Case 1:18-cv-00924-CFC-SRF Document 262 Filed 06/21/19 Page 1 of 10 PageID #:
`18924
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`GENENTECH, INC. and CITY OF HOPE,
`Plaintiffs,
`
`v.
`AMGEN INC.,
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`Defendant.
`
`C.A. No. 18-924-CFC
`PUBLIC VERSION
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`AMGEN INC.’S LETTER IN OPPOSITION TO
`PLAINTIFFS’ MOTION REGARDING DISCOVERY ISSUES
`
`SMITH, KATZENSTEIN & JENKINS LLP
`
`Neal C. Belgam (No. 2721)
`Eve H. Ormerod (No. 5369)
`Jennifer M. Rutter (No. 6200)
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`P (302) 652-8400
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
`jrutter@skjlaw.com
`
`Attorneys for Defendant Amgen Inc.
`
`Of Counsel:
`Michelle Rhyu
`Daniel Knauss
`Susan Krumplitsch
`Cooley LLP
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`P (650) 843-5000
`rhyums@cooley.com
`dknauss@cooley.com
`skrumplitsch@cooley.com
`Orion Armon
`Cooley LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, CO 80021-8023
`P (720) 566-4000
`oarmon@cooley.com
`Eamonn Gardner
`Cooley LLP
`4401 Eastgate Mall
`San Diego, CA 92121-1909
`P (858) 550-6000
`egardner@cooley.com
`Nancy Gettel
`Lois M. Kwasigroch
`Amgen Inc.
`One Amgen Center Drive
`Thousand Oaks, CA 91320-1799
`P (805) 447-1000
`ngettel@amgen.com
`loisk@amgen.com
`
`Dated: June 14, 2019
`
`1189094.1
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`Case 1:18-cv-00924-CFC-SRF Document 262 Filed 06/21/19 Page 4 of 10 PageID #:
`18927
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`The Honorable Colm F. Connolly
`Page 3
`C.
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`Testing of Amgen’s manufacturing processes done under the direction of trial counsel
`is protected by the work product privilege.
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`The scope of privilege waiver should not extend to testing performed at the direction of trial
`counsel, which falls squarely within attorney work product. Genentech is not entitled to work
`product relating to any experimentation, testing, or analysis developed in relation to Amgen’s
`litigation defenses for the ’869 patent unless and until Amgen’s expert relies on the work. The
`Federal Circuit has recognized that “trial counsel’s mental processes . . . enjoy the utmost
`protection from disclosure . . . .” In re Seagate, 497 F.3d at 1375-76. Moreover, “‘tests which
`generate factual data – when conducted at the direction of counsel in preparation for litigation –
`are strongly indicative of the mental impressions, conclusions, and opinions, or legal theories of
`[a party’s] attorneys’ and are therefore ‘protected by the work product doctrine.’” Reckitt
`Benckiser LLC v. Amneal Pharm., LLC, 2012 WL 2871061, at *6 (D.N.J. July 12, 2012) (quoting
`U.S. ex. rel. Dye v. ATK Launch Sys., Inc., 2011 WL 996975, at *5 (D. Utah Mar. 16,
`2011)). Genentech prevailed with this very argument in resisting Amgen’s attempt to obtain
`Genentech’s testing data in the Avastin case. (See March 11, 2019 Letter, Ex. A, attached hereto
`as Exhibit A.) The Proposed Order at ¶3 should be denied.
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`D.
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`Genentech’s expansive requests for depositions should be rejected.
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`Genentech seeks overbroad deposition testimony from any in-house counsel involved in obtaining
`the Opinion Letters or providing advice with respect to infringement or validity of the ’869 patent
`or validity of the dosing patents to any business decisionmakers at Amgen. (Proposed Order ¶
`6.) Genentech’s request is duplicative and unduly burdensome, as it would allow Genentech to
`depose numerous in-house attorneys of different seniority levels. Amgen proposes to provide as
`a 30(B)(6) witness one senior attorney who both received the Opinion Letters and conveyed advice
`regarding these subjects to the decisionmakers. At a minimum, Amgen’s “Designated Inside
`Counsel” under the protective order, who are litigation counsel and were not involved in obtaining
`the Opinion letters, should not be deposed. The Proposed Order ¶ 6 should be denied. Also, for
`the reasons articulated above, ¶ 7 should be denied.
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`Respectfully submitted,
`
`/s/ Neal C. Belgam
`
`Neal C. Belgam (#2721)
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`cc: All Counsel of Record (via email)
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`Enclosures
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`Case 1:18-cv-00924-CFC-SRF Document 262 Filed 06/21/19 Page 5 of 10 PageID #:
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`EXHIBIT A
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`Case 1:18-cv-00924-CFC-SRF Document 262 Filed 06/21/19 Page 6 of 10 PageID #:
`18929
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`Daniel M. Silver
`Partner
`405 N. King Street, 8th Floor
`Wilmington, DE 19801
`T.302-984-6331
`F.302-691-1260
`dsilver@mccarter.com
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`CONTAINS INFORMATION DESIGNATED CONFIDENTIAL BY AMGEN
`
`VIA CM/ECF & HAND DELIVERY
`The Honorable Colm F. Connolly
`J. Caleb Boggs Federal Building
`Wilmington, DE 19801-3555
`
`March 11, 2019
`
`Re: Genentech, Inc. v. Amgen Inc., C.A. No. 17-1407-CFC (D. Del.) (consolidated)
`
`Dear Judge Connolly:
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`ME1 29835112v.1
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`Case 1:18-cv-00924-CFC-SRF Document 262 Filed 06/21/19 Page 7 of 10 PageID #:
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`ME1 29835112v.1
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`2
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`Case 1:18-cv-00924-CFC-SRF Document 262 Filed 06/21/19 Page 8 of 10 PageID #:
`18931
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`Data from Testing of Amgen Samples. Amgen is not entitled to data Genentech
`4.
`obtained from consulting experts it retained to test the samples Amgen produced. The notion that
`the work-product doctrine does not protect testing results misapprehends the law. “‘[T]ests
`which generate factual data—when conducted at the direction of counsel and in preparation for
`litigation—are strongly indicative of the mental impressions, conclusions, opinions, or legal
`theories of [a party’s] attorneys’ and are therefore ‘protected by the work product doctrine’”
`Reckitt Benckiser LLC v. Amneal Pharm., LLC, 2012 WL 2871061, at *6 (D. N.J. 2012) (quoting
`U.S. ex rel. Dye v. ATK Launch Sys., Inc., 2011 WL 996975, at *5 (D. Utah 2011)). Amgen’s
`citation to Union Carbide Corp. v. Dow Chem. Co., 619 F. Supp. 1036, 1051 (D. Del. 1985), is
`unhelpful. It addressed the discoverability of internal documents that happened later to be
`forwarded to attorneys, not testing commissioned by counsel.
`Amgen also invokes its purported “need” for Genentech’s data. But Genentech’s
`purported reliance on the data to narrow the asserted claims, Ltr. at 2, was not a waiver and does
`not entitle Amgen to production of this information. See Kimberly-Clark Worldwide, Inc. v.
`First Quality Baby Prod., LLC, 2010 WL 4537002, at *2 (M.D. Pa. 2010). Nor can Amgen
`credibly claim it has “no other mechanism to obtain this discovery.” Ltr. at 2. Amgen obviously
`can conduct all the testing it wants of its own bioreactor samples. JDS Therapeutics, LCC v.
`CVS Pharm., 2015 WL 6459092, at *1 (S.D.N.Y. 2015) (no undue hardship where requesting
`party “is perfectly capable of testing its own products for the ingredient at issue”); Reckitt, 2012
`WL 2871061, at *6 (same); Sullivan v. Warminster Tp., 274 F.R.D. 147, 153 (E.D. Pa. 2011) (no
`“substantial need” for witness interview notes where delay in Plaintiffs’ questioning witnesses
`was “Plaintiffs’ own fault”). Amgen’s reliance on Sandvik Intellectual Property AB v.
`Kennametal, Inc., 2011 WL 466696, at *4 (W.D. Pa. 2011), where the narrow Rule
`26(b)(3)(A)(ii) exception to work product protection was satisfied, therefore is unavailing.
`Of course, in the event Genentech serves a Rule 26(a)(2)(B) report from an expert who
`relies on the testing data, Amgen will receive the appropriate discovery, including “the facts or
`data considered by the witness in forming” his opinions. Until then, there is no basis for the
`Court to order the production of this work product.
`5.
`Deposition Testimony. Fact discovery ends July 24. Trying to begin deposition
`discovery, Genentech on January 22 noticed the depositions of three Amgen witnesses, D.I.
`253-255. At Amgen’s request Genentech adjourned these dates so long as Amgen “provide[d] a
`date in February when at least one of the deponents we have identified can be available for a
`deposition and later dates for the other deponents.” Ex. D. Amgen never proposed alternative
`dates, so Genentech re-noticed the depositions for March and served subpoenas to compel the
`witnesses’ attendance, again expressing willingness to reasonably accommodate the witnesses’
`schedules. Ex. E. Amgen instead proposed dates in late May, with no explanation for why these
`witness could not be deposed earlier. Given the number of depositions to be taken, Genentech
`cannot wait until nearly the last weeks of fact discovery to depose witnesses central to Amgen’s
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`manufacturing of Mvasi.
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`ME1 29835112v.1
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`Case 1:18-cv-00924-CFC-SRF Document 262 Filed 06/21/19 Page 9 of 10 PageID #:
`18932
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`Dated: March 11, 2019
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`/s/ Daniel M. Silver
`Daniel M. Silver (#4758)
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`ME1 29816504v.1
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`Case 1:18-cv-00924-CFC-SRF Document 262 Filed 06/21/19 Page 10 of 10 PageID
`#: 18933
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`CERTIFICATE OF SERVICE
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`I certify that on June 14, 2019, a copy of Amgen Inc.’s Letter in Opposition to Plaintiffs’
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`Motion Regarding Discovery Issues and Exhibit A was caused to be served by email on the
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`following counsel:
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`Michael P. Kelly
`Daniel M. Silver
`Alexandra M. Joyce
`MCCARTER & ENGLISH, LLP
`Renaissance Centre
`405 N. King Street, 8th Floor
`Wilmington, DE 19801
`mkelly@mccarter.com
`dsilver@mccarter.com
`ajoyce@mccarter.com
`
`Teagan J. Gregory
`WILLIAMS & CONNOLLY LLP
`725 12th St NW
`Washington, DC 20005
`tgregory@wc.com
`
` /s/ Neal C. Belgam
`Neal C. Belgam (No. 2721)
`
`1189106.1
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