysdchambers@nysd.uscourts.gov)
`
`November 5, 2013
`
`Honorable Richard J. Sullivan, V.S.D.J.
`United States District Court
`Southern District of New York
`500 Pearl St., Room 615
`New York, NY 10007
`
`Re:
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`Roche Diagnostics GMBH et al. v. Enzo Biochem, Inc. et a/.
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`No. 04 CV 4046 (RJS) (S.D.N.Y.)
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`Dear Judge Sullivan:
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`Pursuant to the Court's Individual Practices § 2.G, the parties to the above-referenced
`action jointly submit this letter concerning Enzo's request to: (i) strike Roche's supplemental
`Invalidity Contentions and preclude reliance thereon in this action; and (ii) compel production of
`certain Roche licenses, customer agreements, and sales/financial information which Enzo
`contends to be relevant to infringement, damages and validity/success of the patented invention.
`Counsel for Enzo (Richard Pettus, Jonathan Ball, Jennifer Moore) and Roche (Robert Gunther,
`Jr., Omar Khan, Ryann Muir, Cyndy Chueh) met and conferred on September 20, October 7, 10,
`21 and 22 concerning these issues, but have been unable to resolve them.
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`I.
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`Enzo's Position
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`A. Roche Should be Precluded from Reliance on Unjustifiably Late Invalidity
`Contentions Adding Nearly Sixty (60) New Prior Art References and Defenses
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`After fighting so hard to preclude Enzo from supplementing its Contentions in this patent
`infringement proceeding -- and obtaining a ruling that contentions served after the scheduled
`date will not be permitted to proceed CD.!. 120 at 2; see also DJ. 122 at 2·3)·- Roche now seeks
`to vastly expand its Court-ordered Invalidity Contentions by adding almost sixty (60) new prior
`art references and more than a half dozen new invalidity theories under 35 V.S.C. § 112. ("the
`Late Contentions," see Ex. A at 5-6, 8-9; Ex. B at 7-8, 14- t 6; Ex. C at 8-11; Ex. D at 9.) Per the
`Court's Order, Roche was to provide Invalidity Contentions by or before May 17, 2013, that
`inter alia, identified, "each item of prior art that the party contends allegedly anticipates or
`renders obvious each asserted claim," (0.1. 99 § 7(b), emphasis added) as well as "any other
`grounds of invalidity, including any under 35 V.S.C. § 101 or.§.lll, or unenforceability of the
`asserted claims." (/d.) Having had nearly eight years to identify its prior art references and
`invalidity positions (from publicly available sources), I Roche served new invalidity contentions
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`Roche gave no "good cause" or other justification for its untimely and vastly expanded Invalidity Contentions
`I
`during the prolonged weeks-long meet and confers on this issue. Instead, Roche promised for weeks to propose a
`"deal" to avoid Bnzo's motion to strike/preclude but ultimately never did so. Roche's attempt to now argue that most
`(i.e., 44) of the newly-added prior art references are just "background," is highly misleading in view of Roche's
`clear statements in the Late Contentions that all of "the prior art references cited in its Late Contentions, either alone
`or in combination with other identified references, anticipate andlor render obvious" the asserted claims of the
`
`GREENBERG TRAURIG. LLP • ATTORNEYS AT l_AW • WWWGTLAWCOM
`Mctlife Building. 200 Park Avenue • New York. NY 10166 • Tel 212801.9200 • fax 212.801.6400
`
`

`

`Case 1:14-cv-02396-PGG-MHD Document 176-6 Filed 10/01/19 Page 7 of 11
`Case 1:04-cv-04046-RJS Document 129 Filed 11/12/13 Page 6 of 10
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`Honorable Judge Richard J. Sullivan
`November 5, 2013
`Page 2
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`on September 17, September 30 and October 16,2013, months after the date set by the Court
`and the original close of fact discovery. There is no plausible excuse for Roche's lack of
`diligence, and what amounts to a dou'bling of its Contentions more than five months after they
`were due. See 02 Micro 1m 'I Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir.
`2006)? Roche's disclosure of these Latc Contentions is highly prejudicial,
`forcing Bnzo to
`undertake the claim construction process without time for strategic/technical evaluation of and
`consultation on them, and after Bnzo had already deposed Roche's technical witnesses in
`Germany without the opportunity to consider Roche's late-identified prior art references and
`defenses.) See Convolve, Inc. v. Compaq Computer Corp., 2006 WL 2527773, at *6 (S.D.N.Y.
`Aug. 31, 2006). It would also be highly unfair to permit Roche to unreasonably delay without
`good cause and vastly expand its Court-ordered Contentions, particularly after it so vehemently
`lobbied to restrict Bnzo to its initial Contentions. Having proposed the scheduled deadlines for
`contentions which were adopted by the Court, Roche knew when its Contentions needed to be
`served, and it was incumbent upon Roche to investigate, prepare and deliver them prior to that
`date, so Roche's acknowledgement that it "conducted additional prior art searches through its
`outside experts after serving its invalidity contentions" (two months earlier) does not justify, but
`rather confirms the untimeliness of the Late Contentions and Roche's lack of diligence. Enzo
`requests that the Late Contentions be stricken and that Roche be precluded from relying on any
`of the new prior art references and new grounds of invalidity under Section 112 or otherwise in
`this action. See CoreLogic Info Solns., Inc. v. Fiserv, Inc., 2012 WL 4051823, at * 3 (E.D, Tex.
`4
`.
`Sept. 13,2012).
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`patents. (Ex. A at 2, 6~7; Ex. B at 2, 9; Ex. C at 2; Ex. D at 2.) If Roche does not intend to use any of the 44 new
`references as prior art of their invalidity arguments then there is no reason under the rules for them to be included in
`the contentions. Either way, Bnzo asks that Roche's Late Contentions be stricken.
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`2 Roche was aware of several of the late-identified references before its May 17 Contentions were served but did not
`include them (e.g.. RE842868-76; RE844223~44; RE803252-66). Production amongst thousands of other documents
`and general reservations of right to rely on more prior art, however, is insufficient to satisfY its Invalidity Contention
`obligations. Cummins-Allison Corp. v. SBM Co., 2009 WL 763926, at *4 (B.D. Tex. 2009).
`
`3 Roche's argument that Enzo failed to ask Roche's witnesses about the prior art neglects to mention that Roche
`objected to and refused to produce a 30(b)(6) witness on this Topic (see Ex. fl, No.6) as well as that Roche's first
`set of Late Contentions were provided the night befor~ the September 18th Roche depositions in Germany began
`with the even-later contentions following weeks later.
`4 Enzo disputes Roche's assertion that Enzo was not diligent in accusing the precluded Taqman products (which it
`formally did in 2007) and/or clarifYing its Contentions shortly after Roche first revealed it was contesting the
`issue. The fact is, unlike Roche's Late Contentions, Enzo's April infringement contentions were reliant on Roche's
`confidential technical information which Roche now admits it did nol produce until over a month after Enzo's
`infringement contentions were due (and was produced amongst 2~O,OOO pages of other documents). Enl.o also
`disputes Roche's further assertion that it would have been prejudiced by limited damages discovery on Taqman,
`especially when months later Roche has yet to complete damages discovery on other accused products. In any case,
`Enzo's activities are wholly irrelevant to the question CIt-bar, i.e., why Roche failed to exercise diligence with respect
`to its Court-ordered May 17 Contentions. Notably, Roche fails to specifically identify a single change in Enzo's
`Contentions lhat would justify its three amendments, months later, to add a voluminolls number of references and
`defenses into the case.
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`

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`Case 1:14-cv-02396-PGG-MHD Document 176-6 Filed 10/01/19 Page 8 of 11
`Case 1:04-cv-04046-RJS Document 129 Filed 11/12/13 Page 7 of 10
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`Honorable Judge Richard J. Sullivan
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`November 5, 2013
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`Page 3
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`B.
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`Roche Should Be Ordered to Produce Financial and Other .Documents
`Relevant to Patent Infringement. Damages and Success of the Invention
`Despite Enzo's repeated requests, Roche has refused to produce relevant discovery andlor
`failed to abide by its commitments to do so. Discovery is broad under the federal rules and
`parties may obtain discovery regarding any matter relevant to its claims and defenses. See Fed.
`R. Civ. P. 26(b)(1); Chembto Diagnostic Sys., Inc. v. Saliva Diagnostic Sys., Inc., 236 F.R.D.
`129, 135 (E.D.N.Y. 2006). Yet, Roche has unjustifiably refused to produce license and other
`agreements relating to the Elecsys/ECL products accused of infringing the '523 patent (see Ex.
`E, No. 79; Ex. F, Nos. 30 and 35; Ex. G, Nos. 13,40,43-44, 84-86,90, 96-97, 103-104). Roche's
`documents and recently-deposed 30(b)(6) witness confirm that Roche has improperly withheld
`license agreements with at least Brahms, Eisai, RSR, CanAg, RCT, Bayer, Centocor (Horsch Tr.
`84, ] 15, 157; RE0404908.17) relating to royalties paid by Roche for the manufacture, use and
`sale of the accused Roche "Elecsys/ECL"-related products, as well as reagent/instrument
`agreements with Elecsys customers (Horsch Tr. 50:4-8; RE3450183). These agreements and
`associated financial/revenue information, including for any and all of the Elecsys instruments
`(1010,2010, e170, etc.), are unquestionably relevant as confirmed by the admissions of Roche's
`30(b)(6) witness that an Elecsys user "needs the instrument to run the assays" and that "no other
`competitor...supplies an instrument that could be run with [Roche's] Elecsys assays" (Ofen loch
`Tr. 24-25) to the issue of infringement/damages (reasonable royalty on sales revenue, convoyed
`sales, etc.) and the commercial value and success of the invention. See Chembio, 236 F.R.D. at
`137-139 (E.D.N.Y. 2006). For instance, Roche has failed to produce financial/revenue
`information for the Elecsys e170 instruments andlor for the first few years of infringing sales
`after launch (i.e., pre-2000). Id. Enzo seeks immediate production of this improperly withheld
`discovery.
`II.
`
`ROCHE'S POSITION
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`A. Unlike Enzo, Rocbe Was Diligent In Supplementing Its Contentions And It Did
`So Well Before Any Prejudice To Enzo Or The Scbedule Could Materialize.s
`The issue before the Court is whether good cause supports Roche's supplemental
`invalidity contentions. See Local Patent Rule 9; Patent Case Management Judicial Guide, §
`2.2.3.3.1 (2d ed. 2012).6 As a threshold matter, the Court should reject Enzo's effort to draw
`parallels to the denial of discovery relating to Roche's Taqman(ID probes. See All v. Medlrcmic,
`2006 WL 278868, *5-6 (E.D. Tex. 2006) (allowing amended invalidity contentions after
`previously denying amended infringement contentions). In its September 5, 2013 letter to the
`Court, Enzo did not even attempt to argue that it was diligent in supplementing its contentions to
`include the Taqman® probes.7 Nor did Enzo dispute the fact that its supplemental contentions
`would have been prejudicial insofar as they would have rendered it impossible to meet the
`
`5 During the meet.and-confer on this issue, Enzo expressed no interest in hearing Roche's reasons for supplementing
`its contentions and instead stated, in unequivocal terms, that Enzo would seek to strike Roche's contentions.
`6 District courts typically consider the factors set forth in Convolve, 2007 WL 700904, at *2 (S.D.N.Y.2007).
`7 Enzo could not have made any such argument. As explained in the parties' submissions to the Court. Roche
`produced a complete set of technical documents relating to the TaqMan® probes in May 2013. Enzo did not seek to
`supplement its infringement contentions until four months later, at a time when allowing Enzo to accuse an entirely
`new product line would have jeopardized the entire schedule and required the parties to start from square one.
`
`

`

`Case 1:14-cv-02396-PGG-MHD Document 176-6 Filed 10/01/19 Page 9 of 11
`Case 1:04-cv-04046-RJS Document 129 Filed 11/12/13 Page 8 of 10
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`Honorable Judge Richard J. Sullivan
`November 5, 2013
`Page 4
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`deadline for the close of fact discovery without compromising Roche's defenses to Enzo's new
`infringement theories. By contrast, Roche's supplemental invalidity contentions are fully
`justified for three separate reasons and, accordingly, the Court should deny Enzo's request for
`the "drastic" and "extreme" remedy of precluding critical evidence of patent invalidity when
`neither party is seeking any additional fact discovery on the issue. 8
`FiTst, Enzo progressively expanded the scope of its infringement and claim construction
`theories over the course of discovery, which implicated a much higher volume of prior art,
`necessitated additional searching, and required revisions to Roche's invalidity positions.9 See
`Fresenius Medical Care v. Baxter Intern., 2005 WL 2043047 at *2 (N.D. Cal. 2005) (shifting
`infringement theories relevant). Supplementation was also justified by the nature of the prior art
`investigation itself, which was extremely laborious and time consuming. Because the asserted
`patents are directed to certain chemical structures, prior art cannot be readily located based on
`the use of standard search terms or electronic searches. Thus, through its outside experts, Roche
`conducted additional prior art searches after serving its initial invalidity contentions to make sure
`that any relevant prior art had been captured, a task made even more complicated by Enzo's
`expanding view of the patents. Advanced Micro Devices v. Samsung, 2009 WL 890515 at * 1-2
`(N.D. Cal. 2009) ("lack of standardized tenlls" and "high volume" of prior art relevant).
`Second, Roche's supplemental contentions neither prejudiced Enzo nor impacted the case
`schedule. Enzo has never sought, and it does not now seek, any additional discovery relating to
`Roche's contentions. Enzo did not ask Roche's witnesses a single question about Roche's
`invalidity positions, and Enzo does not now seek to redepose those witnesses.lo All but one of
`Roche's invalidity arguments were disclosed in contentions served prior to the parties' meet-and­
`confer on claim construction, which was the first step in that process. Enzo does not identify any
`implications that Roche's supplemental contentions would have on Enzo's claim construction
`positions, nor does Enzo suggest that it cannot address any such implications in its proposed
`constructions andlor in its opening claim construction brief due on December 20. II See
`Samsung, 2009 WL 890515 at >1<2; Tessera v. AMD, 2007 WL 1288199, *1 (N,D. Cal, 2007).
`Third, the record makes clear that Roche timely supplemented its invalidity contentions
`when it became aware of additional relevant prior art and invalidity arguments:
`
`8 See Abbott Labs. v. Lupin, 20 II WL 1897322 (D. Del. 20 II) ("extreme sanction" under the circumstances);
`Bristol-Myers v. Rhone-pozllenc, 2000 WL 11.540.56 (S.D.N.Y. 2000) ("little, if any, fact discovery required").
`9 Enzo's amended infringement contentions and interrogatory responses, which were served on August 29,
`September 12, 14, and 15, take an extremely broad view of the patent claims. For example, in footnotes 3 and 4 of
`its September 12,2013 contentions, Enz,o accused "all products" with a detectable molecule and a "linker having at
`least 6 atoms with at least 4 atoms in a direct chain." At page 10 of its September 14 contentions, Enzo effectively
`construed the "A 3., claim limitation in the '523 patent as filly sequence of atoms attached to a "NH-CH2" sequence.
`10 That Roche did not offer a 30(b)(6) witness on its invalic.lity contenlions is irrelevant. Enzo also did not provide a
`30(b)(6) witness on such issues, which are typically the province of experts. Also, Roche's witnesses were noticed
`in their individual capacities, which means that Enzo could have asked those witnesses any questions it wanted.
`11 Enzo's other arguments are equally meritless. That tbis case has been ongoing for eight (8) years is not relevant
`because the'.523 patent claims were stayed until February 28, 2013, and because Roche could not provide
`It is also irrelevant that
`comprebensive invalidity contentions without knowing Enw's infringement theories.
`Roche's supplemental invalidity contentions are based on public materials, because, almost by definition, prior art is
`based on knowledge in the public domain. Enzo's "circular view" would effectively mean that invalidity
`contentions could never be supplemented. Positive Techs. v. Sony Elec., 2013 WL 322556, *2-·4 (N.D. Cal. 2013) .
`
`•
`
`

`

`Case 1:14-cv-02396-PGG-MHD Document 176-6 Filed 10/01/19 Page 10 of 11
`Case 1:04-cv-04046-RJS Document 129 Filed 11/12/13 Page 9 of 10
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`Honorable Judge Richard J. Sullivan
`
`November 5, 2013
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`Page 5
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`• Roche supplemented its contentions with three (3) prior art references and five (5) invalidity
`arguments based on discussions with its technical experts in late July and August. Roche
`supplemented its contentions with those positions on September 17, before Roche's
`depositions and/or the claim construction phase. 12 The only reason Roche did not
`immediately supplement its contentions is that Enzo refused to respond to Roche's requests
`for a date to exchange responses to contention interrogatories, see September 5, 2013 Letter
`to the Court at 3-4, which the parties eventually agreed would be in mid-September.
`• Roche further supplemented its contentions with nine (9) prior art references on September
`30, and seven (7) invalidity arguments on September 17, September 30, and October 16. 13
`Over that timeframe, Roche learned through Enzo's supplemental infringement contentions
`and interrogatory responses that Enzo was intending to take an extremely broad view of the
`patents, thereby implicating additional prior art and invalidity arguments. See supra note 9.
`• Three (3) references in Roche's September 17 contentions-Heller, Whiteley and Guesdon­
`were produced in connection with Roche's December 2005 invalidity contentions relating to
`other Enzo patents not at issue here. Although Roche was aware of those references in 2005,
`with respect to the '830 and '523 patents at issue here, their "materiality ... only became
`apparent after the invalidity contentions were filed." Tessera, 2007 WL 1288199, at '" 1.
`• Enzo's assertion that Roche added "nearly 60" references is misleading because, as Roche
`made clear in its interrogatory responses, forty-four (44) of those references were cited as
`backgroWld materials that do not "themselves constitute prior art." See REC v. Bamboo, 2012
`WL 3527891, at *4 (W.D. Wash. 2012); Local Patent Rule 7. The Court need not address
`those references because Roche was not required to list them in its contentions but did so
`anyway to provide more complete disclosure of its theories. See Exs I, J (highlighted). 14
`
`B. Enzo's Request For Additional Discovery Should Be Denied.
`In July 2013, Roche produced a comprehensive set of licenses and agreements relating to the
`asserted patents. After the deposition of Roche's 30(b)(6) witness on licensing topics and the
`twice extended deadline for the close of fact discovery, Bnzo now seeks dozens of licenses and
`thousands of customer agreements based solely on the groWld that they "relate" to the accused
`products. The Court should reject Bnzo's request because Enzo has not made any argument that
`the additional agreements it seeks are related to the asserted patents andlor the features of the
`accused products that relate to the claimed inventions, See Funai v. Orion, 2002 WL 1808419 at
`*15-16 (S.D,N.Y. 2002). With respect to "associated financial/revenue information," it is
`unclear what specific, additional discovery Enzo is seeking because Roche has conducted a
`reasonably diligent search and produced all responsive financial documents it discovered.
`
`12 These are the Costello, Gallati, and Wagener references cited in Roche's invalidity contentions, as well as the
`'523 patent invalidity arguments based on the terms "structural protein" in claim 13) "detectable metal chelatable
`thereby" in claim 15, "a detectably labeled specific [binding] partner" in claim IS, and "the molecule of claim 15" in
`claims 16, 18, and 20. and the '830 patent invalidity argument based on the term "non-radioactive moiety."
`13 These are the additional prior art references cited in Roche's September 30 contentions, as well as the '523 patent
`," "Detb
`invalidity arguments based on the claim terms "A 2
`, •• comprising," and "A\" and (he '830 patent invalidity
`arguments based on the claim terms "oligo- or polynucleotide," "indirectly attached," and "terminal nucleotide"
`14 Roche's contentions expressly state that the cited references "may be relied upon to show the state of the art ill the
`relevant time frame," which, for forty-four (44) ofthe references, Roche confirmed in its interrogatory responses.
`
`

`

`Case 1:14-cv-02396-PGG-MHD Document 176-6 Filed 10/01/19 Page 11 of 11
`Case 1:04-cv-04046-RJS Document 129 Filed 11/12/13 Page 10 of 10
`
`Honorable Judge Rkhard J. Sullivan
`November 5, 2013
`Page 6
`
`Respectful1y submitted,
`
`By: lsi Richard C. Pettus
`Richard C. Pettus
`GREENBERG TRAURIG, LLP
`
`lsi Robert 1. Gunther, Jr.
`By:
`Robert J. Gunther, Jr
`WILMERHALE LLP
`
`Attorneyfor the Enzo parties
`
`Attorneyfor the Roche parties
`
`