Case 1:18-cv-00924-CFC-SRF Document 433 Filed 10/18/19 Page 1 of 6 PageID #:
`32362
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`GENENTECH, INC.,
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`Plaintiff,
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`C.A. No. 18-924-CFC
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`v.
`AMGEN INC.,
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`Defendant.
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`PUBLIC VERSION
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`AMGEN’S RESPONSIVE LETTER TO GENENTECH’S
` MOTION TO COMPEL PRODUCTION OF DOCUMENTS
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`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
`(302) 652-8400
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
`jrutter@skjlaw.com
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`Attorneys for Defendant Amgen Inc.
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`Of Counsel:
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`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
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`Case 1:18-cv-00924-CFC-SRF Document 433 Filed 10/18/19 Page 2 of 6 PageID #:
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`Nancy Gettel
`Amgen Inc.
`One Amgen Center Drive
`Thousand Oaks, CA 91320-1799
`P (805) 447-1000
`ngettel@amgen.com
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`Dated: October 11, 2019
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`month prior); see also TC Tech. LLC v. Sprint Corp., No. 16-153-RGA, 2019 WL 529678, at *2
`(D. Del. Feb. 11, 2019). In contrast to the current facts, in each of the cases Genentech cites, the
`parties seeking discovery failed to provide any justification for lack of diligence, and neither
`request was triggered by the opposing party’s late-produced discovery. See Guilfoil v. Johnson,
`No. 15-733-GMS, 2017 WL 3473848, at *6 (D. Del. Aug. 11, 2017) (Plaintiff provided no
`justification for the late discovery requests); see also Walker v. Centocor Ortho Biotech, Inc., 558
`F. App’x 216, 222 (3d Cir. 2014) (Plaintiff’s knowledge of the proposed deponent’s role in the
`case for nearly six years showed lack of diligence.)
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`Genentech’s arguments concerning time constraints and resulting prejudice are founded on
`exaggeration. Genentech has three law firms working on this case. This dispute concerns a single
`deposition of a witness well-known to Genentech. Because inventorship is a purely fact-based
`inquiry, no expert testimony is necessary. Finally, Genentech’s reference to prior consulting
`relationships between Dr. Leyland-Jones and both Amgen and Genentech is irrelevant – Dr.
`Leyland-Jones has now been identified as a key fact witness, and his deposition is both necessary
`and appropriate. Genentech cannot sit on critical evidence until the end of the fact discovery period
`and then claim prejudice to prevent Amgen from obtaining follow-up discovery related to that
`evidence.
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`II.
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`THE COURT SHOULD DENY GENENTECH’S MOTION TO COMPEL TEST RESULTS
`PREPARED AT THE DIRECTION OF OUTSIDE LITIGATION COUNSEL
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`The relief sought by Genentech contravenes the Court’s waiver Order. The June 20, 2019
`order expressly stated that “[t]he waiver does not extend to communications with outside trial
`counsel.” (D.I. 259). Yet, Genentech demands communications with trial counsel about testing
`conducted solely at the direction of outside trial counsel.
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`Contrary to Genentech’s assertion, the test results are not simply “facts that Amgen’s
`employees themselves generated.” GNE Op. Ltr. at 3. Rather, outside trial counsel requested and
`directed the testing to facilitate the rendering of legal advice and to develop its case. See GNE Op.
`Ltr., Ex. 11 at 65:8-23; Gardner Declaration, ¶¶ 3–4. Amgen is not seeking to shield otherwise
`discoverable information merely by disclosing it to its attorney. Instead, the information
`Genentech is seeking would not exist if trial counsel had not requested that it be created. Kimberly-
`Clark Corp. v. Tyco Healthcare Retail Grp., No. 05-C-985, 2007 WL 1246411, at *1 (E.D. Wis.
`Apr. 27, 2007) (holding that the information related to testing was privileged because the testing
`was performed in the context of seeking and rendering legal advice). “Although the attorney-client
`privilege is designed to shield attorney-client communications, its breadth extends to tests or
`materials produced in order to facilitate the attorney’s giving of legal advice.” Id.
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`Respectfully submitted,
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`/s/ Neal C. Belgam
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`Neal C. Belgam (#2721)
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`Enclosures
`cc:
`Clerk of Court (via hand delivery)
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`All Counsel of Record (via email)
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`3
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`Case 1:18-cv-00924-CFC-SRF Document 433 Filed 10/18/19 Page 6 of 6 PageID #:
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`CERTIFICATE OF SERVICE
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`I certify that on October 11, 2019, a true and correct copy of the Letter to the Honorable
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`Colm F. Connolly from Neal C. Belgam, Esq. Regarding Amgen’s Responsive Letter to
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`Genentech’s Motion to Compel Production of Documents 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
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` /s/ Neal C. Belgam
`Neal C. Belgam (No. 2721)
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