Cadence Pharmaceuticals Inc. et al v. InnoPharma Licensing LLC et al

Filing 295

MEMORANDUM ORDER re Rulings on motions in limine and discovery disputes; (277 in 1:14-cv-01225-LPS) Motion to Exclude Testimony of Dr. Robert Kimmel is DENIED; the Court allocates fifteen (15) hours per side for trial. Signed by Judge Leonard P. Stark on 1/4/17. Associated Cases: 1:14-cv-01225-LPS, 1:14-cv-01499-LPS (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
CADENCE PHARMACEUTICALS,
INC., SCRPHARMATOP, and
MALLINCKRODT IP,
Plaintiffs,
v.

C.A. No. 14-1225-LPS

INNOPHARMA LICENSING LLC and
INNOPHARMA, INC.,
Defendants.
CADENCE PHARMACEUTICALS,
INC., SCR PHARMATOP, and
MALLINCKRODT IP,
Plaintiffs,

C.A. No. 14-1499-LPS

v.
AGILA SPECIALTIES INC. and
MYLAN LABORATORIES LIMITED,
Defendants.

MEMORANDUM ORDER
At Wilmington this 4th day of January, 2017:
Having reviewed the proposed pretrial order (see C.A. No. 14-1225 D.I. 281, 282, 283,
284, 285, 286) 1 ("PTO"), submitted by Cadence Pharmaceuticals, Inc., SCR Pharmatop, and
Mallinckrodt IP ("Cadence" or "Plaintiffs"), Innopharma Licensing LLC and Iooopharma, Inc.

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All references to the docket index are to C.A. No. 14-1225.

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("Innophanna"), and Agila Specialities Inc. and Mylan Laboratories Limited ("Mylan"), the
attachments to the PTO, and the other materials referenced herein,
IT IS HEREBY ORDERED that::
1.

Cadence's motion in limine ("MIL") No. 1 as to Innophanna, to exclude certain

noninfringement arguments, is DENIED. Cadence and Innopharma attack each other for having
introduced new claim constructions into the case through expert reports and, consequently, the
parties have filed a combination of MILs, motions to strike, requests for supplemental claim
construction, and discovery dispute letters. In general, the Court has determined that the ·
appropriate course of action under the circumstances is to allow each party to present the case it
wishes to present - including whatever has been disclosed in each of the expert reports that have
been served - and to determine at an appropriate time if any further claim construction is
necessary. For purposes of Cadence's MIL No. 1, it is sufficient to observe that the Court is not
persuaded that Innophanna' s four purportedly "new" noninfringement theories are "indisputably
predicated" on a new construction of "placing under vacuum" or that the Pennypack factors favor
exclusion of the challenged evidence. 2
2.

Cadence's MIL No. 2 as to Innophanna, to exclude certain noninfringement

arguments addressing the doctrine of equivalents, is DENIED, for the same reasons already given
with respect to denial of Cadence's MIL No. 1 above.
3.

Cadence's MIL No. 3as to Innophanna, to preclude arguments that "explicitly

contradict" discovery responses, is DENIED. Cadence's characterization of the discovery

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Although Cadence suggests a need to take additional fact discovery, it does not articulate
what this discovery would be (or could have been).

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responses and their relationship to the trial testimony Cadence seeks to exclude is not persuasive.
4.

Cadence's MIL No. 1 as to Mylan, to prohibit Mylan from contending that its

method of preparing its proposed product does not infringe because it does not satisfy the "below
2 ppm" limitation of the '218 patent, is GRANTED. Mylan does not identify anywhere in the
record that it contested infringement based on this limitation (or disclosed that its expert held this
opinion) until it served Dr. Williams' rebuttal report. In light ofMylan's earlier concessions and
failure to supplement, this disclosure was untimely (even if it might otherwise be considered
proper rebuttal and/or is based on documents that had been timely disclosed). The Pennypack
factors favor striking the evidence.
5.

Cadence's MIL No. 2 as to Mylan, seeking to exclude Mylan's noninfringement

defense relating to the ''preserving for a prolonged period" limitation, is GRANTED, for
essentially the same reasons as given above with respect to Cadence's MIL No. 1 as to Mylan.
Mylan' s effort to identify where it timely disclosed that it was contesting this limitation (see
Suppl. Resp. to Interrog. No. 5 at 25) is unavailing, for the reasons argued by Cadence.
6.

Cadence's MIL No. 3 as to Mylan, to preclude a "belated claim construction"

regarding the '218 patent, is DENIED. The Court will determine, through the procedures
discussed in this Order and to be discussed at the pretrial conference, whether additional claim
construction is necessary. Regardless, the evidence Cadence challenges by this motion may be
presented at trial, and may prove helpful to the Court as finder of fact; in any event, the
Pennypack factors do not favor exclusi_on.
7.

Innopharma's MIL No. 1, to exclude references to the Exela litigation, is

DENIED. Cadence does not assert collateral estoppel, issue preclusion, or law of the case, and

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the Rule 403 balance does not favor exclusion. All parties are free to cite to the Court's findings
in the Exela case for any proper purpose and the Court will give them whatever weight, if any,
they deserve, recognizing that this is a different case involving different parties, different
products, different evidence, and reexamined patents.
8.

Innopharma's MIL No. 2, to preclude Caden.ce's experts from offering testimony

inconsistent with the Court's claim construction, is DENIED. The Court is not persuaded that
the testimony Innopharma identifies (i.e., Dr. Klibanov's opinions regarding "a free radical
scavenger and a free radical antagonist") is a "material alteration" or "reinterpretation" or
"sleight of hand modification" of the Court's claim construction as opposed to a permissible
"application" of the Court's construction. It ·follows that the Rule 403 balance does not favor
exclusion.
9.

Mylan's MIL, to preclude comparison ofMylan's accused product to Plaintiffs'

commercial product, is DENIED. To the extent that Plaintiffs' commercial product is an
embodiment of one or more claims of the patent(s)-in-suit, a comparison ofMylan's accused
product to Plaintiffs' product may be probative of infringement, i.e., "whether the accused
products contain each and every limitation of the asserted patent claims, either literally or under
the doctrine of equivalents." The Rule 403 balance does not favor exclusion, particularly as
Plaintiffs' expert will present an element-by-element comparison ofMylan's accused product
and the asserted claims.
10.

The CoUrt has reviewed Cadence and Innopharma's four recent discovery dispute

letters and associated filings (see, e.g., D.I. 290, 291, 292, 294) and hereby ORDERS:
(i) Plaintiffs' request for leave to serve supplemental expert reports ofHopfenberg, Orr, and
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Amiji is GRANTED; and (ii) Innopharma's request for leave to serve Cima's supplemental
report responding to Plaintiffs' supplemental reports is GRANTED .. (See also PTO at 24, 26, 28)
The Court believes the opinions expressed in each of these reports may prove helpful to it in its
fulfilling its responsibility as factfinder. The Court is not entirely convinced by either side's
characterization as to which party (Cadence or Innopharma) is responsible for purportedly
injecting new claim construction disputes and untimely theories into the case. The most fair,
reasonable, and appropriate resolution of the parties' disagreements is to allow the supplemental
reports to be part of the case and to determine, according to the procedures set out in this Order
and to be discussed at the pretrial conference, whether supplemental claim construction is
necessary.
11.

Innopharma's motion to exclude the expert testimony of Dr. Robert Kimmel (D.I.

277) is DENIED. (See also D.I. 278, 293) Dr. Kimmel provides relevant, reliable testimony that
"fits" the case and will be helpful to the Court as the trier of fact. Dr. Kimmel is a packaging
expert whose opinion is pertinent to the infringement issue of whether the process by which
Innopharma prepares its accused generic product satisfies the "placing under a vacuum"
limitation. Innopharma's criticisms of Dr. Kimmel and his opinions go to the weight to be given
to that evidence, not its admissibility.
12.

The Court will not be scheduling a supplemental claim construction hearing.

(See, e.g., PTO at 26) Instead, to the extent any party believes there remains a genuine, material
dispute with respect to construction of a claim term, the parties shall use _some portion of their
time at trial to present any evidence and argument they wish in support of their position. The
parties shall be prepared to discuss at the pretrial conference tomorrow a schedule for:

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(i) identifying which, if any, disputed claim terms must be construed; (ii) each party's proposed
construction; (iii) whether, and when, any briefing will be submitted; and (iv) whether any party
intends to rely on live testimony as part of its presentation regarding supplemental claim
construction.
13.

Defendants' proposal at page 18 of the PTO ("The parties need not disclose

exhibits for cross-examination ... ") is ADOPTED.
14.

Given the issues to be tried - which include infringement, invalidity, and

inequitable conduct, in a case involving two patents-in-suit and two separate sets of defendants the Court allocates to each side a maximum of fifteen (15) hours per side for its trial presentation.
The parties' joint request for twenty-one (21) .hours per side (PTO at 30-31) is excessive under
the circumstances and substantially more time than will be required for both sides to make fair
and reasonable presentations of all the evidence arid argument the Court will need in order to
resolve the disputed issues.

HONO
LE LEONARD P. STARK
UNITED STATES DISTRICT COURT

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