Ferring Pharmaceuticals Inc. et al v. Par Pharmaceutical Inc.

Filing 172

MEMORANDUM ORDER Denying Plaintiffs' and Defendant's Motion in Limine (see D.I. 170-17, and D.I. 170-18). Signed by Judge Richard G. Andrews on 10/28/2016. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

PERRING PHARMACEUTICALS INC. and
PERRING INTERNATIONAL CENTER
S.A.,
Plaintiffs;
Civil Action No. 1: l 5-cv-00173-RGA
v.
PAR PHARMACEUTICAL, INC.
Defendant.
MEMORANDUM ORDER
Presently before the Court are Plaintiffs' Motion in Limine (D.I. 170-17) and
Both motions concern the scope of evidence

Defendant's Motion in Limine (D.I. 170-18).

admissible at trial with respect to the meaning of a disputed claim term. For the reasons stated
below, IT IS HEREBY ORDERED THAT Plaintiffs' Motion in Limine and Defendant's
Motion in Limine are both DENIED without prejudice for either party to object to specific
testimony offered by the other party at trial.
On December 23, 2015, the parties submitted a joint claim construction brief in which
the only disputed term was "coating" or "coated." (D.I. 65 at 9). Plaintiffs argued that the terms
should be given their plain and ordinary meaning while Defendant proposed the construction
"[a] shell that covers a core." (Id). A Markman hearing was held on January 20, 2016 during
which the Court found that the terms "have their plain and ordinary meaning, as understood to a
person of ordinary skill in the art reading the patent." (D.I. 74 at 32:16-18). In addition, the
Court advised that "I don't think it's a claim construction issue. I think that's an issue for expert

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think whether or not either prior art, or Par's proposed product, has a coating or is coated is
something that the experts will have an opinion on." (Id. at 33: 12-18).
In other words, I have already construed this claim term and I will not entertain further

attempts at claim construction at trial. "At trial, parties may introduce evidence as to the plain and
ordinary meaning of terms not construed by the Court to one skilled in the art, so long as the
evidence does not amount to arguing claim construction."

MediaTek inc. v. Freescale

Semiconductor, Inc., 2014 WL 971765, at *4 (N.D. Cal. Mar. 5, 2014) (alterations, emphasis, and
internal quotation marks omitted). Expert testimony about the plain and ordinary meaning of claim
terms supported by reference to specification and prosecution history would constitute
impermissible claim construction. See id. at *5. Both parties' experts are, therefore, precluded
from testifying that the specification and prosecution history support their views regarding the
plain and ordinary meaning of the claim terms. The experts are not, however, precluded from
opining on the plain and ordinary meaning or from making any reference at all to the patent
specification and prosecution history. Should experts from either side refer to the specification or
prosecution history in the course of their testimony regarding the plain and ordinary meaning of
the claim terms, the determination of whether the testimony amounts to claim construction will be
made on an objection by objection basis.
Whether an expert may testify using extrinsic evidence to support his or her testimony
regarding the plain and ordinary meaning of the claim terms is context dependent. See MediaTek

inc., 2014 WL 971765, at *5. The parties' experts are not per se prevented from testifying that
their views regarding the plain and ordinary meaning of claim terms are supported by extrinsic
evidence such as dictionary definitions, textbooks, prior art references, or the testimony of persons

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of skill in the art. Upon objection at the appropriate time, such testimony will be excluded if, in
context, it amounts to claim construction.

Entered thi~ day of October, 2016.

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