Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 1 of 29 PageID
`#: 34338
`
`EXHIBIT A
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 2 of 29 PageID
`#: 34339
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`
`
`
`C.A. No. 18-00924-CFC
`
`GENENTECH, INC.,
`
`
`Plaintiff and Counterclaim Defendant,
`
`v.
`
`AMGEN INC.,
`
`Defendant and Counterclaim Plaintiff.
`
`
`DEFENDANT AMGEN INC.’S SECOND NOTICE OF DEPOSITION OF PLAINTIFFS
`PURSUANT TO FEDERAL RULE OF CIVIL PROCEDURE 30(b)(6)
`
`
`PLEASE TAKE NOTICE that, pursuant to Rule 30(b)(6) of the Federal Rules of Civil
`
`Procedure, counsel for Defendant Amgen Inc. (“Defendant” or “Amgen”) will take the deposition
`
`by oral examination of Plaintiff Genentech, Inc. (“Genentech”) on the topics set forth in the
`
`attached Schedule A, through one or more officers, directors, agents, or other persons designated
`
`by Plaintiff to testify on its behalf.
`
`The deposition will take place before an officer duly authorized by law to administer oaths,
`
`at the office of Cooley LLP, 3175 Hanover St, Palo Alto, CA 94304, on a date or dates to be
`
`determined as mutually convenient for both parties. The testimony will be recorded
`
`stenographically and by videotape. The deposition will be taken for the purposes of discovery and
`
`all other purposes permitted by the Federal Rules of Civil Procedure.
`
`
`
`
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 3 of 29 PageID
`#: 34340
`
`47.
`
`Facts and data in Your possession regarding the business and financial terms on
`
`which You have granted a license to Amgen to any patent.
`
`48.
`
`Facts and data in Your possession regarding analyses You have performed
`
`regarding the business and financial terms on which You have considered authorizing any third-
`
`party to manufacture or sell an authorized biosimilar of any product of Yours.
`
`49.
`
`50.
`
`All drivers of consumer demand for Herceptin.
`
`Your statements in any filing in any governmental regulatory agency, court, or
`
`administrative agency proceeding, including in any inter partes review proceedings, regarding the
`
`drivers of consumer demand for Herceptin.
`
`51.
`
`Your statements in any filing in any governmental regulatory agency, court, or
`
`administrative agency proceeding, including in any inter partes review proceedings, regarding the
`
`drivers of commercial success of Herceptin.
`
`52.
`
`The commercial value to Genentech You ascribe to each of the inventions claimed
`
`in each asserted claim of each Patent-in-Suit.
`
`53.
`
`Facts and data in Your possession concerning market demand for the use of air
`
`sparging to prevent the reduction of disulfide bonds as claimed in the asserted claims of the ’869
`
`patent.
`
`54.
`
`Facts and data in Your possession relating to or reflecting market demand for the
`
`dosing regimens claimed in the asserted claims of the ’196, ’379, and ’811 patents.
`
`55.
`
`Facts and data in Your possession regarding the significance of a patient’s HER2
`
`positive/overexpressing status as a driver of demand for Herceptin.
`
`56.
`
`Facts and data in Your possession regarding the significance of the inventions
`
`claimed in the Carter patent as drivers of demand for Herceptin.
`
`57.
`
`Facts and data in Your possession regarding the significance of the inventions
`
`claimed in the Cabilly Patents as drivers of demand for Herceptin.
`
`58.
`
`Facts and data in Your possession regarding the significance of the inventions
`
`claimed in the Combination Chemotherapy patents as drivers of demand for Herceptin.
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 4 of 29 PageID
`#: 34341
`
`EXHIBIT B
`
`
`
`
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 5 of 29 PageID
`#: 34342
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 6 of 29 PageID
`#: 34343
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 7 of 29 PageID
`#: 34344
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 8 of 29 PageID
`#: 34345
`
`EXHIBIT C
`
`
`
`
`
`

`

`Filed on behalf of Patent Owner Genentech, Inc. by:
`
`
`David L. Cavanaugh (Reg. No. 36,476)
`Rebecca A. Whitfield (Reg. No. 73,756)
`Robert J. Gunther, Jr. (Pro Hac Vice)
`Lisa J. Pirozzolo (Pro Hac Vice)
`Kevin S. Prussia (Pro Hac Vice)
`Andrew J. Danford (Pro Hac Vice)
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`
`Adam R. Brausa (Reg. No. 60,287)
`Daralyn J. Durie (Pro Hac Vice)
`DURIE TANGRI LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
`
`
`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 9 of 29 PageID
`#: 34346
`
`
`IPR2017-00731
`Patent Owner’s Response
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`HOSPIRA, INC.,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`____________________________________________
`
`Case IPR2017-00731
`Patent No. 7,846,441
`____________________________________________
`
`PATENT OWNER’S RESPONSE
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 10 of 29 PageID
`#: 34347
`
`
` IPR2017-00731
`
`
`Patent Owner’s Response
`
`
`the non-obviousness of the challenged claims. In re Soni, 54 F.3d at 750.16 (Ex-
`
`2062 ¶214.)
`
`Fourth, the ’441 invention has been an enormous commercial success.
`
`Herceptin® is the commercial embodiment of the ’441 invention and one of the
`
`most successful drugs of all time. There is a direct nexus between Herceptin®’s
`
`commercial success and the ’441 invention. From 1998 until 2006, the only
`
`approved first-line use of Herceptin® was in combination with a taxoid, as claimed
`
`in the ’441 patent. (Ex-2012 at 1.) Following its launch, Herceptin® was quickly
`
`adopted, resulting in hundreds of millions of dollars in sales in those years
`
`immediately following its approval. (Ex-2035 at 17.) Where, as here, the
`
`commercial product embodies the claimed invention, a nexus is presumed. Brown
`
`& Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1130 (Fed.
`
`Cir. 2000). Petitioner has not even addressed the nexus between the ’441 invention
`
`
`16
`Petitioner also argues that the unexpected results for the combination of
`
`rhuMAb HER2 with paclitaxel lack a nexus to the challenged claims, which
`
`encompass combinations with “any ‘taxoid.’” (Paper-1 at 62.) But Petitioner has
`
`not offered any evidence that paclitaxel is not representative of taxoids generally.
`
`Moreover, Petitioner’s nexus argument does not apply to at least claim 8, which is
`
`limited to combinations with paclitaxel.
`
`60
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 11 of 29 PageID
`#: 34348
` IPR2017-00731
`Patent Owner’s Response
`
`and Herceptin® for purposes of commercial success, let alone rebutted the
`
`presumption of a nexus. (Paper-1 at 62.)
`
`2.
`
`Petitioner’s “simultaneous invention” argument is legally
`flawed because it rests on the inventor’s own work.
`
`Petitioner argues that Baselga ’97 demonstrates “near-simultaneous
`
`invention of the Challenged Claims.” (Paper-1 at 62.) But simultaneous invention
`
`is only relevant if it involves individuals working independently from the inventor.
`
`Trustees of Columbia Univ. v. Illumina, Inc., 620 F. App’x 916, 930 (Fed. Cir.
`
`2015). Baselga ’97 involves no such independent work; it describes the amended
`
`Phase-III-study protocol that the inventor of the ’441 patent proposed. (Compare
`
`Ex-1006 at 10, with Ex-2011 ¶¶29-36 & Ex-2007.) Indeed, Petitioner expressly
`
`relies on Dr. Hellmann’s own work to demonstrate “simultaneous invention.”
`
`(Paper-1 at 62-63 (“POSITAs like Drs. Baselga, Pegram, and Hellmann turned to
`
`the most obvious targets: combinations of known therapies seeking synergistic
`
`effects.”).)
`
`3.
`
`Petitioner’s criticisms of Dr. Sliwkowski’s declaration lack
`merit and do not cure the deficiencies in Petitioner’s
`obviousness theory.
`
`During prosecution, Genentech submitted the declaration of Dr. Mark
`
`Sliwkowski. His declaration explained that a POSA would not have had a
`
`reasonable expectation of success in achieving the ’441 invention based upon what
`
`61
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 12 of 29 PageID
`#: 34349
`
`EXHIBIT D
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 13 of 29 PageID
`#: 34350
`CONFIDENTIAL – SUBJECT TO PROTECTIVE ORDER
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`Plaintiff,
`
`
`
`v.
`
`
`
`GENENTECH, INC.,
`
`
`
`
`
`AMGEN INC.,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. 1:18-cv-00924-CFC
`
`
`
`
`Defendant and Counterclaim
`Plaintiff.
`
`PLAINTIFF GENENTECH, INC’S RESPONSES AND OBJECTIONS TO
`DEFENDANT AMGEN, INC.’S SECOND RULE 30(b)(6) DEPOSITION NOTICE
`
`Pursuant to Rules 26 and 30 of the Federal Rules of Civil Procedure and the Local Civil
`
`Rules of the United States District Court for the District of Delaware, Plaintiff Genentech, Inc.
`
`(“Genentech”) hereby objects and responds to the Second Notice of Deposition Pursuant to Rule
`
`30(b)(6) dated November 27, 2019 (the “Notice”) served by Defendant Amgen, Inc. (“Amgen”).
`
`GENERAL OBJECTIONS
`
`Plaintiff incorporates each of the following General Objections into its responses to each of
`
`the Topics for Examination (“Topics”), whether or not each such General Objection is expressly
`
`referred to in a response to a specific Topic.
`
`1.
`
`Genentech objects to the Notice, and to the Definitions and Topics contained
`
`therein, to the extent they seek to impose a burden on Genentech greater than or inconsistent with
`
`that required by the Federal Rules of Civil Procedure, including Rule 30(b)(6), the Local Rules, or
`
`any other relevant rule, statute, regulation, or precedent.
`
`2.
`
`Genentech objects to Amgen’s definitions of “Plaintiff,” “You,” and “Your” as
`
`overbroad, unduly burdensome, and vague to the extent they purport to place the burden on
`
`– 1 –
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 14 of 29 PageID
`#: 34351
`CONFIDENTIAL – SUBJECT TO PROTECTIVE ORDER
`
`TOPIC 50:
`
`Your statements in any filing in any governmental regulatory agency, court,
`or administrative agency proceeding, including in any inter partes review
`proceedings, regarding the drivers of consumer demand for Herceptin.
`
`RESPONSE TO TOPIC 50:
`
`
`
`Genentech objects to this Topic to the extent that it fails to describe with reasonable
`
`particularity the matters on which examination is requested, and is unduly burdensome and overly
`
`broad. Genentech objects to this Topic to the extent that it seeks information that is not relevant to
`
`the claims or defenses of any party to this litigation, not reasonably calculated to lead to the
`
`discovery of admissible evidence, or seeks discovery that is not proportional to the needs of the
`
`case.
`
`Genentech further objects to this Topic because any such filings speak for themselves;
`
`accordingly, the information sought by this Topic is more appropriately obtained through other
`
`means of discovery.
`
`Based on the foregoing General and Specific Objections, Genentech will not designate a
`
`witness to testify regarding this Topic.
`
`
`
`
`
`– 90 –
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 15 of 29 PageID
`#: 34352
`CONFIDENTIAL – SUBJECT TO PROTECTIVE ORDER
`
`TOPIC 51:
`
`Your statements in any filing in any governmental regulatory agency, court,
`or administrative agency proceeding, including in any inter partes review
`proceedings, regarding the drivers of commercial success of Herceptin.
`
`RESPONSE TO TOPIC 51:
`
`
`
`Genentech objects to this Topic to the extent that it fails to describe with reasonable
`
`particularity the matters on which examination is requested, and is unduly burdensome and overly
`
`broad. Genentech objects to this Topic to the extent that it seeks information that is not relevant to
`
`the claims or defenses of any party to this litigation, not reasonably calculated to lead to the
`
`discovery of admissible evidence, or seeks discovery that is not proportional to the needs of the
`
`case.
`
`Genentech further objects to this Topic because any such filings speak for themselves;
`
`accordingly, the information sought by this Topic is more appropriately obtained through other
`
`means of discovery.
`
`Based on the foregoing General and Specific Objections, Genentech will not designate a
`
`witness to testify regarding this Topic.
`
`
`
`
`
`– 91 –
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 16 of 29 PageID
`#: 34353
`
`EXHIBIT E
`
`
`
`
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 17 of 29 PageID
`#: 34354
`CONFIDENTIAL – SUBJECT TO PROTECTIVE ORDER
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`Plaintiff,
`
`
`
`v.
`
`
`
`GENENTECH, INC.,
`
`
`
`
`
`AMGEN INC.,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. 1:18-cv-00924-CFC
`
`
`
`
`Defendant and Counterclaim
`Plaintiff.
`
`PLAINTIFF GENENTECH, INC’S AMENDED RESPONSES AND OBJECTIONS TO
`DEFENDANT AMGEN, INC.’S SECOND RULE 30(b)(6) DEPOSITION NOTICE
`
`Pursuant to Rules 26 and 30 of the Federal Rules of Civil Procedure and the Local Civil
`
`Rules of the United States District Court for the District of Delaware, Plaintiff Genentech, Inc.
`
`(“Genentech”) hereby amends its objections and responses to the Second Notice of Deposition
`
`Pursuant to Rule 30(b)(6) dated November 27, 2019 (the “Notice”) served by Defendant Amgen,
`
`Inc. (“Amgen”).
`
`GENERAL OBJECTIONS
`
`Plaintiff incorporates each of the following General Objections into its responses to each of
`
`the Topics for Examination (“Topics”), whether or not each such General Objection is expressly
`
`referred to in a response to a specific Topic.
`
`1.
`
`Genentech objects to the Notice, and to the Definitions and Topics contained
`
`therein, to the extent they seek to impose a burden on Genentech greater than or inconsistent with
`
`that required by the Federal Rules of Civil Procedure, including Rule 30(b)(6), the Local Rules, or
`
`any other relevant rule, statute, regulation, or precedent.
`
`– 1 –
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 18 of 29 PageID
`#: 34355
`CONFIDENTIAL – SUBJECT TO PROTECTIVE ORDER
`
`TOPIC 50:
`
`Your statements in any filing in any governmental regulatory agency, court,
`or administrative agency proceeding, including in any inter partes review
`proceedings, regarding the drivers of consumer demand for Herceptin.
`
`RESPONSE TO TOPIC 50:
`
`
`
`Genentech objects to this Topic to the extent that it fails to describe with reasonable
`
`particularity the matters on which examination is requested, and is unduly burdensome and overly
`
`broad. Genentech objects to this Topic to the extent that it seeks information that is not relevant to
`
`the claims or defenses of any party to this litigation, not reasonably calculated to lead to the
`
`discovery of admissible evidence, or seeks discovery that is not proportional to the needs of the
`
`case.
`
`Genentech further objects to this Topic because any such filings speak for themselves;
`
`accordingly, the information sought by this Topic is more appropriately obtained through other
`
`means of discovery.
`
`Based on the foregoing General and Specific Objections, Genentech will not designate a
`
`witness to testify regarding this Topic.
`
`
`
`
`
`– 90 –
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 19 of 29 PageID
`#: 34356
`CONFIDENTIAL – SUBJECT TO PROTECTIVE ORDER
`
`TOPIC 51:
`
`Your statements in any filing in any governmental regulatory agency, court,
`or administrative agency proceeding, including in any inter partes review
`proceedings, regarding the drivers of commercial success of Herceptin.
`
`RESPONSE TO TOPIC 51:
`
`
`
`Genentech objects to this Topic to the extent that it fails to describe with reasonable
`
`particularity the matters on which examination is requested, and is unduly burdensome and overly
`
`broad. Genentech objects to this Topic to the extent that it seeks information that is not relevant to
`
`the claims or defenses of any party to this litigation, not reasonably calculated to lead to the
`
`discovery of admissible evidence, or seeks discovery that is not proportional to the needs of the
`
`case.
`
`Genentech further objects to this Topic because any such filings speak for themselves;
`
`accordingly, the information sought by this Topic is more appropriately obtained through other
`
`means of discovery.
`
`Based on the foregoing General and Specific Objections, Genentech will not designate a
`
`witness to testify regarding this Topic.
`
`
`
`
`
`– 91 –
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 20 of 29 PageID
`#: 34357
`
`EXHIBIT F
`
`
`
`
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 21 of 29 PageID
`#: 34358
`
`
`
`REDACTED IN ITS
`ENTIRETY
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 22 of 29 PageID
`#: 34359
`
`EXHIBIT G
`
`
`
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 23 of 29 PageID
`#: 34360
`
`
`
`REDACTED IN ITS
`ENTIRETY
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 24 of 29 PageID
`#: 34361
`
`EXHIBIT H
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 25 of 29 PageID
`#: 34362
`
`
`
`
`
`
`January 28, 2020
`
`Eric Wiener
`415-362-6666 (main)
`ewiener@durietangri.com
`
`CONFIDENTIAL
`
`Orion Armon
`Eamonn Gardner
`Michelle Rhyu
`Susan Krumplitsch
`Daniel J. Knauss
`Benjamin Lin
`Lauren Krickl
`
`COOLEY LLP
`
`Re: Genentech, Inc. v. Amgen Inc. – Case No. 1:18-cv-00924-CFC – Amgen’s Document Production
`
`Orion:
`
`I write regarding the remaining depositions in this matter.
`
`I.
`
`Amgen’s Witnesses
`
`Given that the damages discovery period closes this Friday, Genentech objects to Amgen offering three
`of its witnesses only after that date. This is prejudicial to Genentech because Genentech’s expert reports
`are due February 14. Amgen has known topics on which these witnesses are testifying since late
`November, thus this tactic appears to be an attempt to squeeze Genentech given its impending damages
`expert report due date. Genentech will not object to the timing of these depositions if Amgen consents
`to Genentech serving its expert reports on February 17, 2020 (with no other modifications to the pre-trial
`schedule based on this accommodation). Please let me know if Amgen consents to this proposal.
`
`With respect to the specific dates offered, Genentech will proceed with Mr. Stefureak’s deposition this
`Friday, January 31, Mr. Jones’s deposition next Monday, February 3, Mr. D’Inca’s deposition next
`Tuesday, February 4, and Mr. Wong’s deposition next Thursday, February 6. Please advise of Mr.
`Dionne’s availability as soon as possible.
`
`
`
`
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 26 of 29 PageID
`#: 34363
`
`
`
`
`
`January 28, 2020
`Page 2
`
`II.
`
`Genentech’s 30(b)(6) Witness Designations
`A.
`
`Topic 8
`
`In its January 19 Amended Objections and Responses to Amgen’s Second Rule 30(b)(6) Notice,
`Genentech designated Gina Chapman to testify regarding this topic. Your provision of the specific
`statements the night before that deposition was insufficient to specifically prepare her on those
`statements, however you had the opportunity to ask her about them. Accordingly, Genentech will not
`provide further 30(b)(6) testimony on this topic.
`B.
`
`Topics 50 and 51
`
`In my previous letter I stated that Genentech would further consider the propriety of these topics if
`Amgen identifies the specific statements about which it seeks testimony. You failed to do so. In any
`event, Genentech already prepared and offered a 30(b)(6) witness to testify regarding the drivers for
`demand for Herceptin (Melissa Abreu), and you questioned her extensively about this topic. To the
`extent the statements within the scope of these topics related to the demand for Herceptin, you could
`have asked Ms. Abreu about them. Genentech will not provide further 30(b)(6) testimony on this topic.
`C.
`
`Topic 64
`
`Genentech has already provided testimony regarding the market acceptability of the alleged non-
`infringing alternatives to the claimed dosing regimens of the patents-in-suit identified in Amgen’s
`interrogatory responses in relation to Topic 65, and thus will not provide additional testimony on this
`topic with respect to the dosing patents. With respect to the Kao patent, the non-infringing alternatives
`Amgen identified in its interrogatory responses contain Amgen Confidential information and relate to
`Amgen’s manufacturing processes; Genentech cannot provide fact witness testimony addressing
`alternatives to Amgen’s confidential manufacturing process. Additionally, Genentech has stated that it
`does not intend to present Genentech fact witness testimony regarding the cost of implementation of any
`of Amgen’s alleged non-infringing alternatives. Accordingly, Genentech will not provide further
`30(b)(6) testimony on this topic.
`D.
`
`Topic 68
`
`We are unaware of any “comparative analyses” of the sort described in your January 23 letter, and
`therefore there is no 30(b)(6) testimony to provide. I note that in my previous letter I requested that
`Amgen identify any specific “comparative analyses” on which it seeks testimony beyond those
`encompassed by Genentech’s existing designations or by the testimony Genentech has already provided
`regarding, e.g., clinical trials relating to the dosing patents, and that Amgen has not done so.
`
`
`
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 27 of 29 PageID
`#: 34364
`
`
`
`
`
`January 28, 2020
`Page 3
`
`
`E.
`
`Topics 35-38 and 43
`
`Before your January 24 email, Amgen never suggested that the parties’ discussion regarding potentially
`foregoing 30(b)(6) testimony on licensing-related topics would exclude Genentech’s licensing of the
`patents-in-suit to the other biosimilar manufacturers. Indeed, it was Amgen that proposed that the
`parties forego such testimony because of the limitations both sides had placed in their objections to the
`topics, for example limiting the scope of the topics to the terms of the agreements. There was never any
`distinction made between licenses to the patents-in-suit or other licenses, including when Mr. Liss
`discussed this issue with you on January 25 during the Mel Abreu deposition.
`
`Additionally, your last-minute alteration of the agreement came just 20 minutes before Gina Chapman,
`the witness whom Genentech had previously designated on the topics in question, was to be
`deposed. Based on our understanding of the agreement (which I outlined in my January 23 email), we
`did not prepare Ms. Chapman to testify on behalf of Genentech on these topics. Indeed, the letter you
`sent on January 23, following my email on the licensing topics, included a section entitled “Genentech’s
`30(b)(6) Witness Designations,” and made no mention of the licensing-related topics. It would be unfair
`and prejudicial to Genentech to require it to prepare a witness on these topics at this point, given that its
`chosen designee has already been deposed, and given the impending close of fact discovery, which is
`just days away.
`
`Genentech further objects to providing 30(b)(6) testimony on Topic 38, which concerns Genentech’s
`policies for licensing patents (even limited to the Settlement Agreements as you January 24 email
`suggested). This is precisely the type of testimony we discussed mutually foregoing as it implicates
`primarily privileged issues with respect to the Settlement Agreements.
`
`***
`
`In an attempt to reach a resolution on all of these issues, Genentech is willing to offer a 30(b)(6) witness
`on topics 35-37 as they pertain to the Settlement Agreements Genentech entered into with Mylan, Pfizer,
`Celltrion/Teva, and Samsung/Merck relating to those companies’ Herceptin biosimilar products as long
`as Amgen agrees not to seek further testimony on the remainder of the topics identified in this letter.
`Please provide your position on this as soon as possible so Genentech can identify a witness. Amgen
`would also have to consent to taking this witness after the close of fact discovery (next week); however
`given Amgen’s proposed dates for its own witnesses, I expect you will have no objection to that timing.
`
`Sincerely,
`
`
`
`
`Eric Wiener
`
`CC: Counsel of Record
`
`
`
`
`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 28 of 29 PageID
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`EXHIBIT I
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`

`

`Case 1:18-cv-00924-CFC-SRF Document 516-1 Filed 02/27/20 Page 29 of 29 PageID
`#: 34366
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`REDACTED IN ITS
`ENTIRETY
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`