`
`Case 1:18-cv-00924-CFC-SRF Document 222 Filed 05/22/19 Page 1 of 15 PageID #:
`18124
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`)
`GENENTECH, INC. and CITY OF HOPE,
`)
`
`
`
`
`
`
`
`)
`
`Plaintiffs,
`
`
`
`
`)
`
`
`
`
`
`
`
`)
`v.
`
`
`
`
`
`
`)
`
`
`
`
`
`
`
`)
`AMGEN INC.,
`
`
`
`
`)
`
`
`
`
`
`
`
`)
`
`Defendant.
`
`
`
`
`__________________________________________)
`
`
`
`
`
`
`
`)
`GENENTECH, INC. and CITY OF HOPE
`
`)
`
`
`
`
`
`
`
`)
`
`Plaintiffs,
`
`
`
`
`)
`
`
`
`
`
`
`
`)
`v.
`
`
`
`
`
`
`)
`
`
`
`
`
`
`
`)
`AMGEN INC.,
`
`
`)
`
`
`
`
`
`
`
`)
`
`
`
`Defendant.
`
`
`)
`__________________________________________)
`
`
`C.A. No. 17-1407-CFC
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`C.A. No. 18-924-CFC
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`GENENTECH’S RESPONSE TO AMGEN’S
`MAY 13, 2019 LETTER
`
`
`
`
`
` ME1 30427703v.1
`
`PUBLIC VERSION FILED:
`MAY 22, 2019
`
`

`

`
`
`Case 1:18-cv-00924-CFC-SRF Document 222 Filed 05/22/19 Page 2 of 15 PageID #:
`18125
`
`Dear Judge Connolly:
`This letter responds to Amgen’s letter of May 13, 2019.
`I.
`The Court Should Deny Amgen’s Request to Compel Unrestricted
`Production of Genentech’s Biosimilar Settlement Agreements.
`Amgen’s letter reinforces the impropriety of its request for unredacted and unrestricted
`production of Genentech’s settlements with other biosimilar manufacturers.
`These agreements resolved separate disputes between Genentech and three different
`manufacturers—Celltrion, Pfizer, and Mylan—over their plans to commercialize biosimilar
`copies of Herceptin, Genentech’s patented treatment for breast cancer.1 Amgen has plans to
`enter the same market and compete with these three companies and with Genentech’s branded
`Herceptin. Courts routinely recognize the obvious reality that competitors may (inadvertently or
`otherwise) use or disclose sensitive commercial information obtained in discovery, resulting in
`competitive harm. See, e.g., Crum & Crum Enters., Inc. v. NDC of Ca., L.P., C.A. No. 09-145-
`RBK-AMD, 2011 WL 886356, at *5 (D. Del. Mar. 10, 2011); see also Apple Inc. v. Samsung
`Elecs. Co., 727 F.3d 1214, 1225 (Fed. Cir. 2013). Allowing Amgen unrestricted access to these
`agreements inevitably would provide Amgen with an unfair commercial advantage over its
`fellow biosimilar makers by disclosing their plans to enter the market.
`Genentech independently has significant concerns with Amgen’s proposed access to
`agreements with other biosimilar manufacturers. These agreements contain commercially
`sensitive information regarding licensed entry dates and other terms to which Genentech agreed,
`the disclosure of which would engender significant competitive harm to Genentech.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`That is exactly why the Court should not permit Amgen to have the highly sensitive information
`contained in these agreements.
`Courts consistently have recognized that, even with Protective Orders in place, allowing
`production of such documents would pose an unacceptable risk of inadvertent disclosure or
`competitive misuse of the information they contain. See Rembrandt Wireless Tech. L.P. v.
`Samsung Elecs. Co., Ltd., 853 F.3d 1370, 1381 (Fed. Cir. 2017) (holding that “[i]t was within the
`district court’s discretion to redact information from these agreements to prevent exposing
`confidential business information”); Abbott Diabetes Care, Inc. v. Roche Diagnostics Corp.,
`2007 WL 4166030, at *4 (N.D. Cal. Nov. 19, 2007) (permitting redaction of the portions of
`settlement agreement to protect third party’s confidentiality interests). That is not a hypothetical
`risk in these cases;
`
`
`
`
`
` ME1 30427703v.1
`
`1 Amgen has dropped its request for settlement agreements concerning Genentech’s Rituxan
`drug.
`
`

`

`
`
`Case 1:18-cv-00924-CFC-SRF Document 222 Filed 05/22/19 Page 3 of 15 PageID #:
`18126
`
`As to the subsidiary issue of in-house counsel access, Amgen cites no useful precedents
`from this district or circuit, and its decisions from elsewhere offer little support for its position.2
`Amgen’s sole justification for providing unrestricted access to its in-house lawyers is that they
`must be able to “fully” manage these litigations. Ltr. at 3. But a party seeking access to such
`highly sensitive information “must demonstrate that its ability to litigate will be prejudiced, not
`merely its ability to manage outside litigation counsel.” Intel Corp. v. VIA Techs., Inc., 198
`F.R.D. 525, 529 (N.D. Cal. 2000). Amgen does not and cannot make that showing here; it has
`experienced counsel who can “adequately represent [Amgen’s] interests even if in-house counsel
`is precluded from viewing confidential information.” PhishMe, Inc. v. Wombat Security Techs,
`Inc., C.A. No. 16-403-LPS-CJB, 2017 WL 4138961, at *9 (D. Del. Sept. 8, 2017).
`
`Genentech remains willing to produce redacted agreements on an outside counsel only
`basis sufficient to identify the royalties, if any, Mylan, Celltrion, and Pfizer paid on patents that
`are also asserted in the cases against Amgen. By so doing, Amgen’s attorneys may have access
`to the information actually relevant to the litigation, while protecting Genentech’s (and the third
`parties’) extremely sensitive business information. The additional information in these
`documents is of dubious relevance and should be redacted to prevent its potential for misuse,
`including the third parties’ licensed launch dates and ex-U.S. terms. The launch dates reflect
`judgments made by Genentech and the third parties about a number of patents, many of which
`are not even asserted in this litigation.3 That makes them irrelevant to the determination of a
`reasonable royalty for any particular patent, especially for the Avastin litigation where the dates
`pertain to an entirely different product. Nor does the marginal potential relevance of launch
`dates to injunctive relief outweigh the risk of misuse. Amgen does not need the settlement
`agreements to know that the launch dates have not yet come to pass and that there are no licensed
`competitors for Herceptin currently on the market in the United States. And there have been no
`licenses granted in regard to Avastin. Moreover, even were they relevant it is questionable
`whether the agreements would be admissible at trial. See, e.g., LaserDynamics, Inc. v. Quanta
`Computer, Inc., 694 F.3d 51, 77 (Fed. Cir. 2012) (noting that “[t]he propriety of using prior
`settlement agreements to prove the amount of a reasonable royalty is questionable”); see also
`Honeywell Int'l, Inc. v. Nikon Corp., 2009 WL 577274, at *1-*2 (D. Del. Mar. 4, 2009); Gen.
`Elec. Co. v. DR Sys., Inc., 2007 WL 1791677, at *2 (E.D.N.Y. June 20, 2007).
`
`
`
`2 In Allergan, Inc. v. Teva Pharm. USA, Inc., 2017 WL 132265 (E.D. Tex. Jan. 12, 2017), the
`party opposing production of license agreements took the position that no attorneys involved in
`settlement discussions—whether in-house or outside counsel—should be given access to the
`agreements. The court concluded that such an arrangement was unwarranted because it “would
`go beyond even the highly restrictive ‘Outside counsel—attorneys’ eyes only’ limitation. Id. at
`*2 (E.D. Tex. Jan. 12, 2017). Barnes & Noble, Inc. v. LSI Corp., 2012 WL 1564734 (N.D. Cal.
`May 2, 2012), is similarly inapt. Unlike here, the in-house attorneys seeking access to
`confidential information were “not engaged in competitive decisionmaking.” Id. at *6
`3 The chart purporting to show the extent of the overlap between the various cases that is
`attached to Amgen’s letter as Exhibit E is misleading. Amgen fails to note that many of the
`overlapping patents that were included in the initial complaints in the listed litigations are no
`longer asserted in the -00924 and -1407 actions.
`2
`
` ME1 30427703v.1
`
`

`

`
`
`Case 1:18-cv-00924-CFC-SRF Document 222 Filed 05/22/19 Page 4 of 15 PageID #:
`18127
`
`II.
`
`The Court Should Deny Amgen’s Motion to Compel Production of
`Documents and 30(b)(6) Testimony.
`In the Herceptin case (C.A. No. 18-cv-924), Amgen has also moved to compel the
`production of documents in response to Amgen’s Request for Production Nos. 27, 31, 32, and 65
`and to require Genentech to designate a witness to testify concerning Amgen’s Rule 30(b)(6)
`Topic Nos. 29 and 30. These discovery requests seek information concerning (1) Genentech’s
`settlement agreements relating to other Herceptin biosimilar products; (2) the course of
`negotiations for those agreements; (3) non-privileged financial, market, or business analyses or
`presentations relating to whether to enter into those agreement; and (4) valuations of the patents-
`in-suit. Amgen first wrote to Genentech with respect to these issues on May 2, 2019 (see Ex. 1),
`and Genentech provided a written response on May 10, 2019 (see Ex. 2). There was no further
`discussion of these issues before Amgen filed its motion to compel, and Amgen did not comply
`with the meet and confer process required under the local rules before filing its motion. The
`Court should deny Amgen’s motion to compel this additional discovery for several reasons.
`First, Amgen has no legitimate basis to seek discovery concerning the course of
`negotiations for those agreements. The only potentially relevant information is contained in the
`final, executed agreements. The parties’ negotiating positions during settlement discussions do
`not reflect any agreement of the parties and are inadmissible under Federal Rule of Evidence
`408. Allowing discovery into the course of negotiations would have a chilling effect on
`settlement negotiations, and courts therefore routinely deny such discovery. See, e.g., NuVasive
`Inc. v. Alphatec Holdings Inc., No. 18-CV-0347-CAB-MDD, 2018 WL 6567888, at *2 (S.D.
`Cal. Dec. 13, 2018); Implicit Networks Inc. v. Juniper Networks Inc., 2012 U.S. Dist. LEXIS
`183715, at *2 (N.D. Cal. June 5, 2012); Phillips Elecs. N. Am. Corp. v. Universal Elecs. Inc., 892
`F. Supp. 108, 109 (D. Del. 1995). Indeed, the reasons for denying discovery into the course of
`negotiations are especially strong here, where Amgen has expressly stated that it is seeking this
`discovery to inform Amgen’s positions in settlement negotiations with Genentech—which is not
`a proper purpose related to any issue in the litigation and would unfairly prejudice Genentech.
`Second, Genentech has no non-privileged financial, market, or business analyses or
`presentations concerning whether to enter into settlement agreements or valuations of the
`patents-in-suit, which are among the materials that Amgen is seeking through Request for
`Production Nos. 27, 31, 32, and 65. Genentech informed Amgen that it had no such documents
`after Amgen first raised these issues. See Ex. 2. The Court should deny Amgen’s motion to
`compel because there are no such materials to produce.
`Third, Amgen is seeking corporate testimony from Genentech concerning these
`settlement agreements. But there is no additional relevant information that a Rule 30(b)(6)
`witness could provide on those topics beyond what the settlements themselves say. The Court
`therefore should deny Amgen’s motion to compel Genentech to designate a witness on Topic
`Nos. 29 and 30 in Amgen’s Rule 30(b)(6) notice.
`
` ME1 30427703v.1
`
`3
`
`

`

`
`
`Case 1:18-cv-00924-CFC-SRF Document 222 Filed 05/22/19 Page 5 of 15 PageID #:
`18128
`
`
`
`MCCARTER & ENGLISH, LLP
`
`/s/ Daniel M. Silver
`
`Michael P. Kelly (#2295)
`Daniel M. Silver (#4758)
`Alexandra M. Joyce (#6423)
`Renaissance Centre
`405 N. King Street, 8th Floor
`Wilmington, Delaware 19801
`Tel.: (302) 984-6300
`Fax: (302) 984-6399
`mkelly@mccarter.com
`dsilver@mccarter.com
`ajoyce@mccarter.com
`
`Attorneys for Plaintiffs Genentech, Inc.
`and City of Hope
`
`
`
`Dated: May 14, 2019
`
`C.A. No. 17-1407-CFC
`
`OF COUNSEL:
`
`Paul B. Gaffney
`David I. Berl
`Thomas S. Fletcher
`Teagan J. Gregory
`Jonathan S. Sidhu
`Williams & Connolly LLP
`725 Twelfth St. NW
`Washington, DC 20005
`(202) 434-5000
`
`Attorneys for Plaintiff
`Genentech, Inc.
`
`Daralyn J. Durie
`Adam R. Brausa
`Eric C. Wiener
`Eneda Hoxha
`Durie Tangri
`271 Leidesdorff Street
`San Francisco, CA 94111
`
`Attorneys for Plaintiffs Genentech, Inc.
`and City of Hope
`
`
` ME1 30427703v.1
`
`4
`
`

`

`
`
`Case 1:18-cv-00924-CFC-SRF Document 222 Filed 05/22/19 Page 6 of 15 PageID #:
`18129
`
`C.A. No. 18-924-CFC
`
`Of Counsel:
`
`William F. Lee
`Lisa J. Pirozzolo
`Emily R. Whelan
`Kevin S. Prussia
`Andrew J. Danford
`Stephanie Neely
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`60 State Street
`Boston, MA 02109
`(627) 526-6000
`william.lee@wilmerhale.com
`lisa.pirozzolo@wilmerhale.com
`emily.whelan@wilmerhale.com
`kevin.prussia@wilmerhale.com
`andrew.danford@wilmerhale.com
`stephanie.neely@wilmerhale.com
`
`Robert J. Gunther Jr.
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`7 World Trade Center
`250 Greenwich Street
`New York, NY 10007
`(212) 230-8800
`robert.gunther@wilmerhale.com
`
`Nora Passamaneck
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`1225 17th Street, Suite 2600
`Denver, CO 80202
`nora.passamaneck@wilmerhale.com
`
`Nancy Schroeder
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`350 S Grand Avenue, Suite 2100
`Los Angeles, CA 90071
`nancy.schroeder@wilmerhale.com
`
`
` ME1 30427703v.1
`
`
`
`
`
`5
`
`

`

`
`
`Case 1:18-cv-00924-CFC-SRF Document 222 Filed 05/22/19 Page 7 of 15 PageID #:
`18130
`
`Daralyn J. Durie
`Adam R. Brausa
`DURIE TANGRI LLP
`217 Leidesdorff St.
`San Francisco, CA 94111
`(415) 362-6666
`ddurie@durietangri.com
`abrausa@durietangri.com
`
`Attorneys for Plaintiffs Genentech, Inc.
`and City of Hope
`
`
`
`
`
` ME1 30427703v.1
`
`6
`
`

`

`C a s e 1 : 1 8 - c v - 0 0 9 2 4 - C F C - S R F D o c u m e n t 2 2 2 F i l e d 0 5 / 2 2 / 1 9 P a g e 8 o f 1 5 P a g e I D # :
`Case 1:18-cv-00924-CFC-SRF
`Document 222
`Filed 05/22/19
`1 8 1 3 1
`18131
`
`
`
`
`
`Exhibit 1
`Exhibit 1
`
`
`
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 222 Filed 05/22/19 Page 9 of 15 PageID #:
`18132
`
`
`
`By Email to: andrew.danford@wilmerhale.com;
`WHGNE-AmgenHerceptinServiceList@wilmerhale.com;
`dsilver@mccarter.com; DDurie@durietangri.com;
`EWiener@durietangri.com; abrausa@durietangri.com;
`mkelly@mccarter.com
`
`
`
`Orion Armon
`+1 720 566 4119
`oarmon@cooley.com
`
`
`
`
`May 2, 2019
`
`
`Andrew J. Danford
`WilmerHale
`60 State Street
`Boston, MA 02109 USA
`
`Re: Genentech, Inc. et al. v. Amgen, Inc. (18-924-CFC) – Discovery issues related to Genentech’s
`licenses and offers to license the Patents-in-Suit
`
`Dear Andrew:
`
`I write to address three issues relating to discovery of Genentech’s licenses and offers to license the
`Patents-in-Suit.
`
`First, please confirm that, if the Court allows discovery of Genentech’s patent license agreements with
`Mylan, Pfizer, or Celltrion, Genentech will produce all documents responsive to Amgen’s Requests for
`Production 27, 31, 32, and 65 that may include Mylan, Pfizer, or Celltrion confidential materials —i.e., not
`only the license agreements themselves—within ten business days after the Court decides this discovery
`issue.
`
`Second, please confirm that Genentech will produce the following documents before May 13, 2019. The
`subcategories of documents listed below are in Genentech’s possession and do not implicate third-party
`confidentiality concerns—so there is no justification for withholding production pending the May 16 hearing.
`The following subcategories of documents should be produced without delay, regardless whether the Court
`orders production of the license agreements:
`
`• RFP Nos. 27 and 32: Genentech’s offers to license or to provide covenants not to sue covering
`any of the Patents-in-Suit or Related Patents and Applications;
`
`• RFP Nos. 27, 31, and 32: Genentech’s non-privileged financial, market, or business analyses or
`presentations (and internal communications regarding the same) relating to whether to grant
`licenses or covenants not to sue to any of the Patents-in-Suit or Related Patents and Applications;
`and
`
`• RFP No. 65: Valuations of the Patents-in-Suit and any Related Patents and Applications that were
`prepared for any reason, including to inform the decision whether to grant a license or covenant
`not to sue to any of the Patents-in-Suit or Related Patents and Applications.
`
`Third, we request that Genentech designate its corporate representative for Deposition Topics 29 and 30
`and confirm that the representative will be available for deposition within ten days after the May 16 hearing.
`Amgen intends to proceed with a deposition regardless of how the Court rules on the discoverability of the
`license agreements, because the testimony requested by Topic 29 and the document requests listed above
`
`
`
`Cooley LLP 380 Interlocken Crescent Suite 900 Broomfield, CO 80021-8023
`t: (720) 566-4000 f: (720) 566-4099 cooley.com
`
`
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 222 Filed 05/22/19 Page 10 of 15 PageID
`#: 18133
`
`
`
`
`
`
`Andrew J. Danford
`Page Two
`
`do not depend on production of the license agreements with Mylan, Celltrion, or Pfizer, or implicate third-
`party confidentiality concerns.
`
`
`
`
`
`Please be prepared to meet and confer on these issues on Friday May 3, as Amgen intends to raise these
`issues with the Court during the May 16 or 21 hearings if there is any disagreement.
`Discovery Requests Referenced in This Letter
`REQUEST FOR PRODUCTION NO. 27:
`
`All documents and things relating to any license (including but not limited to Your agreement with Mylan
`N.V.), offer to license, license negotiations, or a prospective license of any of the Patents-in-Suit or Related
`Patents and Applications, including the identity of the licensees or prospective licensees, the date the
`license was or is expected to be entered into, the terms or the proposed terms of the license, and
`communications and negotiations that led to any license agreements concerning the Patents-in-Suit or
`Related Patents and Applications.
`
`REQUEST FOR PRODUCTION NO. 31:
`
`All documents and things relating to any proposed or executed settlement agreements concerning
`Herceptin®, a trastuzumab biosimilar, or any other products concerning anti-ErbB2 monoclonal antibodies,
`or any of the Patents-in-Suit.
`
`REQUEST FOR PRODUCTION NO. 32:
`
`All documents and things relating to any covenants-not-to-sue concerning Herceptin®, a trastuzumab
`biosimilar, or any other products concerning anti-ErbB2 monoclonal antibodies, or any of the Patents-in-
`Suit.
`
`REQUEST FOR PRODUCTION NO. 65
`
`All documents and things concerning any valuations of the Patents-in-Suit, including any appraisals,
`assessments, evaluations, valuations, or opinions regarding the actual or potential value of the Patents-in-
`Suit and any Related Patents and Applications, individually or as a portfolio.
`
`30(b)(6) Topics
`
`29. Your policies and practices regarding the licensing of technology to or from other parties, and all facts
`and circumstances relating to any ownership or licensing interest in any of the Patents-in-Suit or Related
`Patents and Applications, or offer to license any of the Patents-in-Suit or Related Patents and Applications,
`as well as the identity and location of persons most knowledgeable about this topic, and the identity and
`location of documents concerning this topic.
`
`30. Terms of any settlement agreement, patent license, or covenant not to sue that You entered into with
`any third party concerning any Patent-in-Suit or any drug product embodied by any Patent-in-Suit, as well
`as the identity and location of persons most knowledgeable about this topic, and the identity and location
`of documents concerning this topic.
`
`
`
`
`
`Cooley LLP 380 Interlocken Crescent Suite 900 Broomfield, CO 80021-8023
`t: (720) 566-4000 f: (720) 566-4099 cooley.com
`
`
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 222 Filed 05/22/19 Page 11 of 15 PageID
`#: 18134
`
`
`
`
`
`
`
`
`
`
`Andrew J. Danford
`Page Three
`
`Sincerely,
`
`
`
`Orion Armon
`
`
`
`203118509 v2
`
`
`
`Cooley LLP 380 Interlocken Crescent Suite 900 Broomfield, CO 80021-8023
`t: (720) 566-4000 f: (720) 566-4099 cooley.com
`
`
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 222 Filed 05/22/19 Page 12 of 15 PageID
`#: 18135
`
`
`
`
`
`Exhibit 2
`
`
`

`

`
`
`Case 1:18-cv-00924-CFC-SRF Document 222 Filed 05/22/19 Page 13 of 15 PageID
`#: 18136
`
`
`
`May 10, 2019
`
`Via E-mail
`
`Orion Armon
`Eamonn Gardner
`Michelle Rhyu
`Susan Krumplitsch
`Daniel J. Knauss
`Benjamin Lin
`Lauren Krickl
`
`COOLEY LLP
`
`
`Andrew J. Danford
`
`+1 617 526 6806 (t)
`+1 617 526 5000 (f)
`Andrew.Danford@wilmerhale.com
`
`Re: Genentech, Inc. et al. v. Amgen, Inc., Case No. 18-924-CFC (D. Del.)—Discovery
`Related to Licenses and Offers to License the Patents-in-Suit
`
`Counsel:
`
`We write in response to your May 2nd letter regarding discovery of Genentech’s licenses
`and offers to license the Patents-in-Suit.
`
`As an initial matter, we find the timing of Amgen’s request curious. The parties are near
`the close of fact discovery, yet Amgen requests production of draft patent licenses for the first
`time. In addition, Amgen’s demand that Genentech produce the requested documents within ten
`days is inconsistent with Amgen’s approach to producing its own documents. See, e.g., Jan. 16
`Letter from Passamaneck; Jan. 18 Letter from S. Lin; Jan. 23 Letter from Passamaneck; Jan. 28
`Letter from Passamaneck; Jan. 30 Letter from Passamaneck; Feb. 26 Letter from Cook; Mar. 7
`Letter from S. Lin; Mar. 18 Letter from S. Lin; Mar. 20 Letter from S. Lin; Mar. 26 Letter from S.
`Lin; Mar. 28 Letter from Prussia; Apr. 1 Letter from S. Lin; Apr. 2 Letter from S. Lin; Apr. 3
`Letter from Cook; Apr. 10 Letter from S. Lin; Apr. 12 Letter from Passamaneck; Apr. 16 Letter
`from Cook; Apr. 23 Letter from S. Lin; Apr. 28 Letter from S. Lin; May 6 Letter from S. Lin; and
`May 6 Letter from Cook.
`
`Documents Regarding Patent Licenses:
`
`Amgen requests Genentech produce “all documents” related to its patent license
`
`agreements with Mylan, Pfizer, and Celltrion. Genentech agrees to produce executed license
`agreements if ordered to do so by the Court, and subject to any restrictions ordered by the Court.
`
`Genentech, however, will not produce draft versions of these agreements. Parties are not
`required to produce draft patent licenses where executed versions are available. See NuVasive Inc.
`v. Alphatec Holdings Inc., No. 18-CV-0347-CAB-MDD, 2018 WL 6567888, at *2 (S.D. Cal. Dec.
`13, 2018) (Rejecting defendant’s request for production of draft license agreements where plaintiff
`
`
`
`
`
`
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 222 Filed 05/22/19 Page 14 of 15 PageID
`#: 18137
`
`
`May 10, 2019
`Page 2
`
`
`agreed to produce all executed patent license agreements, because “the Court [was] not convinced
`of the relevance of draft documents nor convinced that the effort of finding them [was]
`proportional to the needs of the case.”); Implicit Networks Inc. v. Juniper Networks Inc., 2012 U.S.
`Dist. LEXIS 183715 *2 (N.D. Cal. June 5, 2012) (Denying plaintiff’s motion to compel production
`of draft licenses and negotiations.). Draft patent licenses are also privileged. See, Phillips Elecs.
`N. Am. Corp. v. Universal Elecs. Inc., 892 F. Supp. 108, 109 (D. Del. 1995) (Declining to compel
`production of draft license agreements because they were “prepared by counsel for the purpose of
`facilitating a communication of advice to the client.”).
`
`Amgen RFP Nos. 27 and 32: (Genentech’s offers to license or to provide covenants not to sue
`covering any of the Patents-in-Suit or Related Patents and Applications)
`
`Seven months ago, in their October 2nd response to Amgen’s second set of RFPs, Plaintiffs
`stated that they were willing to meet-and-confer regarding these requests. The parties met-and-
`conferred on November 30th. In the five months that followed, Amgen made no request for these
`documents. In any event, Genentech will produce executed license agreements if ordered to do so
`by the Court, and subject to any restrictions ordered by the Court. Genentech will not produce any
`other documents sought by these requests.
`
`Amgen RFP Nos. 27, 31, and 32: (Genentech’s non-privileged financial, market, or business
`analyses or presentations (and internal communications regarding the same) relating to whether to
`grant licenses or covenants not to sue to any of the Patents-in-Suit or Related Patents and
`Applications)
`
`Genentech has no non-privileged documents in response to these requests.
`
`Amgen RFP No. 65: (Valuations of the Patents-in-Suit and any Related Patents and Applications
`that were prepared for any reason, including to inform the decision whether to grant a license or
`covenant not to sue to any of the Patents-in-Suit or Related Patents and Applications)
`
`Genentech has no non-privileged documents in response to this request.
`
`Rule 30(b)(6) Deposition Topics:
`
`Amgen requests Genentech designate a 30(b)(6) representative for Topics 29 and 30.
`Topics 29 and 30 seek testimony regarding licensing policies, settlement agreements, and
`covenants-not-to-sue. Genentech is willing to meet-and-confer regarding designating 30(b)(6)
`witnesses on Topics 29 and 30 after the Court’s ruling regarding licenses and settlement
`agreements.
`
`
`
`
`
`
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 222 Filed 05/22/19 Page 15 of 15 PageID
`#: 18138
`
`
`May 10, 2019
`Page 3
`
`
`Please provide us with your availability to meet-and-confer on these issues.
`
`
`
`Best Regards,
`
`/s/ Andrew J. Danford
`
`Andrew J. Danford
`
`
`
`