UNITED STATES DISTRICT COURT

DISTRICT OF NEW JERSEY

(609) 989-2040

CHAMBERS OF

TONIANNE J. BONGIOVANNI

UNITED STATES MAGISTRATE JUDGE

U.S. COURTHOUSE

402 E. STATE STREET, RM 6052

TRENTON, NJ 08608

March 1, 2012

LETTER ORDER

Re: AstraZeneca AB, et al. v. Hanmi USA, Inc., et al.

Civil Action No. 11-760 (JAP)

Dear Counsel:

Pending before the Court are AstraZeneca’s requests that the Court (1) strike from Hanmi’s

Responsive Markman submissions certain newly-cited evidence that AstraZeneca alleges should

have been, but was not, disclosed earlier, or, in the alternative, permit AstraZeneca to respond to the

newly-cited evidence prior to the Markman hearing; and (2) strike new invalidity contentions 

allegedly raised by Hanmi related to claims other than 3, 5 and 10 of the ‘504 patent. The Court has

reviewed the briefing submitted by AstraZeneca and Hamni in support of an in opposition to

AstraZeneca’s requests. AstraZeneca’s requests are granted in part and denied in part. 

With respect to the first request, the Court agrees with AstraZeneca that Hanmi’s Responsive

Markman submissions contain new evidence not previously relied upon by Hamni. Specifically,

Hanmi’s Responsive Markman submissions include ten new exhibits as well as the supplemental

declaration of Dr. Atwood discussing said exhibits. While Hanmi argues that said evidence was

properly raised to rebut new evidence and claim construction theories advanced by AstraZeneca for

the first time in AstraZeneca’s Opening Markman submissions, the Court finds that AstraZeneca

appropriately identified their claim construction theories and extrinsic evidence when they

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exchanged their preliminaryclaim constructions and extrinsic evidence on August 15, 2011 pursuant

to L.Pat.R. 4.2. Nevertheless, given the nuances in the parties’ Markman submissions, the Court

finds AstraZeneca’s request to strike too harsh a remedy. As a result, the Court denies same, but

shall give AstraZeneca the opportunity to respond to the new evidence included in Hanmi’s

Responsive Markman submissions. AstraZeneca’s response is due no later than March 19, 2012.

With respect to AstraZeneca’s second request, theCourt finds that certain of the amendments

made by Hanmi to their Invalidity Contentions, namely those related to claims 1, 2, 4, 6 and 7 of the

‘504 patent (i.e., the claims originally asserted by AstraZeneca), should have been preceded by a

motion to amend made pursuant to L.Pat.R. 3.7. While Hanmi claims that said amendments were

either necessitated by the Court’s Order concerning claims 3, 5 and 10 of the ‘504 patent and/or

made to conform the Supplemental Non-Infringement and InvalidityContentions to the current case

record, the Court finds that the contentions at issue were not contemplated by the Court’s prior Order

and should have been made only after a timely application granted by the Court. See L.Pat.R. 3.7. 

Nevertheless, the Court shall not strike these contentions as requested by AstraZeneca. Instead,

while Hanmi should have sought the Court’s permission before making the amendments represented

in the contested contentions, in the interest of judicial economy and in order to conserve the parties’

resources, given the thoroughness of the record before It, after reviewing same, the Court shall

permit Hanmi’s Supplemental Non-Infringement and Invalidity Contentions to stand. AstraZeneca

is directed to submit a complete response to same no later than March 19, 2012. 

IT IS SO ORDERED.

s/Tonianne J. Bongiovanni

TONIANNE J. BONGIOVANNI

United States Magistrate Judge

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