ELI LILLY AND COMPANY v. DR. REDDY'S LABORATORIES, LTD. et al

Filing 216

ENTRY - 213 Motion to Amend/Correct is granted in part. See entry for details. Signed by Judge Tanya Walton Pratt on 1/12/2018. (MEJ)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
ELI LILLY AND COMPANY,
Plaintiff,
v.
DR. REDDY'S LABORATORIES, LTD.,
DR. REDDY'S LABORATORIES, INC.,
Defendants.

DR. REDDY'S LABORATORIES, INC.,
DR. REDDY'S LABORATORIES, LTD.,
Counter
Claimants,
v.
ELI LILLY AND COMPANY,
Counter
Defendant.

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ENTRY ON DEFENDANTS’ MOTION TO AMEND PARAGRAPH 12 OF THE
COURT’S ENTRY FOLLOWING PRETRIAL CONFERENCE
For the reasons stated below, the Court grants in part, Defendants Dr. Reddy’s
Laboratories, LTD. and Dr. Reddy’s Laboratories, Inc. (collectively, “Dr. Reddy’s”) Motion to
Amend Paragraph 12 of the Court’s Entry Following Pretrial Conference (ECF. No. 212) (Filing
No. 212). Paragraph 12 reads:
12. In its summary judgment ruling, the Court determined as a matter of law that
prosecution history estoppel does not bar Lilly from asserting doctrine of
equivalents. The parties agreed that evidence and the record submitted at summary
judgment is identical to the record and evidence that would be presented at trial on
this issue. Accordingly, no evidentiary presentation is required at trial on this issue.

Id. Dr. Reddy’s argues that while Lilly agreed that its opposition to the summary judgment motion
contained all the evidence Lilly would have elicited at trial on prosecution history estoppel, Dr.
Reddy’s made no concession that its evidence would be so limited. Dr. Reddy’s proposes
Paragraph 12 to read as follows:
12. In its summary judgment ruling, the Court determined as a matter of law that
prosecution history estoppel does not bar Lilly from asserting doctrine of
equivalents. Lilly stated that the evidence it would have elicited at trial on this issue
is the same as that which it submitted on summary judgment.
Plaintiff, Eli Lilly and Company (“Lilly”) opposes the motion to amend Paragraph 12 and does
not agree with Dr. Reddy’s position. (Filing No. 214).
The Court is not persuaded by Dr. Reddy’s argument that it made no concession. At the
pretrial conference, Lilly raised the question of clarification regarding the Court’s summary
judgment ruling on the prosecution history estoppel issue. (Filing No. 210 at 21). 1 Dr. Reddy’s
offered the context in which this question arose, which largely deals with Dr. Reddy’s concern that
Lilly might argue on appeal that it did not get the chance to present evidence to carry Lilly’s burden
of rebutting the presumption of prosecution history estoppel because the Court decided this issue
on summary judgment. Id. at 22. Therefore, Lilly would not be required to present any evidence
on this issue during the trial, and could later strategically use this for a second bite at the apple. Id.
at 23.
While the Court acknowledges that a significant portion of the dialogue focused on what
Lilly might argue in the event of an appeal, the Court specifically asked Dr. Reddy’s for its position

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In terms of your Honor’s summary judgment ruling, Mr. Weiss and I both read you to have decided the
prosecution history estoppel issue, that prosecution history estoppel does not bar Lilly from asserting doctrine of
equivalents. And that is with the proviso that I agreed to with Mr. Weiss, that the evidence we would submit at trial is
the same evidence we would submit at trial is the same evidence we’ve already submitted at summary judgment and
that there’s no new evidence anyone intends to put in on the issue, and it’s ultimately a question of law, not a question
of fact. (Filing No. 210 at 21). (emphasis added).

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on Lilly’s repeated assertions that both parties had put in the evidence they wanted to put in on
this issue.
MR. PERLMAN: -- I don't -- on that issue. So I
don't -- I don't think either of us think there's more to do
on that.
THE COURT: And you agree, that there's nothing more
that the parties would present?
MR. WEISS: Yeah. I think Mr. Perlman has addressed
my -- the real concern that I have -THE COURT: Okay.
MR. WEISS: -- is that there would not be a second
trial because Lilly says, "We didn't put our evidence in."
THE COURT: All right. So Lilly has stated for the
record that you have put your evidence in.
MR. PERLMAN: We have placed in the record the
evidence upon which we would rely.
THE COURT: All right. And both sides have done
that and the Court has issued a ruling on this question of
law.
Filing No. 210 at 24.
Dr. Reddy’s now asserts that it was not making a concession that it had put in all of their
evidence on this issue. Although the time to have made that patently clear would have been when
asked by the Court at the pretrial conference, the Court will accept Dr. Reddy’s suggestion stated
in its Reply, (Filing No. 215 at 5) and Paragraph 12 will be amended to state the following:
In its summary judgment ruling, the Court determined as a matter of law that
prosecution history estoppel does not bar Lilly from asserting doctrine of
equivalents. The parties agreed that evidence and the record submitted at summary
judgment is identical to the record and evidence that would be presented at trial on
this issue. However, the Court clarifies that (i) the record on the issue of prosecution
history estoppel will include both the summary judgment record and the trial record,
and (ii) both parties are permitted, but not required, to supplement the summary
judgment record on the issue of prosecution history estoppel with appropriate trial
evidence.
SO ORDERED.
Date:

1/12/2018

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Distribution:

David M. Krinsky
WILLIAMS & CONNOLLY, LLP
[e-mail]

Jeffery B. Arnold
HOLLAND & KNIGHT LLP
[e-mail]

Andrew Lemens
WILLIAMS & CONNOLLY LLP
[e-mail]

Stephen E. Arthur
HARRISON & MOBERLY
(Indianapolis)
[e-mail]

Merri C Moken
HOLLAND & KNIGHT LLP
[e-mail]

Christopher T Berg
WILLIAMS & CONNOLLY LLP
[e-mail]

Rory O'Bryan
HARRISON & MOBERLY
(Indianapolis)
[e-mail]

Jan M. Carroll
BARNES & THORNBURG, LLP
(Indianapolis)
[e-mail]

Charles E. Oswald, IV
HARRISON & MOBERLY
(Indianapolis)
[e-mail]

Anne N. DePrez
BARNES & THORNBURG LLP
(Indianapolis)
[e-mail]

Adam L. Perlman
WILLIAMS & CONNOLLY LLP
[e-mail]

Galina I. Fomenkova
WILLIAMS & CONNOLLY LLP
[e-mail]

Alec T. Swafford
WILLIAMS & CONNOLLY LLP
[e-mail]

Bruce Roger Genderson
WILLIAMS & CONNOLLY LLP
[e-mail]

Charles A. Weiss
HOLLAND & KNIGHT LLP
[e-mail]

Dov P. Grossman
WILLIAMS & CONNOLLY, LLP
[e-mail]

Eric H. Yecies
HOLLANDS & KNIGHT LLP
[e-mail]

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