Cosmo Technologies Limited et al v. Actavis Laboratories FL Inc.

Filing 217

MEMORANDUM ORDER re rulings on various motions in limine. Signed by Judge Leonard P. Stark on 5/4/17. Associated Cases: 1:15-cv-00164-LPS, 1:15-cv-00193-LPS (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
COSMO TECHNOLOGIES LIMITED,
VALEANT PHARMACEUTICALS
INTERNATIONAL, and VALEANT
PHARMACEUTICALS LUXEMBOURG
s.A R.L.,
Plaintiffs,

C.A. No. 15-164-LPS

v.
ACTAVIS LABORATORIES FL, INC.,
Defendant.
COSMO TECHNOLOGIES LIMITED,
V ALEANT PHARMACEUTICALS
INTERNATIONAL, and VALEANT
PHARMACEUTICALS LUXEMBOURG
s.A R.L.,
Plaintiffs,

C.A. No. 15-193-LPS

v.
ALVOGEN PINE BROOK, LLC,
Defendant.

MEMORANDUM ORDER
At Wilmington this 4th day of May, 2017, having reviewed the proposed pretrial order
(C.A. No. lS-164 1 D.I. 214, 215) ("PTO"), submitted by Plaintiffs and Defendants, including
briefing on various motions in limine ("MIL"),

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All references to the docket index ("D.I.") are to C.A. No. 15-164, unless otherwise

noted.
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IT IS HEREBY ORDERED that:
1.

Plaintiffs' MIL #1, to preclude the testimony of Dr. James Rancourt, is DENIED.

Consistent with the parties' agreement during discovery, Alvogen will call Dr. Rancourt to testify
(if at all) only to explain PSI's methodology and the accuracy and reliability of PSI's data and
results, and only if Plaintiffs challenge these things. Plaintiffs chose not to depose Dr. Rancourt,
who was made available for deposition, and part of the parties' agreement is that he will be made
available yet again for deposition should Alvogen decide to call him to testify at trial. Under the
circumstances, Plaintiffs have failed to demonstrate that there is surprise or prejudice resulting
from permitting Dr. Rancourt to testify, subject to the various conditions. Nor have Plaintiffs
shown a violation of Fed. R. Civ. P. 26(a)(2)(B) that warrants precluding Dr. Rancourt's
testimony. See Nan Ya Plastics Corp. v. Glob. Polymers, 2005 WL 5988669, at *3 (W.D. Ky.
Oct. 5, 2005) (finding no Rule 26(a)(2)(B) violation for expert whose "testimony will be limited
simply to the test procedures and results that his lab obtained").
2.

Defendants' MIL #1, to preclude Plaintiffs from offering any evidence about

secondary considerations, is DENIED. Defendants have failed to persuade the Court that
Plaintiffs have not offered any evidence of a nexus between the claimed invention (and its
purported embodiment: Plaintiffs' commercial product) and the secondary considerations.
Plaintiffs have identified such evidence, including from their expert, from a defense expert, and
from fact witnesses. Plaintiffs may ultimately fail to meet their burden to prove a nexus but their
showing to date is not so deficient as to warrant depriving them of the opportunity to attempt to
prove their case at trial.
3.

Defendants' MIL #2, to preclude Plaintiffs from offering portions of Dr. R.obert
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Lofberg's rebuttal expert report as an exhibit at trial, is DENIED. Dr. Lofberg was in an accident
and, consequently, was not available for deposition and is not available to come to trial. Under
these unfortunate and exceptional circumstances, the ¢ourt finds that the residual hearsay
exception applies. See Fed. R. Evid. 807(a); see also Bohler-Uddeholm Am., Inc. v. Ellwood
Grp., Inc., 247 F.3d 79, 113 (3d Cir. 2001) (identifying factors to consider). The portions of his

report at issue concern his personal observations about studies he himself completed in the 1990s
(and which the Court can review itself for potential corroboration with his recently-expressed
opinions), relating to the state of the art and invalidity, matters on which he is qualified (and
arguably the pe!son most qualified) to address; Dr. Lofberg prepared his· report in the expectation
he would be subjected to deposition and cross-examination on it; and although retained by
Plaint~ffs,

the expert is not employed by or formally affiliated with them. Together, these factors

persuade the Court there is sufficient trustworthiness to admit the evidence and give it whatever
weight it deserves.
4.

With respect to disputes over the timing of certain disclosures during trial (see

PTO at~~ 67 (trial exhibits), 71 (completion of case-in-chief), 74 (demonstratives)), Plaintiffs'
proposals are ADOPTED.
The parties shall be prepared to address any other matters contained in the PTO at the
pretrial conference tomorrow.

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