Exelixis, Inc. v. MSN Laboratories Private Limited et al

Filing 274

MEMORANDUM ORDER: I DENY the Daubert motion. (D.I. 257). The issue could be appropriate for a motion in limine, although based on what is presented in the motion, I would not grant it. Based on my present understanding, I think that categories (1) and (2) do not need to be limited to a single reference. I am less clear on the third category. Thus, the parties should be prepared to address the motion in limine at the pretrial conference. Signed by Judge Richard G. Andrews on 4/20/2022. (nms)

Case 1:19-cv-02017-RGA-SRF Document 274 Filed 04/20/22 Page 1 of 2 PageID #: 7515

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
EXELIXIS, INC.,
Plaintiff,
v.

Civil Action No. 19-2017-RGA

MSN LABORATORIES PRIVATE LIMITED
and MSN PHARMACEUTICALS, INC.,
Defendants.

MEMORANDUM ORDER
Plaintiff has filed a Daubert motion (D.I. 257) and a motion in limine (D.I. 269)
concerning expected testimony of Dr. Lepore about the purported obviousness of the claim 5 of
the ‘473 patent. (See D.I. 270 at 3 (describing issues for trial)). The main point of both motions
is the assertion that Dr. Lepore has not identified specific combinations of prior art for his
obviousness analysis. Defendants have referred to a portion of Dr. Lepore’s report where he
lists categories of references. (D.I. 269-1 ¶ 204). My view is that, in the usual case, an
obviousness combination requires the identification of two or sometimes three references that
disclose the requisite claim elements, and (usually) additional references, which can be multiple
references to show the state of the art, that, considered as a whole, support a motivation to
combine and a reasonable expectation of success in doing so. Here, the expert has one reference
as the “lead compound.” The expert has three additional categories of references: (1) four that
show “c-Met’s role in various Cancers,” (2) six references “related to selecting a lead
compound,” and (3) fourteen references “related to modifying the lead compound.” (Id.).

Page 1 of 2

Case 1:19-cv-02017-RGA-SRF Document 274 Filed 04/20/22 Page 2 of 2 PageID #: 7516

I do not think the identification of specific combinations is a Daubert issue, and, thus, I
DENY the Daubert motion. (D.I. 257). 1 The issue could be appropriate for a motion in limine,
although based on what is presented in the motion, I would not grant it. Based on my present
understanding, I think that categories (1) and (2) do not need to be limited to a single reference.
I am less clear on the third category.
Thus, the parties should be prepared to address the motion in limine at the pretrial
conference.
IT IS SO ORDERED this 20th day of April 2022.
/s/ Richard G. Andrews_______
United States District Judge

1

I am not persuaded by Plaintiff’s argument that Dr. Lepore’s report fails to address
motivation to combine and reasonable expectation of success with respect to the prior art
disclosures. (D.I. 258 at 9-10). Dr. Lepore’s discussion of a POSA’s motivation and expectation
of success in modifying what was disclosed in the prior art to form the claimed compound
provides a sufficient basis for his obviousness opinion. (D.I. 259-1 Ex. A ¶¶ 234-299; see In re
Ethicon, Inc., 844 F.3d 1344, 1349-51 (Fed. Cir. 2017).
The other issues raised in the Daubert motion, particularly at D.I. 258 at 11-13, can be
raised by objection at trial should Dr. Lepore offer irrelevant testimony.
Page 2 of 2