Duramed Pharmaceuticals, Inc. v. Watson Laboratories, Inc. et al

Filing 373

ORDERED that P's # 350 Motion to strike is GRANTED in-part and DENIED in-part in accordance with this order. Signed by Judge Larry R. Hicks on 5/17/2012. (Copies have been distributed pursuant to the NEF - DRM)

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UNITED STATES DISTRICT COURT

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DISTRICT OF NEVADA

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DURAMED PHARMACEUTICALS, INC.,
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Plaintiff,
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v.
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WATSON LABORATORIES, INC.,
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Defendant.
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3:08-cv-0116-LRH-RAM
ORDER

Before the court is plaintiff Duramed Pharmaceuticals, Inc.’s (“Duramed”) motion to strike

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portions of defendant Watson Laboratories, Inc.’s (“Watson”) motion for summary judgment

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(Doc. #3351). Doc. #350. Watson filed a response (Doc. #358) to which Duramed replied

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(Doc. #363).

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I.

Facts and Background

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Plaintiff Duramed is a pharmaceutical company that researches, patents, commercializes,

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markets, and distributes brand name pharmaceutical drugs. Watson is a pharmaceutical company

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that develops generic versions of name brand drugs for the market. Watson filed, and was approved

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for, a generic drug application with the FDA to make and market a generic equivalent to one of

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Duramed’s products.

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Refers to the court’s docket number.

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On March 6, 2008, Duramed filed a patent infringement action against Watson. In its

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answer, Watson challenged the validity of Duramed’s patent. Doc. #68. In response, Duramed

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moved for summary judgment on Watson’s affirmative defense of patent invalidity. Doc. #175. The

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court granted Duramed’s motion holding that its patent was not obvious. Doc. #214. Watson

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appealed (Doc. #219), and the Federal Circuit reversed this court’s order (Doc. #229).

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Subsequently, Watson filed a motion for summary judgment on the issue of obviousness.

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Doc. #335. In its motion, Watson relied on (1) deposition testimony from Dr. Lee P. Shulman

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(“Dr. Shulman”), an expert witness for Duramed in another patent infringement action filed in

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New Jersey, and (2) the factual findings of the Federal Circuit’s order (Doc. #229). Thereafter,

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Duramed filed the present motion to strike. Doc. #350.

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II.

Discussion

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A. Dr. Shulman

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In its motion for summary judgment, Watson cites to the deposition of Dr. Shulman,

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Duramed’s expert in a separate New Jersey action, to support its contention that Duramed’s patent

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is invalid as obvious. In response, Duramed argues that all references to Dr. Shulman’s deposition

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testimony from the New Jersey action should be stricken because Dr. Shulman was not disclosed

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by either party as an expert witness in this action as required by Rule 26(a)(2)(A) of the Federal

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Rules of Civil Procedure. See Doc. #350. The court agrees.

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Federal Rule of Civil Procedure 37 states in pertinent part that “if a party fails to provide

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information or identify a witness as required by Rule 26(a) or (e), the party is not allowed to use

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that information or witness to supply evidence . . ., unless the failure was substantially justified or

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is harmless.” FED . R. CIV . P. 37(c)(1). Here, it is undisputed that Dr. Shulman was not identified as

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an expert witness by either party. Watson’s only basis for allowing Dr. Shulman’s deposition

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testimony is that he is Duramed’s expert in another case. However, the disclosure of Dr. Shulman

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in that litigation does not negate the requirement that he be disclosed as an expert in this action.

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Accordingly, the court shall grant Duramed’s motion to strike Dr. Shulman’s deposition. However,

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rather than strike individual lines from Watson’s motion for summary judgment, the court shall

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simply disregard Dr. Shulman’s deposition in considering Watson’s motion.

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B. Federal Circuit Opinion

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Duramed also argues that Watson is improperly relying on certain factual findings of the

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Federal Circuit in support of its motion for summary judgment. Duramed contends that the Federal

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Circuit’s factual findings and opinions are inadmissible hearsay and should be stricken by the court.

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The court disagrees.

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The Federal Circuit’s opinion, including all legal conclusions, is binding upon this court.

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The court finds that the Federal Circuit’s interpretation of the relevant prior art, and its conclusions

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about the teaching of that art, are legal conclusions by which this court must abide. Accordingly,

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the court shall deny Duramed’s motion to strike as to the Federal Circuit’s order.

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C. Exhibit Citations

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Finally, Duramed argues that Watson makes improper, generalized citations to the record,

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rather than specific citations as required by the Local Rule 56-1. See Doc. #350. The court has

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reviewed Watson’s citations and finds that they cite to the record with sufficient particularity for

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the court to find the relevant evidentiary support for Watson’s arguments. Therefore, the court shall

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deny Duramed’s motion as to this issue.

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IT IS THEREFORE ORDERED that plaintiff’s motion to strike (Doc. #350) is GRANTED
in-part and DENIED in-part in accordance with this order.

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IT IS SO ORDERED.

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DATED this 17th day of May, 2012.

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__________________________________
LARRY R. HICKS
UNITED STATES DISTRICT JUDGE

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