Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-00179-SLR Document 138 Filed 01/12/2007 Page 1 of 2
Potter
N Anderson
LCOITOOH LLP David E. Moore
Attorney at Law
1313 North Markpt SUCH [email protected]
POBOXQSI 302 984-6147 Direct Phone
Wilmington,DEl9899-0951 302 658*1*92 Fax
302 984 6000
www.potterandersoneom
January 12, 2007
VIA ELECTRONIC FILING
The Honorable Sue L. Robinson
United States District Court
for the District of Delaware
U.S. Courthouse
844 N. King Street
Wilmington, DE 19801
Re: Bayer AG, et al. v. Dr. Reddy’s Laboratories, Ltd., et al.
C. A. N0. 04-0179-SLR
Dear Chief Judge Robinson:
This letter is the Reddy defendants’ response to the Bayer Plaintiffs’ Rule 7.l.2(c) letter
of January 9, 2007 (the "Bayer Letter", D.l. 137). The Bayer Letter discusses a recent decision
of the Federal Circuit, Eli Lilly & C0. v. Zenith Goldline Pharms., Inc., ___F.3d _, 2006
WL 3792689 (Dec. 26, 2006). According to Bayer, the Lilly decision is contrary to Reddy’s
invalidity and inequitable conduct defenses. Bayer is mistaken.
With regards to invalidity, Bayer cites Lilly for the proposition that only a “lead
compound” can render obvious a subsequent compound. Here, Bayer’s own inventor admitted
that at least some of the art relied on by Reddy meets that test. In particular, the first named
inventor of Bayer’s two patents-in-suit admitted that but for the fact that prior art compound
AT-3295 was owned by another company, "it could have been a lead compound". Tr. 392:7-19
(Petersen).
On the issue of inequitable conduct, Bayer points to Lilly for the well-settled proposition
that there must be "clear and convincing evidence that the applicant made a deliberate decision
to withhold a known material reference." Again, that test is satisfied here because there is
"smoking gun" documentary evidence that the inventors failed to disclose prior art which they
knew to be material. For example, Dr. Schenke wrote at page 5 of DTX 76 that the German
counterpart to the application for the patents-in-suit was directed in part to the Bayer 5/5 Bicycle.
Clearly he knew then that the Bayer 5/5 Bicycle was important to his application. Shortly
thereafter, Dr. Schenke filed another German patent application (PTX 15) in which he states on
the first page of his application that the Bayer 5/5 Bicycle had already been disclosed in the prior
art. Thus, it is clear that he knew that the Bayer 5/5 Bicycle was in the prior art and it is just as

Case 1:04-cv-00179-SLR Document 138 Filed O1/12/2007 Page 2 of 2
The Honorable Sue L. Robinson
January l2, 2007
Page 2
clear that he knew it was material to his application for the patents-in—suit. Dr. Schenke’s failure
to disclose this art in these circumstances is clear and convincing evidence of intent to deceive.
Dr. Schenke’s only explanation is that he forgot that the Bayer 5/5 was important to his
application. The Lilly case provides no guidance to the Court in evaluating Dr. Schenke’s
credibility on this point.
For at least these reasons, Reddy submits that the Lilly decision should be given little, if
any, weight in the Court’s determination of this action.
Respectfully,
/s/ David E. Moore
David E. Moore
DEM:mnt/771999/27944
cc: Clerk of the Court (via hand delivery)
Counsel of Record (via efiling and electronic mail)

Case 1:04-cv-00179-SLR

Document 138

Filed 01/12/2007

Page 1 of 2

Case 1:04-cv-00179-SLR

Document 138

Filed 01/12/2007

Page 2 of 2