Case 1:18-cv-00924-CFC-SRF Document 443 Filed 10/24/19 Page 1 of 42 PageID #:
`32541
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`GENENTECH, INC.,
`
`Plaintiff,
`
`v.
`
`AMGEN INC.,
`
`Defendant.
`
`
`
`
`
` Case No. 18-924-CFC
`
`
`
`
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`
`
`
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`PLAINTIFF’S LETTER BRIEF IN OPPOSITION TO
`DEFENDANT’S OCTOBER 4, 2019 DISCOVERY DISPUTE LETTER
`
`
`
`Michael P. Kelly (#2295)
`Daniel M. Silver (#4758)
`Alexandra M. Joyce (#6423)
`MCCARTER & ENGLISH, LLP
`Renaissance Centre
`405 N. King Street, 8th Floor
`Wilmington, DE 19801
`(302) 984-6300
`mkelly@mccarter.com
`dsilver@mccarter.com
`ajoyce@mccarter.com
`
`Counsel for Plaintiff Genentech, Inc.
`
`Dated: October 11, 2019
`
`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
`
`Robert J. Gunther, Jr.
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`7 World Trade Center
`250 Greenwich Street
`New York, NY 10007
`
`Nora Passamaneck
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`1225 17th Street, Suite 2600
`Denver, CO 80202
`
`
`PUBLIC VERSION FILED: October 24, 2019
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 443 Filed 10/24/19 Page 2 of 42 PageID #:
`32542
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`Daralyn Durie
`Adam Brausa
`DURIE TANGRI LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 443 Filed 10/24/19 Page 3 of 42 PageID #:
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`Dear Judge Connolly,
`Genentech respectfully requests that the Court deny Amgen’s requests set forth in its
`October 4, 2019 discovery dispute letter.
`I. The Court Should Reject Amgen’s Eleventh-Hour Attempt To Seek Fact Discovery
`Regarding A New And Untimely “Derivation” Defense.
`Four of Amgen’s requests seek untimely fact discovery in connection with an equally
`untimely “derivation” defense that Amgen raised for the first time last month.1 Amgen never
`previously pleaded that defense, nor did it amend its pleadings to include that defense by the April
`5, 2019 deadline. Amgen wants to argue that the asserted claims of U.S. Patent Nos. 6,627,196,
`7,371,379, and 10,160,811 (“the Dosing Patents”) were invented by Dr. Brian Leyland-Jones, one
`of the physicians who worked on the clinical trials, and not the named inventors. Amgen
`
`
`
`
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`Now, less than nine weeks before trial, and with new trial counsel for Amgen having
`recently entered an appearance, Amgen is using the production of a single email authored by Dr.
`Sharon Baughman, one of the named inventors of the Dosing Patents, as its sole excuse to raise
`this new defense. Dr. Baughman testified at her deposition that
`
`
`—and she testified at length and answered dozens of questions on that topic during
`her deposition. D.I. 397 at 2; Ex. 1 at 132:4-10. In order to avoid a discovery dispute over the
`email, which included privileged attorney-client communications, Genentech produced a redacted
`version of the document, reflecting the portion on which Dr. Baughman relied.
`The Court should reject Amgen’s belated effort to re-open fact discovery in order to fish
`for evidence to support its untimely “derivation” defense. Amgen has known of the facts
`underlying inventorship and the work leading up to the patents for months, if not years. With that
`information in hand, Amgen stopped pursuing many of the discovery requests that it now presses
`before the Court. For example, Amgen withdrew its notice of deposition of Dr. Leyland-Jones,
`stopped responding to Genentech’s letters with respect to the Roche documents, and waited over
`a month before following up on Dr. Baughman’s email to counsel. The facts on the ground have
`not changed. Dr. Baughman’s redacted email does not reflect any new or previously unknown
`facts;
`
`
`
` What has changed, apparently, is Amgen’s desired trial strategy.
`Allowing Amgen to chase its untimely “derivation” defense now would be unfairly
`prejudicial to Genentech. Genentech has not been given any opportunity to develop its own
`rebuttal fact or expert evidence, and cannot reasonably do so in the weeks remaining before trial,
`when the parties are deposing experts, preparing pretrial filings, and getting ready for the trial.
`Genentech’s opening letter brief, which seeks a protective order against Amgen taking Dr.
`Leyland-Jones’s deposition, explains why Amgen’s belated effort to take this discovery should be
`denied. D.I. 397 at 1-3. This response focuses on the specific arguments raised in Amgen’s letter.
`
`
`1 Genentech intends to file a motion to strike this defense by the relevant deadline.
`1
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`
`
`

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`Case 1:18-cv-00924-CFC-SRF Document 443 Filed 10/24/19 Page 4 of 42 PageID #:
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`Unredacted Version of Dr. Baughman’s Privileged Email. The Court should reject
`Amgen’s request to compel production of an unredacted version of the email authored by Dr.
`Baughman, sent to litigation counsel during the pendency of this case, and clearly marked
`“Attorney-Client Privilege.” Ex. 2. During her deposition, Dr. Baughman testified that
`
`
`
`
`
`
`Dr. Baughman was asked
`
`
`After the deposition, Genentech wrote to Amgen to explain that Dr. Baughman’s review
`of a privileged document that she herself wrote to refresh her own recollection is not discoverable,
`as it could not have impacted her testimony. See, e.g., In re Rivastigmine Patent Litig., 486 F.
`Supp. 2d 241, 243-44 (S.D.N.Y. 2007); Sporck v. Peil, 759 F.2d 312, 318 (3d Cir. 1985). Amgen
`did not respond for over a month, and when it did eventually respond, it took the position that the
`email was discoverable in its entirety. Ex. 3. To avoid a further dispute, Genentech produced a
`redacted version of the email containing
`
`
`.”
`Even where a court finds it necessary in the interests of justice to require production of a
`privileged document relied upon by a witness at a deposition, only the portions the witness actually
`relied on need be produced. See, e.g., S&A Painting Co., Inc. v. O.W.B. Corp., 103 F.R.D. 407
`(W.D. Pa. 1984) (privilege only waived as to portions actually referred to during deposition);
`Valvoline Instant Oil Change Franchising v. RFG Oil, Inc., 2014 WL 12026073 (S.D. Cal. May
`20, 2014) (same); Adidas Am., Inc. v. TRB Acquisitions LLC, 2018 WL 4849312, at *3 (D. Or.
`Oct. 5, 2018) (same). That is exactly what Genentech did here. Nothing more is required.
`Second Deposition of Dr. Baughman. Amgen argues that it is entitled to “continue” Dr.
`Baughman’s deposition, without seeking leave of court, because Amgen’s counsel purportedly
`attempted to unilaterally hold the deposition open. But a party cannot unilaterally hold open a
`deposition under FRCP 30(a)(2)(A)(ii) or any other applicable rule. See, e.g., Johnson v. Charps
`Welding & Fabricating, Inc., 2017 WL 9516243, at *14 (D. Minn. Mar. 3, 2017); Boerste v. Ellis,
`LLC, 2019 WL 3225709, at *3 (W.D. Ky. July 17, 2019) (“no case law to support his assertion
`that he had the ability to unilaterally suspend a deposition and continue it again at a later date”).
`Amgen also cannot show good cause for a second deposition. Dr. Baughman already
`testified at length about
`
`
`
`
`
` She also testified generally about
`
`. Ex. 1 at 122:19-123:25; 130:25-131:2.
`Amgen mischaracterizes the redacted email in suggesting that it
`
`
`
`2
`
`

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`Case 1:18-cv-00924-CFC-SRF Document 443 Filed 10/24/19 Page 5 of 42 PageID #:
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`that
`Dr. Baughman explained
`
` She explained that
`
`2 It does no such thing. The redacted email merely states, at a high level,
`
`
`
`
`
`
` D.I. 397 at 2. Thus, Dr. Baughman has already explained
`
`And, regardless, Amgen counsel had ample opportunity to conduct any follow-up with Dr.
`Baughman and question her about the extent of Dr. Leyland-Jones’ further involvement (if any) in
`Genentech’s work regarding three weekly dosing, but failed to do so. Dr. Baughman’s email does
`not create an excuse for a second deposition.
`Waived and Untimely Deposition of Dr. Leyland-Jones. As explained in Genentech’s
`opening letter brief seeking a protective order, Amgen obtained ample discovery on inventorship
`of the Dosing Patents and on Dr. Leyland-Jones’s involvement with the three-weekly dosing
`regimen and relevant clinical trial. D.I. 397 at 1-2. Moreover,
`
`
` Ex. 1 to D.I. 397. Ultimately, Amgen chose to forgo that deposition. There is no
`excuse for Amgen to seek such a deposition now and, for the reasons above and in Genentech’s
`motion for protective order, Dr. Baughman’s redacted email does not provide any such excuse.
`Waived and Untimely Request for Roche Documents. Amgen sought these very same
`documents during fact discovery. Genentech responded on April 12, 2019, and objected to the
`production of documents from Roche. Ex. 4 at 2. Amgen did not respond at all to Genentech’s
`letter. Having sat on its hands for nearly 6 months, Amgen has waived any requests relating to
`Roche documents on the dosing patents and the BO15935 Clinical Trial. Moreover, the requested
`documents relate to research and clinical trial work from over 20 years ago. It would be unfair
`and unduly burdensome to require Genentech to search for those documents weeks before trial.
`II. There Are No Non-Privileged Documents Relating To Genentech’s Internal
`Decision-Making On Certain License Agreements And Their Terms.
`With respect to Amgen’s fifth discovery request, Genentech searched for non-privileged,
`responsive documents and has not identified any such documents. As Genentech has explained,
`
`Ex. 5 at 2; Ex. 6 at 2-3; D.I.
`222 at 4. There are no documents to produce, and providing a 30(b)(6) witness would be futile.
`Amgen seeks a privilege log, but many of the relevant discussions occurred during the pendency
`of this litigation, which the protective order states need not be logged. D.I. 50 at 2(e)(ii).
`Additionally, as Amgen itself has argued, it would be overly burdensome at this point to generate
`a log on this issue now, while the trial is just weeks away. Ex. 7 at 1; D.I. 266 at 10, n.5.
`
`
`
`
`
`
`2 Amgen also suggests that the named inventors testified they
` They did not testify as such. In the quoted snippets in Amgen’s letter,
`
`
`
`
`3
`
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`
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`
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`

`

`Case 1:18-cv-00924-CFC-SRF Document 443 Filed 10/24/19 Page 6 of 42 PageID #:
`32546
`
`
`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, DE 19801
`(302) 984-6300
`mkelly@mccarter.com
`dsilver@mccarter.com
`ajoyce@mccarter.com
`
`Counsel for Plaintiff Genentech, Inc.
`
`Dated: October 11, 2019
`
`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
`
`Robert J. Gunther, Jr.
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`7 World Trade Center
`250 Greenwich Street
`New York, NY 10007
`
`Nora Passamaneck
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`1225 17th Street, Suite 2600
`Denver, CO 80202
`
`Daralyn Durie
`Adam Brausa
`DURIE TANGRI LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
`
`
`
`
`
`4
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 443 Filed 10/24/19 Page 7 of 42 PageID #:
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`EXHIBIT 1
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`

`

`Case 1:18-cv-00924-CFC-SRF Document 443 Filed 10/24/19 Page 8 of 42 PageID #:
`32548
`CONFIDENTIAL
`
` IN THE UNITED STATES DISTRICT COURT
` FOR THE DISTRICT OF DELAWARE
`
`_____________________________
` )
`GENENTECH, INC. and )
`CITY OF HOPE, )
` )
` Plaintiffs and )
` Counterclaim Defendants, )
` )
`vs. ) No. 1:18-cv-00924-CFC
` )
`AMGEN INC., )
` )
` Defendant and )
` Counterclaim Plaintiff. )
` )
`_____________________________)
` )
`AND RELATED ACTIONS. )
`_____________________________)
` CONFIDENTIAL
` VIDEOTAPED 30(b)(1) and 30(b)(6) DEPOSITION OF
` SHARON BAUGHMAN, Ph.D.
` San Francisco, California
` Thursday, May 9, 2019
` Volume I
`
`Reported by:
`CATHERINE A. RYAN, RMR, CRR
`CSR No. 8239
`Job No. 3379684
`PAGES 1 - 292
`
`Veritext Legal Solutions
`800-826-0277
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` MR. BRAUSA: Objection. Form.
`
` THE WITNESS: I have no idea.
`
`BY MR. KNAUSS:
`
` Q When you were performing the
`
`pharmacokinetic modeling in 1998, '99, were you
`
`collaborating with anybody from Roche?
`
` A I don't recall any collaborations.
`
` Q Within the context of Trastuzumab
`
`development, what was your first interaction with
`
`Brian Leyland-Jones?
`
` MR. BRAUSA: Objection. Form.
`
` THE WITNESS: Brian was one of the
`
`clinicians on -- I don't know the term -- but like a
`
`scientific advisory board, early on, probably right
`
`around Phase III. I don't recall specifically.
`
`BY MR. KNAUSS:
`
` Q When you say "right around Phase III," do
`
`you mean when the Phase III trials were just
`
`beginning?
`
` A I believe so, yes.
`
` Q Okay. Did Brian participate -- forgive
`
`me. I'm being too informal.
`
` Did Dr. Leyland-Jones participate in the
`
`Phase III trials?
`
` A I don't know specifically if he did. I
`
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`believe he did, but I don't know specifically.
`
` Q Was Dr. Leyland-Jones involved in the
`
`trial to evaluate three-weekly dosing of
`
`Trastuzumab?
`
` MR. BRAUSA: Objection. Form.
`
` THE WITNESS: I had already left the
`
`company, so I don't know specifically. I assume so.
`
`BY MR. KNAUSS:
`
` Q Why do you assume so?
`
` A We had discussions before I left the
`
`company about three -- every three-week dosing.
`
` Q You and Dr. Leyland-Jones had discussions
`
`about it?
`
` A Yes, we did.
`
` Q When was the first time you had a
`
`discussion with Dr. Leyland-Jones about three-weekly
`
`dosing?
`
` A I don't recall.
`
` Q Do you recall the year?
`
` A No.
`
` Q Was it before or after you were doing the
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`modeling work we've discussed this morning with Dan
`
`Combs?
`
` MR. BRAUSA: Objection. Form.
`
` THE WITNESS: I don't know.
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`BY MR. KNAUSS:
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` Q Do you regard Dr. Leyland-Jones as a good
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`physician?
`
` A That's not my place to say. I don't know.
`
` Q Do you regard him as a trustworthy
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`individual?
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` A I had no reason to not believe he was.
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` Q And only because you answered me in the
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`past tense, do you have any reason now to believe
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`that Dr. Leyland-Jones is not a trustworthy
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`individual?
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` A Oh, I've -- the only reason it was past
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`tense is because I haven't had any interactions.
`
` Q Understood.
`
` As far as you know, is Dr. Leyland-Jones
`
`respected in his field?
`
` MR. BRAUSA: Objection. Form.
`
` THE WITNESS: Again, I'm not the one who
`
`can answer that question.
`
`BY MR. KNAUSS:
`
` Q The discussions you mentioned with
`
`Dr. Leyland-Jones about three-weekly dosing, what's
`
`the first discussion you recall having with
`
`Dr. Leyland-Jones about three-weekly dosing of
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`Trastuzumab?
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` A I don't recall the first.
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` Q Okay. Do you recall any particular
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`conversations with Dr. Leyland-Jones on the subject
`
`of three-weekly dosing of Trastuzumab?
`
` A Yes. Shortly before I left Genentech, he
`
`and I had a discussion about q three-weekly dosing.
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` Q And what was discussed in that
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`conversation?
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` A q three-weekly dosing.
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` Q What did Brian say about three-weekly
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`dosing in that conversation?
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` A My recollection is that he supported going
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`forward with q three weekly dosing.
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` Q What else did he say about it?
`
` A I don't recall.
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` Q What did you say to him about it?
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` A All I could say is that the
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`pharmacokinetics -- that data that I had supported
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`that it might work.
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` Q And do you recall when that conversation
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`took place?
`
` A Yes, I believe it was August or September
`
`of '99.
`
` Q Right around the time you were leaving --
`
` A Yes.
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` did you review that specific simulation?
`12:55:37
` A Yes.
` Q Okay. What did you review that described
` that specific simulation?
` A I reviewed some old data that was not with
`12:56:15
` counsel.
` Q Okay. What old data did you review that
` was not with counsel?
` A Old simulations that I still had or --
` yeah.
`12:56:29
` Q Okay. And when you were collecting
` documents in connection with the subpoena, did you
` turn that -- those old simulations over to counsel?
` A Absolutely.
` Q Okay. And so in preparation for the
`12:56:38
` deposition but outside of your meeting with counsel,
` you reviewed the simulation that specifically
` supports what's described here in Example 6 in
` column 46?
` A I reviewed information that stated what
`12:57:01
` was done.
` Q Okay. And in what -- what was that? Was
` it a particular document that you were reviewing
` that stated what was done?
` A It was an email.
`12:57:32
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` Q Okay. Just -- just a single email?
`12:57:34
` A Yes.
` Q Okay. And who was on that email in the
` "To," "From" fields?
` A The email was to Adam Brausa.
`12:57:51
` Q Okay.
` MR. BRAUSA: Okay. We're going to --
` BY MR. KNAUSS:
` Q Let me just ask you: What date was the
` email?
`12:58:01
` Do you recall?
` A It's -- it was more recently. Last couple
` of years.
` Q Okay. The email in question, did you
` write it?
`12:58:19
` A Yes.
` Q Okay. And in that email, you were
` describing work that you did?
` A Yes.
` MR. BRAUSA: And I'm going to caution the
`12:58:26
` witness --
` MR. KNAUSS: Yeah, I --
` MR. BRAUSA: -- we've got a privilege log
` that I know you have. We're getting into the
` substance of the communications. I'm going to
`12:58:32
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` instruct the witness not to reveal any substance of
`12:58:35
` the communications.
` MR. KNAUSS: Okay. So, Counsel, obviously
` anything that's factual in nature that the witness
` discloses to you obviously is not privileged. So
`12:58:47
` I'm going to ask some questions about this document.
` I'm not intending to invade any attorney-client
` privilege, but I want to understand the factual
` nature of the document, okay?
` Q So -- well, first of all, you -- you
`12:59:02
` stated to me that you reviewed this particular email
` in connection with preparing for the deposition.
` Is that correct?
` A Yes.
` Q And -- and specifically in connection with
`12:59:13
` preparing for testifying on Topic 7 of the -- in
` Exhibit 53?
` A Yes.
` Q Okay. So what factual information was in
` this email that you reviewed in preparation for the
`12:59:27
` deposition?
` A It was a simulation that I had done based
` on the data I had back from the 1990s.
` Q When did you perform that simulation?
` A In the last two or three years.
`12:59:47
`
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` Q Okay. Why did you perform that
`12:59:50
` simulation?
` MR. BRAUSA: And I'm going to caution the
` witness not to reveal the substance of any attorney
` communications. And if you can't answer it without
`13:00:07
` doing so, I instruct you not to answer.
` THE WITNESS: It was primarily to refresh
` my memory on what had been done.
` BY MR. KNAUSS:
` Q So I just want you to walk me through the
`13:00:36
` steps you took to perform the simulation -- okay? --
` in this email.
` Did you -- strike that.
` What data did you use for the
` pharmacokinetic parameters in that simulation?
`13:00:49
` THE VIDEOGRAPHER: Your microphone.
` THE WITNESS: Sorry. I'll leave it on.
` The H0551 and H0552 data.
` BY MR. KNAUSS:
` Q Specifically the elimination constant and
`13:00:59
` volume of distribution?
` A Correct.
` Q And then what pharmacokinetic modeling
` software did you use?
` A WinNonlin.
`13:01:07
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` So for -- for counsel, I'll mention that,
`14:18:44
` off the record, during the break, I added to my
` earlier request that the email referenced by
` Dr. Baughman that she relied upon in preparation for
` her 30(b)(6) testimony be produced to us today, if
`14:18:53
` possible, so that we could question Dr. Baughman
` about it.
` Counsel has undertaken to try to
` accommodate that request and has informed me, in- --
` insofar as I can understand it, that the email in
`14:19:08
` question contains -- it's -- the body of the email
` contains no substantive data, but attached to the
` email is the result of a WinNonlin simulation, and,
` actually, rather than ask counsel to verify that,
` the -- if -- those factual matters on the record, I
`14:19:28
` want to ask the witness a few questions about that,
` and then we can return back to the issue as needed.
` Q So, Dr. Baughman --
` MR. BRAUSA: Be- -- before we do --
` MR. KNAUSS: Okay.
`14:19:39
` MR. BRAUSA: -- I just want to clarify. I
` think there was one inaccuracy. There isn't an
` attachment to the email.
` MR. KNAUSS: Thank you.
` MR. BRAUSA: There's a reference to a
`14:19:44
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` model, and that's -- that's the -- and there's
`14:19:48
` limited data referring to 17 mgs per mil.
` We're looking at that and seeing when we
` can produce a redacted form of that email, if
` appropriate, but the WinNonlin simulation, the
`14:20:01
` results of the inputs to that, are in no way
` referenced or attached by -- by name as a WinNonlin
` simulation.
` And so that is a separate document that,
` my understanding is, was produced, but because of
`14:20:15
` the formatting of it, using that program, it returns
` an error. So there's a document with a Bates number
` that corresponds to that. We're endeavoring to see
` if we can produce an Excel output from that
` proprietary program.
`14:20:31
` MR. KNAUSS: Understood.
` Q Dr. Baughman, does -- did counsel's
` accounting of the -- of the email and the -- and the
` files that you relied upon in preparation for your
` testimony today -- is it accurate insofar as you
`14:20:47
` know?
` A Yes, it is.
` Q Okay. So, then, the -- so I'm fully
` understanding, when we were talking earlier today
` about things that you reviewed in preparation for
`14:21:01
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` your testimony on Topic 7, you -- you referenced an
`14:21:03
` email, and then we got into some questions about
` that email.
` So I'd just like to better understand:
` What, specifically, in that email that you referred
`14:21:15
` to did you rely on in preparation for the testimony
` today?
` A There was only one thing, and that was
` that my simulation show the 17 micrograms per mil
` reported in the pal- -- patent.
`14:21:36
` Q So to make sure I'm understanding you
` correctly, there's a -- basically a statement in the
` email that you wrote --
` A Yes.
` Q -- that says, My simulations confirm the
`14:21:47
` 17 micrograms per mil reported in the patent.
` Is that fair?
` A That is correct.
` Q Okay. And the simulation that you're
` referring to is actually a separate computer file.
`14:22:01
` Is that right?
` A Separate computer file from what?
` Q From the email.
` A That is correct.
` Q I see.
`14:22:12
`
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`EXHIBIT 2
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`Case 1:18-cv-00924-CFC-SRF Document 443 Filed 10/24/19 Page 24 of 42 PageID
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`EXHIBIT 3
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`

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`Case 1:18-cv-00924-CFC-SRF Document 443 Filed 10/24/19 Page 25 of 42 PageID
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`
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`Daniel J. Knauss
`+1 650 843 5287
`dknauss@cooley.com
`
`
`
`
`July 17, 2019
`
`Andrew J. Danford
`WilmerHale
`60 State Street
`Boston, MA 02109 USA
`
`Re: Genentech, Inc. et al. v. Amgen, Inc., Case No. 18-924-CFC (D. Del.) – Documents Discussed
`in Baughman Deposition
`
`Counsel:
`
`I write in response to your letter dated June 11, 2019, regarding Genentech’s failure to produce relevant
`documents discussed in the deposition of Sharon Baughman. As noted in our May 30th letter, Dr.
`
`Baughman testified that
`
` In particular, Dr. Baughman stated that
`
`Indeed, Dr. Baughman
`
`
`
`
`
`
`
`Genentech cannot withhold the documents Amgen requests as any privilege related to these
`communications was waived when Dr. Baughman reviewed and relied upon these documents, thus
`influencing her testimony. See Thomas v. Euro RSCG Life, 264 F.R.D. 120 (S.D.N.Y. Feb. 18, 2010). The
`cases Genentech cites are distinguishable and do not support Genentech’s basis for withholding the
`requested documents. In particular, the issue of Dr. Baughman’s memory is a central concern, being both
`a corporate designee and a percipient witness, and Dr. Baughman’s testimony confirms that
`
`
` Cf. In re Rivastigmine Patent Litig., (MDL No. 1661), 486 F. Supp. 2d 241, 243-44 (S.D.N.Y.
`2007) (denying motion to compel production of unredacted copies of documents reviewed by the witness
`prior to her deposition, noting in particular that the accuracy of the witnesses memory was not a central
`concern and the Court’s in camera review had indicated the redacted portions of the document were unlikely
`to have influenced the witnesses testimony with respect to the issues she was designated to testify.)
`
`Indeed, Sporck v. Peil expressly recognizes that a party may obtain documents used by a witness prior to
`testifying when the document was used to refresh the witness’s memory, it was used for the purpose of
`testifying, and the interests of justice require production. 759 F.2d 312, 317 (3d Cir. 1985); see also In re
`ML-Lee Acquisition Fund II, L.P. & ML-Lee Acquisition Fund (Ret. Accounts) II, L.P. Sec. Litig., 848 F. Supp.
`527, 567 (D. Del. 1994) (“[I]n accordance with Sporck, the Court will order Mr. Baker to produce those
`documents which he testified refreshed his recollection of certain facts.”) Such is the case here, given Dr.
`
`Baughman’s testimony indicating
` Under the circumstances,
`Genentech’s argument concerning the fact that Dr. Baughman authored the disputed email is of no moment.
`
`Furthermore, Genentech must at a minimum produce a redacted version of the email, since Dr. Baughman
`testified under oath as to factual information contained in the email – testimony to which Genentech’s
`
`
`
`Cooley LLP 3175 Hanover Street Palo Alto, CA 94304-1130
`t: (650) 843-5000 f: (650) 849-7400 cooley.com
`
`

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`Andrew Danford
`July 17, 2019
`Page Two
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`counsel Mr. Brausa lodged no objection. Accordingly, all factual statements made by Dr. Baughman in the
`email in question must be produced. Indeed, Mr. Brausa
`
`
`Amgen is not required to take on faith the correctness of Genentech’s
`counsel’s recitation of the non-privileged content of a responsive document.
`
`
`
`Please confirm that the missing item(s) will be produced immediately.
`
`Sincerely,
`
`
`Daniel J. Knauss
`
`
`
`
`
`
`
`Cooley LLP 3175 Hanover Street Palo Alto, CA 94304-1130
`t: (650) 843-5000 f: (650) 849-7400 cooley.com
`
`

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`EXHIBIT 4
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`Case 1:18-cv-00924-CFC-SRF Document 443 Filed 10/24/19 Page 28 of 42 PageID
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`
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`April 12, 2019
`
`Stephanie Lin
`
`+1 617 526 6789 (t)
`+1 617 526 5000 (f)
`stephanie.lin@wilmerhale.com
`
`By E-mail
`
`Eamonn Gardner
`Michelle Rhyu
`Susan Krumplitsch
`Daniel J. Knauss
`Orion Armon
`Benjamin Lin
`Lauren Krickl
`
`COOLEY LLP
`
`RE: Genentech, Inc. et al. v. Amgen, Inc., Case No. 18-924-CFC (D. Del.)—Genentech’s
`Document Production
`
`Counsel,
`
`We write in response to your April 3 letter regarding Genentech’s document productions:
`
`1)
`marked confidential by
`
`These documents have been
`, and we have asked them for permission to produce.
`
`2)
`
` Genentech reviewed and produced
` responsive to Amgen’s requests and subject to Plaintiffs’ objections.
`However, in response to your request, Plaintiffs are willing to produce
` to the extent found after a reasonable search.
`
`
`
` an initial matter, Plaintiffs object to
`3)
`Amgen’s request that Plaintiffs collect ESI for any additional ESI custodians, especially where
`the parties negotiated an ESI order governing the number of custodians for each party, and
`Amgen made this request less than five weeks before the close of fact discovery. In any event,
`these individuals are not, and have never been, Genentech employees. As such, Genentech does
`not have custody or cont