Case 1:16-cv-01221-LPS Document 154 Filed 06/16/20 Page 1 of 4 PageID #: 1176
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`BAYER HEALTHCARE LLC and BAYER
`HEALTHCARE PHARMACEUTICALS
`INC.,
`
`Plaintiffs,
`
`v.
`
`APOTEX INC. and APOTEX CORP.,
`
`Defendants.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`C.A. No. 16-1221 (LPS)
`CONSOLIDATED
`
`REDACTED -- PUBLIC VERSION
`Original Filing Date: June 8, 2020
`Redacted Filing Date: June 16, 2020
`JOINT STATUS REPORT
`
`Pursuant to the discussion between the Court and the parties during the June 4, 2020
`
`teleconference, the parties provide the following:
`
`Plaintiffs’ Position
`
`Following the Court’s direction during the June 4, 2020 Status Conference, the parties
`
`have discussed proposed discovery from Bayer in response to Apotex’s new non-enablement
`
`defense regarding U.S. Patent No. 9,458,107 (“the ’107 patent”), which was first raised by
`
`Apotex at the close of expert discovery. Bayer had proposed providing discovery now, subject
`
`to its motion in limine, in order to avoid having to address any additional discovery during a
`
`compressed timeframe, i.e., in between resolution of the motion in limine in connection with the
`
`pre-trial conference and the commencement of trial. However, the parties have been unable to
`
`reach agreement regarding the discovery. For example, Apotex is unwilling to agree to
`
`reasonable limits on the scope and nature of depositions of fact witnesses, and instead would like
`
`to leave deposition discovery open-ended. Consequently, and in accordance with the Court’s
`
`guidance during the Status Conference, Bayer respectfully requests that the Court allow Bayer to
`
`move to strike Apotex’s defense as untimely.
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`BAYER HEALTHCARE LLC and BAYER
`HEALTHCARE PHARMACEUTICALS
`INC.,
`
`Plaintiffs,
`
`v.
`
`APOTEX INC. and APOTEX CORP.,
`
`Defendants.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`C.A. No. 16-1221 (LPS)
`CONSOLIDATED
`
`REDACTED -- PUBLIC VERSION
`Original Filing Date: June 8, 2020
`Redacted Filing Date: June 16, 2020
`JOINT STATUS REPORT
`
`Pursuant to the discussion between the Court and the parties during the June 4, 2020
`
`teleconference, the parties provide the following:
`
`Plaintiffs’ Position
`
`Following the Court’s direction during the June 4, 2020 Status Conference, the parties
`
`have discussed proposed discovery from Bayer in response to Apotex’s new non-enablement
`
`defense regarding U.S. Patent No. 9,458,107 (“the ’107 patent”), which was first raised by
`
`Apotex at the close of expert discovery. Bayer had proposed providing discovery now, subject
`
`to its motion in limine, in order to avoid having to address any additional discovery during a
`
`compressed timeframe, i.e., in between resolution of the motion in limine in connection with the
`
`pre-trial conference and the commencement of trial. However, the parties have been unable to
`
`reach agreement regarding the discovery. For example, Apotex is unwilling to agree to
`
`reasonable limits on the scope and nature of depositions of fact witnesses, and instead would like
`
`to leave deposition discovery open-ended. Consequently, and in accordance with the Court’s
`
`guidance during the Status Conference, Bayer respectfully requests that the Court allow Bayer to
`
`move to strike Apotex’s defense as untimely.
`
`
`
`Case 1:16-cv-01221-LPS Document 154 Filed 06/16/20 Page 2 of 4 PageID #: 1177
`
`Consistent with the Scheduling Order (D.I. 106 ¶ 10), Bayer proposes the following
`
`briefing schedule, subject to the Court’s approval:
`
`Date
`06/15/2020
`
`06/22/2020
`
`06/25/2020
`
`Event
`Bayer’s Motion and Opening Letter
`(Not to exceed three pages)
`Apotex’s Responsive Letter
`(Not to exceed five pages)
`Bayer’s Reply Letter
`(Not to exceed three pages)
`
`Should the Court deny Bayer’s motion, Bayer respectfully requests that it be permitted to
`
`provide additional discovery in response to Apotex’s defense, as appropriate, since it was not
`
`given the opportunity to develop a substantive response to the defense during fact or expert
`
`discovery.
`
`Finally, with regard to Apotex’s discussion below, Bayer notes that it is proposing a
`
`motion to strike (as opposed to a motion in limine) because that was the guidance provided by
`
`the Court during the June 4 Status Conference for the form of motion. Moreover, allowing
`
`updated briefing on the issue in the context of a motion to strike will afford Bayer the
`
`opportunity to address additional prejudice to Bayer from Apotex’s untimely defense that has
`
`arisen since the parties originally briefed the motion in limine in pretrial papers last fall (which
`
`have not yet been filed).
`
`Defendants’ Position
`
`Apotex’s non-enablement defense under 35 U.S.C. § 112 is borne directly from, and
`
`because of, testimony obtained from Bayer’s expert witness, Dr. Allan S. Myerson, during his
`
`deposition. In response, Plaintiffs drafted a Motion in Limine to exclude Apotex’s 112 defense
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`and, pursuant to the schedule at the time, served that motion on October 29, 2019. Defendants
`
`provided their opposition to the Motion on December 3, 2019 and Plaintiffs served their Reply
`
`2
`
`
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`Case 1:16-cv-01221-LPS Document 154 Filed 06/16/20 Page 3 of 4 PageID #: 1178
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`on December 5, 2019. As such, that Motion by the Plaintiffs is fully briefed. See Exhibit A
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`attached hereto. While Apotex does not acquiesce to the propriety of the Motion, it respectfully
`
`submits that, should the Court deem appropriate, the Motion may be adjudicated at the Court’s
`
`convenience and there is no need to wait until the Pretrial Order is submitted on August 19,
`
`2020. Such an adjudication would impact the scope of any discovery contemplated by
`
`Plaintiffs.
`
`As noted by Plaintiffs during the June 4, 2020 teleconference with the Court, the parties
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`have repeatedly discussed how to approach Plaintiffs’ Motion in Limine, both from a timing
`
`perspective and in regards to any additional discovery from Plaintiffs. See Exhibit B
`
`(Soderstrom 6/8/2020 Email). Plaintiffs seem to take the position now that instead of their
`
`Motion in Limine, they would prefer briefing to be set in regards to a Motion to Strike. Apotex
`
`can only surmise that part of the reason for this is likely because the procedure for a Motion to
`
`Strike allows for additional pages of briefing, which could allow Bayer to add new arguments, as
`
`well as expound on existing ones. Though Bayer claims there is some amorphous “additional
`
`prejudice” that has arisen since the motion in limine briefing, Apotex has not been advised of
`
`what that is. In any event, the Court’s ruling on Plaintiffs’ Motion in Limine will have the same
`
`effective result as a decision on Plaintiffs’ proposed Motion to Strike—the disposition of
`
`Apotex’s non-enablement defense. As such, Apotex does not believe a briefing schedule is
`
`necessary given that the parties have already exchanged their respective positions pursuant to
`
`previously agreed upon schedules. In fact, had trial not been extended, the aforementioned
`
`briefing would have already been filed with the Court. D.I. 141.
`
`3
`
`
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`Case 1:16-cv-01221-LPS Document 154 Filed 06/16/20 Page 4 of 4 PageID #: 1179
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`To the extent Plaintiffs intend to provide additional discovery, Apotex is willing to meet
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`and confer after such production to discuss logistics and any restrictions on depositions and the
`
`like.
`
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`
`MORRIS JAMES LLP
`
`/s/ Kenneth L. Dorsney
`
`Kenneth L. Dorsney (#3726)
`500 Delaware Avenue, Suite 1500
`Wilmington, DE 19801-1494
`(302) 888-6855
`kdorsney@morrisjames.com
`
`Attorneys for Defendants Apotex Inc. and
`Apotex Corp.
`
`/s/ Derek J. Fahnestock
`
`Jack B. Blumenfeld (#1014)
`Derek J. Fahnestock (#4705)
`Anthony D. Raucci (#5948)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@mnat.com
`dfahnestock@mnat.com
`araucci@mnat.com
`
`Attorneys for Plaintiffs Bayer Healthcare LLC
`and Bayer Healthcare Pharmaceuticals Inc.
`
`June 8, 2020
`
`4
`
`
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