Chief Judge Stark Issues Decisions on Multiple Daubert Motions and Motions in Limine

May 31, 2017

Publication| Intellectual Property

In Novartis AG v. Actavis Elizabeth LLC, C.A. No. 14-1487-LPS (D. Del. Apr. 17, 2017), Chief Judge Stark issued decisions on the parties’ proposed pretrial order, various motions in limine, Daubert motions and motions for summary judgment. Specifically, the Court denied the plaintiffs’ motion to exclude the testimony of the defendants’ biostatistician expert, noting that his “skill, experience, training, and education are likely to assist the trier of fact” despite the plaintiffs’ argument that the expert did not meet “either parties’ proposed definition of a person of ordinary skill in the art.” The Court pointed to Dr. John Kornak’s relevant technical expertise as well as his regular consultations with members of research teams evaluating drug treatment efficacy to conclude that he qualified as an expert.

The Court also denied the plaintiffs’ motion to exclude the testimony of Drs. Anthony L. DeFranco and Steven P. Tanis. The plaintiffs argued that the doctors’ opinions were based on an incorrect commercial-use standard for enablement and that the doctors failed to analyze each asserted claim separately. Chief Judge Stark noted that the plaintiffs did not take issue with the recitations of law in the experts’ reports—recitations that did not apply a commercial-use standard—and found that the reports revealed that the experts did consider each asserted claim separately. The Court left the door open for the plaintiffs to raise their concerns during cross-examination.

Chief Judge Stark also denied the plaintiffs’ motion in limine to prohibit the presentation of evidence or argument on the “breadth of unasserted claims” and the plaintiffs’ motion to prevent the defendants from offering evidence of the quantity of the inventors’ experimentation. Moreover, the Court denied the plaintiffs’ motion to preclude defendant Ezra Ventures, LLC from presenting its double-patenting defense, commenting that the plaintiffs failed to point to particular evidence for the Court to exclude. Despite the heavy burden the defendants would have to establish such a defense at trial, the Court could not reject the defense prior to trial with the evidence presented.

Finally, Chief Judge Stark denied the defendants’ motion in limine to strike entries of the deposition errata of one of the plaintiffs’ witnesses. The defendants were afforded the opportunity to question the witness about the changes in a subsequent deposition, and would have the opportunity to raise the contradictory testimony at trial.

Key Points: It is particularly difficult to convince the Court to exclude wholesale testimony and evidence prior to a bench trial.

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