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Court Rejects Open Biosystems Move to Block Second Deposition in Sigma Suit

A US District Court this week denied Open Biosystems’ request to prevent Sigma-Aldrich from conducting a second corporate deposition as part of the companies’ ongoing patent-infringement battle, according to court documents.
The US District Court for the Eastern District of Missouri denied the request after Sigma-Aldrich assured it that the second deposition will begin within two weeks and be completed in three hours or less.
As reported by RNAi News, Open Biosystems late last month filed a request for a protective order, arguing that a second deposition by Sigma-Aldrich would go over material covered in an earlier deposition and pose an unfair burden on Open Biosystems’ employees (see RNAi News, 11/1/2007).
Open Biosystems further argued that Sigma-Aldrich could not demonstrate that it was unable to obtain necessary information in the first deposition — a requirement for conducting a second inquiry.
In a response to Open Biosystems’ motion, Sigma-Aldrich said that it will not rehash questions asked during its first inquiry of Open Biosystems. The company added that its need for testimony outweighs the “minimal” burden that a second deposition would put on Open Biosystems.
In its request, Open Biosystems said that its representative at the first deposition, co-founder and CTO Troy Moore, “spent many hours and days carefully preparing for the first deposition” and that the company should not be penalized with a second inquisition simply because Sigma-Aldrich “missed its opportunity to ask the questions it desired during the first deposition.”
Open Biosystems added that Moore’s time spent in questioning was a particular hardship for the company since it is a small firm that relies on his expertise.
But according to Sigma-Aldrich, the first deposition was never closed but only adjourned after nearly seven hours of testimony “because there were additional matters on which … Moore would be Open’s corporate designee and the plaintiffs had not had a chance to complete questioning.”
Among these additional matters, Sigma-Aldrich told the court, were a number of claims within a countersuit filed by Open Biosystems, as well as certain accounting issues.
“Moore gave a general response relating to the countersuit, [but] the testimony was by no means sufficient or elaborate enough to represent Open’s knowledge or evidentiary support” of certain claims within the countersuit.
As for whether a second deposition would be too burdensome for Open Biosystems, Sigma-Aldrich said in a court filing that the information it seeks in the follow-up inquiry “is relevant to the damages portion of the case and relevant to Sigma’s ability [to] prepare a defense to … Open’s allegations in its … counterclaim.
“The burden on Open would be minimal,” Sigma-Aldrich added. “First, Sigma has already agreed to work around … Moore’s schedule. Second, if Open is concerned about the burden to … Moore, Open does not have to designate [him] for questions about accounting or sales documents as he is the chief technology officer.”
Open Denial

Sigma-Aldrich and Oxford BioMedica sued Open Biosystems in mid-2006 (see RNAi News, 6/15/2006) for allegedly infringing two US patents held by Oxford and exclusively licensed by Sigma-Aldrich: US Patent No. 6,924,123, entitled "Lentiviral LTR-Deleted Vector,” which claims "a vector capable of transducing non-dividing and/or slowly dividing cells … wherein the vector is a lentiviral LTR-deleted vector;” and No. 7,056,699, which is also entitled "Lentiviral LTR-Deleted Vector” and claims inventions similar to the '123 patent.


“Sigma has already agreed to work around … Moore’s schedule … [and] if Open is concerned about the burden to … Moore, Open does not have to designate [him] for questions about accounting or sales documents as he is the chief technology officer.”

According to Sigma-Aldrich, the patented technology "involves retroviral vectors based on the lentivirus family of viruses," including HIV-1, and is "particularly useful for introducing RNAi molecules to slowly dividing and non-dividing cells."
The patents, which Sigma-Aldrich licensed exclusively from Oxford BioMedica in October 2005, are one plank in the intellectual property platform supporting Sigma-Aldrich's Mission shRNA library of shRNA clones.
In their lawsuit, Sigma-Aldrich and Oxford BioMedica allege that Open Biosystems' RNAi Consortium shRNA lentiviral library "comprises shRNA cloned into the HIV-1-based vector pLKO.1.”
This vector, the suit states, "contains a chimeric 5' LTR including an RSV promoter sequence [that is designed to] permit use of the vector together with a specific viral packaging system that creates infectious HIV-1-based viral particles while also providing researchers maximal biosafety."
Additionally, Open Biosystems' shRNAmir libraries — which comprise miRNA-adapted shRNAs in the lentiviral-based expression vector pCMV-GIN-ZEO and include a 5' LTR modified to include a CMV promoter sequence — include constructs that produce "viral particles capable of transducing slowly dividing or non-dividing cells."
Sigma-Aldrich and Oxford BioMedica claim that the production of such particles infringes the '123 and '699 patents.
Two months after being served, Open Biosystems countersued, claiming that it does not infringe the intellectual property and asking that the suit be dismissed (see RNAi News, 8/3/2006). Early this year, Open amended the countersuit to accuse Sigma-Aldrich of unfair competition and economic interference (see RNAi News, 1/18/2007).
In May, Open Biosystems asked the court to block Sigma-Aldrich and Oxford BioMedica from requesting information in four categories that are “unduly vague and ambiguous, place an undue burden on Open [Biosystems], and/or are not reasonably calculated to lead to the discovery of admissible evidence” (see RNAi News, 5/24/2007).
Two months later, the court rejected Open Biosystems’ year-old request to dismiss the case, but partially denied and partially granted its request for a protective order.

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