Thermolife International, LLC v. Myogenix Corp. et al

Filing 224

ORDER (1) granting in part and denying in part 209 Plaintiff's Motion In Limine and (2) denying 210 Defendant's Motion In Limine/Daubert Motion. Signed by Judge Janis L. Sammartino on 7/22/2016.(All non-registered users served via U.S. Mail Service)(kcm)

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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THERMOLIFE INTERNATIONAL,
LLC,
Plaintiff,

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Case No.: 13cv651 JLS (MDD)
(LEAD CASE)
ORDER (1) GRANTING IN PART
AND DENYING IN PART
PLAINTIFFS’ MOTION IN LIMINE
AND (2) DENYING DEFENDANTS’
MOTION IN LIMINE / DAUBERT
MOTION

v.
MYOGENIX CORP.; GNC
CORPORATION; GENERAL
NUTRITION CENTERS, INC.; and
GENERAL NUTRITION
CORPORATION,

(ECF Nos. 209 & 210)

Defendants.

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Presently before the Court are Plaintiffs the Board of Trustees of the Leland Stanford

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Junior University and ThermoLife International, LLC’s Motion In Limine to Exclude

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Certain Prior Art-Related Evidence (Plaintiffs’ Motion), (ECF No. 209), as well as

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Defendants’ Opposition to, (ECF No. 219), and Plaintiffs’ Reply in Support of, (ECF No.

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222), Plaintiffs’ Motion. Also before the Court are Defendants’ Motion In Limine /

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Daubert Motion to Exclude Plaintiffs’ Expert From Offering Testimony Regarding

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Secondary Considerations of Non-Obviousness (Defendants’ Motion), (ECF No. 210), as

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well as Plaintiffs’ Opposition to, (ECF No. 218), and Defendants’ Reply in Support of,

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(ECF No. 221), Defendants’ Motion. The Court held a hearing on these Motions on July

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21, 2016. As explained below, the Court GRANTS IN PART AND DENIES IN PART

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Plaintiffs’ Motion and DENIES Defendants’ Motion.
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PLAINTIFFS’ MOTION

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The Plaintiffs ask the Court to preclude Defendants from introducing various prior

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art references and combinations thereof at trial. This District’s Local Rules require

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invalidity contentions to include “an explanation of why the prior art renders the asserted

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claim obvious,” Patent L.R. 3.3(b), which prevents unfair surprise at trial and allows

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patentees time to analyze the prior art as it pertains to particular claims and terms.

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Similarly, expert reports must disclose the substance of an expert’s testimony for direct

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examination and the bases for those opinions. See Jenkins v. Bartlett, 487 F.3d 482, 487

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(7th Cir. 2007) (“The purpose of the report is to ‘set forth the substance of the direct

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examination.’ . . . A party is barred from using at trial evidence that it failed to disclose

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‘without substantial justification’ as required by Rule 26(a), unless that failure was

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harmless.”); Fed. R. Civ. P. 26(a)(2)(B)(i) (expert reports must contain “a complete

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statement of all opinions the witness will express and the basis and reasons for them.”).

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The Court GRANTS IN PART AND DENIES IN PART Plaintiffs’ Motion and
ORDERS as follows:
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References Allowed if Disclosed as to Claim Element: Where prior art was

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disclosed with respect to a particular claim element, whether in the Defendants’ Amended

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Invalidity Contentions, expert report, rebuttal expert report, or expert deposition,

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Defendants are not precluded from relying on that reference as invalidating art with respect

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to that claim or claim element. However, Plaintiffs may renew their objections at trial and

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explain why, despite the disclosure of the reference in one of these mediums, they would

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be prejudiced and could not cure the prejudice through cross examination. To the extent

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that this ruling is more liberal than the Court’s conclusion on summary judgment (with

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respect to the combination of Levere and Mugge as to claim 10 of the ’459 Patent), the

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difference is attributable to the static evidentiary record on summary judgment, whereas

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here Plaintiffs will have the opportunity to explore testimony on cross examination. That

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is not to say that particularized disclosure was not required, however.

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2.

References Precluded if Not Disclosed as to Claim Element: Where prior art

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was not disclosed with respect to a particular claim or claim element in Defendants’

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Amended Invalidity Contentions, expert report, rebuttal expert report, or expert deposition,

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Defendants are precluded from relying on that reference as invalidating art for that claim

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element.

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Defendants’ Expert is Precluded from Testifying About Motivations to

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Combine References That Were Not Disclosed or Supported by Disclosures in His Expert

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Report, Rebuttal Expert Report, or Deposition.1 Plaintiffs devote much of their briefing to

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arguing Defendants’ expert, Dr. Volek, should not be allowed to testify to reasons a person

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of ordinary skill in the art would be motivated to combine prior art references where those

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reasons were not provided in his expert report. Although it is unclear whether Defendants

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actually intend to introduce any such testimony, the Court notes that Defendants’ expert

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may not introduce bases for his opinion and may not testify about reasons or motivations

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to combine that were not disclosed in his expert report, rebuttal expert report, or deposition.

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See Jenkins, 487 F.3d at 487; Fed. R. Civ. P. 26(a)(2)(B)(i). By way of example, Dr. Volek

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is not precluded from testifying that the disclosure in Weider’s Arginine & Lysine product

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would motivate a person of ordinary skill to rely on other teachings—or providing greater

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detail and elaborating on this disclosed motivation to combine—because this opinion and

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the basis for it are outlined in his Expert Report. Dr. Volek would be precluded, however,

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from testifying about some other publication that was not discussed in his report that

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suggests combining certain prior art references.

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In light of the discussion at the hearing on this motion, the Court clarifies that this Order precludes
introduction of individual prior art references as they pertain to particular claims and elements, and does
not preclude combinations of art that were not otherwise disclosed. That is, where Defendants have
disclosed prior art and explained how it reads on certain claim elements, Plaintiffs are already on notice
of how that art might be applied to those elements. The issue likely to arise with respect to previously
undisclosed combinations of art will be the motivation to combine those references. Where Defendants’
expert has not in his expert report, rebuttal expert report, or deposition explained the basis for why a skilled
artisan would combine those references, he may not do so for the first time at trial.
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DEFENDANTS’ MOTION
Next, Defendants ask the Court to preclude Plaintiffs’ expert, Dr. Boger, from
testifying regarding the secondary considerations of nonobviousness.

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“‘[T]he Daubert gatekeeping obligation is less pressing in connection with a bench

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trial’ where ‘the ‘gatekeeper’ and the trier of fact [are] one and the same.’” AngioScore,

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Inc. v. TriReme Med., Inc., 87 F. Supp. 3d 986, 1016 (N.D. Cal. 2015) (citing various

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cases). The gatekeeping function must still be performed, however. See Metavante Corp.

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v. Emigrant Sav. Bank, 619 F.3d 748, 760 (7th Cir. 2010); see also Daubert v. Merrell Dow

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Pharm., Inc., 509 U.S. 579, 596 (1993) (“Vigorous cross-examination, presentation of

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contrary evidence, and careful instruction on the burden of proof are the traditional and

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appropriate means of attacking shaky but admissible evidence.”).

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Much of Dr. Boger’s testimony with respect to the secondary considerations of

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nonobviousness would be based on his “knowledge and experience” in the industry, “rather

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than the methodology or theory behind” his testimony. United States v. Hankey, 203 F.3d

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1160, 1169 (9th Cir. 2000). In such cases, “[t]he Daubert factors (peer review, publication,

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potential error rate, etc.) simply are not applicable.” Id.; see also See Kumho Tire Co. v.

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Carmichael, 526 U.S. 137, 150 (1999) (“Engineering testimony rests upon scientific

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foundations, the reliability of which will be at issue in some cases. . . . In other cases, the

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relevant reliability concerns may focus upon personal knowledge or experience.”).

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Although Dr. Boger’s deposition testimony appeared not to be based on particular

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data or analysis thereof, his opinions are based on his personal experience in the arginine

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supplementation field and meet the minimum requirements for admissibility. The concerns

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with the reliability of Dr. Boger’s testimony on this point are more appropriately

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considered with respect to the weight to which his testimony is entitled. Further, given that

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this is a bench trial, the danger of prejudice is lessened. If cross examination reveals a

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complete lack of factual basis for particular aspects of Dr. Boger’s testimony, it may be

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stricken and disregarded, as opposed to merely given less weight. As a general matter,

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however, it is not precluded.
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Accordingly, Defendants’ Motion is DENIED.

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CONCLUSION

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For the foregoing reasons, the Court GRANTS IN PART AND DENIES IN PART
Plaintiffs’ Motion and DENIES Defendants’ Motion.
IT IS SO ORDERED.
Dated: July 22, 2016

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13cv651 JLS (MDD)
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