Janssen Biotech, Inc. et al v. Celltrion Healthcare Co., Ltd. et al

Filing 476

Judge Mark L. Wolf: AMENDED ORDER entered. MEMORANDUM AND ORDER(Franklin, Yvonne)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS

JANSSEN BIOTECH,

INC.

ET AL,

Plaintiffs,
C.A.

No.

V,

15-10698-MLW
16-11117-MLW

CELLTRION HEALTHCARE CO.
ET AL.,

INC.,

Defendants.

MEMORANDUM AND ORDER (AMENDED AS TO FOOTNOTE 1)

WOLF, D.J.

February 6, 2017

At the hearings on February 7 and 8, 2017, the court intends

to have the parties address first defendants' motion to exclude
the testimony of Drs. Wurm and Butler (Docket No, 339) and next

plaintiff's motion to limit the testimony of Dr. Glacken (Docket
No.

341).

As previously discussed,

the court,

rather than the

experts, will instruct the jury on the law, including providing
interim

instructions

during

trial

to

assist

understanding any admissible expert testimony.

the

jury

in

As the parties

recognize, an expert will not be permitted to provide the jury an
opinion as to legal standards.
Club,

Inc.,

550

F.2d

505,

510

See, e.g., Marx & Co. v. Diners'
{2d Cir.

1977).

Moreover,

any

opinion based on an erroneous understanding of the law will be
excluded because it would not be helpful to the jury.

Evid. 702(a).

See Fed. R.

The parties shall be prepared to address how these

standards apply to the proposed testimony of each of the experts.

In addition, to admit expert testimony, the court must find,
pursuant to Federal Rule of Evidence 104(a), that it is more likely

than not that the expert's methods are reliable and that they have
been reliably applied to the relevant evidence.
among

other

things,

a

persuasive

explanation

This requires,
of

how

reliable

methods are linked to each of the expert's opinions.

See General

Electric v.

Merrill Dow

Joiner,

Pharmaceuticals,
re;

Paoli R.R.

522 U.S.

Inc.,

Pepsi Cola,

(1999);

43 F.3d 1311,

Daubert v.

1317-19

(9th Cir.

Yard PCB Litigation, 35 F.3d 717,

1994); Heller v. Shaw,

V.

136

744-48

167 F.3d 146 (3rd Cir. 1999);

161 F.3d 77,

85

(1st Cir.

1995);

In

(3rd Cir.

Ruiz-Troche

1998); Salzburg et al.

Federal Rules of Evidence Manual (11th Ed.) §702.02.

The parties

shall also be prepared to discuss these principles and cases.^

^ The parties shall particularly be prepared to discuss whether
Dr. Wurm's test results provide Dr. Butler and him with a reliable
basis from which to conclude that the ingredients of the accused

powders, in their allegedly equivalent concentrations, perform
substantially the same function in the accused powders as they do
in the patented invention. See Milward v. Acuity Specialty Products
Group, Inc., 639 F. 3d 11, 15 (1st Cir. 2011); Intendis GmbH v.
Glenmark Pharma Inc., 822 F. 3d 1355, 1360-61 (Fed, Cir. 2016).
More specifically, they shall be prepared to address whether Drs.
Wurm and Butler employed scientifically sound and methodologically
reliable methods in reaching their conclusions that the 29

ingredients that Dr. Wurm added to the claimed powders did not
mask[] large differences in Dr. Wurm's comparisons by performing
overlapping
functions
with
the
12
allegedly
equivalent
ingredients. See Milward, 639 F.3d at 15; Ruiz-Troche, 161 F.3d at
85.

In addition, the parties shall be prepared to inform the court
of the availability of their respective experts for voir dire, if

necessary, during the week of February 20, 2017.

After hearing argument on the motions in limine concerning
the experts,

the court intends to address the questions of the

proper measure of damages and the propriety of injunctive relief

if plaintiffs prevail at trial.

With regard to defendants' recent

contention that plaintiffs lack standing and, therefore, the court
does not have subject-matter jurisdiction, the court discerns an
issue the parties have not addressed.

Even if Janssen's failure to join one of the inventors of the

'083 patent,

Joseph Horwitz,

in its 2015 suit was a

defect in

standing, the Federal Circuit has held that parties can cure such

a defect by joining the absent party.

The Federal Circuit has

permitted parties to do so either with the party's consent under
Federal Rule of Civil Procedure 21 or,

in certain circumstances,

involuntarily under Federal Rule of Civil Procedure 19.
Mentor H/S,

18

Inc. v. Med. Device All.,

(Fed. Cir. 2001)/ STC.ONM v.

See, e.g..

Inc., 240 F.3d 1016, 1017-

Intel Corp.,

754 F.3d 940,

946

Although more difficult to parse, the proposed testimony

of Dr. Glacken raises many similar issues concerning how, if at
all, his methodology is linked to many of his conclusions.
The

parties should be prepared to discuss these issues as well.

(Fed. Cir. 2014). With regard to involuntary joinder under Rule
19, while the Federal Circuit has recently held that, as a general
rule, a co-owner cannot be made an involuntary plaintiff under
Rule 19(a), it has recognized two exceptions to this general rule.

^ STC.ONM, 754 F.3d at 946. One of these exceptions is when the
absent party is obligated by contract to join the infringement
action.

Id.

ordinarily, at least, an amendment adding a new plaintiff
would relate bac)c to the date of the filing of the original

complaint. See Fed. R. Civ. P. 15(c); Bllied Tnternational, Inc.
V. International Longshoremen's Association, AFL-CIO, 814 F.2d 32,
35-6 (1st Cir. 1987). The parties should be prepared to address
whether such an amendment would resolve, or moot, the issue

whether plaintiffs' failure to join Mr. Horowitz initially

preclude them from seelcing lost profits under 35 U.S.C.
§271(e)(6)(B).

After the argument concerning damages, the court will hear

further argument on Hospira's motion for summary judgment. The
court will then consider the disputes concerning jury
instructions, the remaining motions in limine, and matters
relating to jury selection and the conduct of the trial.
AS it does not appear likely that all of the foregoing matters

will be resolved on or before February 8, 2017, the court is

considering conducting further hearings the week of February X3,
2017, and beginning trial on February 20, 2017. The parties shall
be prepared to discuss this as well.

•>

UNITED STATES DISTRICT

A

UDGE^
JUDGE