`18970
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`GENENTECH, INC. and CITY OF HOPE,
`
`
`
`
`C.A. No. 17-1407-CFC
`
`Plaintiffs,
`
` Consolidated
`
`
`
`
`
`C.A. No. 18-924-CFC
`
`
`v.
`AMGEN INC.,
`
`
`Defendant.
`
`
`
`GENENTECH, INC. and CITY OF HOPE,
`
`
`v.
`AMGEN INC.,
`
`Plaintiffs,
`
`Defendant.
`
`LETTER TO THE HONORABLE
`COLM. F. CONNOLLY RESPONDING TO JUNE 28, 2019 ORAL ORDER
`
`C.A. No. 17-1407-CFC:
`
`YOUNG, CONAWAY, STARGATT &
`TAYLOR LLP
`Melanie K. Sharp (No. 2501)
`James L. Higgins (No. 5021)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`P (302) 571-6600
`msharp@ycst.com
`jhiggins@ycst.com
`
`Attorneys for Defendant Amgen Inc.
`
`Dated: July 3, 2019
`
`
`C.A. No. 18-924-CFC:
`
`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.
`
`
`
`
`
`
`
`Case 1:18-cv-00924-CFC-SRF Document 268 Filed 07/03/19 Page 2 of 4 PageID #:
`18971
`
`Dear Judge Connolly:
`
`Amgen urges a September hearing to resolve the indefiniteness of
`
`“following fermentation,” because an earlier hearing will conserve party and
`
`judicial resources and will provide the Court time to consider its claim construction
`
`in advance of trial, should the Court find the term definite.
`
`First, an earlier determination of indefiniteness would avoid preparation and
`
`presentation of other issues for the Kao patent at trial. Indeed, an indefiniteness
`
`finding would likely lead Genentech to forego asserting the Kao patent at trial.
`
`Second, even if the Court does not find the term indefinite, the case would
`
`benefit greatly from having the term construed before trial. If there is a jury trial,
`
`the Court must instruct the jury on claim construction.1 O2 Micro Int’l Ltd. v.
`
`Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008). Even if the
`
`December trial is a bench trial, without a construction before trial, the parties
`
`would need to address different potential constructions in their trial presentations.
`
`That would be an inefficient use of the Court’s (and the parties’) time and
`
`resources.
`
`The Court need not wait to decide indefiniteness. “Indefiniteness is a matter
`
`of claim construction, and the same principles that generally govern claim
`
`1 C.A. No. 17-1407 (consol.) is scheduled to be a jury trial and C.A. No. 18-924
`may be a jury trial if Amgen sells its product prior to December. As Genentech is
`well aware, Amgen could decide to launch Kanjinti and/or Mvasi at any time.
`
`
`
`
`
`
`
`Case 1:18-cv-00924-CFC-SRF Document 268 Filed 07/03/19 Page 3 of 4 PageID #:
`18972
`
`construction are applicable to determining whether allegedly indefinite claim
`
`language is subject to construction.” Praxair, Inc. v. ATM, Inc., 543 F.3d 1306,
`
`1319 (Fed. Cir. 2008). As this Court recognized, construction and indefiniteness
`
`of “following fermentation” are two sides of the same coin. See C.A. No. 17-1407,
`
`D.I. 401 at 20-21. The Court may make “any factual findings about extrinsic
`
`evidence relevant to this question [of indefiniteness] ….” BASF Corp. v. Johnson
`
`Matthew Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017).
`
`Respectfully submitted,
`
`
`
`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
`
`
`/s/ James L. Higgins
`Melanie K. Sharp (No. 2501)
`James L. Higgins (No. 5021)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`msharp@ycst.com
`jhiggins@ycst.com
`
`
`Attorneys for Defendant Amgen Inc. in
`C.A. No. 17-1407-CFC
`
`
`
`
`
`SMITH, KATZENSTEIN &
`JENKINS, LLP
`
`
`/s/ Neal C. Belgam
`Neal C. Belgam (No. 2721)
`Eve H. Ormerod (No. 5369)
`Jennifer M. Rutter (No. 6200)
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`(302) 652-8400
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
`jrutter@skjlaw.com
`
`Attorneys for Defendant Amgen Inc. in
`C.A. No. 18-924-CFC
`
`
`
`
`2
`
`
`
`Case 1:18-cv-00924-CFC-SRF Document 268 Filed 07/03/19 Page 4 of 4 PageID #:
`18973
`
`WORD COUNT CERTIFICATION
`
`The undersigned counsel hereby certify that the Letter to The Honorable
`
`Colm. F. Connolly Responding to June 28, 2019 Oral Order contains 329 words,
`
`which were counted by Neal C. Belgam and James L. Higgins by using the word
`
`count feature in Microsoft Word, in 14-point Times New Roman font. The
`
`foregoing word count does not include the cover page or the counsel blocks.
`
`
`
`Dated: July 3, 2019
`
`/s/ Neal C. Belgam
`Neal C. Belgam
`
`/s/ James L. Higgins
`James L. Higgins
`
`
`
`
`
`
`
`3
`
`
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