Free Transcript - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT IN AND FOR THE DISTRICT OF DELAWARE - - ORION CORPORATION, Plaintiff, v. WOCKHARDT USA, INC. and WOCKHARDT LIMITED, Defendants. : : : : : : : : CIVIL ACTION

NO. 07-550 (GMS/LPS)

9 - - 10 11 12 - - 13 BEFORE: 14 - - 15 16 17 18 and 19 20 21 22 Counsel for Plaintiff 23 24 25 Brian P. Gaffigan Official Court Reporter FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP BY: SUSAN H. GRIFFEN, ESQ., M. ANDREW HOLTMAN, Ph.D., ESQ., and BRYAN C. DINER, ESQ. (Washington, District of Columbia) MORRIS JAMES, LLP BY: RICHARD K. HERRMANN, ESQ., and MARY MATTERER, ESQ. APPEARANCES: HONORABLE LEONARD P. STARK, Magistrate Judge Wilmington, Delaware Monday, May 19, 2008 at 11:04 a.m. TELEPHONE CONFERENCE

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APPEARANCES:

(Continued)

POTTER ANDERSON & CORROON, LLP BY: PHILIP A. ROVNER, ESQ. and

5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Judge Stark. - oOo P R O C E E D I N G S (REPORTER'S NOTE: The following telephone QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP BY: ANDREW M. BERDON, ESQ., and ANASTASIA M. FERNANDS, ESQ. (New York, New York) Counsel for Defendants

conference was held in chambers, beginning at 11:04 a.m.) THE COURT: Good morning, counsel. This is

Let's begin by telling me who is on the line,

first for the plaintiffs. MR. HERRMANN: Good morning, Your Honor. And I have

This is Richard Herrmann for the plaintiff.

with me Mary Matterer from Morris James as well as, from Finnegan Henderson, Susan Griffen, Andrew Holtman and Bryan Diner.

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 defendant? Herrmann. Griffen.

THE COURT:

Okay.

And who will be speaking for

the plaintiffs on the call? MR. HERRMANN: Your Honor, it's Richard

And it will be primarily myself and Susan

THE COURT:

Okay.

Good morning to all of you.

MS. GRIFFEN: THE COURT: MR. ROVNER:

Good morning, Your Honor.

And for the defendants? Your Honor, this is Phil Rovner

from Potter Anderson; and with me on the line is Andrew Berdon, and I believe Anastasia Fernands from Quinn Emanuel in New York. THE COURT: And who will be speaking for the

MR. ROVNER: THE COURT: MR. BERDON: THE COURT:

Primarily, Andy Berdon. All right. Is that everybody?

Yes, Your Honor. Okay. Great. Well, this is, of

course, the time for our scheduling conference in the matter of Orion versus Wockhardt, which is our Civil Action No. 07-550-GMS/LPS. I have your proposed submission and it looks like while there certainly was agreement on some things, there was also at least one seemingly insignificant disagreement which had impact on other issues so I did want

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to give everyone a chance to explain how you view the differences and why you have taken the position you have. So first, Mr. Herrmann or Ms. Griffen, please. MR. HERRMANN: Richard Herrmann. Thank you, Your Honor. It's

As Your Honor can see, the parties are in

reasonable agreement up through the exchange of claim terms and preliminary claim constructions through September 19th. And they are in agreement with regard to the close of fact discovery being March 15th, 2010. It appears, Your Honor, the parties diverge from being in agreement with regard to when the claim construction briefing and hearing will begin. The plaintiff

would like to begin the claim construction briefing after the close of fact discovery, which we find usually to be the case when the party can't agree otherwise. And we believe

it would be the most efficient way to make sure that the briefing closes before the argument on claim construction and that we don't end up with either supplemental briefing or requests for reconsideration because of later found fact that might be discovered either after briefing is closed or after the argument and possibly even after the opinion or the order in the claim construction. issue. So that's the primary

We also have an issue with regard to dispositive

motions, but we think that this is the primary issue that we're going to ask the Court to help us with.

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 response?

THE COURT:

Okay.

And Mr. Berdon, your

MR. BERDON:

Thank you, Your Honor.

Your Honor,

as the Court is aware, this is an ANDA case.

And in this

particular case, the 30-month stay is scheduled to expire on or about February the 6th, 2010. So our schedule has been

crafted with an eye towards getting this case adjudicated on the merits in time for that 30-month stay expiration to actually be meaningful to the parties and avoid a situation where there is a substantial overhang that could put my client, Wockhardt in the proverbial at-risk launch situation when the product would otherwise be fully approved at FDA. We think that having a claim construction proceed with a period of overlap, in essence while some fact discovery remains ongoing, is not novel and it certainly is regularly done in patent cases, and we don't think that it's likely to be inefficient. We think that

getting the issues narrowed down and briefed, issues of law like claim construction can really be done, while not wholly independent of the underlying facts, it can be done in parallel with them. And what we have proposed is to get the

parties going at least on claim construction late this year, in late October and just sort of get everything going a little bit in parallel instead of strictly in series; again, with the realization that the answer in this case was filed

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in November and, unfortunately, here we are in May without having had the opportunity to conduct any discovery, and so we've ended up with at least five months out of our 30-month stay already having gone by the wayside. And that's really the motivation here is to get this case packaged up and ready for trial in a way that would allow us to see, you know, potentially a decision of the Court very close to the expiration of that 30-month stay in February of 2010. THE COURT: Let me ask you, Mr. Berdon, do you

have any examples or know of any instances where this court has done the overlapping with the claim construction while fact discovery was still ongoing? MR. BERDON: Not in the District of Delaware in

my recent experience, Your Honor, no. THE COURT: All right. Mr. Herrmann, do you

know of any situation in this court where that has been done? I recognize that is contrary to your argument. MR. HERRMANN: Sure, sure, sure. Your Honor, I

know of no situation where the parties are in disagreement as to when Markman will be where the Court has provided an early Markman hearing. As the Court knows, up until the

past year, I guess, Judge Sleet has been the only judge that has Markman even before the close of expert discovery, but he has always been a fan of waiting until the close of

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fact discovery, having Markman, rendering a decision within six weeks or so, and then the parties go off on expert discovery, which is what we're proposing. has recently followed that. There had been instances I understand where the Court, when the parties agree, will permit the overlap. And And Judge Farnan

I think years ago, in a case with Judge Robinson, where that occurred and then the parties wanted to file supplement briefs and it somewhat annoyed the Court. Go ahead. THE COURT: helpful. I got the answer. That's very

But let me ask before, and then I will give you a Why should I

chance to add whatever it is you want to add.

not compress fact discovery maybe even by two or three months given that on your schedule, we don't get to trial until February 2010 and that is when the stay would be expiring anyway? MR. HERRMANN: MS. GRIFFEN: MR. HERRMANN: Thank you, Your Honor. Your Honor? I'm sorry. It sounds like I was

stepping on Susan Griffen's voice. MS. GRIFFEN: this is Susan Griffen. Honor. I'm sorry, Richard. Your Honor,

The parties had discussed that, Your

We think that there are issues with compressing the

fact discovery further than we already have because Orion is

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a Finnish corporation. Finnish.

Many of the documents will be in There are many

The witnesses are in Finland.

inventors, which is why we agreed on a somewhat high number of deposition hours. I believe there are 16 inventors total

on the patents that are at issue in this case, Your Honor, currently. And the thought, at least on our side, was that

this amount of time was needed in order to get through what will not be a quick discovery process. THE COURT: Well, let me just follow-up on that.

So if I accept that but if I accept that there is some reason to try and get this on a schedule that could lead to a trial sooner than February 2010, if I just tell you I'm going to try to cut three months out of the schedule to get to potentially a trial date in late '09 instead of early 2010, where would you prefer that I cut? MR. HERRMANN: This is Richard Herrmann. I'll

yield the phone to Susan Griffen. MR. ROVNER: Your Honor, before she speaks, I I am aware

just wanted to tell you -- this is Phil Rovner.

and I've been in a case where Judge Jordan moved up claim construction very early. THE COURT: MR. ROVNER: the bench. THE COURT: But did he do it, to your knowledge, He moved -That was six months before he left

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to overlap with fact discovery? MR. ROVNER: fact discovery. THE COURT: I see. Okay. Thank you. Actually, in that case, he stayed

Ms. Griffen, did you want to point me to a place to cut if I don't take your position 100 percent? MS. GRIFFEN: Your Honor, I guess what I would

propose at that point would be that we would -- I guess I do agree with Mr. Herrmann that the Markman is much better off, the claim construction is much better off after fact discovery. I would shave somewhat on the end of fact

discovery and it will frankly hurt the defendants worse than it will hurt us to cut fact discovery, but, you know, we would be willing to have that happen. And I guess we would

shave a little bit off of the Markman and take it out of both places, compress the briefing schedule slightly and take a little bit off of fact discovery. THE COURT: Mr. Berdon, I'm not going to deviate I'm

from what I understand is the practice of this Court.

not going to be the first today to resolve a dispute over this issue by ordering overlapping claim construction briefing with fact discovery, but I am sympathetic to your desire to get this case at least on tract for a trial before February of 2010. So given that, do you agree with where

Ms. Griffen has suggested I could maybe shave some time or

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do you want to propose some other possibility for shaving time off their schedule? MR. BERDON: Well, Your Honor, I appreciate I think that if we

having the opportunity to work on this.

were to take a month off the close of fact discovery and take it back to February, I do think that the parties ought to be exchanging their proposed claim construction sooner rather than later. I really think it's the briefing and the

oral argument that is driving your concern, if I'm not incorrect. THE COURT: MR. BERDON: No, I think you're correct. So if we were to shave back to

February 15th for the close of fact discovery and have our initial claim construction briefs, in essence, due within two weeks after that, because I don't think there is -- I don't think there is a tremendous dependence of one on the other, so we could get our initial claim construction brief in on March 1st instead of April 1st, and then, you know, sort of spool the schedule out from there where responsive briefs could be due within 20 days after that March 1st date. THE COURT: MR. BERDON: All right. And we could probably waive reply

briefs on Markman and just do opening briefs and opposition briefs and take another chunk out of the schedule that

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way. MS. GRIFFEN: Griffen. And, Your Honor, this is Susan

We would be amenable to that. THE COURT: Okay. And to working out with Mr. Berdon

MS. GRIFFEN:

a date for submission of the joint claim construction chart. That is the date, the other date you were mentioning up there, Andy, you wanted earlier. MR. BERDON: MS. GRIFFEN: that date. MR. BERDON: Yes, I think a joint claim Yes. And I'm sure we can compromise on

construction chart can precede the service of the opening briefs by 60 days. MS. GRIFFEN: THE COURT: Sure, that would be fine.

Well, what I will do is I'm going to

give this a little bit more thought when we get off the call and give you -- we'll issue an order with the precise dates. We'll basically just list the dates and require you all to plug that into your scheduling order and submit us a clean copy within a certain number of days. But it will in

corporate what we've discussed here, which will be the joint claim construction chart will be due during fact discovery but briefing won't begin until after fact discovery, though very shortly after the end of fact discovery, and we'll

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shave some time, probably a month off of the fact discovery, leading to at least putting the case in a posture for trial late in 2009. Now, the parties I'm sure understand, unless you all chose to consent to trial in front of me, which would have to be unanimous, the trial is going to be in front of Judge Sleet and it's going to be according to his schedule. And so I am not going to be setting a trial date

or even a pretrial conference date at this point, but, as I said, I will be setting a schedule that gets this case ready for pretrial conference and trial closer to the time frame that the defendants have suggested rather than the plaintiffs. Let me just see. things to discuss with you. There are a couple other The tutorial, when I issue my

order with the various dates, one thing you will notice is that the tutorial date will be significantly sooner than what either party proposed. I'd like to have it some time

during fact discovery since it may be, though I hope not, that you will be bringing discovery disputes to me and I find that it's helpful if I have the tutorial some time during fact discovery, because that can aid my understanding of your discovery disputes. All right. Well, that was all I had. Is there

anything that either party wants to add before we get off

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the call? MR. HERRMANN: This is Richard Herrmann. I have

nothing further, Your Honor, but I will ask Susan Griffen if she has anything else on her mind on behalf of plaintiff. MS. GRIFFEN: THE COURT: MR. BERDON: No, Your Honor. Thank you.

Okay. Your Honor, Andrew Berdon. What

would the mechanics ultimately be for us to get a shot at scheduling on Judge Sleet's trial calendar? I'm concerned

that should we go through fact and a substantial portion of expert discovery and essentially go knocking on his door, the windows for trial that might otherwise have been available, had we made that inquiry, would necessarily have been filled up. THE COURT: saying. Yes, I appreciate what you are

If that issue is not addressed in the order that

you will get from me shortly with respect to dates, that is, it's possible that I'll have something addressing those mechanics in the order you will get from me, if it's not, then that means that it's a matter you have to take up with Judge Sleet, and that would be something you would want to do after I get the scheduling order out, which shows when the parts of the case that you will be dealing with me on are going to be concluded. MR. BERDON: Thanks you very much, Your Honor.

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Honor.") right?

THE COURT:

Sure.

Anything further?

MR. HERRMANN: THE COURT:

No for the plaintiff, Your Honor.

And, Mr. Berdon, nothing further;

MR. BERDON: THE COURT:

No, Your Honor. All right.

Thank you. You

Thank you, all.

will see something from us shortly. (The attorneys respond, "Thank you, Your

THE COURT:

Good-bye.

(Telephone conference ends at 11:24 a.m.)