JANSSEN PHARMACEUTICALS, INC. et al v. ACTAVIS ELIZABETH LLC et al

Filing 364

MEMORANDUM OPINION AND ORDER denying 302 Motion in Limine. Signed by Judge Claire C. Cecchi on 2/22/2016. (seb)

NOT FOR PUBLICATION
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY

Civil Action No. 2:13-cv-04507
IN RE DEPOMED PATENT LITIGATION

:

MEMORANDUM OPINION
AND ORDER

CECCHI, District Judge.

This matter comes before the Court by complaint of Plaintiffs Depomed, Inc. and
Grünenthal GmbH (collectively, “Plaintiffs”) against Defendants Actavis Elizabeth LLC
(“Actavis”), Alkem Laboratories Limited (“Alkem”), and Roxane Laboratories, Inc. (“Roxane”)
(collectively, “Defendants”).

This case concerns the validity, enforceability, and alleged

infringement of United States Patent Nos. RE39,593 (“the ‘593 patent”), 7,994,363 (“the ‘364
patent”), and 8,536,130 (“the ‘130 patent”), which are alleged to cover Plaintiffs’ tapentadol
hydrochloride products, sold as NUCYNTA® and NUCYNTA® ER, and uses thereof. Trial is
scheduled to commence on March 9, 2016.
Presently pending before the Court are motions in limine to preclude the introduction of
certain evidence at trial. Specifically pending is one motion in limine filed by Plaintiffs (ECF No.
302), one motion in limine filed by Defendants (Case No. 14-3941, ECF No. 157), and one Daubert
motion filed by Defendants (Case No. 13-3941, ECF No. 150) to preclude the introduction of
certain expert testimony.’

Pursuant to this Court’s Order dated February 22, 2016, the motions in limine filed at ECF
Nos. 301 and 304 are no longer pending.
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Having considered all of the submissions filed in connection with these motions, and
having held a conference concerning the motions on February 8, 2016, the Court makes the
following determinations with respect to the motions in limine.
I.

ECF No. 302 Plaintiffs’ Motion in Limine to exclude evidence and argument
regarding references that are not prior art
-

Plaintiffs bring this motion in limine to exclude evidence and argument regarding
references that they allege are not prior art to the ‘130 patent. For the following reasons, the motion
is denied.
A motion in limine is designed to narrow evidentiary issues for trial and to eliminate
unnecessary interruptions during trial. Bradley v. Fittsbitrgh Rd. OfEduc., 913 F.2d 1064, 1069
(3d Cir. 1990).

The purpose of a motion in limine is to bar “irrelevant, inadmissible, and

prejudicial issues from being introduced at trial, thus narrow[ing] the evidentiary issues for trial.”
Id. (internal quotation marks omitted). However, “[t]he Federal Rules of Evidence embody a
strong and undeniable preference for admitting any evidence having some potential for assisting
the trier of fact.” Holbrook v. Lykes Bros. Steamship Co., Inc., 80 f.3d 777, 780 (3d Cir. 1996)
(internal quotation marks omitted). “An in limine motion is not a proper vehicle for a party to ask
the Court to weigh the sufficiency of the evidence to support a particular claim or defense, because
that is the function of a motion for summary judgment, with its accompanying and crucial
procedural safeguards.” Bowers v. NCAA, 563 F. Supp. 2d 508, 532 (D.N.J. 2008) (internal
quotation marks omitted).
Whether a reference constitutes prior art is a question of law, with underlying issues of
fact. See Typeright Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1157 (Fed. Cir. 2004); In
re Epstein, 32 F.3d 1559, 1564 (Fed. Cir. 1994); Fanduit Corp. v. Dennison Mfg. Co., 810 F.2d
1561, 1568 (Fed. Cir. 1987). Plaintiffs’ motion asks this Court to summarily resolve that question
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of law in its favor and preclude Defendants from presenting evidence on the relevant underlying
factual issues.
Specifically, Plaintiffs’ motion is directed to excluding evidence and argument related to
three references that potentially invalidate the patent. A threshold legal question on that issue is
whether the three references are prior art. Plaintiffs assert, and proffer evidence, that the references
at issue are the work of the inventors of the patent and were published less than one year before
the patent’s filing date. Thus, Plaintiffs argue, the references cannot be prior art under either 35
U.S.C.

§ 102(a) or 102(b)).
Defendants’ response disputes the factual underpinnings of Plaintiffs’ assertions, and

counters with evidence that the three references were not solely the work of the inventors.
Moreover, Defendants argue, these evidentiary issues present questions of fact inappropriate for a
motion in limine. Plaintiffs’ reply brief addresses the factual arguments, but fails to explain why
this issue is appropriately decided as a motion in limine to exclude evidence, rather than as a
question that requires weighing the evidence.
This litigation will conclude with a bench trial, currently scheduled to begin on
March 9, 2016. At trial, the parties will have the opportunity to present evidence pertaining to all
matters that must be resolved by the Court.

The Court will determine whether these three

references are prior art at the appropriate time. Plaintiffs’ motion is denied.
II.

Case No. 14-3941, ECF No. 155 Defendants’ Motion in Limine to preclude
Plaintiffs from relying on post-filing data to demonstrate utility
—

Defendants bring this motion in limine to preclude Plaintiffs from relying on post-filing
data to demonstrate the utility of the ‘593 patent’s asserted claims. For the reasons stated below,
the motion is denied.
As this case will conclude with a bench trial, there is no risk of inadmissible evidence
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improperly influencing a jury. Accordingly, there is no need for the Court to entirely preclude the
presentation of evidence. During trial, the Court will consider the admissibility of all of the
evidence and accord each piece of evidence its due weight.
III.

Case No. 13-3941, ECF No. 150 Defendants’ Daubert Motion
-

Defendants bring this Daubert motion to preclude Plaintiffs’ technical experts from
providing legal opinions about patent law standards. For the reasons stated below, the motion is
denied.
The federal Rules of Evidence, in conjunction with the Supreme Court’s decision in
Daubert v. Merrell Dow Pharms, 509 U.S. 579 (1993), “assign[] to the district court a preliminary
gatekeeping function

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requiring the court to act as a specialized fact-finder in determining

whether the methodology relied upon by an expert witness is reliable.” Etcock v. Kmart Coip.,
233 F.3d 734, 751 (3d Cir. 2000). However, in the context of a bench trial, “there is less need for
the gatekeeper to keep the gate when the gatekeeper is keeping the gate only for himself.” United
States v. Brown, 415 F.3d 1257, 1269 (11th Cir. 2005). “Thus, a district court conducting a bench
trial may admit evidence during the trial, subject to the understanding that the court may later
exclude it or disregard it if it turns out not to meet the standards for reliability and relevancy
established by Rule 702.” Warner Chilcott Labs. Ir., Ltd. v. Impax Labs., Inc., Case No. 08-6304,
2012 U.S. Dist. LEXIS 60386, at *68, (D.N.J. Apr. 30, 2012). In this case, the Court will allow
the presentation of Plaintiffs’ expert testimony and will disregard any testimony that is unreliable
and irrelevant.

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Accordingly,
IT IS on thisday of February, 2016,
ORDERED that Plaintiffs’ Motion in Limine (ECF No. 302) is DENIED; and it is further
ORDERED that Defendants’ Motion in Limine (Case No. 14-3941, ECF No. 155) is
DENIED; and it is further
ORDERED that Defendants’ Daubert Motion (Case No. 14-3941, ECF No. 150) is
DENIED.

SO ORDERED.

CLAIRE C. CECCHI, U.S.D.J.

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