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`v.
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`ABBVIE INC. and ABBVIE
`BIOTECHNOLOGY LTD
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`BOEHRINGER INGELHEIM
`INTERNATIONAL GMBH,
`BOEHRINGER INGELHEIM
`PHARMACEUTICALS, INC., and
`BOEHRINGER INGELHEIM
`FREMONT, INC.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`CIVIL NO. 17-cv-01065-MSG-RL
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`O R D E R
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`On April 25, 2019, I held a telephone conference call on the record in this matter
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`concerning discover disputes between the parties, collectively referred to as “AbbVie”
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`(plaintiffs) and “Boehringer” (defendants). As directed during the conference call, it is
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`on this 26th day of April, 2019,
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`ORDERED
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`As follows:
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`1. AbbVie will file a motion to compel regarding Boehringer’s search terms related
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`to Interrogatory No. 21. The motion will include the search terms at issue and
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`AbbVie’s justifications for requesting broader terms.
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`2. AbbVie will file a motion to compel relating to the alleged non-responsiveness by
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`Boehringer to AbbVie’s Interrogatories and Requests for Admissions.
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`3. Boehringer will provide AbbVie with all aBLA documents submitted to or
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`received from the FDA from May 2018 until April 25, 2019. These documents
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`shall be supplied to AbbVie by May 2, 2019. The parties should meet and confer
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`on the issue of whether future correspondence with the FDA should be provided.
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`Case 1:17-cv-01065-MSG-RL Document 491 Filed 04/26/19 Page 2 of 3 PageID #: 15276
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`4. AbbVie will file a motion to compel concerning the allegedly improper redactions
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`in Boehringer’s document productions. AbbVie will also submit no more than
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`fifteen (15) documents to support their argument.
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`5. Boehringer will file a motion regarding AbbVie’s notices of deposition of
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`Boehringer’s apex witnesses and in-house litigation counsel.
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`6. Boehringer will file a motion concerning AbbVie’s allegedly improper clawback of
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`documents.
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`7. AbbVie will advise Boehringer of the status of the search of the storage facility
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`referenced during the telephone conference held on April 25, 2019. This status
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`update will include an estimate of the length of time to search the facility, the
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`amount of documents that are located at the facility, and the categories of
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`documents that AbbVie has learned are located at the facility.
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`8. AbbVie will also provide more complete answers to Boehringer’s Interrogatory
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`No. 42 and Interrogatory No. 43.
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`9. Boehringer is permitted to re-depose Yu-Hsiang Chang with the document
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`containing the now-correct metadata. AbbVie will pay for the costs and attorneys’
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`fees relating to the re-deposition.
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`10. Boehringer may re-raise the issues regarding prior art presentations if the
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`directives in paragraphs seven (7), eight (8), and nine (9) prove inadequate to
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`cure prejudice. However, I will defer any motions on this issue until the parties
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`have completed the directives stated in paragraphs seven (7), eight (8), and nine
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`(9) of this Order and have met and conferred to resolve any remaining issues. In
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`the event that issues remain, the parties may schedule a telephone call with me.
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`Case 1:17-cv-01065-MSG-RL Document 491 Filed 04/26/19 Page 3 of 3 PageID #: 15277
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`11. Boehringer will file a motion to compel the production of documents relating to
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`AbbVie’s prior art sales.
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`12. AbbVie will submit a letter to my chambers detailing the background and history
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`of the issue involving the production of AbbVie’s internal prosecution files,
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`specifically what was (and was not) agreed to in the April 2018 agreement and
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`November 2018 letter. This letter must be submitted no later than May 2, 2019.
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`Boehringer may submit a responsive letter due no later than May 9, 2019. After
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`considering these letters, I will decide whether motions on the issue of the
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`production of AbbVie’s internal prosecution files are necessary.
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`13. The parties will meet and confer about the language relating to AbbVie’s dates of
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`conception and reduction to practice for the asserted claims. If the parties cannot
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`agree, Boehringer will file an appropriate motion.
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`14. For the motions referenced in this Order, each party will submit one brief
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`containing the party’s respective motions. These briefs are due no later than
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`May 16, 2019. Responsive memoranda are due May 30, 2019. Reply briefs
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`will not be permitted except on request and for good cause.
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`BY THE COURT:
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`_s/Richard A. Lloret_
`RICHARD A. LLORET
`U.S. MAGISTRATE JUDGE
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