United States District Court, D. Delaware
GENENTECH, INC. and CITY OF HOPE, Plaintiffs,
AMGEN INC. Defendant,
parties have appeared before the court multiple times to
dispute the mechanism by which they plan to narrow the number
of patents at issue in this case. Set forth below is my
summary of issue and my guidance to the parties.
product of a patent dance prescribed by the Biologies Price
Competition and Innovation Act ("BPCIA"), 42 U.S.C.
§ 262(/), plaintiffs Genentech, Inc. and City of Hope
(collectively, "Genentech") have sued defendant
Amgen Inc. ("Amgen") for infringement of twenty-six
patents based on Amgen's plans to commercialize a
biosimilar version of Genentech's Avastin®. (D.I. 39
at ¶¶ 31-347).To narrow the case to a manageable
number of patents, the parties agreed to an "initial
phase of discovery" whereby Genentech would receive
certain documents from Amgen and then take depositions to
understand those documents. (D.I. 97 at 22:20-23:3, 107:7-12;
D.I. 106). With that information, Genentech would reduce the
number of patents on which they claim infringement to no more
than eight by August 31, 2018. (D.I. 106 at ¶2).
7, 2018, the parties appeared before the court to discuss
certain disputes regarding the schedule and discovery. (D.I.
95; D.I. 100). In that status conference, the parties agreed
that the depositions used to narrow the number of asserted
patents would be in the form a 30(b)(6) deposition, Genentech
would provide a deposition notice that set forth the list of
topics with "specificity," and Amgen would provide
one or more "well-prepared" witnesses to address
those topics. (D.I. 100 at 17:24-18, 24:22-26:19, 30:12-15).
Amgen agreed to build a date into the schedule for the
30(b)(6) deposition with the understanding that the
deposition needed to occur before the August 31 deadline for
Genentech to narrow the number of patents. (Id. at
30:24-31:4). The parties discussed whether the August 31
deadline provided sufficient time for what they planned to
accomplish. I decided to keep the August 31, 2018 deadline
for now, but ruled that the date could be extended for good
cause. (Id. at 32:9-35:13).
served a 30(b)(6) notice on June 29, 2018 that contained 236
topics (the "Original Notice"). (D.I. 138).
Approximately two weeks later, on July 11, 2018, the parties
again appeared before the court to discuss certain discovery
disputes. (D.I. 135). At that time, Amgen had not yet agreed
to a date for the 30(b)(6) deposition. (Hr'g Tr. at
53:23-54:6). Amgen claimed it was "unworkable" to
educate witnesses on 236 deposition topics. (Id. at
115:14-22). Genentech responded that the number of topics in
the Original Notice reflected the fact that the purpose of
the deposition was to narrow the number of patents at issue,
there were currently 26 patents in the case, and the topics
were "very specific," as Amgen requested.
(Id. at 70:11-23; 117:7-13, 120:10-14). I counseled
Genentech to be "practical" about the number of
deposition topics, but made clear that I did not view the
issue "as a numbers game." (Id. at
70:11-23, 119:7-14). Genentech offered to re-file the notice
with "50 topics that [are] narrower [than] the original
request." (Id. at 132:18-21). Two days later,
on July 13, 2018, Genentech served a Revised Notice of Rule
30(b)(6) Deposition (the "Revised Notice").
26, 2018, approximately two weeks after receiving the Revised
Notice, and almost a month after receiving the Original
Notice, the parties had a telephone conference with the court
to address Amgen's complaint that the Revised Notice did
not comply with the court's instructions from the July
11, 2018 discovery hearing. (D.I. 148). Amgen took the
position that Genentech was supposed to pare down the
Original Notice by picking 50 topics from the 236. (D.I. 154
at 3:4-7). According to Amgen, Genentech served "an
entirely new list that had 49 topics, but ... didn't
narrow down the original 3 0(b)(6) notice at all."
(Id. at 3:9-11). Instead, the Revised Notice was
"actually broader than their original notice" and
"actually include[d] new subject matter."
(Id. at 3:18-22, 4:12-13).
closer examination, I disagree with Amgen's
characterization of the Revised Notice. First, Amgen
accurately characterized its Original Notice as "very
specific." (Hr'g Tr. at 120:10-11). For example, two
topics asked verbatim the same question about the
individual's involved in Amgen's decision to
manufacture any batch or lot of ABP 215, except one topic
used the phrase "ABP 215 drug substance" whereas
the second topic used instead the phrase "ABP 215 drug
product." (D.I. 138 at Nos. 208, 209). Genentech
used twelve deposition topics in the Original Notice to ask
about the conductivity and salt concentration of the liquid
phase in the cation exchange chromatography process: Each
topic requested the exact same information, just at a
different step in the process. (Id. at Nos.
141-172). Because these topics were quite narrow,
Genentech's decision to combine them in the Revised
Notice is not unreasonable and does not appear to be an
attempt to evade my instructions from the July 11 conference.
Second, almost half of the topics in the Revised
Notice-twenty-one to be exact--are unchanged from what Amgen
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, 38, 39, 41, 43,
44, 46, 47). The remaining topics in the Revised Notice
combine verbatim a few of the topics from the Original
Notice. (Compare, e.g., D.I. 141 at No. 26 to D.I. 138 at
Nos. 112, 113). Genentech's combination of more than
three topics from the Original Notice into one new topic in
the Revised Notice is limited. Only one topic, No. 28, raises
new subject matter, but the language regarding the scope of
the topic tracks the same language Amgen used to inquire
about similar subject matters. (Compare D.I. 141 at No. 28 to
D.I. 141 at Nos. 8, 9, 11, 13, 21, 23, 27). Given the
foregoing, it appears that Genentech complied with my
instructions from the July 11 conference to narrow the number
of topics. In addition, very little, if anything, in the
Revised Notice should have come as a surprise to Amgen.
Amgen has other objections to the Revised Notice that the
parties cannot resolve through a meet and confer, Amgen may
raise those objections with the court. But on the objections
Amgen currently presents, I do not find the Revised Notice
court has written this memorandum to guide the parties'
continuing efforts to resolve the Rule 30(b)(6) deposition
dispute between them as well as other discovery issues that
may arise. The court is a limited resource. Every set of
litigants is entitled to use its fair share of this resource
- but only its fair share. The litigants in this action are
coming perilously close to exceeding that
limit. An appropriate order will be entered.
 All cites herein are to the docket for
Civ. No. 17-1407 unless stated ...