Synthes (USA) v. Spinal Kinetics Inc.

Filing 409

ORDER requiring response to Plaintiff's Motion in Limine filed October 3, 2011. Signed by Judge Whyte on 10/11/2011. (rmwlc2, COURT STAFF) (Filed on 10/11/2011)

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E-FILED on 10/11/2011

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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United States District Court
For the Northern District of California

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SAN JOSE DIVISION

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SYNTHES USA, LLC (f/k/a SYNTHES
(U.S.A.)); SYNTHES USA SALES, LLC; and
SYNTHES, INC.,

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Plaintiffs,
v.
SPINAL KINETICS, INC.,

No. C-09-01201 RMW

ORDER REQUIRING RESPONSE TO
PLAINTIFF'S MOTION IN LIMINE FILED
OCTOBER 3, 2011
[Re Docket No. 402]

Defendant.

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Synthes has filed an in limine motion to preclude Spinal Kinetics from relying on the three

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allegedly anticipating references and the ten purported obviousness combinations identified by

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Spinal Kinetics on September 26, 2011 in response to the court's pre-trial order requiring a list of

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such prior art references. Synthes submits that Spinal Kinetics has disclosed neither an expert nor a

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lay witness who can testify that the references cited alone or in combination anticipate the claims-at-

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issue of the '270 patent or render them obvious. The motion is late as the deadline for filing

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dispositive motions and in limine motions have both passed. Therefore, the court does not intend to

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summarily adjudicate whether Spinal Kinetics has sufficient evidence to raise a triable issue of fact

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with respect to its anticipation or obviousness defenses. However, the trial will run more efficiently,

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ORDER REQUIRING RESPONSE TO PLAINTIFF'S MOTION IN LIMINE FILED OCTOBER 3, 2011 —No. C-09-01201 RMW
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and presumably it will be in the parties' best interests, if the issue of who can testify on these

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defenses is resolved prior to trial.

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Spinal Kinetics' response to Synthes' current motion should explain how Spinal Kinetics has

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met, or should be relieved from, the disclosure requirements for each witness it intends to offer on

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the anticipation and obviousness defenses. A party is required to disclose the identity of any witness

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it may use at trial to present evidence under F.R.E. 702, 703 or 705. Fed.R.Civ.P. 26(a)(2)(A).

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Unless otherwise ordered by the court, the disclosure must be accompanied by a report if the witness

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is one retained or specifically employed to give expert testimony. Fed.R.Civ.P. 26(a)(2)(B). If the

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witness is not required to provide a written report, a summary of the facts and opinions to which the

United States District Court
For the Northern District of California

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witness is expected to testify must be provided. Fed.R.Civ.P. 26 (a)(2)(C). A witness who is

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technically knowledgeable but not disclosed as an expert may testify, if otherwise properly disclosed

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as a witness, on what he or she personally did or observed (i.e. percipient testimony). See Goodman

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v. Staples The Office Superstore, LLC, 644 F.3d 817, 826 (9th Cir. 2011) (holding that a treating

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physician does not need to file a written report required for expert testimony to the extent that he

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testifies about treatment and his opinions were formed during the course of treatment). For example,

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an inventor can explain how he or she developed the claimed invention or accused product but

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cannot express an opinion on how one skilled in the art would interpret language in a claim or

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whether a particular feature in an accused product or a prior art reference met a limitation of a claim.

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See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1375 (Fed. Cir. 2008)(fact that inventor of

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prior art patent was not receiving compensation for his scientific testimony on obviousness issue did

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not exempt competitor from furnishing report for that de facto expert, since inventor's testimony was

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specialized); See also Goodman, 512 F.3d at 826.

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Spinal Kinetics should file its response to Synthes' motion by October 28, 2011.

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DATED:10/11/2011

____________________________
RONALD M. WHYTE
United States District Judge

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ORDER REQUIRING RESPONSE TO PLAINTIFF'S MOTION IN LIMINE FILED OCTOBER 3, 2011 —No. C-09-01201 RMW
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