Free Letter - District Court of Delaware - Delaware

Case 1:05-cv—OO160-KAJ—lV|PT Document 97 Filed O3/O3/2006 Paget 0f2
Monnrs, Nrorrors, Ansrrrr & TUNNELL LLP
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DONALD E. REID
202 sai sms Mamh 3= 2006
202 425 3001Fxx
[email protected]
VIA ELECTRONIC FILING
The Honorable Kent A. Jordan
United States District Court
for the District of Delaware
844 King Street
Wilmington, DE 19801
Re: Novozymes A/S v. Genencor international, Inc., et al. CEA. No. 05-160 (KA5)
Dear Judge Jordan:
I apologize for the confusion regarding the attempted teleconference with Your
Honor yesterday afternoon to discuss the panies‘ letters of February 28 and March l. Since the
teleconference did not go forward, we inade another effort to resolve the disputes but that effort
was unsuccessful. Accordingly, the parties will still require the Court's assistance today at the
2:30 p.rn. teleconference.
There are two major issues. The lirst relates to the ongoing dispute about
l\lovozymes’ privilege waiver. In surn, despite its own offer to do so, and the Courts order at the
pretrial conference, Novozymes will not provide any information supporting its refusal to
produce hundreds of documents which were generated during the time most relevant to the
inequitable conduct issues and which have the same general description on its privilege log (eg.,
“paterit prosecution", "patent strategy") as documents which Novozymes elected to produce.
Novozymes‘ protestations that it has no more documents to produce are belied by its consistent
and repeated productions of additional privileged documents after its several prior statements
that there were no more (and by the numerous references to other, unproduced and related
documents, in documents which Novoayrnes has elected to produce). lt is impossible at this late
date to verify that Novozyrnes has actually provided all the discovery which should be perrnitted
even under its "limited waiver" of privilege, and as a result defendants renew their motion in
limine on that issue.
The second issue relates to discovery on two technical subjects: the experiments
conducted by Novozymes to address the "ramp up" issue discussed by defendants expert
Klibanov as a reason the Borchert Declaration and experiments are unreliable; and the analysis
of the protein sequence of an alleged "parent" of SP`EZY`l\/iE(r)ETHYL, G997.
As Your Honor may recall, the issue arose for the lirst time at the pretrial
conference, because Novozymes provided notice to defendants of soine new evidence,

Case 1:05-cv—OO160-KAJ—IV|PT Document 97 Filed O3/O3/2006 Page 2 of 2
The Honorable Kent A. Jordan
March 3, 2006
Page 2
including a possible new expert report, only the night before the pre~trial (long after expert
reports were due, and after the close of discovery). The Court ordered that Novozymes provide
promptly all relevant documents and expert opinions and provide its witnesses for depositions on
an expedited basis. Unfortunately, that did not happen.
While Novozyrnes has made available for deposition. the requested witnesses, in
every case it produced documents relevant to that witness' deposition after the deposition
occurred (usually addressing questions at the deposition for which the witness claimed to have
no answer or recollection). Worse yet, instead of promptly providing the expert opinion
promised by Novozyrnes at the pretrial conference (which turned out to be on a different issue,
the ramp up experiments, than the issue Novozymes raised the evening before, the sequence of
G997), Novozymes instead first provided an "informal analysis" to defendants. That was
followed by a later supplemental expert report contradicting the “informal anal ysis" in important
respects. Both th.e informal analysis and the report were then at least partially disavowed by the
expert at her deposition, and more documents were provided, both before and after her
deposition. ln fact, additional documents were being identified and produced even as of
yesterday, all after the chance for any deposition to understand them or their relevance to this
case.
ln short, Novozyrnes did not honor the Courts order to promptly provide the
relevant documents and expert opinion, and certainly did not honor the spirit ofthe Court's order
to permit expedited depositions, when it produced relevant documents alter the depositions. The
Court set an expedited schedule for this case, including discovery in the last .few weeks, in order
that the issues would be clarified and disputes resolved well before next weel<.'s trial. The
opposite has happened.
Nevertheless, defendants attempted to resolve the issues, by proposing that the
parties be held to the expert opinions and document productions they timely made in compliance
with the Court's scheduling orders. Specifically, defendants proposed to Novozyines that the
parties be foreclosed from relying on documents and opinions provided after the pretrial
conference, though the opposing party could use such materials (e.g., for impeachment) if it
chose. As seen in the attached e—mail correspondence, Novozyrnes refused that proposal.
Defendants make that proposal again, this time to the Court, as the appropriate way to address
the prejudice to defendants trial. preparation created by l\iovozynies' conduct without delaying
the trial set for Monday. We respectfully request that the Court consider and adopt this proposal
as its order.
`Respectfully yours, ”
K
Donald E. Reid (#1058)
Dldlifanir
Enclosure
cc: Dr. Peter T. Dalleo, Clerk (w/enc.) (Via Electronic Filing)
Rolin P. Bissell, Esquire (w/enc.) (Via Electronic Filing)
500446