Case 1:17-cv-01471-GMS Document 155 Filed 08/02/18 Page 1 of 5 PageID #: 9897
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`GENENTECH, INC. and CITY OF HOPE,
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`v.
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`AMGEN INC.
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`Plaintiffs,
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`Defendant,
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`Civ. No. 17-1407-GMS
`Civ. No. 17-1471-GMS
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`MEMORANDUM
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`The parties have appeared before the court multiple times to dispute the mechanism by
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`which they plan to narrow the number of patents at issue in this case. Set forth below is my
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`summary of issue and my guidance to the parties.
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`I.
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`BACKGROUND
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`As the product of a patent dance prescribed by the Biologics Price Competition and
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`Innovation Act ("BPCIA"), 42 U.S.C. § 262([), plaintiffs Genentech, Inc. and City of Hope
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`(collectively, "Genentech") have sued defendant Amgen Inc. ("Amgen") for infringement of
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`twenty-six patents based on Amgen's plans to commercialize a biosimilar version of Genentech's
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`Avastin®. (D.I. 39 at ,r,r 31-347). 1 To narrow the case to a manageable number of patents, the
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`parties agreed to an "initial phase of discovery" whereby Genentech would receive certain
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`documents from Amgen and then take depositions to understand those documents. (D.I. 97 at
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`22:20-23:3, 107:7-12; D.I. 106). With that information, Genentech would reduce the number of
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`All cites herein are to the docket for Civ. No. 17-1407 unless stated otherwise.
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`1
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`Case 1:17-cv-01471-GMS Document 155 Filed 08/02/18 Page 2 of 5 PageID #: 9898
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`patents on which they claim infringement to no more than eight by August 31, 2018.2 (D.I. 106 at
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`,r 2).
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`On May 7, 2018, the parties appeared before the court to discuss certain disputes regarding
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`the schedule and discovery. (D.I. 95; D.I. 100). In that status conference, the parties agreed that
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`the depositions used to narrow the number of asserted patents would be in the form a 30(b)(6)
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`deposition, Genentech would provide a deposition notice that set forth the list of topics with
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`"specificity," and Amgen would provide one or more "well-prepared" witnesses to address those
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`topics. (D.I. 100 at 17:24-18, 24:22-26:19, 30:12-15). Amgen agreed to build a date into the
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`schedule for the 30(b)(6) deposition with the understanding that the deposition needed to occur
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`before the August 31 deadline for Genentech to narrow the number of patents. (Id. at 30:24-31 :4).
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`The parties discussed whether the August 31 deadline provided sufficient time for what they
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`planned to accomplish. I decided to keep the August 31, 2018 deadline for now, but ruled that the
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`date could be extended for good cause. (Id. at 32:9-35:13).
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`Genentech served a 30(b)(6) notice on June 29, 2018 that contained 236 topics (the
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`"Original Notice"). (D.I. 138). Approximately two weeks later, on July 11, 2018, the parties again
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`appeared before the court to discuss certain discovery disputes. (D.I. 135). At that time, Amgen
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`had not yet agreed to a date for the 30(b )(6) deposition. (Hr' g Tr. at 53 :23-54:6). Amgen claimed
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`it was "unworkable" to educate witnesses on 236 deposition topics. (Id. at 115: 14-22). Genentech
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`responded that the number of topics in the Original Notice reflected the fact that the purpose of
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`the deposition was to narrow the number of patents at issue, there were currently 26 patents in the
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`2
`After the August 31, 2018 deadline, Genentech is permitted to select as many as two
`additional patents upon a showing of good cause. (D.I. 106 at ,r 2).
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`2
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`Case 1:17-cv-01471-GMS Document 155 Filed 08/02/18 Page 3 of 5 PageID #: 9899
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`case, and the topics were "very specific," as Amgen requested. (Id. at 70: 11-23; 117:7-13, 120:10-
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`14). I counseled Genentech to be "practical" about the number of deposition topics, but made
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`clear that I did not view the issue "as a numbers game." (Id. at 70:11-23, 119:7-14). Genentech
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`offered to re-file the notice with "50 topics that [are] narrower [than] the original request." (Id. at
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`132:18-21). Two days later, on July 13, 2018, Genentech served a Revised Notice of Rule 30(b)(6)
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`Deposition (the "Revised Notice"). (D.I. 141).
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`II.
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`DISCUSSION
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`On July 26, 2018, approximately two weeks after receiving the Revised Notice, and almost
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`a month after receiving the Original Notice, the parties had a telephone conference with the court
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`to address Amgen's complaint that the Revised Notice did not comply with the court's instructions
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`from the July 11, 2018 discovery hearing. (D.I. 148). Amgen took the position that Genentech
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`was supposed to pare down the Original Notice by picking 50 topics from the 236. (D.I. 154 at
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`3 :4-7). According to Amgen, Genentech served "an entirely new list that had 49 topics, but ...
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`didn't narrow down the original 30(b)(6) notice at all." (Id. at 3:9-11). Instead, the Revised Notice
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`was "actually broader than their original notice" and "actually include[ d] new subject matter." (Id.
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`at 3:18-22, 4:12-13).
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`Upon closer examination, I disagree with Amgen's characterization of the Revised Notice.
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`First, Amgen accurately characterized its Original Notice as "very specific." (Hr'g Tr. at 120:10-
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`11). For example, two topics asked verbatim the same question about the individual's involved in
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`Amgen's decision to manufacture any batch or lot of ABP 215, except one topic used the phrase
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`"ABP 215 drug substance" whereas the second topic used instead the phrase "ABP 215 drug
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`3
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`product."3 (D.I. 138 at Nos. 208, 209). Genentech used twelve deposition topics in the Original
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`Notice to ask about the conductivity and salt concentration of the liquid phase in the cation
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`exchange chromatography process: Each topic requested the exact same information, just at a
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`different step in the process. (Id. at Nos. 141-172). Because these topics were quite narrow,
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`Genentech's decision to combine them in the Revised Notice is not unreasonable and does not
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`appear to be an attempt to evade my instructions from the July 11 conference. Second, almost half
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`of the topics in the Revised Notice-twenty-one to be exact-are unchanged from what Amgen
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`set forth in its Original Notice. (D.I. 141 at Nos. 3, 6, 10, 12, 14, 15, 18, 20, 22, 24, 29, 30, 35, 37,
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`38, 39, 41, 43, 44, 46, 47). The remaining topics in the Revised Notice combine verbatim a few
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`of the topics from the Original Notice. (Compare, e.g., D.I. 141 at No. 26 to D.I. 138 at Nos. 112,
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`113). Genentech's combination of more than three topics from the Original Notice into one new
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`topic in the Revised Notice is limited. Only one topic, No. 28, raises new subject matter, but the
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`language regarding the scope of the topic tracks the same language Amgen used to inquire about
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`similar subject matters. (Compare D.I. 141 at No. 28 to D.I. 141 at Nos. 8, 9, 11, 13, 21, 23, 27).
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`Given the foregoing, it appears that Genentech complied with my instructions from the July 11
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`conference to narrow the number of topics. In addition, very little, if anything, in the Revised
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`Notice should have come as a surprise to Amgen.
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`If Amgen has other objections to the Revised Notice that the parties cannot resolve through
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`a meet and confer, Amgen may raise those objections with the court. But on the objections Amgen
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`currently presents, I do not find the Revised Notice defective.
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`3
`The phrases do not have the exact same meaning, but obviously there is significant overlap.
`A "drug substance" is the active pharmaceutical ingredient without excipients, whereas a "drug
`product" is the drug substance and its excipients.
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`4
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`III. CONCLUSION
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`The court has written this memorandum to guide the parties' continuing efforts to resolve
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`the Rule 30(b )(6) deposition dispute between them as well as other discovery issues that may arise.
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`The court is a limited resource. Every set oflitigants is entitled to use its fair share of this resource
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`- but only its fair share. The litigants in this action are coming perilously close to exceeding that
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`limit.4 An appropriate order will be entered.
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`Dated: August __l__, 2018
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`4
`The parties have had four status conferences since April 11, 2018 to discuss scheduling
`and discovery disputes. (See, e.g., D.I. 97, D.I. 100, D.I. 154).
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`5
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