John E. Flaherty

Partner 

T. 973.639.7903 

F. 973.297.3971 

jflaherty@mccarter.com

McCarter & English, LLP 

Four Gateway Center 

100 Mulberry Street 

Newark, NJ 07102-4056 

T. 973.622.4444 

F. 973.624.7070 

www.mccarter.com 

BOSTON

HARTFORD 

NEW YORK 

NEWARK 

PHILADELPHIA 

STAMFORD 

WILMINGTON 

October 3, 2012 

VIA ECF 

Hon. Tonianne J. Bongiovanni, U.S.M.J 

U.S. District Court for the District of New Jersey 

Clarkson S. Fisher Building & U.S. Courthouse 

402 East State Street 

Room 6052 

Trenton, New Jersey 08608 

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

Civ. Action No. 11-cv-00760 (JAP)(TJB) 

Dear Judge Bongiovanni, 

We, along with Fitzpatrick, Cella, Harper & Scinto, represent the AstraZeneca 

plaintiffs. We write in opposition to Hanmi’s September 25 Letter Motion 

(“Hanmi’s Motion”) seeking an Order compelling AstraZeneca to produce for 

deposition in the United States two individuals (retired former AstraZeneca 

employee Lindberg and third party Kohl) that reside in Europe and that AstraZeneca 

does not control.1

 Hanmi’s Motion is a pretext for the relief it really seeks—an 

Order nullifying the Court’s July 24 Stipulation and Order (Doc. 232) (“Stipulated 

Order”). The Stipulated Order permits the parties to use at any hearing or trial in this 

action certain identified depositions taken in a prior action, including those of 

Messrs. Lindberg and Kohl, as if the deponents were present and testifying. Hanmi’s 

Motion should be denied. 

The Stipulated Order permits the use of the listed depositions at any hearing or trial 

in this action, irrespective of whether Hanmi has an opportunity to depose these 

witnesses on matters not covered in the prior depositions. 

 

1

 Hanmi’s Motion is silent with regard to any basis or even argument that the Court should 

compel AstraZeneca to produce former employee inventor Mr. Lindberg and third party 

witness Mr. Kohl for deposition. Hanmi has known that AstraZeneca has no control over 

Mr. Kohl since at least March 19, 2012, the date AstraZeneca produced Mr. Kohl’s previous 

deposition, because AstraZeneca did not represent Mr. Kohl at that deposition. Mr. 

Lindberg retired from AstraZeneca on February 28, 2012 and therefore AstraZeneca does 

not control him either. Having provided no legal or factual basis to assert AstraZeneca 

controls these witnesses the Court should not compel their production.

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Hon. Tonianne J. Bongiovanni, U.S.M.J 

October 3, 2012 

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The Stipulated Order is clear and unambiguous: 

4. At a hearing or trial in the present action all or part 

of the Depositions may be used by any party in the 

present action against any other party in the present 

action to the extent they would be admissible under the 

Federal Rules of Evidence if the deponents were 

present and testifying. 

That language tracks Federal Rule of Civil Procedure 32(a)(1)(B): 

At a hearing or trial, all or part of a deposition may be 

used against a party on these conditions: (B) it is used 

to the extent it would be admissible under the Federal 

Rules of Evidence if the deponent were present and 

testifying . . . 

Other than admissibility under the Federal Rules of Evidence as if the deponent were 

present and testifying, the Stipulated Order does not include any condition limiting 

the use of the prior depositions in this case. As explained in the advisory committee 

notes to Fed. R. Civ. P. 32, the rules of evidence are to be applied to depositions 

offered at trial “as though the deponent were then present and testifying at trial.” As 

the notes further explain, “[t]his eliminates the possibility of certain technical 

hearsay objections which are based, not on the contents of deponents’ testimony, but 

on his absence from court.” Hanmi does not dispute that a fair reading of the 

Stipulated Order permits the use of the prior depositions. 

Rather, Hanmi argues that its claimed “intent” should control, and not the language 

agreed to by the parties and ordered by the Court. But, the correspondence between 

the parties demonstrates that the Stipulated Order accurately reflects the intent of the 

parties at the time and that Hanmi did relinquish its right to cross-examine the 

witnesses deposed in the prior action on the subject matter already covered in those 

depositions. 

In the context of negotiating an appropriate schedule for the case, AstraZeneca asked 

Hanmi “whether the parties can treat [the previously taken] depositions as if they 

were taken in this action.” (Haas June 5, 2012 letter to Boland, Exhibit 1). Hanmi 

responded as follows: 

Hanmi will agree not to reexamine witnesses on 

subject matter already testified to, so long as 

AstraZeneca does not object to our use of any 

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Hon. Tonianne J. Bongiovanni, U.S.M.J 

October 3, 2012 

Page 3

witness’s prior deposition transcripts in the present 

case. As you would expect, we would seek to depose

these individuals on defenses and counterclaims 

unique to Hanmi’s case. . . . In view of our 

representation that we will not retread old ground with 

previous deponents . . . please advise us of your final 

position with respect to the pretrial dates leading up to 

an April, 2013 trial. (Rathinam June 8, 2012 letter to 

Haas, Exhibit 2) (emphasis added). 

By agreeing “not to reexamine witnesses on subject matter already testified to” and 

representing “that [it] will not retread old ground with previous deponents” Hanmi 

relinquished any right to cross-examine on the subject matter of that deposition. To 

be clear, Hanmi reserved its right to examine those witnesses on subject matter that 

is unique to Hanmi’s case and AstraZeneca does not object to such limited 

depositions. But Hanmi’s ability to examine those deponents on new topics was not 

a condition precedent to (1) relinquishing its right to cross-examine on the subject 

matter already covered and (2) its agreement that those previous depositions are 

admissible at any hearing or trial in this case. 

The parties finalized a schedule based on Hanmi’s representations. The remainder of 

the correspondence Hanmi relies upon, all of which is after the fact, should be given 

little weight as it merely demonstrates Hanmi’s changed position, not what Hanmi’s 

intent was before it agreed to the language of the Stipulated Order. 

Hanmi’s claimed “intent” has evolved over time. As recently as September 4, 

Hanmi asserted that the depositions could only be used at trial if the witnesses were 

also in Court present and testifying: 

We understood this to mean simply that the parties 

would not need to use trial time creating a record of 

testimony that already exists if the deponents were

present and testifying. (Rathinam September 4, 2012 

letter to Rothman at 1-2, Exhibit 3) 

Hanmi has apparently abandoned that interpretation in favor of the one in its motion. 

Hanmi’s evolving intent is reflected in its current argument that Mr. Lindberg’s 

“testimony is central to issues relating to Hanmi’s non-infringement and invalidity 

defenses.” Hanmi’s Motion at 3. Hanmi previously suggested that Lindberg’s 

deposition might not be needed. (“If AstraZeneca does not plan to rely on testimony 

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Hon. Tonianne J. Bongiovanni, U.S.M.J 

October 3, 2012 

Page 4

from Lindberg and Kohl in support of its claims, we will consider not proceeding 

with their depositions” (Rathinam August 29, 2012 letter to Rothman, Exhibit 4)). 

Finally, Hanmi asserts that AstraZeneca backtracked from its agreement to produce 

party witnesses. Hanmi’s Motion at 2. AstraZeneca agreed to produce “party 

employee witnesses” for deposition in the United States and AstraZeneca will honor 

that agreement. However, Mr. Lindberg is not now an AstraZeneca employee and 

Mr. Kohl never was employed by AstraZeneca. 

In the end, Hanmi urges “fundamental principles” to justify reneging on its 

agreement. However, fundamental principles require introduction of those 

depositions, not their preclusion. First, Hanmi asserts that the subject matter of the 

depositions is central to the non-unique issues of Hanmi’s case (“Mr. Kohl’s 

testimony is highly prejudicial to Hanmi’s case.”). But important testimony should 

not be precluded simply because one party does not like the testimony and has 

changed its mind with regard to its agreement on admissibility. Secondly, the 

depositions were taken under oath and attended by other generic companies with 

motives similar to those of Hanmi—i.e., seeking to invalidate the patents-in-suit. 

See Federal Rule of Evidence 804(b)(1); (Lloyd v. American Export Lines, Inc., 580 

F.2d 1179, 1187 (3rd Cir. 1978) (reversing trial court and holding “if it appears that 

in the former suit a party having a like motive to cross-examine about the same 

matters as the present party would have, was accorded an adequate opportunity for 

such examination, the testimony may be received against the present party”); see 

also Gullo Produce Co., Inc., v. A.C. Jordan Produce Co., Inc., Civ A. No. 90-652, 

1991 WL 330837, *3-*4 (W.D. Pa. Oct 29, 1991) (depositions are not precluded by 

hearsay rule pursuant to Rule 804(b)(1) when an individual or entity shares with 

another a sufficient community of interests), Exhibit 5; Federal Rule of Evidence 

807. Fundamental principles do not require that Hanmi be given the opportunity to 

ask the same questions and get the same answers, before the depositions may be 

used. 

* * * 

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Hon. Tonianne J. Bongiovanni, U.S.M.J 

October 3, 2012 

Page 5

The parties negotiated a stipulated order that was entered by the Court. Hanmi now 

wants to renege on its agreement, and over time, has asserted varying theories and 

interpretations of the Stipulated Order. None of these is sufficient to overcome the 

unambiguous agreement embodied in that order. Hanmi’s Motion should be denied. 

Respectfully submitted, 

s/John E. Flaherty 

John E. Flaherty 

cc: Counsel of record (via email) 

Enclosures 

 

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