Case 1:18-cv-00924-CFC-SRF Document 266-1 Filed 06/27/19 Page 1 of 7 PageID
`#: 18959
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`Plaintiffs,
`
`
`
`v.
`
`GENENTECH, INC. and CITY OF HOPE,
`
`
`
`
`
`AMGEN INC.,
`
`
`
`Case No. 18-924-CFC
`
`
`
`Defendant.
`
`
`
`[PROPOSED] ORDER GRANTING AMGEN’S MOTION FOR PARTIAL
`REARGUMENT
`
`Upon consideration of Defendant’s motion for partial reargument, the Court amends its
`
`previous order granting Plaintiffs’ Motion to Compel as follows:
`
`IT IS HEREBY ORDERED that Defendant Amgen, Inc.’s production of its opinion letters
`
`concerning (i) infringement and/or validity of U.S. Patent No. 8,574,869 (“the ’869 patent”); and
`
`(ii) validity of U.S. Patent Nos. 6,627,196 (“the ’196 patent”), 7,371,379 (“the ’379 patent”),
`
`and/or 10,160,811 (“the ’811 patent”) (collectively, “the Opinion Letters”) has effected a subject
`
`matter waiver of Amgen’s attorney-client privilege concerning (i) infringement and validity of
`
`the ’869 patent; and (ii) validity of the ’196, ’379, and ’811 patents. The waiver extends to
`
`communications pre-dating the Opinion Letters and extends to Amgen’s in-house counsel, but
`
`only to the extent that such subject matter was communicated to or otherwise shared with those
`
`individuals within Amgen senior management who are responsible for making the decision
`
`whether to launch Kanjinti (“Kanjinti launch decision-makers”). The waiver does not extend to
`
`communications with outside trial counsel, work product of trial counsel, or work product of in-
`
`house counsel that was not communicated to Kanjinti launch decision-makers.
`
`
`
`
`#: 18959
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`Plaintiffs,
`
`
`
`v.
`
`GENENTECH, INC. and CITY OF HOPE,
`
`
`
`
`
`AMGEN INC.,
`
`
`
`Case No. 18-924-CFC
`
`
`
`Defendant.
`
`
`
`[PROPOSED] ORDER GRANTING AMGEN’S MOTION FOR PARTIAL
`REARGUMENT
`
`Upon consideration of Defendant’s motion for partial reargument, the Court amends its
`
`previous order granting Plaintiffs’ Motion to Compel as follows:
`
`IT IS HEREBY ORDERED that Defendant Amgen, Inc.’s production of its opinion letters
`
`concerning (i) infringement and/or validity of U.S. Patent No. 8,574,869 (“the ’869 patent”); and
`
`(ii) validity of U.S. Patent Nos. 6,627,196 (“the ’196 patent”), 7,371,379 (“the ’379 patent”),
`
`and/or 10,160,811 (“the ’811 patent”) (collectively, “the Opinion Letters”) has effected a subject
`
`matter waiver of Amgen’s attorney-client privilege concerning (i) infringement and validity of
`
`the ’869 patent; and (ii) validity of the ’196, ’379, and ’811 patents. The waiver extends to
`
`communications pre-dating the Opinion Letters and extends to Amgen’s in-house counsel, but
`
`only to the extent that such subject matter was communicated to or otherwise shared with those
`
`individuals within Amgen senior management who are responsible for making the decision
`
`whether to launch Kanjinti (“Kanjinti launch decision-makers”). The waiver does not extend to
`
`communications with outside trial counsel, work product of trial counsel, or work product of in-
`
`house counsel that was not communicated to Kanjinti launch decision-makers.
`
`
`
`
`
`Case 1:18-cv-00924-CFC-SRF Document 266-1 Filed 06/27/19 Page 2 of 7 PageID
`#: 18960
`
`
`
`Accordingly, and in all instances subject to the restrictions above, Amgen shall produce on
`
`a rolling basis, to be completed within two weeks of the date of this order:
`
`1.
`
`All documents relating to assessments of (i) infringement or validity of the ’869
`
`patent; or (ii) validity of the ’196, ’379, or ’811 patents;
`
`2.
`
`All documents relating to amendments to Amgen’s proposed label for Kanjinti
`
`based upon assessments of the validity of the ’196, ’379, or ’811 patents or the outcome of inter
`
`partes review proceedings involving those patents;
`
`3.
`
`All documents relating to any experimentation, testing, or analysis to alter Amgen’s
`
`manufacturing processes to avoid Genentech’s allegations of infringement of the ’869 patent;
`
`4.
`
`All documents relating to communications with and among Amgen’s in-house
`
`counsel concerning the Opinion Letters or any other assessments of (i) infringement or validity of
`
`the ’869 patent; or (ii) validity of the ’196, ’379, or ’811 patents; and
`
`IT IS FURTHER ORDERED, and in all instances subject to the restrictions above, that
`
`Amgen shall:
`
`6.
`
`Make available for deposition any in-house counsel involved in (i) obtaining the
`
`Opinion Letters; or (ii) providing advice with respect to (a) infringement or validity of the ’869
`
`patent or (b) the validity of ’196, ’379 or ’811 patents to any Kanjinti launch decision-makers;
`
`7.
`
`Make available for deposition any witnesses who were previously instructed not to
`
`answer questions at their depositions in this case relating to the subjects of paragraph 1-3 above
`
`on the basis of privilege, including: (1) Jennifer Khiem; (2) Shane Hall; (3) Benjamin Dionne; (4)
`
`Purvi Lad; and (5) Amy Nehring. These depositions shall be limited to no more than three hours
`
`on the record.
`
`
`
`
`
`Case 1:18-cv-00924-CFC-SRF Document 266-1 Filed 06/27/19 Page 3 of 7 PageID
`#: 18961
`
`As the parties previously agreed before the discovery hearing, and in all instances subject
`
`to the restrictions above, Amgen shall produce (i) all communications with opinion counsel related
`
`to (a) non-infringement and/or invalidity of the ’869 patent; and (b) the invalidity of the ’196, ’379,
`
`and ’811 patents; (ii) any files from opinion counsel shared with Amgen; (iii) all underlying
`
`documents and drafts of the Opinion Letters shared with Amgen; (iv) all communications
`
`regarding the opinion letters exchanged between Amgen in-house counsel and outside opinion
`
`counsel and/or any Kanjinti launch decision makers who relied upon the opinions; and (v) any
`
`other opinion letters obtained by Amgen related to (a) non-infringement and/or invalidity of the
`
`’869 patent; and (b) the invalidity of the ’196, ’379, and ’811 patents. The Court hereby ORDERS
`
`that this production be completed by within two weeks of the date of this order.
`
`
`
`The parties shall meet-and-confer and submit a proposed schedule and plan for any
`
`remaining discovery on willfulness, and a proposed procedure for addressing willfulness at trial
`
`(if necessary) in a phased manner before a jury.
`
`This Order replaces and supersedes the Order dated June 20, 2019, D.I. 259.
`
`
`
`SO ORDERED this
`
` day of
`
`, 2019.
`
`
`The Honorable Colm F. Connolly
`United States District Judge
`
`
`
`
`
`
`
`
`
`Case 1:18-cv-00924-CFC-SRF Document 266-1 Filed 06/27/19 Page 4 of 7 PageID
`#: 18962
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`Plaintiffs,
`
`
`
`v.
`
`GENENTECH, INC. and CITY OF HOPE,
`
`
`
`
`
`AMGEN INC.,
`
`
`
`Case No. 18-924-CFC
`
`
`
`Defendant.
`
`
`
`[PROPOSED] ORDER GRANTING PLAINTIFFS’AMGEN’S MOTION TO
`COMPELFOR PARTIAL REARGUMENT
`
`Upon consideration of Defendant’s motion for partial reargument, the Court amends its
`
`previous order granting Plaintiffs Genentech, Inc. and City of Hope’s’ Motion to Compel Amgen
`
`to Produce Documents and Witnesses, and for the reasons stated during the June 18, 2019
`
`hearing,as follows:
`
`IT IS HEREBY ORDERED that Defendant Amgen, Inc.’s production of its opinion letters
`
`concerning (i) infringement and/or validity of U.S. Patent No. 8,574,869 (“the ’869 patent”); and
`
`(ii) validity of U.S. Patent Nos. 6,627,196 (“the ’196 patent”), 7,371,379 (“the ’379 patent”),
`
`and/or 10,160,811 (“the ’811 patent”) (collectively, “the Opinion Letters”) has effected a subject
`
`matter waiver of Amgen’s attorney-client privilege concerning (i) infringement and validity of
`
`the ’869 patent; and (ii) validity of the ’196, ’379, and ’811 patents. The waiver extends to
`
`communications pre-dating the Opinion Letters and extends to Amgen’s in-house counsel, but
`
`only to the extent that such subject matter was communicated to or otherwise shared with those
`
`individuals within Amgen senior management who are responsible for making the decision
`
`whether to launch Kanjinti (“Kanjinti launch decision-makers”). The waiver does not extend to
`
`
`
`1
`
`
`
`Case 1:18-cv-00924-CFC-SRF Document 266-1 Filed 06/27/19 Page 5 of 7 PageID
`#: 18963
`
`communications with outside trial counsel, work product of trial counsel, or work product of in-
`
`house counsel that was not communicated to Kanjinti launch decision-makers.
`
`
`
`Accordingly, and in all instances subject to the restrictions above, Amgen shall produce on
`
`a rolling basis and no later than July 2, 2019, to be completed within two weeks of the date of this
`
`order:
`
`1.
`
`All documents relating to assessments of (i) infringement or validity of the ’869
`
`patent; or (ii) validity of the ’196, ’379, or ’811 patents;
`
`2.
`
`All documents relating to amendments to Amgen’s proposed label for Kanjinti
`
`based upon assessments of the validity of the ’196, ’379, or ’811 patents or the outcome of inter
`
`partes review proceedings involving those patents;
`
`3.
`
`All documents relating to any experimentation, testing, or analysis to alter Amgen’s
`
`manufacturing processes to avoid Genentech’s allegations of infringement of the ’869 patent;
`
`4.
`
`All documents relating to communications with and among Amgen’s in-house
`
`counsel concerning the Opinion Letters or any other assessments of (i) infringement or validity of
`
`the ’869 patent; or (ii) validity of the ’196, ’379, or ’811 patents; and
`
`IT IS FURTHER ORDERED, and in all instances subject to the restrictions above, that
`
`Amgen shall:
`
`6.
`
`Make available for deposition any in-house counsel involved in (i) obtaining the
`
`Opinion Letters; or (ii) providing advice with respect to (a) infringement or validity of the ’869
`
`patent or (b) the validity of ’196, ’379 or ’811 patents to any business decisionmakers at Amgen;
`
`andKanjinti launch decision-makers;
`
`
`
`2
`
`
`
`Case 1:18-cv-00924-CFC-SRF Document 266-1 Filed 06/27/19 Page 6 of 7 PageID
`#: 18964
`
`7.
`
`Make available for deposition any witnesses who were previously instructed not to
`
`answer questions at their depositions in this case relating to the subjects of paragraph 1-3 above
`
`on the basis of privilege, including: (1) Jennifer Khiem; (2) Shane Hall; (3) Benjamin Dionne; (4)
`
`Purvi Lad; and (5) Amy Nehring. These depositions shall be limited to no more than three hours
`
`on the record.
`
`As the parties previously agreed before the discovery hearing, and in all instances subject
`
`to the restrictions above, Amgen shall produce (i) all communications with opinion counsel related
`
`to (a) non-infringement and/or invalidity of the ’869 patent; and (b) the invalidity of the ’196, ’379,
`
`and ’811 patents; (ii) any files from opinion counsel shared with Amgen; (iii) all underlying
`
`documents and drafts of the Opinion Letters shared with Amgen; (iv) all communications
`
`regarding the opinion letters exchanged between Amgen in-house counsel and outside opinion
`
`counsel and/or any Amgen decisionsKanjinti launch decision makers who relied upon the
`
`opinions; and (v) any other opinion letters obtained by Amgen related to (a) non-infringement
`
`and/or invalidity of the ’869 patent; and (b) the invalidity of the ’196, ’379, and ’811 patents. The
`
`Court hereby ORDERS that this production be completed by July 2, 2019within two weeks of the
`
`date of this order.
`
`
`
`The parties shall meet-and-confer and submit a proposed schedule and plan for any
`
`remaining discovery on willfulness, and a proposed procedure for addressing willfulness at trial
`
`(if necessary) in a phased manner before a jury.
`
`This Order replaces and supersedes the Order dated June 20, 2019, D.I. 259.
`
`
`
`SO ORDERED this 20th
`
` day of June
`
`, 2019.
`
`
`
`3
`
`
`
`Case 1:18-cv-00924-CFC-SRF Document 266-1 Filed 06/27/19 Page 7 of 7 PageID
`#: 18965
`
`
`
`
`
`
`
`
`
`The Honorable Colm F. Connolly
`United States District Judge
`
`
`
`4
`
`
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