Free Answering Brief in Opposition - District Court of Delaware - Delaware

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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, BAYER HEALTHCARE, LLC, DIAGNOSTICS DEVICES, INC., LIFESCAN, INCORPORATED, and NOVA BIOMEDICAL CORPORATION, Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) )

Civil Action No. 07-753-JJF

DEFENDANT LIFESCAN, INC.'S OPPOSITION TO ROCHE'S SECOND MOTION TO COMPEL

CONNOLLY BOVE LODGE & HUTZ LLP /s/ Mary W. Bourke Mary W. Bourke (#2356) R. Eric Hutz (#2702) Kristen Healey Cramer (#4512) 1007 N. Orange Street P.O. Box 2207 Wilmington, DE 19899 (302) 658-6305 [email protected] Attorneys for Defendant LifeScan, Inc.

DATED: June 30, 2008

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TABLE OF CONTENTS PAGE

I. II. III. IV.

INTRODUCTION .............................................................................................................. 1 NATURE AND STAGE OF THE PROCEEDINGS ......................................................... 1 SUMMARY OF ARGUMENT .......................................................................................... 2 ARGUMENT...................................................................................................................... 3 A. B. C. D. E. Roche Failed To Conduct A Proper Meet And Confer........................................... 3 Roche Is Not Entitled To The Requested Sanction ................................................ 5 Roche Is Not Entitled To The Documents It Seeks ................................................ 6 Roche's Demand Raises Significant Privacy Issues............................................... 7 Roche's Assertions Regarding The Issue Date Of The Patents-InSuit Should Be Rejected ......................................................................................... 8

V.

CONCLUSION................................................................................................................... 9

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Defendant LifeScan, Inc. ("LifeScan") submits this brief in opposition to the Second Motion to Compel filed by Plaintiffs Roche Diagnostics Operations, Inc. and Corange International Ltd. (collectively, "Roche"). I. INTRODUCTION Regrettably, Roche once again burdens the Court with an unnecessary motion without the benefit of a proper meet and confer as required by the Local Rules. The issue regarding the identity of Lifescan's customers/end-users was first raised in connection with Roche's first set of document requests which Lifescan responded to on March 3, 2008. As set forth in Section IV.A. below, Lifescan indicated to Roche that it was willing to consider a suitable stipulation to resolve that issue and requested proposed language from Roche on April 4th. Roche never responded to Lifescan's request. Instead, Roche filed the instant motion ­ even after being reminded of Lifescan's willingness to discuss a stipulation before the motion was filed. Roche's motion should be denied for the reasons set forth below. II. NATURE AND STAGE OF THE PROCEEDINGS On November 21, 2007, Roche filed its Complaint for patent infringement. The Complaint alleged that Lifescan and the other named defendants (collectively, "Defendants") infringe United States Patent Nos. 7,276,146 ("the `146 Patent") and 7,276,147 ("the `147 Patent") (collectively, the "patents-in-suit"). (D.I. 1.) LifeScan answered the Complaint on January 11, 2008. (D.I. 43.) Roche has also filed an Amended Complaint to which LifeScan has answered and counterclaimed. (D.I. 142, 156.) On February 8, 2008, the Court held a Rule 16 Scheduling Conference where it divided discovery into two Phases. Phase I is limited to infringement and prior invention issues, and Phase II is limited to invalidity issues. On April 24, 2008, the Court entered the Rule 16

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Scheduling Order. (D.I. 147.) As set in the Scheduling Order, the completion for Phase I document production is June 27, 2008. (D.I. 147, ¶3.A.i.1.) Lifescan has filed a motion to extend that period until July 25, 2008 to allow completion of its document production. Lifescan's motion was filed on June 27, 2008. (D.I. 219.) On January 23, 2008, Roche served its First Set of Requests for Production of Documents and Things (Nos. 1-119) on LifeScan. (D.I. 55.) LifeScan served its Objections and Responses to Roche's First Set of Requests for Production of Documents and Things (Nos. 1-119) on March 3, 2008. (D.I. 84.) On May 8, 2008, Roche served its Second Set of Requests for Production of Documents and Things (Nos. 120-143) on LifeScan. (D.I. 184.) LifeScan served its Objections and Responses to Roche's Second Set of Requests for Production of Documents and Things on June 9, 2008. (D.I. 204.) On June 13, 2008, Roche filed a Second Motion to Compel LifeScan to produce documents in response to Roche's second request for production of documents. (D.I. 208.) This brief is in opposition to Roche's Second Motion to Compel. A July 11, 2008 hearing date has been requested. III. SUMMARY OF ARGUMENT 1. Roche failed to conduct a proper meet and confer prior to the filing of the instant

motion. As early as April 3, 2008, LifeScan indicated to Roche that it would be willing to discuss wording of a possible stipulation to avoid disclosing private information. Rather than continuing the open dialogue regarding possible stipulation language, Roche filed its first motion to compel on April 13th, and followed with the instant motion. In the absence of a proper meet and confer, Roche's motion should be denied.

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2.

Roche is not entitled to the sanctions it seeks. Any claim of prejudice is negated

by Roche's delay in bringing the instant motion. Roche knew of LifeScan's objections as early as March 3, 2008, and yet waited until June 13 to first raise the issue with the Court. As such, Roche is not entitled to the sanctions it seeks. 3. Roche is not entitled to the documents it seeks. Roche's document requests are

sweeping and overbroad, and contain no time limitation. Further, Roche has numerous other methods it could use to get the same information. Therefore, there is no reason Roche should get the broad categories of documents requested. 4. Roche is seeking information that raises significant privacy issues. LifeScan

owes a duty of privacy to customers of its products. Private information of patients and customers should not be disclosed, particularly when there are other means of gathering the necessary information for trial. 5. Roche's attempt to justify its demand for sanctions based on Lifescan's objection

to producing information prior to the issue date of the patents-in-suit should be rejected. LifeScan has in fact produced documents relevant to the issue of inducement, including the structure, function, and operation of LifeScan's accused products, as well as the launch dates of the accused products. IV. ARGUMENT A. Roche Failed To Conduct A Proper Meet And Confer

The first page of Roche's motion states: Roche discussed with the Defendants simple and straightforward stipulations (e.g., that end-users use each Defendant's products in accord with the instructions that each Defendant provides with the product) that would obviate the need for this discovery. None of these Defendants has agreed. (D.I. 208 at 1, emphasis added.) Roche's representation is inaccurate with respect to Lifescan.

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During the April 1, 2008 meet and confer regarding Roche's first set of document requests, Roche took the position that certain requests were relevant to inducement. Specifically, Roche alleged the requests covered items such as warranty cards and other communications that provided the identity of customers/end-users that had purchased and used accused Lifescan products. Lifescan disagreed with Roche's position during that meet and confer, particularly regarding the identity of Lifescan's customers/end-users. More importantly, Roche suggested the issue could be resolved by a suitable stipulation. On April 3, 2008, Lifescan contacted Roche by telephone and indicated Lifescan would be willing to consider a suitable stipulation regarding the issue of customer/end-user identities. Lifescan also requested language that would be acceptable to Roche. Roche requested Lifescan put this in writing, which Lifescan did on April 4th : We have discussed the proposed stipulation relating to accused products being used in accordance with Lifescan's instructions with the client. Lifescan is willing to consider this issue further but, as I indicated in our discussion yesterday, Lifescan would need to see the specific language Roche would propose. Accordingly, please provide that language so that Lifescan can evaluate the proposal further. (Ex. A at 2, emphasis added.) Roche never responded to Lifescan's request. Instead, Roche filed its first motion to compel responses to its first set of production requests on April 13th without raising this issue before the Court. On May 8th, Roche served its second set of document requests. Those requests included document request nos. 121-123 which Roche asserts are directed to the identity of Lifescan's customers/end-users and allegedly relevant to the inducement issue. These requests are simply narrower versions of prior requests which Roche previously asserted covered this subject matter. Lifescan objected to these document requests on June 9th. On June 12th, Roche contacted Lifescan with respect to document request nos. 121-123. Roche gave Lifescan less than 24 hours

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to respond to Roche's demand that Lifescan withdraw its objections. On June 13th, Lifescan responded to Roche's demand and indicated Lifescan was still willing to discuss a suitable stipulation. (Ex. B.) Nevertheless, Roche subsequently filed the instant motion and then finally responded to Lifescan's request for suitable stipulation language and erroneously suggested Lifescan's June 13 letter was the first time Lifescan expressed a willingness to explore a stipulation. (Ex. C.)1 The above facts clearly confirm Roche's failure to conduct a reasonable meet and confer as required by D. Del. LR 7.1.1 before filing the instant motion. Lifescan requested Roche to propose stipulation language two months prior to Roche's filing of the instant motion, and Roche never responded, nor did Roche respond when reminded of this fact on June 13th. Accordingly, Roche's motion should be denied on this basis alone, as well as the reasons set forth below. B. Roche Is Not Entitled To The Requested Sanction

Roche's motion does not seek an order compelling production of the requested documents. Instead, Roche effectively seeks a judgment from this Court that Lifescan has induced infringement. Roche also claims this sanction is appropriate in view of the alleged prejudice to Roche by not having those documents as of the current June 27th cut-off date for document production. There is no legitimate basis for Roche's sanction demand. Based on its own interpretation, Roche's first set of document requests already cover the documents sought by document request nos. 121-123. Roche admits this at page 3 of its motion. Furthermore, Roche was aware of Lifescan's objections as of March 3, 2008 when Lifescan responded to Roche's first set of document requests. Lifescan confirmed its opposition to

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Despite pendency of the instant motion, LifeScan remains willing to negotiate the appropriate language for a stipulation with Roche.

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identifying customers/end-users during the April 1st meet and confer and subsequently took Roche up on Roche's offer to discuss a suitable stipulation to resolve the issue. Despite being aware of Lifescan's objection, Roche did not include this issue in its April 13, 2008 motion to compel, even though Roche knew of Lifescan's position and the alleged importance of the requested identities. Instead, Roche delayed the issue by submitting narrower but duplicative document requests on May 8, 2008 and waited until June 13th to first raise the issue with the Court. Given these facts, Roche's claim of prejudice is particularly hollow given Roche's delay in raising the issue. Moreover, Roche fails to show that production of the requested documents if ordered by the Court will preclude Roche from conducting whatever discovery Roche deems necessary within the time period presently set for depositions. Roche is clearly not entitled to the sanction it now demands, and Roche's request for an infringement inducement finding should be denied. C. Roche Is Not Entitled To The Documents It Seeks

A party to litigation does not have an unfettered right to all of the discovery it seeks. Federal Rule of Civil Procedure 26 plainly gives the Court discretion to place reasonable limits on the scope of permissible discovery. This includes modifying discovery to that which is reasonably necessary to the case at hand. This also includes limiting certain requested discovery where suitable discovery can be obtained from alternative and less invasive sources. This is exactly the situation here. Document requests 121-123 essentially seek the identity of every Lifescan customer/enduser that purchased an accused Lifescan product and essentially every communication related to that customer/end-user's purchase and use of that product. These requests are not limited in time and would include the identity of customers who purchased an accused product years prior to the

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issue date of the patent, as well as Roche's unsupported 1-2 year prior to patent issuance date. (See D. I. 208 at 7.) Roche's stated purpose for this information is to enable Roche to contact, subpoena, and/or depose some unknown number of customers/end-users of a direct competitor, including diabetes patients who rely on Lifescan's products, to establish how those individuals use the accused products. There is no justification for Roche's sweeping and invasive demand. Putting aside the potential burden on Lifescan's customers who would not expect to be dragged into this litigation after purchasing a Lifescan product at the local drug store or the significant privacy issues implicated by Roche's demand (see below), Roche completely ignores the alternate sources of information relevant to the inducement issue. For example, Roche can obtain relevant information through suitable requests for admission. Similarly, Roche can explore the inducement issue through suitable fact or Rule 30(b)(6) depositions of Lifescan witnesses. There is simply no need to allow Roche unfettered access to the identity of Lifescan's customers/endusers. Nor can Roche present any legitimate basis for why these alternate sources are inadequate. D. Roche's Demand Raises Significant Privacy Issues

The documents Roche seeks may implicate significant privacy issues. This includes divulging the names of purchasers of the accused product, as well as hospital and clinical trial patients who may have been provided with the accused devices as part of their medical treatment. The same is equally true regarding patients who may have been provided with and instructed on the use of the accused device by their physician. To require the broad category of information requested by Roche would require Lifescan to ignore its obligations to its many customers.

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Roche's argument regarding Local Rule 26.2 or a protective order (D.I. 208 at 4, n. 1) misses the point and does not outweigh these legitimate privacy concerns. The issue is not protecting the customer/end-user identity as to third parties that are not parties to this suit. Instead, the issue is a violation of that individual's right or expectation of privacy in the first place through disclosure of that information to Roche without that individual's knowledge or permission so that Roche can interrogate that individual on how they use a competitor's product. This issue is not suitably addressed by either the Local Rules or a protective order. E. Roche's Assertions Regarding The Issue Date Of The PatentsIn-Suit Should Be Rejected

Roche's added attempt to justify its demand for sanctions based on Lifescan's objection to producing information prior to the issue date of the patents-in-suit (see D.I. 208 at 6-10) should also be rejected. Although Lifescan did object to Roche's requests based on that issue date (and still maintains that objection), Roche's claim that Lifescan has completely refused to produce documents relevant to the inducement issue (see D.I. 208 at 6) is wrong. Lifescan agreed as part of the April meet and confer to produce documents relevant to the structure, function, and operation of the accused products. Lifescan has also produced such information. This includes product samples, technical specifications, marketing literature, user manuals, instruction guides, and other related information. Lifescan has also identified the launch dates of the accused products. This information was not limited to the October 2, 2007 issue date of the patents-in-suit, and Roche's accusation that Lifescan has violated the Court's order (see D.I. 208 at 10) is wrong. More importantly, Roche knows perfectly well what the structure and operation of the accused products are and does not need to depose numerous past and present Lifescan customers/end-users to establish these facts.

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Roche plainly has sufficient information regarding the structure, function, and operation of the accused products, even accepting Roche's unsupported assertion that Lifescan's meters are typically used for at least 1-2 years. Roche does not need the identity of every Lifescan customer/end-user to establish this issue, particularly given the alternate sources discussed above that are available to Roche. V. CONCLUSION For the reasons set forth above, LifeScan respectfully requests that the Court deny Roche's Second Motion to Compel.

CONNOLLY BOVE LODGE & HUTZ LLP

/s/ Mary W. Bourke Mary W. Bourke (#2356) R. Eric Hutz (#2702) Kristen Healey Cramer (#4512) 1007 N. Orange Street P.O. Box 2207 Wilmington, DE 19899 (302) 658-6305 [email protected] Attorneys for Defendant LifeScan, Inc.

DATED: June 30, 2008

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CERTIFICATE OF SERVICE I, Mary W. Bourke, Esquire, hereby certify that on June 30, 2008, I caused to be served by electronic service the foregoing document and electronically filed the same with the Clerk of the Court using CM/ECF, which will send notification that such filing is available for viewing and downloading to the following counsel of record: Philip A. Rovner Potter Anderson & Corroon, LLP 1313 N. Market St. Hercules Plaza, 6th Flr. P.O. Box 951 Wilmington, DE 19899-0951 Attorneys for Plaintiffs Roche Diagnostic Operations, Inc. and Corange International Limited Daniel A. Boehnen Grantland G. Drutchas Gary E. Hood Nicole Keenan Paula S. Fritsch Sherri L. Oslick Jeffrey P. Armstrong Christina L. Brown Sean M. Sullivan Richard A. Machonkin Eric R. Moran Christopher M. Cavan Patrick G. Gattari Benjamin R. Huber Paul S. Tully McDonnell Boehnen Hulbert & Berghoff LLP 300 South Wacker Drive Chicago, IL 60606 Attorneys for Plaintiffs Roche Diagnostic Operations, Inc. and Corange International Limited

John W. Shaw Jeffrey Thomas Castellano Young, Conaway, Stargatt & Taylor The Brandywine Building 1000 West Street, 17th Floor P.O. Box 391 Wilmington, DE 19899-0391 Attorneys for Defendant Bayer Healthcare, LLC

Kenneth P. George Joseph M. Casino Amster Rothstein & Ebenstein LLP 90 Park Avenue New York, NY 10016 Attorneys for Defendant Bayer Healthcare, LLC

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Wesley E. Overson Rachel Krevans Jason R. Bartlett Parisa Jorjani Daniel P. Muino Matthew W. dos Santos Amy C. Dachtler Morrisson & Foerster LLP 425 Market Street San Francisco, CA 94105-2482 Attorneys for Defendant Bayer Healthcare, LLC

Steven J. Balick John G. Day Lauren E. Maguire Ashby & Geddes 500 Delaware Avenue P.O. Box 1150 Wilmington, DE 19899 Attorneys for Defendant Diagnostic Devices Inc.

Nancy Tinsley Roche Diagnostics 9115 Hague Road Indianapolis, IN 46250 Attorney for Plaintiff Roche Diagnostics Operations, Inc. and Corange International Limited Kirk A. Vander Leest Edward A. Mas II Stephen F. Sherry James M. Hafertepe Merle S. Elliott Matthew A. Anderson McAndrews, Held & Malloy, Ltd. 500 West Madison Street, Suite 3400 Chicago, IL 60661 Attorneys for Defendants Abbott Diabetes Care Inc. and Abbott Diabetes Care Sales Corporation

Rodger Dallery Smith, II Morris, Nichols, Arsht & Tunnell LLP 1201 North Market Street P.O. Box 1347 Wilmington, DE 19899 Attorneys for Defendant Nova Biomedical Corporation Frederick L. Cottrell, III Anne Shea Gaza Richards, Layton & Finger One Rodney Square P.O. Box 551 Wilmington, DE 19899 Attorneys for Defendants Abbott Diabetes Care Inc. and Abbott Diabetes Care Sales Corporation.

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I further certify that on June 30, 2008, I caused a true and correct copy of the foregoing document to be served by e-mail to the following non-registered participants:

Bradford J. Badke Sona De Michael Kahn Simon A. Fitzpatrick Ropes & Gray LLP 1211 Avenue of the Americas New York, NY 10036-8704 Attorneys for Defendant Nova Biomedical Corporation

Ashley L. Ellis Michael G. Adams Parker Poe Adams & Bernstein LLP Three Wachovia Center, Suite 3000 401 South Tryon Street Charlotte, NC 28202 Attorneys for Defendant Diagnostic Devices Inc.

CONNOLLY BOVE LODGE & HUTZ LLP /s/ Mary W. Bourke Mary W. Bourke (#2356) R. Eric Hutz (#2702) Kristen Healey Cramer (#4512) The Nemours Building 1007 North Orange Street P.O. Box 2207 Wilmington, DE 19899-1347 Attorneys for Defendant LifeScan, Inc.

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EXHIBIT A

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EXHIBIT B

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EXHIBIT C

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