W.L. Gore & Assocs. v. C.R. Bard, Part Two: Chief Judge Stark Rules on Daubert and Summary Judgment Issues
January 5, 2016
Publication| Intellectual Property
On December 2, 2015, Chief Judge Stark issued an order on a number of related motions, further narrowing the parties’ issues for trial in W.L. Gore & Associates, Inc. v. C.R. Bard, Inc., et al., C.A. No. 11-515-LPS. First, the Court granted in part and denied in part defendants’ motion to strike the supplemental expert report of plaintiff’s technical expert, Dr. Enrique Criado, regarding comparable technologies of the Goldfarb patent and the patents-in-suit. Agreeing with defendants that the report exceeded the “limited” and “focused” scope of the supplemental report that Judge Burke authorized, the Court struck Dr. Criado’s incorporation by reference of his previous expert reports. The Court additionally struck portions of the supplemental report opining on the “comparable importance” of the Goldfarb patent and the patents-in-suit that were not specifically related to a comparison of their respective technologies. With respect to the portion of the supplemental report the Court did not strike, the Court held that defendants’ arguments of unreliability under Federal Rule of Civil Procedure 702 for failing to include a claim-by-claim comparison of the patents-in-suit go to the weight of Dr. Criado’s opinions rather than their admissibility.
The Court sustained defendants’ objections to Magistrate Judge Burke’s report and recommendation denying summary judgment as to willful infringement. The Court concluded that despite Judge Burke’s opinion that defendants’ invalidity and non-infringement positions were fact-specific and would thus be better evaluated upon the submission of evidence during trial, defendants’ non-infringement arguments were “supported by enough evidence to be objectively reasonable, even if they were generated during litigation.” Chief Judge Stark noted that defendants’ “objectively reasonable invalidity defenses are an independent reason why Plaintiff’s willfulness allegations with respect to [two] claims . . . of the ’892 patent must fail.”
Finally, the Court overruled defendants’ objections to Magistrate Judge Burke’s report and recommendation of no invalidity based on non-enablement or insufficient written description (the “Section 112 Report”). The Court agreed with the Section 112 Report that “the method of constructing the claimed covering using extruded tubes simply amounts to an improved mode of achieving the claimed invention that need not be enabled by the patent.” As such, Chief Judge Stark rejected defendants’ objections regarding enablement of the tubular covering limitation, the tubular covering limitation’s compliance with the written description requirement, and whether the “less than about 0.10 mm” limitation complied with both the enablement and written description requirements.
Analysis: Chief Judge Stark’s order provides an example of the Court’s careful review of magistrate reports and recommendations and is consistent with the Court’s willingness to narrow issues subsequent to the pretrial conference and prior to trial. Due to the narrowing of issues, Chief Judge Stark limited the time for each side’s trial presentations to twelve hours: one hour less than the parties requested.