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Open Calls New Sigma Deposition Request ‘Unreasonable,’ Asks Court to Block Move

Open Biosystems last week asked a US District Court to block a second corporate deposition request made by Sigma-Aldrich as part of the companies’ ongoing patent-infringement battle, arguing that the additional legal inquiry would be an unfair burden and may be part of an ongoing effort by Sigma-Aldrich to wear down its smaller competitor.
Sigma-Aldrich originally sued Open Biosystems in mid-2006 and has already performed a lengthy deposition. According to Open Biosystems, the second deposition would be “unreasonably duplicative” because it would go over material covered during the first deposition.
Additionally, Open Biosystems, which was told last month of Sigma-Aldrich’s plan for a second deposition, claims that Sigma-Aldrich cannot demonstrate that it was unable to obtain necessary information in the first deposition — a requirement for conducting a second inquiry.
“Sigma’s apparent regret at how the first deposition was handled does not warrant burdening Open with a second deposition,” Open’s filing said. The discovery process through which litigants obtain information before a trial “is not meant to be a test of endurance or financial wherewithal.”
Sigma-Aldrich “has had ample opportunity to seek the information it desired in the first deposition and associated discovery,” Open Biosystems said in last week’s filing. However, “Sigma’s counsel apparently is now dissatisfied with the fruits of its labor.”
Since Sigma-Aldrich “cannot show that it could not have obtained the information it now seeks during the first deposition,” then the second deposition should be blocked, Open Biosystems said. Additionally, the second deposition would be “unreasonably cumulative and duplicative of topics identified for the first deposition.”
Although the dispute between the companies centers around two patents, Open Biosystems has long maintained that Sigma-Aldrich’s lawsuit is really an attempt by an industry heavyweight to misuse litigation to knock a smaller rival out of the RNAi marketplace.
In fact, in its request for a protective order against Sigma-Aldrich’s second deposition, Open Biosystems claims that Sigma-Aldrich’s motivation for requesting the second deposition is the burden it would place on Open Biosystems, including additional cost, lengthy attorney conferences, reviewing numerous documents, and conferences with “many” of its employees.
“Open was certainly prepared to answer any questions Sigma might have within the many topics identified in the first deposition,” Open Biosystems stated in its filing.
Troy Moore, co-founder and CTO of Open Biosystems and the company’s primary representative in the deposition, “spent many hours and days carefully preparing for the first deposition … [and] all of this preparation … was extremely burdensome [since] … Open Biosystems is a very small company that relies heavily on [Moore’s] time and expertise,” the company added.
“A second deposition would require that Moore and Open shoulder such burdens a second time … [and] Open should not be penalized … if Sigma missed its opportunity to ask the questions it desired during the first deposition,” the company concluded.
Open Biosystems’ filing also claims that Sigma-Aldrich and co-plaintiff Oxford BioMedica “are now attempting to double team” the company with depositions.
“If Sigma is permitted to have its second corporate deposition of Open, Oxford will likely seek its own second corporate deposition … even though it would be a third deposition,” Open Biosystems concludes in its request. “Discovery is not intended for such abuse and harassment.”
Moore told RNAi News when the lawsuit was first filed that his company was open to the idea of licensing the intellectual property at issue, but that Sigma-Aldrich didn’t seem interested in doing so (see RNAi News, 6/15/2006).
He told RNAi News this week that he has met with Sigma-Aldrich representatives twice to discuss a possible out-of-court settlement, once through a court-appointed mediator, but that “we have not been able to reach an agreement that works for both companies.”

“Sigma’s apparent regret at how the first deposition was handled does not warrant burdening Open with a second deposition,” and the discovery process “is not meant to be a test of endurance or financial wherewithal.”

At this point, Moore said, no additional settlement discussions are planned.
Open Biosystems said it will request a hearing on the proposed protective order this week.
Patent Pumps
Last year, Sigma-Aldrich and Oxford BioMedica sued Open Biosystems for allegedly infringing two US patents: 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.
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."
Invented by Oxford BioMedica researchers and exclusively licensed to Sigma-Aldrich in October 2005, the patents 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 BioMedical claim that the production of such particles infringes the '123 and '699 patents.
In August 2006, Open Biosystems countersued Sigma-Aldrich and Oxford BioMedica to ask that their suit be dismissed and to deny that it infringes the IP in question (see RNAi News, 8/3/2006). Early this year, that countersuit was amended to include accusations of unfair competition and economic interference against Sigma-Aldrich (see RNAi News, 1/18/2007).
The following May, Open Biosystems filed for a protective order from the court that would 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 motion to dismiss the case, but partially denied and partially granted its request for a protective order.
Around that time, Open Biosystems began to claim that Sigma-Aldrich was using its financial leverage to crush its opponent. While conceding that the two plaintiffs are within their rights to request information from Open Biosystems to assist in the discovery process, they cannot “wield the discovery process as a club by propounding requests compelling the recipient to assume an excessive burden,” Open Biosystems said in a court filing at the time.
A representative from Sigma-Aldrich declined to comment on the latest protective order request.

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