Free Notice to Take Deposition - District Court of Delaware - Delaware

Case 1:07-cv-00753-JJF

Document 257

Filed 08/22/2008

Page 1 of 11

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ) ROCHE DIAGNOSTICS OPERATIONS, INC., ) and CORANGE INTERNATIONAL LIMITED, ) ) Plaintiffs, ) ) v. ) ) ABBOTT DIABETES CARE, ) INCORPORATED, and ABBOTT DIABETES ) CARE SALES CORPORATION, et al. ) ) Defendants. )

C.A. No. 07-753-JJF

NOTICE OF DEPOSITION OF PLAINTIFFS ROCHE DIAGNOSTICS OPERATIONS, INC. AND CORANGE INTERNATIONAL LTD. PLEASE TAKE NOTICE that, pursuant to Rule 30(b)(6), Fed. R. Civ. P., Defendant Nova Biomedical Corporation ("Nova"), will take the deposition of Roche Diagnostics Operations, Inc. ("Roche") on the topics set forth in the attached Schedule A, by one or more officers, directors, or managing agents, or other persons who consent to testify on its behalf. The deposition will commence at 9:30 a.m. on October 2, 2008, and continue day to day until completed, at the offices of Ropes & Gray LLP, 1211 Avenue of the Americas, New York, New York 10036, or at such alternative date, time, and place as mutually agreed upon by counsel for the parties. Defendant requests that Roche identify the person(s) designated by Roche to testify on its behalf, the matters on which each such person(s) will testify, and the language in which each such person(s) will testify, at least ten business days in advance of the deposition.

Case 1:07-cv-00753-JJF

Document 257

Filed 08/22/2008

Page 2 of 11

The deposition will be taken pursuant to the Federal Rules of Civil Procedure before a certified stenographer or other officer authorized by law. The deposition will be recorded by sound, video, and/or stenographic means. You are invited to attend.

MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Rodger D. Smith II
Rodger D. Smith II (#3778) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347 (302) 658-9200 [email protected] Attorneys for Defendant Nova Biomedical Corporation OF COUNSEL: Bradford J. Badke Sona De Michael P. Kahn Simon A. Fitzpatrick ROPES & GRAY LLP 1211 Avenue of the Americas New York, NY 10036-8704 August 22, 2008
2458529

-2-

Case 1:07-cv-00753-JJF

Document 257

Filed 08/22/2008

Page 3 of 11

SCHEDULE A DEFINITIONS 1. Nova adopts and incorporates by reference herein the Definitions set forth

in Nova's First Set of Interrogatories Directed to Nova's Counterclaims (Nos. 1-7), served on May 2, 2008, and the Definitions set forth in Nova's First Set of Requests to Roche for the Production of Documents and Things (1-59), served on March 19, 2008. TOPICS The Meeting: 1. Prior to September 8, 1999, Roche's knowledge of Nova's various

technologies related to testing the amount of glucose in blood, including but not limited to any analyses, presentations, opinions, or evaluations of Nova technologies. 2. Prior to September 8, 1999, Roche's contemplation of potential business

relationships or ventures between Nova and Roche involving glucose strip technologies, including all related analyses, presentations, opinions, or evaluations of such potential business relationships or ventures. 3. The origin of the September 8, 1999 meeting (the "Meeting") between

Nova and Roche, including but not limited to communications regarding the purpose or goals of the Meeting, communications regarding the Meeting's time, location, and attendance, and an identification of each person involved in any such communications. 4. The factual basis for Roche's denial of the statement, "On September 8,

1999, Drs. Schaefer and Grenner met with Nova in 1999 to discuss, inter alia, Nova's glucose strip technology." See Roche's Reply to Nova's Amended Counterclaims, ¶ 11.

Case 1:07-cv-00753-JJF

Document 257

Filed 08/22/2008

Page 4 of 11

5.

The factual basis for Roche's denial of the statement that Roche "attended

[the] Meeting for . . . purposes of evaluating a potential business relationship whereby [Roche] would be entitled to distribute and sell blood glucose monitoring strips developed by Nova." See Roche's Reply to Nova's Amended Counterclaims, ¶ 12. 6. The factual basis for Roche's denial of the statement that, during the

Meeting, "Nova provided [Roche] . . . with Information concerning Nova's glucose strip technology, including, inter alia, a product demonstration, a description of the manufacturing process, the product specifications, the design of the product, including the component parts and layers, and other confidential and proprietary Information concerning Nova's work on a submicroliter glucose strip." See Roche's Reply to Nova's Amended Counterclaims, ¶ 17. The Agreement: 7. The formation of the agreement entered into by Nova and Roche on

September 8, 1999 (the "Agreement"), including but not limited to communications regarding the purpose or goals of the Agreement, drafts or proposed versions of the Agreement, negotiations, communications regarding the subject matter, content, or meaning of the Agreement or any portion thereof, and an identification of each person involved in any such communications. 8. Whether the term, "new glucose monitoring technology" (the

"Information"), as it appears within the Agreement, includes Nova's glucose strip technology. See Roche's Reply to Nova's Amended Counterclaims, ¶¶ 10, 12.

-2-

Case 1:07-cv-00753-JJF

Document 257

Filed 08/22/2008

Page 5 of 11

9.

Whether Roche denies that the Agreement governed Nova's disclosure of

proprietary information relating to its "new glucose monitoring technology" (the "Information"). See Roche's Reply to Nova's Amended Counterclaims, ¶ 13. 10. Roche's understanding of the term in Paragraph 3 of the Agreement,

stating, "Affiliated companies of ROCHE as well as consultants of ROCHE are not considered third parties in the meaning of the Art. 3, provided they assume the same secrecy obligations and are therefore bound to the secrecy obligations of ROCHE." 11. Roche's understanding of the term in Paragraph 3 of the Agreement,

requiring that, "ROCHE will treat such Information for a period of five (5) years after execution of this Agreement in the same manner as it would treat its own proprietary information and will not divulge the Information to third parties or use any Information for any other purposes than its evaluation . . . ." Roche's Use: 12. Any communication, evaluation, analysis, and/or consideration conducted

by or on behalf of Roche subsequent to the Meeting, of Nova and/or Nova's blood glucose technologies. 13. Any communication, evaluation, analysis, and/or consideration conducted

by or on behalf of Roche subsequent to the Meeting, of Nova's then-pending and/or thenunpublished patent applications. 14. All factors considered by Roche, following the Meeting, in deciding

whether or not to enter a business relationship with Nova, and the basis for Roche's decision not to enter any business relationship with Nova.

-3-

Case 1:07-cv-00753-JJF

Document 257

Filed 08/22/2008

Page 6 of 11

15.

Roche's use of the Information conveyed by Nova during the Meeting for

any purposes other than evaluation. 16. Roche's efforts to research, design, and develop electrochemical sensors

embodying, including, or reflecting any of the Information conveyed to Roche during the Meeting, including but not limited to: (i) the acts, steps, or phases comprising such research, design, and development efforts; (ii) all entities that participated in or were otherwise involved in such research, design, and development, including any companies owned by or affiliated with Roche Holdings Ltd., and any third parties; (iii) all persons involved in such research, design, and development efforts; (iv) the locations and dates of such research, design, and development efforts; and (v) all documents that relate to any agreements with third parties related to such research, design, and development efforts. 17. Roche's efforts to research, design, and develop technologies related to the

`146 and `147 Patents, including but not limited to: (i) the acts, steps, or phases comprising such research, design, and development efforts; (ii) all entities that participated in or were otherwise involved in such research, design, and development, including any companies owned by Roche Holdings Ltd., and any third parties; (iii) all persons involved in such research, design, and development efforts; (iv) the locations and dates of such research, design, and development efforts; and (v) all documents that relate to any agreements with third parties related to such research, design, and development efforts. 18. Any comparison of the Information conveyed to Roche during the

Meeting, and the subject matter of the `146 and `147 patents in suit, and an identification of the individual(s) that performed and reviewed such comparison.

-4-

Case 1:07-cv-00753-JJF

Document 257

Filed 08/22/2008

Page 7 of 11

19.

Any comparison of the Information conveyed to Roche during the

Meeting, and products and/or devices manufactured, assembled, used, sold, offered for sale, imported, or bearing Roche-owned marks, and an identification of the individual(s) that performed and reviewed such comparison. The `229 Patent: 20. Roche's first awareness of the `229 Patent and any and all patent

applications that resulted in the `229 Patent ("the `229 Patent applications"), including but not limited to (i) the timing of Roche's first awareness of the `229 Patent and/or the `229 Patent applications, (ii) the means by which Roche first became aware of the `229 Patent and/or the `229 Patent applications, and (iii) the identity of the individual(s) at Roche that first became aware of the `229 Patent and/or the `229 Patent applications. 21. Any communication, evaluation, analysis, and/or consideration of (i) the

subject matter of the `229 Patent and/or the `229 Patent applications, (ii) "information relating to Nova's glucose monitoring technology," referred to in paragraph 10 of Roche's Reply to Nova's Amended Count-Claim, or (iii) any other information received from Nova relating to electrochemical sensors capable of determining the glucose concentration in a blood sample of less than one microliter. 22. Any communication, evaluation, analysis, and/or consideration of issued

patents and/or patent applications that relate to determining the glucose concentration in a blood sample of less than one microliter, and the individual(s) that reviewed such information. 23. The decision to manufacture, assemble, use, sell, offer to sell, import, or

license Roche-owned marks for use with, electrochemical sensors capable of determining the

-5-

Case 1:07-cv-00753-JJF

Document 257

Filed 08/22/2008

Page 8 of 11

glucose concentration in a blood sample of less than one microliter, and the individual(s) involved in that decision. 24. The structure, function, features, or operation of electrochemical sensors

capable of determining the glucose concentration in a blood sample of less than one microliter that Roche has manufactured, assembled, used, sold, offered for sale, imported, or licensed Roche-owned marks for use with. 25. Any comparison of the subject matter of the `229 Patent and any

electrochemical blood glucose sensor that Roche has manufactured, assembled, used, sold, offered for sale, imported, or licensed Roche-owned marks for use with, and an identification of the individual(s) that performed and/or reviewed any such comparison. 26. Any electrochemical blood glucose sensor that Roche has considered,

tested, selected, or rejected, and why each such device was considered, tested, selected, and/or rejected, and the individual(s) involved in those decisions. 27. Roche's efforts to research, design, and develop electrochemical sensors

capable of determining the glucose concentration in a blood sample of less than one microliter, including but not limited to: (i) the acts, steps, or phases comprising such research, design, and development efforts; (ii) all entities that participated in or were otherwise involved in such research, design, and development, including any companies owned by Roche Holdings Ltd., and any third parties; (iii) all persons involved in such research, design, and development efforts; (iv) the locations and dates of such research, design, and development efforts; and (v) all documents that relate to any agreements with third parties related to such research, design, and development efforts.

-6-

Case 1:07-cv-00753-JJF

Document 257

Filed 08/22/2008

Page 9 of 11

28.

Any actual or proposed clinical study and/or testing of electrochemical

sensors capable of determining the glucose concentration in a blood sample of less than one microliter, including the time, location, size, objective, protocol, result, and conclusion of any such study and the individuals involved in its design, administration, or analysis. 29. Any communication, publication or dissemination of the time, location,

size, objective, protocol, result, or conclusion of each study described in Topic Number 28. 30. All agreements (written or oral) and negotiations for potential agreements

that Roche has been party to concerning electrochemical sensors capable of determining the glucose concentration in a blood sample of less than one microliter. 31. Roche's efforts to market blood glucose products, including but not

limited to advertisements directed toward retail purchasers, government purchasers, hospital and medical health services purchasers, end-users, and any intermediaries. 32. An identification of the features of Roche's past and present line of blood

glucose products that appear in marketing documents, user manuals, or other sources of information directed toward users or potential users, including but not limited to: (i) statements regarding the amount of blood a device requires to determine glucose concentration; (ii) statements regarding of the amount of time a device requires to determine glucose concentration.

-7-

Case 1:07-cv-00753-JJF

Document 257

Filed 08/22/2008

Page 10 of 11

CERTIFICATE OF SERVICE I, Rodger D. Smith II, hereby certify that on August 22, 2008, I caused the foregoing to be electronically filed with the Clerk of the Court using CM/ECF, which will send notification of such filing to the following: Philip A. Rovner, Esquire Potter Anderson & Corroon LLP Mary W. Bourke, Esquire Connolly Bove Lodge & Hutz LLP Steven J. Balick, Esquire Ashby & Geddes John W. Shaw, Esquire Young Conaway Stargatt & Taylor LLP I also certify that copies were caused to be served on August 22, 2008, upon the following in the manner indicated: BY HAND AND EMAIL Philip A. Rovner, Esquire Potter Anderson & Corroon LLP 1313 North Market Street Wilmington, DE 19801 Mary W. Bourke, Esquire Connolly Bove Lodge & Hutz LLP The Nemours Building 1007 North Orange Street Wilmington, DE 19801 Steven J. Balick, Esquire Ashby & Geddes 500 Delaware Avenue P.O. Box 1150 Wilmington, DE 19899

Case 1:07-cv-00753-JJF

Document 257

Filed 08/22/2008

Page 11 of 11

John W. Shaw, Esquire Young Conaway Stargatt & Taylor LLP The Brandywine Building 1000 West Street, 17th Floor Wilmington, DE 19801 BY EMAIL Daniel A. Boehnen, Esquire Grantland G. Drutchas, Esquire McDonnell Boehnen Hulbert & Bergoff LLP 300 South Wacker Drive Chicago, IL 60606 [email protected] [email protected] Michael G. Adams, Esquire Ashley L. Ellis, Esquire Parker Poe Adams & Bernstein LLP Three Wachovia Center, Suite 3000 401 South Tryon Street Charlotte, NC 28202 [email protected] [email protected] Rachel Krevans, Esquire Wesley E. Overson, Esquire Morrison & Foerster LLP 425 Market Street San Francisco, CA 94105 [email protected] [email protected] Kenneth P. George Joseph M. Casino Amster Rothstein & Ebenstein LLP 90 Park Avenue New York, NY 10016 [email protected] [email protected]

/s/ Rodger D. Smith II
Rodger D. Smith II (#3778)

-2-