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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`IN RE: SITAGLIPTIN PHOSPHATE (’708
`& ’921) PATENT LITIGATION
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`MDL No. 19-2902-RGA
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`C.A. Nos. 19-310-RGA,
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`19-311-RGA,
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`19-312-RGA,
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`19-313-RGA,
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`19-314-RGA,
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`19-316-RGA,
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`19-317-RGA,
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`19-318-RGA,
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`19-319-RGA,
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`19-320-RGA,
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`19-321-RGA,
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`19-347-RGA,
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`19-872-RGA,
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`19-1489-RGA
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`PLAINTIFF MERCK SHARP & DOHME CORP.’S
`RESPONSES AND OBJECTIONS TO DEFENDANTS’
`FIRST SET OF JOINT INTERROGATORIES (NOS. 1–10)
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`Pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure, Plaintiff Merck
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`Sharp & Dohme Corp. (“Merck”), by undersigned counsel, hereby objects and responds as
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`follows to Defendants’ First Set of Joint Interrogatories.
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`GENERAL OBJECTIONS
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`Pursuant to D. Del. LR 26.1, Merck provides the following General Objections. These
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`objections form a part of, and are hereby incorporated into, the response to each and every
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`interrogatory set forth below. Nothing in those responses, including any failure to recite a
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`specific objection in response to a particular interrogatory, should be construed as a waiver of
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`any of these General Objections.
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`1.
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`Merck objects to each interrogatory, definition, and instruction to the extent that it
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`purports to impose obligations or responsibilities different from or in excess of those imposed by
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`ME1 31736116v.1
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`1
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`DRL Ex. 1015, p. 001
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`the Federal Rules of Civil Procedure and the Local Rules of the United States District Court for
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`the District of Delaware, or any other applicable rule, law, doctrine or accepted practice. Merck
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`will interpret and respond to the interrogatories in good faith and in accordance with the rules.
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`2.
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`Merck objects to each interrogatory, definition, and instruction to the extent that it
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`calls for the disclosure of information or documents that are privileged or otherwise protected
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`from discovery pursuant to the attorney-client privilege, the accountant-client privilege, the
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`common-interest privilege, the work product doctrine, or any other applicable privilege,
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`protection, or immunity. Merck does not agree to provide such information or documents
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`protected from discovery and will withhold or redact information or documents on that basis. If
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`protected information or documents are inadvertently provided in response to the interrogatories,
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`pursuant to the parties’ Stipulated Protective Order, D.I. 12, No. 19-md-2902-RGA, and Federal
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`Rule of Evidence 502, the production of such information or documents shall not constitute a
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`waiver of Merck’s rights to assert the applicability of any privilege, protection, or immunity to
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`the information or documents, to seek the return of such material, or to object to the use of such
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`material at any stage of the action or in any other action or proceeding. Merck will comply with
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`the Federal Rules of Civil Procedure and the Local Rules of the United States District Court for
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`the District of Delaware in identifying privileged material, but Merck specifically objects to
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`identifying on a privilege log communications between Merck and its litigation counsel, or
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`documents or electronically stored information that were created after December 13, 2010, which
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`was the date of the first Patent Certification Notice pursuant to Section 505(j)(2)(B)(ii) of the
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`Federal Food, Drug, and Cosmetic Act, 21 U.S.C. § 355(j)(2)(B)(ii), received by Merck
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`indicating that a generic pharmaceutical company intended to market a sitagliptin product before
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`the expiry of patents protecting Januvia®, Janumet®, Janumet® XR, and will not log such
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`ME1 31736116v.1
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`2
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`DRL Ex. 1015, p. 002
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`documents. Merck further objects to logging documents or electronically stored information
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`related to other United States or foreign litigations, as well as documents or electronically stored
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`information related to foreign patent office proceedings or foreign regulatory filings or
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`approvals, on the grounds that such materials are not relevant to the subject matter of this
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`litigation and that logging them would be unduly burdensome, and will not log such documents
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`or electronically stored information.
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`3.
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`Merck objects to Defendants’ Instruction No. 10 to the extent that it requires
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`logging of more information than required by the Federal Rules of Civil Procedure, the Local
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`Rules of the United States District Court for the District of Delaware, or any other applicable
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`rules. Merck will comply and identify privileged material in a manner consistent with the
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`foregoing rules.
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`4.
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`Merck objects to Defendants’ requests to the extent that they call for disclosure of
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`trade secret, proprietary, personal, commercially sensitive, third-party confidential, or other
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`confidential information. Merck will only disclose confidential information, including trade
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`secret, proprietary, personal, commercially sensitive, third-party confidential, or other
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`confidential information, that is responsive, relevant, and not otherwise protected, pursuant to the
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`stipulated protective order, D.I. 12, No. 19-md-2902-RGA, and/or D. Del. LR 26.2. Merck may
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`withhold information or documents on this basis, and Merck may redact confidential information
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`from documents that it has otherwise agreed to produce.
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`5.
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`Merck may, in response to certain of Defendants’ interrogatories, refer to or
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`produce documents from custodians or non-custodial sources located outside the United States.
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`Foreign privacy laws, over which Merck has no control, may have a substantial impact on the
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`nature and extent of information or documents that Merck can disclose or produce from such
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`ME1 31736116v.1
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`3
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`DRL Ex. 1015, p. 003
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`sources. Merck objects to the interrogatories to the extent that they call for production of
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`information from any jurisdiction outside that United States that (i) pertains to a specific
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`individual that can be linked to that individual; or (ii) is reasonably believed by Merck to contain
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`information about or pertaining to a specific individual that can be linked to that individual and
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`that reveals race, ethnic origin, sexual orientation, political opinions, religious or philosophical
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`beliefs, trade union or political party membership or that concerns an individual’s health. Merck
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`is withholding such documents or information on this basis and will redact such information
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`from any documents that it produces in this action.
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`6.
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`Merck objects to each interrogatory, definition, and instruction to the extent that it
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`seeks “any” or “all” information responsive to the interrogatory. Such demands are unduly
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`burdensome and overly broad, and they seek documents that are not relevant to the claim or
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`defense of any party or proportional to the needs of the case considering the importance of the
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`issues at stake in the action, the amount in controversy, the parties’ relative access to relevant
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`information, the parties’ resources, the importance of the discovery in resolving the issues, and
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`whether the burden or expense of the proposed discovery outweighs its likely benefit. Merck’s
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`search for responsive information will be limited to the non-custodial sources and custodians
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`identified by Merck, agreed to by the parties, or ordered by the Court. Absent such agreement or
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`order, Merck will not search for or produce documents from any other source or location.
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`Additionally, Merck incorporates by reference all objections set forth in the General Objections
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`of Merck’s Responses and Objections to Defendants’ First Set of Joint Requests for the
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`Production of Documents and Things to Plaintiff (Nos. 1–107), which are incorporated herein by
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`reference, and will not search for or produce documents created outside of the date restrictions
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`set forth therein.
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`ME1 31736116v.1
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`4
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`DRL Ex. 1015, p. 004
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`7.
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`Merck objects to each interrogatory, definition, and instruction as overly broad
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`and unduly burdensome to the extent that it purports to require Merck to search for and produce
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`electronic documents without reasonable limitations upon the scope of information to be
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`searched or the content of the material to be searched for. Merck will use reasonable diligence to
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`respond to the interrogatories based on information and/or documents in its possession, custody,
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`or control, based on a reasonable search of those files that are reasonably accessible and in which
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`such information or documents ordinarily would be found and of files of those individuals whom
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`Merck reasonably believes are most likely to have responsive documents and/or information
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`about the specific matters at issue.
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`8.
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`Merck objects to each interrogatory, definition, and instruction to the extent that it
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`seeks information that is unreasonably cumulative or duplicative, that is publicly available, that
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`is already known to Defendants or Defendants’ counsel, that is of no greater burden for
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`Defendants to ascertain than Merck, or that is ascertainable from some other source that is more
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`convenient, less burdensome, or less expensive, that is otherwise more appropriately obtained
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`from another party, and/or to the extent that compliance would be unduly burdensome,
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`expensive, or oppressive. Unless otherwise indicated specifically below, Merck will not provide
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`any such information or documents.
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`9.
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`Merck objects to each interrogatory incorporating or calling for a subjective
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`judgment that information “concerns” a particular issue, “supports” a particular issue, or
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`“refutes” a particular issue. By their subjective nature, such interrogatories are vague and
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`ambiguous. Such interrogatories also intrude upon the attorney-work product protection by
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`seeking an identification of the information that counsel considers relevant to a particular issue.
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`To the extent that such interrogatories seek “all” information, they also are overly broad and
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`ME1 31736116v.1
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`DRL Ex. 1015, p. 005
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`unduly burdensome because they fail to account for proportionality. Merck will consider as
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`responsive to any request that seeks documents or things “concerning,” “reflecting,” “regarding,”
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`or “relating” (or similar language) to a designated subject only those documents or things that
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`discuss the subject on their face.
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`10. Merck objects to each interrogatory, definition, and instruction incorporating or
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`calling for a legal conclusion or premised on an erroneous statement of law. By incorporating
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`the need to make a legal conclusion or erroneous statement of law, such interrogatories are vague
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`and ambiguous. Such interrogatories also intrude upon the attorney-work product protection by
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`seeking an identification of the information that counsel believes satisfy the legal contention. To
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`the extent that such interrogatories seek “all” documents, they also are overly broad and unduly
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`burdensome because they fail to account for proportionality.
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`11.
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`In furnishing these objections and responses to the interrogatories, Merck does not
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`admit or concede the relevance, materiality, authenticity, or admissibility in evidence of any
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`interrogatory or information. All objections to the use, at trial or otherwise, of any information
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`provided in response to the interrogatories and to any further disclosure of information are
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`hereby expressly reserved. In addition, Merck’s statements that it will produce documents or
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`things in response to a particular request do not constitute an admission that it has any such
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`documents, and its responses should not be construed in such a manner. Where Merck responds
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`that it will produce documents, it means that it will produce those documents that exist and are
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`located after a reasonable search, subject to Merck’s objections set forth in the General
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`Objections of Merck’s Responses and Objections to Defendants’ First Set of Joint Requests for
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`the Production of Documents and Things to Plaintiff (Nos. 1–107), which are incorporated
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`herein by reference. Unless indicated otherwise, where Merck has agreed to produce documents
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`ME1 31736116v.1
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`DRL Ex. 1015, p. 006
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`in response to particular interrogatories, those documents will be produced on a rolling basis and
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`in accordance with the Court’s scheduling order.
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`12. Merck objects to each interrogatory, definition, or instruction to the extent that it
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`seeks production of documents and electronically stored information relating to Merck’s
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`sitagliptin products in countries other than the United States—including but not limited to
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`documents and electronically stored information relating to foreign counterparts to U.S. Patent
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`Nos. 7,326,708 and 8,414,921 (including any foreign litigation involving such patents), foreign
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`regulatory documents, and foreign sales and marketing information—on the grounds that such
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`interrogatories are overly broad, unduly burdensome, and seek information not relevant to any
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`party’s claim or defense nor proportional to the needs of the case in accordance with Federal
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`Rule of Civil Procedure 26(b)(1). Merck will not produce such documents and electronically
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`stored information, and Merck’s responses should be read to exclude the production of such
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`documents and electronically stored information.
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`13. Merck objects to each interrogatory, definition, or instruction to the extent it calls
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`for the production of draft articles, submissions, publications, or other documents, on the ground
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`and to the extent that production of drafts of documents is unduly burdensome and not relevant
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`to any party’s claim or defense nor proportional to the needs of the case in accordance with
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`Federal Rule of Civil Procedure 26(b)(1).
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`14. Merck objects to each interrogatory, definition, and instruction to the extent that it
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`prematurely seeks production of information to be provided during expert discovery. Merck will
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`not prematurely produce documents or information that are to be provided during expert
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`discovery, and will only produce such documents and information in accordance with the Court’s
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`schedule for expert discovery.
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`ME1 31736116v.1
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`7
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`DRL Ex. 1015, p. 007
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`15. Merck’s responses herein are based on facts presently known to Merck and
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`represent a diligent and good-faith effort to respond to the interrogatories. Merck’s discovery
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`and investigation into the matters specified are ongoing. Accordingly, Merck reserves the right
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`to supplement, alter, or change its responses and objections and to produce additional responsive
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`information or documents, if any, that Merck has in its possession, custody, or control at the time
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`the interrogatories were propounded. Furthermore, Merck reserves the right, at trial or during
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`other proceedings in this action, to rely on documents, evidence, and other matters in addition to
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`the documents or information produced in response to the interrogatories, whether or not such
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`documents, evidence, or other matters are newly discovered or are now in existence but have not
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`been identified or produced despite diligent and good-faith efforts.
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`16. Merck objects to Defendants’ definition of “Plaintiff,” “Merck” and “You” as
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`overly broad to the extent that they refer to “any predecessor or successor company” or to the
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`“present and former principals, partners, directors, owners, officers, members, employees,
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`agents, representatives, consultants, and attorneys of Merck, or any affiliated corporation or
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`business entity controlled by Merck.” Documents and electronically stored information in the
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`possession, custody, or control of Merck’s “present and former principals, partners, directors,
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`owners, officers, members, employees, agents, representatives, consultants, and attorneys of
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`Merck, or any affiliated corporation or business entity controlled by Merck” are not necessarily
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`in the possession, custody, or control of Merck, and Merck will not construe the requests to
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`require production of such documents or electronically stored information to the extent that they
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`are not in the possession, custody, or control of Merck. Merck will interpret all references to
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`“Merck,” “Plaintiff,” and “You” to mean Merck Sharp & Dohme Corp.
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`ME1 31736116v.1
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`8
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`DRL Ex. 1015, p. 008
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`17. Merck incorporates by reference all objections set forth in the General Objections
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`of Merck’s Responses and Objections to Defendants’ First Set of Joint Requests for the
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`Production of Documents and Things to Plaintiff (Nos. 1–107).
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`Merck expressly reserves the right to supplement these General Objections.
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`RESPONSES AND OBJECTIONS TO SPECIFIC INTERROGATORIES
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`INTERROGATORY NO. 1:
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`Separately for each asserted claim of the Patents-in-Suit, describe in detail the facts and
`circumstances surrounding the conception and reduction to practice (if any) of the claimed
`subject matter. This description should include, without limitation, the alleged dates and
`locations of any such conception and reduction to practice, including any acts of diligence, the
`identity of each individual involved in the alleged conception or reduction to practice and each of
`their respective roles, and identification of any documents and/or other evidence (including but
`not limited to all communications, invention disclosure forms, and laboratory notebooks) that
`describe the foregoing.
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`RESPONSE TO INTERROGATORY NO. 1:
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`Merck incorporates its General Objections as though fully set forth herein. Merck objects
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`to this interrogatory on the grounds that it is unduly burdensome and overly broad; for example,
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`the request the Merck identify “any documents” and “all communications” is not a reasonable or
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`proportionate interrogatory. Merck further objects to this interrogatory as overly broad,
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`burdensome, vague, and ambiguous with respect to Defendants’ request for “the facts and
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`circumstances surrounding the conception and reduction to practice . . . of the claimed subject
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`matter,” and that the information sought by this interrogatory may be more readily ascertainable
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`from other forms of discovery, including deposition testimony. Merck further objects to this
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`interrogatory on the basis that it does not seek information relevant to any claim or defense in
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`this case, particularly in view of the fact that Defendants have not asserted any defense regarding
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`the conception or reduction to practice of the Patents-in-Suit. Merck further objects to this
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`interrogatory on the grounds that it contains multiple discrete subparts within the meaning of
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`ME1 31736116v.1
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`9
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`DRL Ex. 1015, p. 009
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`Federal Rule of Civil Procedure 33(a)(1) and therefore constitutes multiple interrogatories as
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`follows. First, there are two Patents-in-Suit with more than twenty asserted claims. As reflected
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`by Defendants’ request that Merck respond “[s]eparately for each asserted claim,” this
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`interrogatory in fact contains dozens of interrogatories, far in excess of the fifteen joint
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`interrogatories permitted to Defendants under the Court’s scheduling orders. Second, this
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`interrogatory contains at least three subparts seeking (1) a narrative of facts concerning
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`conception and reduction to practice, (2) an identification of persons with discoverable
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`information, and (3) an identification of discoverable documents. Merck further objects to this
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`interrogatory to the extent it seeks information protected by the attorney-client privilege,
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`attorney-work product doctrine, the common interest privilege, and/or any other applicable
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`privilege or immunity. Merck objects to this interrogatory because it calls for subjective
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`relevance determinations concerning persons with discoverable information and/or discoverable
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`documents.
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`Subject to and without waiving the foregoing specific and general objections, Merck
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`states as follows:
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`The asserted claims of the ’708 patent were conceived of and reduced to practice no later
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`than the June 24, 2003 filing date of U.S. provisional application No. 60/482,161, and that at
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`least claims 1 and 2 of the ’708 patent were conceived of and reduced to practice no later than
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`December 13, 2001.
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`The asserted claims of the ’921 patent were conceived of and reduced to practice no later
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`than the December 16, 2005 filing date of U.S. provisional application No. 60/750,954.
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`Discovery in this matter is ongoing, and Merck is continuing to investigate whether it
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`will contend that one or more of the claims in any of the Patents-in-Suit was conceived of and
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`ME1 31736116v.1
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`DRL Ex. 1015, p. 010
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`reduced to practice on an earlier date. Merck expressly reserves the right to supplement this
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`interrogatory response.
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`Merck further states that, based on the facts presently known to Merck, each of the
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`inventors listed on the face of the Patents-in-Suit contributed to the conception and reduction to
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`practice of one or more of the claims of the Patents-in-Suit.
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`Merck further states that additional information sought by this interrogatory can be
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`derived or ascertained from documents that Merck will produce subject to Merck’s objections
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`and responses herein, as well as documents that Merck will produce in response to Defendants’
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`First Set of Joint Requests for Production of Documents and Things to Plaintiff (Nos. 1–107),
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`subject to Merck’s objections and responses thereto. Merck will continue to supplement this
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`interrogatory response in conjunction with the production of such documents.
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`INTERROGATORY NO. 2:
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`If Merck contends that any claim of the Patents-in-Suit is entitled to a priority date earlier
`than the filing date of the Patents-in-Suit, identify the earliest priority date to which that claim
`allegedly is entitled, all facts and documents that support or are related to those dates, and the
`three individuals employed by Merck who are most knowledgeable about the subject matter of
`this interrogatory.
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`RESPONSE TO INTERROGATORY NO. 2:
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`Merck incorporates its General Objections as though fully set forth herein. Merck objects
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`to this interrogatory on the grounds that it is unduly burdensome and overly broad; for example,
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`the request to identify “all facts and documents” is not a reasonable or proportionate
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`interrogatory. Merck further objects to this interrogatory on the basis that it does not seek
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`information relevant to any claim or defense in this case, particularly in view of the fact that
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`Defendants have not asserted any defense regarding the priority date of the asserted claims of the
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`Patents-in-Suit. Merck further objects to this interrogatory as vague and ambiguous as there are
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`two Patents-in-Suit with different filing dates, and whether particular facts and documents
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`ME1 31736116v.1
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`DRL Ex. 1015, p. 011
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`“support or are related” to Merck’s contentions requires a subjective determination that intrudes
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`upon the attorney-work product protection. This interrogatory is further vague and ambiguous
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`and improperly assumes facts insofar as it seeks the identity of “the three individuals employed
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`by Merck who are most knowledgeable about the subject matter of this interrogatory.” Merck
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`further objects to this interrogatory on the grounds that it contains multiple discrete subparts
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`within the meaning of Federal Rule of Civil Procedure 33(a)(1) and therefore constitutes
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`multiple interrogatories as follows. First, there are two Patents-in-Suit with more than twenty
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`asserted claims. As reflected by Defendants’ request that Merck provide responses for “any
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`claim . . . entitled to a priority date earlier than the filing date of the Patents-in-Suit” this
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`interrogatory in fact contains dozens of interrogatories, far in excess of the fifteen joint
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`interrogatories permitted to Defendants under the Court’s scheduling orders. Second, this
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`interrogatory contains at least three subparts seeking (1) a narrative of facts concerning the
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`priority date of each claim, (2) an identification of persons with discoverable information, and
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`(3) an identification of discoverable documents. Merck further objects to this interrogatory to
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`the extent it seeks information protected by the attorney-client privilege, attorney-work product
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`doctrine, the common interest privilege, and/or any other applicable privilege or immunity.
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`Merck objects to this interrogatory as it calls for subjective relevance determinations concerning
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`persons with discoverable information and/or discoverable documents, particularly with respect
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`to Defendants’ request that Merck identify “the three individuals employed by Merck who are
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`most knowledgeable about the subject matter of this interrogatory.” Merck further objects to
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`Interrogatory No. 2 as duplicative of Interrogatory No. 1, and incorporates its objections and
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`responses to Interrogatory No. 1 herein.
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`ME1 31736116v.1
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`12
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`DRL Ex. 1015, p. 012
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`Subject to and without waiving the foregoing specific and general objections, Merck
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`states as follows:
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`The asserted claims of the ’708 patent are entitled to a priority date no later than the June
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`24, 2003 filing date of U.S. provisional application No. 60/482,161, and that at least claims 1 and
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`2 of the ’708 patent are entitled to a priority date no later than December 13, 2001.
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`The asserted claims of the ’921 patent are entitled to a priority date no later than the
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`December 16, 2005 filing date of U.S. provisional application No. 60/750,954.
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`Discovery in this matter is ongoing, and Merck is continuing to investigate whether it
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`will contend that one or more of the claims in any of the Patents-in-Suit is entitled to a priority
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`date earlier than the filing dates of the Patents-in-Suit. Merck expressly reserves the right to
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`supplement this interrogatory response.
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`Merck further states that, based on the facts presently known to Merck, one or more of
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`the inventors of the ’708 patent and one or more of the inventors of the ’921 patent have
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`knowledge of facts pertaining to the priority date of the asserted claims of the Patents-in-Suit.
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`Merck further states that additional information sought by this interrogatory can be
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`derived or ascertained from documents that Merck will produce subject to Merck’s objections
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`and responses herein, as well as documents that Merck will produce in response to Defendants’
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`First Set of Joint Requests for Production of Documents and Things to Plaintiff (Nos. 1–107),
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`subject to Merck’s objections and responses thereto. Merck will continue to supplement this
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`interrogatory response in conjunction with the production of such documents.
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`INTERROGATORY NO. 3:
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`To the extent that Merck contends that any of the references identified in any of
`Defendants’ invalidity contentions for the Patents-in-Suit are not prior art under at least one of
`either 35 U.S.C. § 102(a), § 102(b), or § 102(e), identify all such references and, for each
`reference so identified, identify any evidence supporting or refuting Merck’s contention(s).
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`ME1 31736116v.1
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`13
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`DRL Ex. 1015, p. 013
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`RESPONSE TO INTERROGATORY NO. 3:
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`Merck incorporates its General Objections as though fully set forth herein. Merck objects
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`to this interrogatory as unduly burdensome and overly broad; for example, the request to identify
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`“all facts and documents” is not a reasonable or proportionate interrogatory. Merck further
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`objects to this interrogatory on the basis that it does not seek information relevant to any claim or
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`defense in this case, particularly in view of the fact that Merck does not bear the burden of proof
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`regarding invalidity. Defendants have not established a prima facie case of invalidity as to the
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`Patents-in-Suit, and Merck’s response to this interrogatory and later supplementation thereof
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`should not be construed as an admission or suggestion that Defendants have established a prima
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`facie case of invalidity as to any of the asserted claims. Merck further objects to this
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`interrogatory as vague and ambiguous as whether evidence “support[s] or refute[s] Merck’s
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`contention(s)” requires a subjective determination that intrudes upon the attorney-work product
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`protection. Merck further objects to this interrogatory on the grounds that it contains multiple
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`discrete subparts within the meaning of Federal Rule of Civil Procedure 33(a)(1) and therefore
`
`constitutes multiple interrogatories, as Defendants have requested a response for “each
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`reference” identified, and Defendants have already exceeded the fifteen joint interrogatories
`
`permitted to Defendants under the Court’s scheduling orders. Merck further objects to this
`
`interrogatory to the extent it seeks information protected by the attorney-client privilege,
`
`attorney-work product doctrine, the common interest privilege, and/or any other applicable
`
`privilege or immunity. Merck objects to this interrogatory as it calls for a legal conclusion as to
`
`whether a reference qualifies as “prior art.” This interrogatory is also premature, vague,
`
`ambiguous, and improperly assumes facts as Defendants have not served any invalidity
`
`contentions. Accordingly, no response to this interrogatory is required at this time. Merck
`
`expressly reserves the right to supplement this interrogatory response.
`
`ME1 31736116v.1
`
`14
`
`DRL Ex. 1015, p. 014
`
`

`

`
`
`INTERROGATORY NO. 4:
`
`Describe in detail Merck’s contentions as to the validity of the claims of the Patents-in-
`Suit in response to each invalidity contention set forth in Defendants’ invalidity contentions for
`the Patents-in-Suit, including, but not limited to, identifying each element in the claims of the
`Patents-in-Suit that Merck contends is not present in the prior art cited in Defendants’ invalidity
`contentions, describing any contention that the claims in the Patents-in-Suit are not anticipated
`by the prior art, literature, or other evidence cited or otherwise referred to in Defendants’
`invalidity contentions, describing any contention that the claims in the Patents-in-Suit are not
`rendered obvious by the prior art, literature, or other evidence cited or otherwise referenced in
`Defendants’ invalidity contentions, and describing any contention that the claims in the Patents-
`in-Suit are not invalid for lack of written description or enablement.
`
`RESPONSE TO INTERROGATORY NO. 4:
`
`Merck incorporates its General Objections as though fully set forth herein. Merck objects
`
`to this interrogatory on the basis that it does not seek information relevant to any claim or
`
`defense in this case, particularly in view of the fact that Merck does not bear the burden of proof
`
`regarding invalidity. Accordingly, Merck has no obligation or burden to (i) identify each
`
`element in the claims of the Patents-in-Suit that it contends is not present in the prior art cited in
`
`Defendants’ invalidity contentions, or (ii) describe any contention that the claims in the Patents-
`
`in-Suit are not invalid for lack of written description or enablement, beyond responding to the
`
`specific contentions set forth in Defendants’ invalidity contentions. Defendants have not
`
`established a prima facie case of invalidity as to the Patents-in-Suit, and Merck’s response to this
`
`interrogatory and later supplementation thereof should not be construed as an admission or
`
`suggestion that Defendants have established a prima facie case of invalidity as to any of the
`
`asserted claims. Merck further objects to this interrogatory on the grounds that it contains
`
`multiple discrete subparts within the meaning of Federal Rule of Civil Procedure 33(a)(1) and
`
`therefore constitutes multiple interrogatories, as Defendants have requested a response for “each
`
`invalidity contention set forth in Defendants’ invalidity contentions,” as well as a response
`
`regarding the novelty, nonobviousness, written description, and enablement of the claims of the
`
`ME1 31736116v.1
`
`15
`
`DRL Ex. 1015, p. 015
`
`

`

`
`
`Patents-in-Suit, and Defendants have already exceeded the fifteen joint interrogatories permitted
`
`to Defendants under the Court’s scheduling orders. Merck further objects to this interrogatory to
`
`the extent it seeks information protected by the attorney-client privilege, attorney-work product
`
`doctrine, the common interest privilege, and/or any other applicable privilege or immunity.
`
`Merck objects to this interrogatory as it calls for a legal conclusion as to the validity of the
`
`Patents-in-Suit. Merck further objects to this interrogatory as prematurely seeking expert
`
`d