UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS ____________________________________________ ) MOMENTA PHARMACEUTICALS, INC. ) and SANDOZ INC., ) ) Plaintiffs, ) ) Civil Action No. 10-cv-12079-NMG v. ) ) TEVA PHARMACEUTICALS USA, INC., ) ) Defendant. ) ____________________________________________) JOINT MOTION FOR ENTRY OF SCHEDULING ORDER Plaintiffs Momenta Pharmaceuticals, Inc. and Sandoz Inc. (collectively, “Plaintiffs”) and Defendant Teva Pharmaceuticals USA, Inc. hereby move jointly for the entry of a scheduling order. In support of this Motion, the parties state and allege as follows: 1. In accordance with Fed. R. Civ. P. 26(f) and Local Rules 16.1 and 16.6, respective counsel for the Plaintiffs and Teva conferred by telephone on February 17, 2011 and thereafter to develop a schedule and discovery plan. 2. On March 4, 2011, the parties filed their Joint Statement Pursuant to L.R. 16.1(D) and 16.6 and [Proposed] Discovery Plan (Doc. 39) (the “Joint Statement”). 3. The Court held a scheduling conference on March 15, 2011. During that conference, the Court modified some of the deadlines in the Joint Statement, but did not otherwise modify the substance of the document. Case 1:10-cv-12079-NMG Document 47 Filed 03/31/11 Page 1 of 4
Transcript
UNITED STATES DISTRICT COURTFOR THE DISTRICT OF MASSACHUSETTS
____________________________________________)
MOMENTA PHARMACEUTICALS, INC. )and SANDOZ INC., )
)Plaintiffs, )
) Civil Action No. 10-cv-12079-NMGv. )
)TEVA PHARMACEUTICALS USA, INC., )
)Defendant. )
____________________________________________)
JOINT MOTION FOR ENTRY OF SCHEDULING ORDER
Plaintiffs Momenta Pharmaceuticals, Inc. and Sandoz Inc. (collectively, “Plaintiffs”) and
Defendant Teva Pharmaceuticals USA, Inc. hereby move jointly for the entry of a scheduling
order. In support of this Motion, the parties state and allege as follows:
1. In accordance with Fed. R. Civ. P. 26(f) and Local Rules 16.1 and 16.6, respective
counsel for the Plaintiffs and Teva conferred by telephone on February 17, 2011 and thereafter to
develop a schedule and discovery plan.
2. On March 4, 2011, the parties filed their Joint Statement Pursuant to L.R. 16.1(D) and
16.6 and [Proposed] Discovery Plan (Doc. 39) (the “Joint Statement”).
3. The Court held a scheduling conference on March 15, 2011. During that conference, the
Court modified some of the deadlines in the Joint Statement, but did not otherwise modify the
substance of the document.
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4. Thereafter, the Court electronically filed the clerk’s notes reflecting the modified dates.
However, some of the dates fell on weekend days and holidays, and another date seemed in
conflict with the natural sequence of discovery.1
5. To avoid potential future confusion and to maintain consistency, the parties have
modified their proposed schedule and discovery plan to reflect the Court’s changes and the
statements made during the scheduling conference.
6. Where appropriate, the parties moved any scheduled dates falling on weekend days or
holidays to the next business day.
7. A copy of this modified [Proposed] Scheduling Order and Discovery Plan is attached
hereto as Exhibit A.
WHEREFORE, the parties respectfully request that the Court grant this Motion and adopt
the attached [Proposed] Scheduling Order and Discovery Plan.
1 According to the clerk’s notes filed on March 15, 2011, expert discovery was to be completed on 4/30/12, before the deadlines for rebuttal expert reports (6/12/12), reply expert reports (6/30/12) and expert depositions (8/12/12).
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Respectfully submitted,
MOMENTA PHARMACEUTICALS, INC. TEVA PHARMACEUTICALSUSA, INC.
By their attorneys, By their attorneys,
/s/ Michael E. Murawski /s/ Elaine Herrmann BlaisRobert S. Frank, Jr. (BBO #177240) James C. Rehnquist (BBO #552602)[email protected] Elaine Herrmann Blais (BBO #656142)Eric J. Marandett (BBO #561730) Adam R. Wichman (BBO #678324)[email protected] Robert Frederickson III (BBO #670111)Michael E. Murawski (BBO #669857) GOODWIN PROCTER [email protected] Exchange PlaceCHOATE, HALL & STEWART LLP 53 State StreetTwo International Place Boston, MA 02109Boston, MA 02110 Tel.: (617) 570-1000Tel.: (617) 248-5000 Fax: (617) 523-1231Fax: (617) 248-4000 [email protected]
/s/ Sarah Chapin Columbia______________ David M. Hashmall (pro hac vice)Sarah Chapin Columbia (BBO #550155) GOODWIN PROCTER [email protected] The New York Times BuildingMelissa Nott Davis (BBO #654546) 620 Eighth [email protected] New York, NY 10018MCDERMOTT WILL & EMERY LLP Tel.: (212) 813-880028 State Street Fax: (212) 355-3333Boston, MA 02109 [email protected].: (617) 535-4000Fax: (617) 535-3800
- and -
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Thomas P. Steindler (pro hac vice)[email protected] WILL & EMERY LLP600 13th Street, N.W.Washington, D.C. 20005-3096Tel.: (202) 756-8254Fax: (202) 756-8087
Dated: March 31, 2011
CERTIFICATE OF SERVICE
I hereby certify that on the date indicated below I caused a copy of the foregoing document to be filed with the Court’s ECF filing system, which will cause an electronic notice to be sent to counsel of record.
Dated: March 31, 2011 /s/ Michael E. Murawski__________
Case 1:10-cv-12079-NMG Document 47 Filed 03/31/11 Page 4 of 4
UNITED STATES DISTRICT COURTFOR THE DISTRICT OF MASSACHUSETTS
____________________________________________)
MOMENTA PHARMACEUTICALS, INC. )and SANDOZ INC., )
)Plaintiffs, )
) Civil Action No. 10-cv-12079-NMGv. )
)TEVA PHARMACEUTICALS USA, INC., )
)Defendant. )
____________________________________________)
[PROPOSED] SCHEDULING ORDER AND DISCOVERY PLAN
In accordance with Fed. R. Civ. P. 26(f) and Local Rules 16.1 and 16.6, counsel for
plaintiffs, Momenta Pharmaceuticals, Inc. and Sandoz Inc. (collectively, the “Plaintiffs”), and
counsel for defendant Teva Pharmaceuticals USA, Inc. (“Defendant”), conferred by telephone on
February 17, 2011 and thereafter to develop the discovery plan set forth below.
1. Settlement: Pursuant to L.R. 16.1(C), the Plaintiffs presented a written settlement
proposal to the Defendant on March 1, 2011.
2. Fact Discovery and Claim Construction Plan: The parties present their joint
discovery and claim construction plan pursuant to Fed. R. Civ. P. 26(f)(3) and Local Rules
16.1(D)(1) and 16.6 below.
(a) The Parties have made initial disclosures pursuant to Fed. R. Civ. P. 26(a).
(b) The parties have discussed electronic discovery and have agreed to confer
on or before April 15, 2011 to discuss relevant search terms and appropriate methodologies for
the efficient collection and production of electronic documents.
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(c) On or before April 15, 2011, the Plaintiffs shall serve preliminary
disclosures of the claims infringed. The Plaintiffs shall specify which claims are allegedly
infringed and identify the accused product(s) or method(s) that allegedly infringe those claims.
The Plaintiffs shall also specify whether the alleged infringement is literal or falls under the
doctrine of equivalents. If the Plaintiffs have not already done so, the Plaintiffs shall produce all
documents supporting their contentions and/or identify any such supporting documents produced
by the accused infringer. Such disclosures may be amended and supplemented up to 30 days
before the date of the Markman Hearing. After that time, such disclosures may be amended or
supplemented only to the extent permitted by this Order or by leave of court, for good cause
shown. The patentee may use a table such as that represented below.
CLAIMLIMITATION
ACCUSEDCOMPONENT
BASIS OFINFRINGEMENT
CONTENTION
(d) On or before June 15, 2011, the Defendant shall serve preliminary
invalidity and non-infringement contentions. The Defendant shall identify prior art that it
contends anticipates or renders obvious the identified patent claims in question and, for each
such prior art reference, shall specify whether it anticipates or is relevant to the obviousness
inquiry. If applicable, the Defendant shall also specify any other grounds for invalidity, such as
indefiniteness, best mode, enablement, or written description. If the Defendant has not already
done so, the Defendant shall produce documents relevant to the invalidity defenses and/or
identify any such supporting documents produced by the Plaintiffs. Further, if the Defendant has
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not already done so, the Defendant shall produce documents sufficient to show operation of the
accused product(s) or method(s) that the Plaintiffs identified in their preliminary infringement
disclosures. Such disclosures may be amended and supplemented up to 30 days before the date
of the Markman Hearing. After that time, such disclosures may be amended or supplemented
only to the extent permitted by this Order or by leave of court, for good cause shown, except
that, if the Plaintiffs amend or supplement their preliminary infringement disclosures, the
Defendant may likewise amend or supplement its disclosures within 30 days of service of the
amended or supplemented infringement disclosures. The accused infringer may use the charts
shown below.
CLAIMLIMITATION
PRIOR ARTOR OTHEREVIDENCE
BASIS OFINVALIDITY
CONTENTION
CLAIMLIMITATION
ACCUSEDCOMPONENT
BASIS OF NON-INFRINGEMENT
CONTENTION
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(e) On or before September 26, 2011, the parties shall meet and confer in an
effort to determine whether the parties can reach agreement concerning which patent claim terms
require construction.
(f) On or before October 10, 2011, the parties shall exchange a list of claim
terms to be construed and proposed constructions.
(g) October 28, 2011 is the deadline for moving to amend the pleadings or
add parties.
(h) On or before October 31, 2011, the parties shall simultaneously exchange
and file preliminary claim construction briefs. Each brief shall contain a list of terms construed,
the party’s proposed construction of each term, and evidence and argument supporting each
construction. Absent leave of court, the preliminary claim construction briefs shall be limited to
25 pages, double-spaced, of at least 12-point Times New Roman font or equivalent, including
footnotes.
(i) On or before November 10, 2011, the parties shall simultaneously
exchange and file reply claim construction briefs. Absent leave of court, the reply briefs shall be
limited to 15 pages, double-spaced, of at least 12-point Times New Roman font or equivalent,
including footnotes.
(j) On or before November 23, 2011, the parties shall finalize the list of
disputed terms for the court to construe. The parties shall prepare and file a joint claim
construction and prehearing statement (hereinafter, the “joint statement”) that identifies both
agreed and disputed terms.
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(i) The joint statement shall note the anticipated length of time
necessary for the claim construction hearing and whether any party proposes to call witnesses,
including a statement that such extrinsic evidence does not conflict with intrinsic evidence.
(ii) The joint statement shall also indicate whether the parties will
present tutorials on the relevant technology, the form of such tutorials, and the timing for such
tutorials in relation to the claim construction hearing. If the parties plan to provide tutorials in
the form of briefs, declarations, computer animations, slide presentations, or other media the
parties shall exchange such materials five days before the claim construction hearing. In the
alternative, the parties may present tutorials through presentations by the attorneys or experts at
the claim construction hearing.
(iii) The joint statement shall include a proposed order in which the
parties will present their arguments at the claim construction hearing, which may be term-by-
term or party-by-party.
(iv) The joint statement shall limit the number of claim terms to be
construed and shall prioritize the disputed terms in order of importance.
(v) The joint statement shall include a joint claim construction chart,
noting each party’s proposed construction of each term, and supporting evidence. The parties
may use the form shown below.
TERM PATENTEE’SCONSTRUCTION
ACCUSEDINFRINGER’S
CONSTRUCTION
COURT’SCONSTRUCTION
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(k) The Markman Hearing shall be held on December 13, 2011.
(l) If necessary, the parties may amend their preliminary infringement/non-
infringement and invalidity disclosures, noting whether any infringement or invalidity
contentions are withdrawn, within 30 days after the Court’s ruling on claim construction.
(m) If the fact discovery period has expired before a ruling on claim
construction, and upon motion or stipulation of the parties, the Court may grant additional time
for discovery. Such additional discovery shall be limited to issues of infringement, invalidity, or
unenforceability depending on the claim construction.
(n) Fact discovery will close on April 2, 2012.
3. Expert Discovery:
(a) On April 30, 2012, the parties shall exchange expert reports on issues as
to which the party bears the burden of proof at trial. The parties shall exchange rebuttal expert
reports on June 12, 2012. The parties shall exchange any reply expert reports related to
secondary considerations of non-obviousness on July 2, 2012.
(b) Expert depositions shall be completed, and expert discovery shall close on
August 13, 2012.
(c) If expert discovery has been substantially conducted before a claim
construction ruling, then the Court may grant additional time for supplemental expert discovery.
Such additional discovery shall be limited to issues of infringement, invalidity, or
unenforceability dependent on the claim construction.
4. Summary Judgment and Trial:
(a) All dispositive motions shall be filed by September 17, 2012.
(b) Oppositions to dispositive motions shall be filed by October 15, 2012.
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(c) Reply briefs to dispositive motions shall be filed only with leave of the
Court.
(d) A Pretrial Conference shall be held on January 10, 2013.
(e) The trial in this case shall begin on February 4, 2013.
5. Limits on Discovery:
(a) The parties agree that discovery will focus on all claims, counterclaims
and defenses thereto. The parties do not believe phased discovery is necessary or appropriate in
this case.
(b) The parties agree that each side is limited to ten fact witness depositions
and further agree that each deposition, including any corporate deposition under Fed. R. Civ. P.
30(b)(6), will be limited to a maximum duration of seven hours. Should it become apparent that
more depositions are needed by either side, the parties will confer in an attempt to agree on a
new limit. If no such agreement can be reached, the party seeking additional depositions will
seek leave from the Court to expand the limitations.
(c) The parties agree that each side is limited to twenty five interrogatories.
Should it become apparent that more interrogatories are needed by either side, the parties will
attempt to agree with one another to set a new limit. If no such agreement can be reached, the
party seeking additional interrogatories will seek leave from this Court to expand the limitations.
(d) The parties agree that there shall be no limit on the number of document
requests.
(e) The parties agree that each side is limited to twenty five requests for
admissions. Should it become apparent that more requests for admissions are needed by either
side, the parties will attempt to agree with one another to set a new limit. If no such agreement
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can be reached, the party seeking additional requests for admissions will seek leave from this
Court to expand the limitations.
6. Service of Process: The parties agree that service of process by e-mail before 6
p.m. Eastern time will be considered the equivalent of service by hand in accordance with Fed.
R. Civ. P. 5(b)(2).
7. Certifications: The undersigned counsel have conferred with their respective
clients in accordance with L.R. 16.1(D)(3). A certification signed by Plaintiffs’ counsel and
authorized representatives is attached hereto as Exhibit A. A certification signed by Defendants’
counsel and authorized representative will be filed in advance of the Scheduling Conference.
8. Trial by Magistrate Judge: The parties do not consent to a trial by magistrate
judge at this time.
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Respectfully submitted,
MOMENTA PHARMACEUTICALS, INC.
By their attorneys,
/s/ Michael E. Murawski____________Robert S. Frank, Jr. (BBO #177240)[email protected] J. Marandett (BBO #561730)[email protected] E. Murawski (BBO #669857)[email protected], HALL & STEWART LLPTwo International PlaceBoston, MA 02110Tel.: (617) 248-5000Fax: (617) 248-4000
SANDOZ INC.
By their attorneys,
/s/ Sarah Chapin Columbia_____Sarah Chapin Columbia (BBO #550155)[email protected] Nott Davis (BBO #654546)[email protected] WILL & EMERY LLP28 State StreetBoston, MA 02109Tel.: (617) 535-4000Fax: (617) 535-3800
- and -
Thomas P. Steindler (pro hac vice)[email protected] WILL & EMERY LLP600 13th Street, N.W.Washington, D.C. 20005-3096Tel.: (202) 756-8254Fax: (202) 756-8087
Dated: March 31, 2011
TEVA PHARMACEUTICALS USA, INC.
By their attorneys,
/s/ Elaine Herrmann Blais_____James C. Rehnquist (BBO #552602)[email protected] Herrmann Blais (BBO #656142)[email protected] R. Wichman (BBO #678324)[email protected] Frederickson III (BBO #670111)[email protected] PROCTER LLPExchange Place53 State StreetBoston, MA 02109Tel.: (617) 570-1000Fax: (617) 523-1231
- and –
David M. Hashmall (pro hac vice)[email protected] GOODWIN PROCTER LLPThe New York Times Building620 Eighth AvenueNew York, NY 10018Tel.: (212) 813-8800Fax: (212) 355-3333
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SO ORDERED.
Dated: ____________, 2011Judge Nathaniel M. GortonUnited States District Court Judge
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4810866v3
CERTIFICATE OF SERVICE
I hereby certify that on the date indicated below I caused a copy of the foregoing document to be filed with the Court’s ECF filing system, which will cause an electronic notice to be sent to counsel of record.
Dated: March 31, 2011 /s/ Michael E. Murawski
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