Cosmo Technologies Limited et al v. Lupin Ltd. et al
MEMORANDUM ORDER re (156 in 1:15-cv-00669-LPS) MOTION to Strike Paragraph 48 of the Expert Report of Professor Jerry L. Atwood filed by Lupin Ltd., Lupin Pharmaceuticals Inc. Signed by Judge Leonard P. Stark on 9/14/17. Associated Cases: 1:15-cv-00669-LPS, 1:16-cv-00152-LPS (ntl)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
COSMO TECHNOLOGIES LIMITED,
V ALEANT PHARMACEUTICALS
INTERNATIONAL, and VALEANT
C.A. No. 15-669-LPS
LUPIN LTD. and LUPIN
COSMO TECHNOLOGIES LIMITED,
V ALEANT PHARMACEUTICALS
INTERNATIONAL, and VALEANT
C.A. No. 16-152-LPS
MYLAN PHARMACEUTICALS INC.,
At Wilmington this 14th day of September, 2017, having reviewed the parties' briefs on
Defendants' motion to strike paragraph 48 of Dr. Atwood's expert report served to Lupin and
paragraph 49 of Dr. Atwood's expert report served to Mylan (D.I. 155, 158, 159), 1
All references to the docket index ("D.I.") are to C.A. No. 15-699, unless otherwise
IT IS HEREBY ORDERED that:
Defendants' motion to strike (C.A. No. 15-669-LPS D.I. 156; C.A. No. 16-152-
LPS D.I. 107) is DENIED.
Infringement contentions serve the purpose of providing notice to Defendants of
Plaintiffs' infringement theories early in the case. See Intellectual Ventures I LLC v. AT&T
Mobility LLC, 2017 WL 658469, at *2 (D. Del. Feb. 14, 2017). Generally, "infringement
contentions must set forth particular theories of infringement with sufficient specificity to
provide defendants with notice of infringement beyond that which is provided by the mere
language of the patents themselves." Trading Techs. Int'l, Inc. v. CQG, Inc., 2014 WL 4477932,
at *2 (N.D. Ill. Sept. 10, 2014). As such, infringement contentions are considered to be "initial
disclosures" under Federal Rule of Civil Procedure 26(a). See United States District Court for
the District of Delaware, Default Standard for Discovery§ 4(a). A failure to make a disclosure
under Rule 26(a) "may lead to exclusion of the materials in question" under Rule 37(c)(l).
Lambda Optical Sols., LLC v. Alcatel-Lucent USA Inc., 2013 WL 1776104, at *2 (D. Del. Apr.
17, 2013). In relevant part, Rule 37(c)(l) provides that "[i]f a party fails to provide information
... as required by Rule 26(a) ... , the party is not allowed to use that information ... to supply
evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is
In determining whether to exclude evidence such as an expert report, the Court
may consider: (1) the importance of the information withheld; (2) the prejudice or surprise to the
party against whom the evidence is offered; (3) the likelihood of disruption ofthe,trial; (4) the
possibility of curing the prejudice; (5) the explanation for the failure to disclose; and ( 6) the
presence of bad faith or willfulness in not disclosing the evidence (the "Pennypack factors"). See
Konstantopoulos v. Westvaco Corp., 112 F.3d 710, 719 (3d Cir. 1997) (citing Meyers v.
Pennypack Woods Home Ownership Ass 'n, 559 F.2d 894, 904-05 (3d Cir. 1977)). Generally,
"exclusion of critical evidence is an extreme sanction, not normally to be imposed absent a
showing of willful deception or flagrant disregard of a court order by the proponent of the
evidence." In re Paoli R.R. Yard PCB Litig., 35 F.3d 717,
(3d Cir. 1994) (internal
quotation marks omitted). The determination of whether to exclude evidence is committed to the
discretion of the Court. See id. at 749.
Defendants' motion concerns Plaintiffs' theory for how the accused products meet
the claims' "macroscopically homogenous structure" limitation. Plaintiffs' initial contentions,
served before claim construction in this case, 2 focused on the theory that Defendants'
manufacturing processes and quality-control assurances result in tablets that meet this limitation.
(See D.I. 155 Ex. 3 at Appx. Bat 1-2; Ex. 4 at Appx. Eat 1-2) On March 15, 2017, the Court
construed "macroscopically homogenous structure" - consistent with its construction in earlier,
"first-wave" cases - to mean "a composition of uniform structure throughout, as observed by the
naked eye." ·(D .I. 119 at 10) Plaintiffs did notthereafter supplement their infringement
contentions to include reference to observation by the naked eye. However, Dr. Atwood,
Plaintiffs' expert, nevertheless conducted visual inspections of the accused products and reported
his observations in his reports. Defendants contend that these analyses introduce a new
The initial infringement contentions were served on Lupin even before claim
construction in the first-wave cases. (See C.A. No. 15-164-LPS D.I. 183) That claim
construction had issued, however, by the time initial infringement contentions were served in this
case on Mylan.
The Court does not agree with Defendants that Dr. Atwood's expert reports,
including his visual observations, go beyond what Defendants were fairly on notice of, given
Plaintiffs' initial contentions as well as the course of these cases. Plaintiffs' infringement theory
has not changed, and the bulk of Dr. Atwood's expert opinions analyzes Defendants' ANDA
filings, including the manufacturing processes and-quality-control testing referenced in the
infringement contentions. 3 At most, Dr. Atwood's visual examination is additional evidence that
purports to support their previously-disclosed infringement theory. That is not sufficient reason
to strike the disputed paragraphs. See, e.g., Mobile Telecomms. Techs., LLC v. Blackberry Corp.,
2016 WL 2907735, at *2 (N.D. Tex. May 17, 2016).
The timing of Plaintiffs' "new" infringement contentions (to the extent they are
viewed as new) is also, under the circumstances, "substantially justified." Trial in the first-wave
cases concluded on May 23, 201 7, with a finding by the Court that Plaintiffs had failed to prove
that other Defendants' generic products infringed, in part based on the lack of evidence of the
"macroscopically homogeneous" claim limitation, due to the absence of an expert opinion based
on visual observation by the· naked eye. (See C.A. No. 15-164-LPS D.l. 243 at 64) It was logical
and reasonable for Plaintiffs, when they filed their opening expert reports in the above-captioned
cases about a week later, on June 1, to include the expert's opinions regarding his visual
inspection of Defendants' proposed generic products ..
The decision not to strike the challenged paragraphs is confirmed by application
Because the Court does not view Plaintiffs' infringement as "new," the Court at this time
also denies Defendants request "to preclude Plaintiffs from presenting any infringement theories
or evidence outside the scope of their infringement contentions." (D.I. 155 at 1)
of the Pennypack factors. The portions of Dr. Atwood's opinions that Defendants move to strike
are in his opening expert reports. Accordingly, Defendants' experts had the opportunity to - and
did, in fact- respond to Dr. Atwood's naked-eye observations in their rebuttal reports. (See D.l.
158 Ex. A at ifif 68-78; Ex.Bat ifif 46-49, 63) Defendants received image files of photographs
that Dr. Atwood took to memorialize his visual observations, and Defendants have (or have had)
the opportunity to depose Dr. Atwood about these observations. Further, as made clear during
the first-wave cases, Dr. Atwood's naked-eye observations of the ANDA products may be critical
evidence for infringement purposes. There is no indication that Plaintiffs have acted willfully or
flagrantly disregarded any Court order. Allowing the evidence to remain part of the case also
does not threaten the trial date (although, as explained below, the Court is going to need to alter
the trial date for unrelated reasons).
Accordingly, for the reasons given above, Defendants' motion to strike is DENIED.
As alluded to above, the Court finds it necessary, for reasoris unrelated to the dispute
addressed herein and arising from other commitments, to move the trial date in these cases. Trial
is currently scheduled to be held between October 30 and November 3. The Court is no longer
available on October 30-November 1 and is scheduled to be in a criminal jury trial on November
2 and 3. The Court is also scheduled to be in that criminal jury trial all of the following week,
November 6-10, and also has another civil bench trial scheduled during that week as well.
In light of this situation, the Court is considering at least the following options:
Trial could begin November 2, and continue for as many days as needed
(potentially to include Saturday November 4), to be held between 4:00 p.m. and 7:00 p.m. on
days that the criminal trial is underway, until the criminal trial concludes, at which point trial
could begin on remaining days at 8: 30 a.m.
Trial could be held, in whole or in part, on November 20-22, 8:30 .a.m. to 7:00
p.m. on the.first two days and 8:30 a.m. to 5:00 p.m. on the third day.
Trial could be held, in whole or in part, on November 27-December 1, between
4:00 p.m. and 7:00 p.m., until the criminal trial scheduled for that week concludes, at which
point trial could begin on remaining days at 8:30 a.m.
IT IS HEREBY ORDERED that, in light of the foregoing, the shall parties meet and
confer and submit a joint status report, no later than September 19, advising the Court of their
position(s) as to how the Court should proceed.
HON. LEO ARD P. STA
UNITED STATES DISTRICT JUDGE
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