UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

Transcription

1 Case:-cv-00-BLF Document Filed0// Page of John M. Farrell (CA Bar No. #) FISH & RICHARDSON P.C. 00 Arguello Street, Suite 00 Redwood City, CA 0 Telephone: (0) -00 Facsimile: (0) -0 Jonathan E. Singer (CA Bar No. #0) singer@fr.com FISH & RICHARDSON P.C. 0 RBC Plaza 0 South Sixth Street Minneapolis, MN 0 Telephone: () -00 Juanita R. Brooks (CA Bar No. #) brooks@fr.com FISH & RICHARDSON P.C. 0 El Camino Real San Diego, CA Telephone: () -00 Douglas E. McCann (Pro Hac Vice) dmccann@fr.com Gregory R. Booker (Pro Hac Vice) booker@fr.com Robert M. Oakes (Pro Hac Vice) oakes@fr.com Elizabeth M. Flanagan (Pro Hac Vice) eflanagan@fr.com FISH & RICHARDSON P.C. Delaware Avenue, th Floor Wilmington, DE 0 Telephone: (0) -00 Attorneys for Plaintiff GILEAD SCIENCES, INC. GILEAD SCIENCES, INC., v. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION Plaintiff, MERCK & CO, INC., MERCK SHARP & DOHME CORP. and ISIS PHARMACEUTICALS, INC. Defendants. Case No. :-cv-00-blf/psg GILEAD SCIENCES, INC. S MOTION TO COMPEL DEFENDANTS TO RESPOND TO DISCOVERY REQUESTS Date: April, Time: :00 A.M. Case No. :-cv-00-blf/psg

2 Case:-cv-00-BLF Document Filed0// Page of TABLE OF CONTENTS NOTICE OF MOTION... POINTS AND AUTHORITIES IN SUPPORT OF THE MOTION... I. STATEMENT OF ISSUES TO BE DECIDED... II. STATEMENT OF RELEVANT FACTS... A. Case Background... B. Gilead s Deposition Scheduling Requests... C. Gilead s Interrogatory Nos., and... D. Gilead s Interrogatory Nos.,,, and... E. Defendants Document Production... III. ARGUMENT... A. Legal Standards... B. Defendants Should Be Compelled To Respond To Gilead s Deposition Requests... C. Defendants Should Be Compelled To Provide Complete Responses To All Interrogatories.... Gilead s Interrogatory Nos.,, And Seek Relevant Information That Defendants Currently Possess.... Defendants Responses To Gilead s Interrogatory Nos.,,, And Are Deficient Under Rule (d)... D. Defendants Should Be Compelled To Produce All Documents Requested by Gilead.... Defendants Document Production Delays Must Be Cured To Avoid Continued Prejudice To Gilead.... Documents Related To Defendants Post-0 Efforts At Developing Nucleosides For Treatment Of HCV Are Relevant To Gilead s Defenses... IV. CONCLUSION... ii Case No. :-cv-00-blf/psg

3 Case:-cv-00-BLF Document Filed0// Page of TABLE OF AUTHORITIES CASES PAGE Bercut-Vandervoort & Co. v. Maison Tarride Ledroit & Cie, No. C-0--JF (RS), 0 WL (N.D. Cal. Dec., 0)... Bowoto v. Chevron Corp., No. C--00 SI, 0 WL 0 (N.D. Cal. Aug., 0)... Integrated Global Concepts, Inc. v. j Global, Inc., No. C--0-RMW, WL (N.D. Cal. Dec., )... M.H. v. County of Alameda, No. -cv-0-jst, WL (N.D. Cal. October, )... Plant Genetic Sys., N.V. v. Dekalb Genetics Corp., F. d (Fed. Cir. 0)... Sun Microsys. Inc. v. Hynix Semiconductor Inc., No. C-0-0 PJH (JCS), 0WL (N.D. Cal. May, 0)... Torres v. Peninsula Household Servs., Inc., No. CV-0-00 PSG, WL 0 (N.D. Cal. Jan., )... United States v. Cook, No. :-CV- WBS GGH, WL (E.D. Cal. Jan., )... Statutes and Other Authorities N.D. Cal. Civ. L.R N.D. Cal. Civ. L.R Fed. R. Civ. P. 0(b)()... Fed. R. Civ. P.... Fed. R. Civ. P. (d)... passim Fed. R. Civ. P. (a)... Fed. R. Civ. P. (a)()(a)... Fed. R. Civ. P. (a)()... Fed. R. Civ. P.... Fed. R. Civ. P. (a)... iii Case No. :-cv-00-blf/psg

4 Case:-cv-00-BLF Document Filed0// Page of Fed. R. Civ. P. (a)()... iv Case No. :-cv-00-blf/psg

5 Case:-cv-00-BLF Document Filed0// Page of NOTICE OF MOTION PLEASE TAKE NOTICE THAT on April,, at :00 A.M., or as soon thereafter as counsel may be heard by the Honorable Paul S. Grewal in Courtroom, United States District Court for the Northern District of California, Robert F. Peckham Federal Building, 0 South st Street, San Jose, California, Plaintiff Gilead Sciences, Inc. ( Gilead ) will, and hereby does, move to compel Defendants Merck & Co., Inc. ( Merck & Co. ), Merck Sharp & Dohme Corp. ( MSD Corp. ) and Isis Pharmaceuticals, Inc. ( Isis ) (collectively Defendants ) to ) provide witnesses for depositions; ) provide supplemental responses to Gilead s Interrogatory Nos.,,,,,,, and ; and ) produce all documents requested in Gilead s Requests for Production and in particular Nos.,,,, and 0-. Pursuant to Federal Rule of Civil Procedure (a), Gilead seeks an order compelling Defendants to ) provide witnesses for depositions, including offering multiple dates for witnesses that fit within Gilead s schedule; ) provide complete supplemental responses to Gilead s Interrogatory Nos.,,,,,,, and, including complete information related to actual reduction to practice and complete responses without imparting date limitations, by April, ; and ) produce all documents requested in Gilead s Requests for Production and in particular Nos.,,,, and 0- by April,. Pursuant to Federal Rule of Civil Procedure (a)(), Gilead hereby certifies that it has in good faith met and conferred with Defendants in an effort to obtain these responses without court action. GILEAD S CIVIL LOCAL RULE - STATEMENT Pursuant to Civil Local Rule -, the relevant discovery requests and the Defendants objections and/or responses thereto are provided herewith as Exhibit A to the Declaration of Joseph B. Warden in Support of Gilead Sciences, Inc. s Motion to Compel Defendants to Respond to Discovery Requests (hereinafter Warden Decl. ). Merck refers to Merck & Co., Inc. or Merck Sharpe & Dohme Corp., whichever is the relevant corporate entity, or both. See Warden Decl., -. Case No. :-cv-00-blf-psg

6 Case:-cv-00-BLF Document Filed0// Page of POINTS AND AUTHORITIES IN SUPPORT OF THE MOTION I. STATEMENT OF ISSUES TO BE DECIDED Plaintiff Gilead respectfully requests that the Court order Defendants to ) schedule depositions; ) provide full and complete responses to Interrogatory Nos.,,,,,,, and ; and ) produce all documents requested in Gilead s Requests for Production and in particular Nos.,,,, and 0-, and in related letters regarding Merck s production deficiencies. This motion is needed because of Defendants pattern of evading its discovery obligations and refusing to engage in discovery. Defendants have thwarted Gilead s attempts to take depositions by ignoring Gilead s repeated requests beginning in early February to schedule depositions. And despite Gilead s persistent attempts to obtain written and document discovery from Defendants discovery that has been outstanding for a year Defendants refuse to meaningfully participate. Rather, they have delayed their responses, ignored Gilead s attempts to discuss the status of their discovery, and not followed through on the few discovery commitments they have made. The May, fact discovery deadline is fast approaching, and Defendants evasiveness and refusal to cooperate in meaningful discovery has prejudiced and continues to prejudice Gilead. Without a court order, Defendants will continue to skirt their discovery obligations, will refuse to produce witnesses for depositions, and will fail to fulfill their written and document discovery obligations. Defendants should be compelled to engage in discovery and provide this outstanding discovery immediately. II. STATEMENT OF RELEVANT FACTS A. Case Background This case concerns Gilead s drug sofosbuvir, a nucleotide analog that has permanently changed the treatment of hepatitis C virus (HCV) from a debilitating course of therapy that only sometimes worked to a cure for most patients in a short period of time with few side effects. Case No. :-cv-00-blf-psg

7 Case:-cv-00-BLF Document Filed0// Page of Sofosbuvir has a fluorine atom (F) oriented down, and a methyl group (Me) oriented up, at a particular place (the position) on the sugar ring of the molecule, as shown below: It is very difficult to synthesize this F-Me configuration on this type of compound; so far as Gilead has been able to learn, it had never been successfully done before Gilead s predecessor Pharmasset did it in 0 and then subsequently published that method in 0. Before Pharmasset s synthesis method published and under a confidentiality agreement Pharmasset disclosed its F-Me compound to Merck. After learning of Pharmasset s work and the tremendous promise that certain compounds with the F-Me configuration possessed for treating HCV, Merck cancelled all the claims of a pending patent application and drafted new claims intended to target those compounds. The claims as finally issued in Defendants patent-in-suit include compounds having the F-Me configuration. Gilead believes that Merck made this change in claim scope because of what it learned from Pharmasset, and further believes that Merck never conducted meaningful research on compounds having a F-Me configuration, or any compounds falling within the scope of the issued claims, before filing its patent applications and amending its claims. Gilead has examined the compounds described in the examples in the Patents-in- Suit, as well as the compounds Merck has identified as the representative compounds whose testing is reported in the Patents-in-Suit. None of those compounds fall within the scope Hereinafter, this configuration at the position will be referred to as F-Me. Case No. :-cv-00-blf-psg

8 Case:-cv-00-BLF Document Filed0// Page of described by the issued claims. This is likely because the amended claims are not based off Merck s work, but rather were drafted based of what Merck derived from Pharmasset. Gilead seeks to confirm these facts through deposition testimony, interrogatories, and Defendants document production, but Defendants failure to meaningfully engage in discovery is hamstringing Gilead s ability to do so. B. Gilead s Deposition Scheduling Requests Gilead has been attempting to work with Defendants on the scheduling of depositions, but Defendants have refused to participate. Gilead first contacted Defendants about scheduling depositions on February,, including by naming specific individuals Gilead intended to depose and proposing multiple dates for those depositions. During a subsequent meet and confer call on February,, Defendants stated that they were not yet prepared to discuss deposition scheduling. Gilead subsequently contacted Defendants several times to schedule depositions, and further asked that Defendants tell Gilead which witnesses were no longer employed by the Defendants so that Gilead could prepare subpoenas for any such witness. Defendants responded with silence, refusing to provide any deposition dates, and refusing to tell Gilead who they needed to subpoena. With Defendants refusing to participate in the deposition scheduling process, Gilead began serving deposition notices, and continued to press Defendants for deposition dates. Defendants first communications on deposition scheduling occurred on March, when Defendants merely represented that they were still determining the availability of the witnesses. Only after Gilead told Defendants that Gilead would be filing a motion to compel did Defendants provide a deposition date Defendants offered a single witness, Mr. Stephen de Laszlo, for a deposition on May, almost six weeks after Gilead s requested See Warden Decl., Ex. M. See Warden Decl.,. See Warden Decl., Ex. T. Case No. :-cv-00-blf-psg

9 Case:-cv-00-BLF Document Filed0// Page of deposition date. During a March meet and confer, arranged after Gilead notified Defendants it would be filing a motion to compel, Defendants refused to tell Gilead why the witnesses were unavailable on the noticed dates and also refused to tell Gilead when Defendants first contacted witnesses about scheduling depositions. Defendants further informed Gilead that the only day Mr. de Laszlo was available for deposition was May. Again, Defendants refused to tell Gilead why Mr. de Laszlo was only available for a single day during the entire discovery period. During the meet and confer, Defendants offered a date for one more witness, also during the last few weeks of discovery April 0, for Mr. Carroll. Although Defendants stated that they hoped to give more dates the next week, they would not commit to a date by which they would provide dates for all witnesses. Gilead has no assurances that, absent a Court order, Defendants will provide dates for all witnesses in sufficient time for all depositions to be completed during the discovery period. C. Gilead s Interrogatory Nos., and Gilead sought information regarding Defendants efforts at making or testing F-Me nucleoside derivatives, or other compounds claimed or described by the Patents-in-Suit, through Interrogatory Nos., and served over a year ago on March,, and through related requests for admissions (RFAs) served beginning in July. Interrogatory No. seeks the basis for what Defendants contend to be the date of the invention, including conception and actual and constructive reduction to practice. Defendants initial response identified June, 0 as the date of constructive reduction to practice, and stated that their investigation continues as to the earliest date of conception of the claimed subject matter. Interrogatory Nos. and seek a description of every embodiment of See Warden Decl., Exs. V and W. See Warden Decl.. See Warden Decl., Ex. A. Case No. :-cv-00-blf-psg

10 Case:-cv-00-BLF Document Filed0// Page of the Patents-in-Suit made, used, and/or tested (No. ) and a description of any testing of compounds that fall within the claims of the Patents-in-Suit (No. ). Defendants initial response stated that the information could be found in documents that had been or would be produced pursuant to Rule (d). Gilead requested supplemental responses in June and multiple times thereafter. On December,, Gilead finally informed Defendants that it was prepared to seek a court order compelling responses to these interrogatories, related RFAs, and other discovery because of Defendants continued refusal to supplement. In response, Defendants agreed to provide full and complete responses to the related RFAs on or before January 0,, and also to Interrogatory Nos., -, and at roughly the same time and, based on these assurances, Gilead agreed to forego its motion to compel. Defendants responded to the RFAs on January 0,, but failed to supplement any of the interrogatories. At that time, Defendants committed to supplementing their interrogatories by February,. However, Defendants failed to supplement the responses by that date either. During a February, meet and confer, when Gilead asked Defendants why they could not supplement the responses to include at least the information on which Defendants based their responses to Gilead s RFAs, part of Defendants excuse was that, after serving the RFA responses, they received significant new information that needed to be incorporated in the interrogatory responses. Defendants committed, however, to supplement the interrogatory responses by early in the week of February. Once again, Defendants did not abide by their commitment, and no response was received during the week of February,. After Gilead See, e.g., Warden Decl., Exs. B and C;. See Warden Decl., Ex. G. See Warden Decl.,. See Warden Decl.,. Case No. :-cv-00-blf-psg

11 Case:-cv-00-BLF Document Filed0// Page of followed up again on February,, Defendants committed to supplement their responses by February but, as had become the pattern, Defendants did not supplement their response by the promised date. It was not until March, that Defendants finally supplemented their responses to Interrogatory Nos., and. But the responses did not contain new information nor any meaningful supplementation. Instead, Defendants imposed both new objections to the interrogatories and limitations on the answers in a manner inconsistent with the parties agreement that Gilead would forego its motion to compel in return for Defendants actually answering these interrogatories. First, Defendants refused to answer Interrogatory Nos. and with respect to the patent. Yet again, Gilead had to threaten a motion to compel to get Defendants to agree to answer these interrogatories. Defendants did so, but their responses remain incomplete because they are improperly limited to the time period prior January, 0. Specifically, their responses state that prior to January, 0, [Defendants] did not make, use or test any operable embodiment of the subject matter defined by the asserted claims of the and patents and that prior to January, 0, [Defendants] did not test any compounds within the classes defined by the structural formulas set forth in the and patents. Notably, neither interrogatory as served by Gilead contained any date limitation; Defendants supplemental responses unilaterally implemented this January, 0 cut-off. Second, the supplemental response to Interrogatory No. is deficient because it lacks any information regarding actual reduction to practice, even though the interrogatory expressly calls for that information. The response merely states that each and every claim asserted in this action was constructively reduced to practice by filing patent applications on June, 0... See Warden Decl., Exs. Q and R. See Warden Decl., Ex. A. See Warden Decl., Ex. T. See Warden Decl., Ex. A. Case No. :-cv-00-blf-psg

12 Case:-cv-00-BLF Document Filed0// Page of and... January, 0, and that Defendants are not relying on any other reduction to practice dates. Gilead promptly informed Defendants that these supplemental responses were deficient and required further supplementation to ) account for the time period after January, 0 (Nos. -), and ) identify dates of actual reduction to practice (No. ). 0 During the March, meet and confer, Defendants said they would discuss the responses with their client again, but refused to commit to any further supplements to these interrogatories and stated that this was an area where agreement was unlikely to be reached. D. Gilead s Interrogatory Nos.,,, and Gilead served Interrogatory Nos.,,,, and over a year ago, on March,. These interrogatories specifically seek information related to Isis role in the development of any compounds described or claimed in the Patents-in-suit (No. ), Defendants communications with Pharmasset (inventor of the product accused by Defendants of infringement) or knowledge of Pharmasset s nucleoside drug development efforts (No. ), Merck s efforts to acquire Pharmasset (No. ), Defendants interests (including Defendants alleged ownership and licensing and financial interests) in the Patents-in-Suit (No. ), and the factual and legal basis and supporting evidence for Defendants contention that Sofosbuvir (the product accused of infringement) was not invented by Pharmasset (No. ). Defendants responses invoke Fed. R. Civ. P. (d) but state only that responsive information may be obtained from documents that have been produced or will be produced in this litigation. Fed. R. Civ. P. (d). Gilead expressed concerns over the sufficiency of these responses on as early as June,. In response, Defendants represented that they expected 0 See Warden Decl., Ex. V. See Warden Decl.,. See Warden Decl., Ex. A. See Warden Decl., Ex. B. Case No. :-cv-00-blf-psg

13 Case:-cv-00-BLF Document Filed0// Page of to produce more documents and identify them under Rule (d). To date, Defendants have not supplemented their responses to identify any documents from which the answers could be obtained, despite having committed to identify documents for at least some of these interrogatories in November. During the March, meet and confer, again arranged after Gilead told Defendants it would be filing a motion to compel, Defendants indicated that they would supplement their responses to these interrogatories, and stated that two weeks was probably a reasonable time by which they would supplement. Based on Defendants above-described pattern of failing to provide supplemental responses by the dates to which they have committed, and failure to provide adequate responses when they have finally supplemented, however, Gilead has no assurance that Defendants will actually provide a meaningful supplementation within two weeks, absent a Court order requiring them to do so. E. Defendants Document Production Gilead served requests for production (RFPs) on Defendants in March and July. Despite Gilead s repeated requests that Defendants complete their document production and cure their document production deficiencies, 0 Defendants one of which, Merck, is a large pharmaceutical conglomerate have produced less than 0,000 pages of documents to date. In fact, Defendants have not yet produced documents from several custodians, including Roger Pomerantz, Douglas Pon, and Wallace Ashton, each of whom Gilead has requested to depose. And Gilead s document review has uncovered few documents from numerous other custodians, including Anne Eldrup and Phillip Cook, who are named inventors on the patents-in-suit, and See Warden Decl.,. See Warden Decl.,. See Warden Decl.,. See Warden Decl., Ex. A. 0 From August to March, Gilead sent Defendants at least letters and met and conferred with them at least times on the subject of Defendants document production deficiencies. See, e.g., Warden Decl., -; Exs. B, D, E, F, H, J, O, P, Q, S, and W. This page count is far lower than expected; indeed, Gilead s document production to date exceeds,00,000 pages. See Warden Decl., ; Ex. M. Case No. :-cv-00-blf-psg

14 Case:-cv-00-BLF Document Filed0// Page of Quanlai Song, who appears to be the chemist that attempted to synthesize some compounds with a F-Me configuration. More specifically, some of Gilead s RFPs seek information concerning synthesis (both successful and failed) and testing of compounds with modified nucleoside compounds for HCV treatment (Nos.,, 0 and ), Defendants efforts to develop compounds for HCV treatment from 00- (Nos. and ). Gilead has attempted to obtain documents from Defendants for months but has not received satisfactory responses from Defendants. Indeed, twice in August, and again in October, Gilead pointed out specific categories of documents missing from Defendants production. In November, Defendants acknowledged issues on their part in reviewing and producing documents and promised that Gilead would be getting more productions soon. When those productions were not received by early January, Gilead again raised these issues, including by identifying custodians whose documents appeared missing or substantially deficient. On January, Defendants committed to collect and produce documents from all of the custodians Gilead had identified and to provide an update on the status of those collections and other production deficiencies, including, for example, documents concerning structure-activity-relationship ( SAR ) studies and Merck s nucleoside development programs, by January 0. Defendants also agreed to let Gilead know at that time whether they would produce documents concerning attempts at making and/or testing any fluorinated nucleoside beyond 0. Defendants failed, however, to timely provide this updated information promised to Gilead. Rather, on January Defendants told Gilead they would need until February to See Warden Decl.,. See Warden Decl., Ex. A. See Warden Decl., Exs. D, E, and F. See Warden Decl.,. See Warden Decl., ; Ex. J. See Warden Decl., Ex. J. Case No. :-cv-00-blf-psg

15 Case:-cv-00-BLF Document Filed0// Page of respond. 0 Then, on February, Defendants said they needed until February. Then, on February, instead of providing the promised information, Defendants requested a meet and confer. When the parties met on February, Defendants represented that document collection from key custodians was ongoing, but could not provide a timetable for completion for all of the requested custodians. Defendants also represented that all documents concerning SAR studies had been collected and would be produced soon. But Defendants refused to produce any documents beyond January 0 about their efforts at making any F-Me nucleosides, or documents beyond 0 showing efforts at developing nucleosides for treatment of HCV. Gilead thereafter explained the relevance of this information, and followed up to continue discussing Defendants document production. Defendants finally responded on February, and agreed to produce documents concerning synthesis of F-Me nucleosides before December, 0. Defendants still refused, however, to provide information related to post-0 efforts at developing nucleosides for treatment of HCV, contending that their post-0 efforts do not address the ease or difficulty of actually making the compounds claimed in the Patent-in-Suit. Dissatisfied with Defendants position, on March,, Gilead again explained the relevance of Defendants post-0 efforts at developing nucleosides for treatment of HCV. 0 Gilead offered to work with Defendants to narrow down the scope of this production and requested that Defendants provide a date by which their document production would be 0 See Warden Decl., Ex. K. See Warden Decl., Ex. L. See Warden Decl., Ex. N. See Warden Decl.,. See Warden Decl.,. See Warden Decl.,. See Warden Decl., Ex. O. See Warden Decl., Exs. P and Q. See Warden Decl., Ex. R. 0 See Warden Decl., Ex. S. Case No. :-cv-00-blf-psg

16 Case:-cv-00-BLF Document Filed0// Page of completed. Defendants responded on March,, stating that they would consider Gilead s position and respond within a week, once we have had an opportunity to discuss this issue further with our clients. But again, Defendants did not provide any date for completing their document production. On March,, Gilead reiterated its request for Defendants to address deficiencies in their document production and informed Defendants that Gilead would be filing a motion to compel if no response is received by March,. Upon receiving Gilead s letter stating it would be moving to compel, Defendants offered to meet and confer again on March,. On the March meet and confer, Defendants indicated that they hoped to produce documents related to the synthesis of F-Me nucleosides by the end of the week or the following week. In light of Defendants previous failures to follow through on discovery commitments, Gilead questions both the timing and the completeness of this production, particularly because Defendants indicated that the production would only consist of laboratory notebooks and suggested that Gilead should identify any holes in the production after reviewing it. Likewise, Defendants further indicated that they hoped to produce documents, again by the end of the week or the following week, related to Defendants post-0 efforts at developing nucleosides, in particular documents showing why MK-0 was selected as the lead compound for development and why development was discontinued. Defendants further represented that MK-0 was the only lead compound, and there were no back-up compounds or other compounds selected for further development. Gilead advised Defendants that in light of Defendants previous failures to fulfill their discovery obligations, including previous failures to See Warden Decl., Ex. U. See Warden Decl., Ex. W. See Warden Decl.,. Case No. :-cv-00-blf-psg

17 Case:-cv-00-BLF Document Filed0// Page of follow through on discovery they committed to providing, that Gilead would be including in this motion to compel document production related to F-Me nucleosides and Defendants lead compounds. Finally, Gilead has uncovered substantial deficiencies with respect to Defendants production of SAR studies and production from key custodians. Defendants were unable to confirm whether their document production on these issues was complete. 0 III. ARGUMENT A. Legal Standards Federal Rule of Civil Procedure grants judicial authority to compel disclosure where a party has failed to provide authorized discovery in a timely fashion. Torres v. Peninsula Household Servs., Inc., No. CV-0-00 PSG, WL 0, at * (N.D. Cal. Jan., ). Such authorized discovery includes depositions, answers to interrogatories, and responses to requests for production. See Fed. R. Civ. P.. An evasive or incomplete disclosure, answer, or response must be treated as a failure to disclose, answer, or respond. Fed. R. Civ. P. (a)(). Rule 0(b)() allows a party to depose a person by oral questions upon [giving] reasonable written notice to every other party. Fed. R. Civ. P. 0(b)(). Civil Local Rule 0- additionally requires that before noticing a deposition of a party or witness affiliated with a party, the noticing party must confer about the scheduling of the deposition with opposing counsel. N.D. Cal. Civ. L.R. 0-. But when promptly served requests by a deposing party are met only with lengthy silence, followed by a blanket objection, this Court has found that the deposing party cannot be accused of insufficient efforts to meet and confer. M.H. v. County of Alameda, No. -cv-0-jst, WL, at * (N.D. Cal. October, ). Rule provides that a party may serve interrogatories relat[ing] to any matter that may be inquired into under Rule (b). Fed. R. Civ. P.. Each interrogatory must, to the extent it 0 Case No. :-cv-00-blf-psg

18 Case:-cv-00-BLF Document Filed0// Page of is not objected to, be answered separately and fully in writing under oath. If the answer to an interrogatory may be determined by examining, auditing, compiling, abstracting, or summarizing a party s business records (including electronically stored information), and if the burden of deriving or ascertaining the answer will be substantially the same for either party, the responding party may answer by: () specifying the records that must be reviewed, in sufficient detail to enable the interrogating party to locate and identify them as readily as the responding party could.... Fed. R. Civ. P. (d). Rule (a) requires a responding party to produce requested documents within the scope of Rule (b) that are in the responding party s possession, custody, or control. Fed. R. Civ. P. (a)()(a). If a party facing a discovery deadline is waiting for documents in response to a document request, the party may immediately move to compel production of the documents. Integrated Global Concepts, Inc. v. j Global, Inc., No. C--0-RMW, WL, at * (N.D. Cal. Dec., ). B. Defendants Should Be Compelled To Respond To Gilead s Deposition Requests As stated above, despite repeated requests by Gilead for over six weeks, Defendants so far have not meaningfully engaged in the deposition process. Defendants delay in responding to Gilead s deposition scheduling requests and failure to identify workable deposition dates is prejudicing Gilead. It is unacceptable to Gilead for Defendants to refuse to produce witnesses on the dates noticed by Gilead, and to not offer multiple dates for its witnesses. It would be unduly burdensome on Gilead to have all depositions in the last few weeks of discovery, but Defendants failure to engage and their control over the witnesses have tied Gilead s hands. And it appears that Defendants stall tactics may pay off for them to Gilead s detriment the only date they have offered for Mr. de Laszlo is May,, almost seven weeks after the date noticed by Gilead. The only other date they have offered April 0, for Mr. Carroll is also within the last few weeks of discovery. Case No. :-cv-00-blf-psg

19 Case:-cv-00-BLF Document Filed0// Page of Defendants refusal to tell Gilead why the witnesses were unavailable on the noticed dates, refusal to tell Gilead when Defendants first contacted witnesses about scheduling depositions, and refusal to give any explanation for why Mr. de Laszlo was only available for a single day during the entire discovery period are all further evidence of Defendants failure to engage in the deposition process. As a result, Gilead respectfully requests that the Court compel Defendants to engage in the deposition process by timely scheduling depositions beginning immediately. Because of Defendants refusal thus far to provide witnesses for depositions, in order for Gilead to have sufficient time to schedule and complete these depositions, Defendants should be required to provide multiple dates for its witnesses such that the dates will work with Gilead s schedule. In addition, to date Defendants have not identified a single witness they intend to depose. Gilead requested Defendants provide that list so scheduling could commence. Gilead took those steps to prevent a log jam of depositions in the last remaining weeks of fact discovery. Any failure of Defendants to complete its depositions, therefore, is a consequence of their own lack of diligence in pursuing deposition dates of Gilead witnesses. C. Defendants Should Be Compelled To Provide Complete Responses To All Interrogatories. Gilead s Interrogatory Nos.,, And Seek Relevant Information That Defendants Currently Possess Defendants responses to Interrogatories Nos., and are incomplete. This was an issue that Gilead was prepared to bring to the Court s attention in December, but did not do so because of Defendants agreement to respond to these interrogatories. Defendants, however, failed to live up to their side of the agreement. With respect to Interrogatory No., Defendants have not identified any actual reduction to practice date, and instead seek to avoid that subject by opting to rely solely on a constructive reduction to practice date. But whether Defendants actually reduced their claimed inventions to practice is relevant notwithstanding Defendants choice to hinge their conception date on a constructive, rather than actual, reduction to practice. As stated in above, Gilead seeks to prove Case No. :-cv-00-blf-psg

20 Case:-cv-00-BLF Document Filed0// Page of that the asserted claims are invalid because they are not supported by the written description, are not enabled, and were derived from Pharmasset s work. If Defendants were attempting to actually reduce their claimed inventions to practice, but could not, or did not, do so until after their chosen constructive reduction to practice date, Gilead should be able to learn those facts because they bear directly on the issue of whether skilled artisans could have made and used the claimed inventions without undue experimentation as of the patents priority dates. See, e.g., Plant Genetic Sys., N.V. v. Dekalb Genetics Corp., F. d, - (Fed. Cir. 0) (approving the district court s use of post-filing evidence in its non-enablement determination). And the timing of any actual reduction to practice will shed light on whether Defendants used Pharmasset s published synthetic methods instead of their own. With respect to Interrogatory Nos. and concerning the compounds described in the patents-in-suit and asserted claims and their biological testing, Defendants failure to provide substantive responses for the time period after January, 0 is inappropriate. Any embodiment made, used, or tested by Defendants, even if after the date of constructive reduction to practice, is relevant to Gilead s invalidity defenses. For example, if Defendants tests show that the claimed compounds do not function as HCV inhibitors, that bears on whether Defendants in fact enabled and possessed the claimed inventions as of their priority date, or instead merely set out a plan for future research in their patent. Interrogatory Nos. and do not include any date limitations, and Defendants cannot unilaterally and artificially implement such a limitation, even if Defendants are not relying on dates other than the dates of constructive reduction to practice. Despite Defendants nearly months of investigation, Gilead has not received an adequate substantive response to Interrogatory Nos., and. The duty to supplement is not a license to unduly delay production or get around discovery obligations when convenient. This -month period of course does not include whatever investigation Merck s prosecutors undertook at the time it amended its claims in 0 to make sure that the claims as amended had adequate support in both the specification and Merck s research and development efforts. Case No. :-cv-00-blf-psg

21 Case:-cv-00-BLF Document Filed0// Page of United States v. Cook, No. :-CV- WBS GGH, WL, at * (E.D. Cal. Jan., ) (internal quotation marks omitted). Without an order compelling Defendants to answer Gilead s interrogatories, both parties will waste countless hours and resources while Gilead attempts to obtain the very same information from Defendants witnesses at depositions over the next two months. And based on Defendants conduct to date, Gilead is also concerned that Defendants may improperly try to prevent their witnesses from answering questions related to post-0 activity and actual reduction to practice. Defendants should provide answers to these straightforward questions, and should not be allowed to prevent its witnesses from testifying about these issues. With the close of fact discovery scheduled for May,, it is imperative that Defendants immediately respond to these interrogatories.. Defendants Responses To Gilead s Interrogatory Nos.,,, And Are Deficient Under Rule (d) Defendants have failed to respond to Nos.,,,, and. Rather, Defendants invoked Rule (d) but have refused to identify a single document for any of these interrogatories from which the answer could be ascertained. Defendants are obligated under the Rule to specify[] the records that must be reviewed, in sufficient detail to enable the interrogating party to locate and identify them as readily as the responding party could. Fed. R. Civ. P. (d); see also Bercut-Vandervoort & Co. v. Maison Tarride Ledroit & Cie, No. C-0- -JF (RS), 0 WL, at * (N.D. Cal. Dec., 0) (providing that, in invoking Rule (d), it is not sufficient for [a responding party] to say only, in effect, just look through the entire production for anything that appears to be [the information sought] ). Despite the narrow scope of these interrogatories, Defendants responded with overly broad statements that refer to all documents that have been produced or will be produced in this litigation as sources from which responsive information may be obtained. In other words, to date Defendants have effectively told Gilead to look through the entire production for anything Case No. :-cv-00-blf-psg

22 Case:-cv-00-BLF Document Filed0// Page of that appears to be [the information sought]. Forcing Gilead to look for answers to its interrogatories within Defendants entire document production without direction is improper under Rule (d). Bowoto v. Chevron Corp., No. C--00 SI, 0 WL 0, at * (N.D. Cal. Aug., 0) (providing that a responding party must explicitly describe the content of the relatively few documents that contain the requested information, and must describe the content of the remaining documents ); Sun Microsys. Inc. v. Hynix Semiconductor Inc., No. C-0-0 PJH (JCS), 0 WL, at * (N.D. Cal. May, 0) (requiring responses invoking Rule (d) to include BATES number). Defendants should be held to their obligation to actually identify responsive documents consistent with Rule (d) and to provide meaningful narrative responses where appropriate. Although Defendants have said they would supplement these interrogatories, after Gilead informed Defendants it would be moving to compel, given Defendants past unfulfilled commitments to supplement interrogatories including some of these very same interrogatories Gilead has no assurances that these interrogatory responses will be supplemented without a Court order. D. Defendants Should Be Compelled To Produce All Documents Requested by Gilead Gilead seeks to obtain documents from Defendants that bear on Gilead s enablement, written description, and derivation defense. Gilead has requested these documents repeatedly, and made multiple attempts to resolve the issue with Defendants amicably, but so far those request have been met with diversion and undue delay. Defendants should be required to produce these documents so that Gilead can meaningfully prepare for depositions and discover all facts related to its defenses. Case No. :-cv-00-blf-psg

23 Case:-cv-00-BLF Document Filed0// Page of. Defendants Document Production Delays Must Be Cured To Avoid Continued Prejudice To Gilead As with their interrogatory responses, Defendants have also engaged in a pattern of delay with their document productions. Gilead noticed the deficiencies in Defendants document production early in the discovery process and discussed the issue with Defendants on multiple occasions in efforts to get Defendants to correct the problem and engage in meaningful discovery. Unfortunately, those efforts to move the discovery process forward have been met only by lengthy silence, empty commitments, and other delay tactics of Defendants to avoid substantive responses. As an example, Gilead s first set of RFPs, served almost a year ago, encompasses requests for information related to structure-activity-relationship studies. By mid-october,, seven months after serving its first set of RFPs and having contacted Defendants at least twice about of their lack of production, Gilead received an incomplete production on that topic. That forced Gilead to write to Defendants again on October, about the deficiencies in their document production. During the next three months, Gilead raised the same issue multiple times through both written communications and meet and confers, but Defendants still failed to act. Frustrated, yet still trying to resolve the issue amicably, Gilead reasserted its concerns on a February, meet and confer call. Counsel for Defendants responded by stating that many of the documents on this subject had not yet been produced, but would be soon. 0 Yet Gilead s document review to date has uncovered only a handful of See, e.g., Warden Decl., Ex. D. From August to March, Gilead sent Defendants at least letters and met and conferred with them at least times on the subject of Defendants document production deficiencies. See, e.g., Warden Decl., -; Exs. B, D, E, F, H, J, O, P, Q, S, and W. See Warden Decl., Ex. A. See Warden Decl., Exs. D and E. See Warden Decl., Ex. F. See Warden Decl., Exs. H and I; and. See Warden Decl.. 0 Case No. :-cv-00-blf-psg

24 Case:-cv-00-BLF Document Filed0// Page of documents related to structure-activity-relationship studies. Even during the March, meet and confer, Defendants represented that they still were not certain of the status of the production of those documents, and could not commit to a date by which they would be produced. As another example, despite receiving multiple requests from Gilead, Defendants to date still have not produced documents from several key custodians Gilead has identified. Gilead informed Defendants about these custodians no later than January,, and reminded Defendants again about the request on January,. When the parties met on January,, Defendants committed to producing documents from all of the custodians identified by Gilead and providing an update of the status by January 0,. No update was ever provided by the promised date. When the parties discussed the deficient production from these individuals on February,, less than 0 days before the scheduled discovery cut-off, counsel for Defendants stated that production had been completed for only about % of the custodians and more productions were to be rolled out by January, and January,. Defendants could not, however, provide a timetable for when production for all of the custodians would be completed. 0 To date, Gilead s document review has found no documents from at least three custodians. Collections from other custodians are also suspiciously sparse. During the parties March, meet and confer, Defendants still could not commit to a date by which many of these additional documents would be produced. See Warden Decl.,. See Warden Decl.,. See Warden Decl., Ex. H. See Warden Decl., Ex. I. See Warden Decl., Ex. J. See Warden Decl.,. The parties have since stipulated to an extension of the cut-off date. See Warden Decl.,. 0 See Warden Decl.,. Case No. :-cv-00-blf-psg

25 Case:-cv-00-BLF Document Filed0// Page of Last but not least, Gilead requested, almost a year ago in its first two sets of RFPs, information related to synthesis and testing of nucleosides with the F-Me configuration. Defendants first objected to the request; then tried to unilaterally limit the production to until 0; then extended the collection to January 0 before finally agreeing in principle to produce documents up to December, 0. Defendants wasted almost a year before committing to producing the requested information. And even after such a lengthy delay, Defendants, to date, still have not made any meaningful production on this subject matter. Although Defendants have now said they hope to produce documents this week, Defendants have represented that the production will consist only of lab notebooks, and have told Gilead that if it still believes there are holes in that production after reviewing those notebooks, it should identify them at that time. Defendants delayed and deficient document production is prejudicing Gilead s ability to prepare its case. The document requests outlined here as examples as well as those contained in Gilead s RFPs seek important information relevant to Gilead s defenses in this litigation. In fact, Defendants do not dispute the relevance of most of these requests they simply have not fulfilled their obligations to produce. The pattern of evasiveness and delay in Defendants discovery-related conduct needs to be stopped. 0 See Warden Decl., Ex. A. See Warden Decl., Ex. J. See Warden Decl.,. See Warden Decl., Ex. R. See Warden Decl.,. 0 As discussed above, during the March, meet and confer following Gilead s notification to Defendants that it would be filing a motion to compel, Defendants agreed in principle to produce the documents referred to in this section. Defendants, however, have not committed to a firm date certain to produce all of these documents, and it will be some time before Gilead has the opportunity to assess the adequacy of Defendants production related to these issues. Case No. :-cv-00-blf-psg

26 Case:-cv-00-BLF Document Filed0// Page of. Documents Related To Defendants Post-0 Efforts At Developing Nucleosides For Treatment Of HCV Are Relevant To Gilead s Defenses Documents related to Defendants post-0 efforts at developing nucleosides for treatment of HCV (including those related to MK-0 and other lead compounds described by the Patents-in-Suit) are relevant to Gilead s enablement and written description defenses, including how and why these compounds may have failed. Furthermore, Defendants post-0 development efforts are also relevant to Gilead s derivation defenses because they could show, for example, how Defendants development efforts differed from their patent claiming strategy after Pharmasset provided information to Defendants. Defendants post-0 efforts at developing nucleosides for treatment of HCV (including those related to MK-0 and other lead compounds) are relevant to Gilead s enablement, written description, and derivation defenses. Gilead therefore respectfully requests that the Court compel Defendants to produce documents concerning these efforts. IV. CONCLUSION In view of the above, Gilead respectfully requests that the Court order Defendants to begin scheduling depositions immediately, provide complete responses to Gilead s interrogatories, and timely complete their document production. Dated: March, FISH & RICHARDSON P.C. By: /s/ Gregory R. Booker Gregory R. Booker Attorney for Plaintiff GILEAD SCIENCES, INC. As discussed above, during the March, meet and confer Defendants agreed in principle to produce documents related to lead compounds, but indicated that there was only one lead compound, MK-0, and no other compounds selected for further development. Defendants, however, have not committed to a firm date certain to produce these documents, and it will be some time before Gilead has the opportunity to assess the adequacy of Defendants production. Case No. :-cv-00-blf-psg

27 Case:-cv-00-BLF Document Filed0// Page of CERTIFICATE OF SERVICE The undersigned hereby certifies that a true and correct copy of the above and foregoing document has been served on March,, to all counsel of record who are deemed to have consented to electronic service via the Court s CM/ECF system per Civil Local Rule -(h)(). Cecilia Acosta Cecilia Acosta Case No. :-cv-00-blf-psg