UCB Inc. et al v. Watson Laboratories Inc. (NV) et al
MEMORANDUM ORDER re rulings on certain motions in limine. Signed by Judge Leonard P. Stark on 5/30/17. (ntl)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
UCB, INC., UCB MANUFACTURING
IRELAND LIMITED, UCB PHARMA
GMBH, and LTS LOHMANN THERAPIESYSTEME AG,
C.A. No. 14-1083-LPS-SRF
WATSON LABORATORIES, INC. and
ACTAVIS LABORATORIES UT, INC.,
At Wilmington this 30th day of May, 2017, having reviewed the proposed pretrial order
(D.I. 211, 212, 213) ("PTO"), submitted by Plaintiffs and Defendants, including briefing on
various motions in limine ("MIL"),
IT IS HEREBY ORDERED that:
The parties shall be prepared to discuss Plaintiffs' MIL # 1 and MIL #2 at the
pretrial conference tomorrow.
Defendants' MIL #1, to preclude Plaintiffs from invoking 35 U.S.C. § 256 to
correct inventorship of the '414 patent if the Court finds it invalid under 35 U.S.C. § 102(f), is
DENIED. The Federal Circuit has instructed that "'[w]hen a party asserts invalidity under
§ 102(f) due to nonjoinder, a district court should first determine whether there exists clear and
convincing proof that the alleged unnamed inventor was in fact a co-inventor.' Then, '[u]pon such
a finding of incorrect inventorship, a patentee may invoke section 256 to save the patent from
invalidity.' Thus, after it is determined that a patent's
is incorrect, 'the patentee must
then be given an opportunity to correct inventorship pursuant to that section."' Checkpoint Sys.,
Inc. v. All-Tag Sec. S.A., 412 F.3d 1331, 1340 (Fed. Cir. 2005) (quoting Pannu v. Iolab Corp., 155
F.3d 1344, 1350 (Fed. Cir. 1998)) (emphasis added and internal citations omitted). Accordingly,
the Court finds that Plaintiffs' notice of intent to invoke§ 256, in the event that Defendants'
§ 102(f) challenge is successful, is not untimely, as Plaintiffs must be given the opportunity to
raise § 256 if Defendants prevail.
Defendants' MIL #2, to preclude Plaintiffs from presenting an infringement theory
under the doctrine of equivalents with respect to the '434 patent's solubility limitation, is
DENIED. Defendants contend that Plaintiffs have changed their infringement position, and that
Plaintiffs' allegedly new theory is inconsistent with the proper understanding of the claim
limitation. Plaintiffs, however, have argued throughout this litigation that the claimed "polymer
adhesive system" includes more than just the polymer adhesives alone (see, e.g., PTO Ex. 14 at PL
Ex. C), and Plaintiffs' infringement theory is consistent with this position. Thus, the Court is not
persuaded that Plaintiffs' theory is new. Instead, the parties present differing views as to how the
agreed-upon construction for this claim term should be applied to the facts, a dispute the Court
will resolve after both sides have had a full opportunity to present their cases at trial.
With respect to paragraph 48 of the PTO (see page 12), exhibits to be used solely
for impeachment need not be included on the lists of trial exhibits or disclosed in advance ofbeing
used at trial and can be admitted into evidence, if otherwise admissible and permitted by the Court.
With respect to paragraph 69 of the PTO (see page 16), the parties must file
briefing on legal issues (in addition to proposed findings of fact).
UNITED STATES DISTRICT JUDGE
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