Genentech, Inc. v. Amgen Inc.

Genentech, Inc. v. Amgen Inc.

Opinion

MEMORANDUM

The 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.

I. BACKGROUND

As the product of a patent dance prescribed by the Biologics Price Competition and Innovation Act ("BPCIA"), 42 U.S.C. § 262(l), 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).¹ 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, 2018.² (D.I. 106 at ¶ 2).

On May 7, 2018, the parties appeared before the court to discuss certain [*3]  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).

Genentech 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 [*4]  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"). (D.I. 141).

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