W.L. Gore & Assocs. v. C.R. Bard, Part One: Chief Judge Stark Rules on Motions in Limine and Pretrial Order Disputes

January 5, 2016

Publication| Intellectual Property

On November 24, 2015, Chief Judge Stark addressed six motions in limine and various disputes raised in the pretrial order in W.L. Gore & Associates, Inc. v. C.R. Bard, Inc., et al., C.A. No. 11-515-LPS (D. Del. Nov. 24, 2015). Among Chief Judge Stark’s various rulings, the Court held that evidence of the European Patent Office’s rejection of plaintiff’s patent application (related to the patent-in-suit) would be excluded under Federal Rule of Evidence 403, as “[t]here is little if any probative value to the EPO evidence, as it concerns a different patent evaluated according to different standards by a non-U.S. agency.” Chief Judge Stark, however, postponed plaintiff’s request for admissibility of certain admissions made during foreign prosecution by defendants, which “will need to await the specific context of trial.” Using the same balancing test, the Court found that evidence and argument relating to a meeting with the inventor should be permitted based on its relevance to defendants’ derivation defense, except arguments implying “that there was anything improper in the patentee’s failure to disclose the Lee Meeting to the PTO (which is an issue that will be addressed by the Court during a bench trial following the jury trial).” The Court also ruled that plaintiff could argue that an older product of defendants—not identified on plaintiff’s accused products disclosure—is not a non-infringing alternative. The Court clarified that “[i]n providing notice of the ‘accused products’ in this case, Plaintiff was not obligated to identify all of Defendants’ products that were marketed at any time and which Plaintiff believed infringed the patent-in-suit.” The Court went on to address disputes in the pretrial order regarding trial logistics and procedure, and requested argument at the pretrial conference on the remaining motions.

Analysis: The short memorandum order contained two notable takeaways. First, while Chief Judge Stark explained that “it is usually difficult (and not worth the effort) to resolve disputes as to whether a particular motion in limine is actually one, two, three, or more motions,” the Court noted that one of plaintiff’s motions was clearly “two unrelated motions” and improper given the Court’s limit of three motions in limine per side. Second, Chief Judge Stark reminded the parties that motions in limine must be three double-spaced pages, warning that “[f]uture failure to comply with the page limits (or to seek leave to exceed them) will result in the Court striking non-compliant submissions.”

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