IMPAX LABORATORIES, INC. v. ZYDUS PHARMACEUTICALS USA, INC. et al

Filing 211

OPINION and ORDER denying 196 Defendants' Motion in Limine; denying 198 Plaintiff's Motion in Limine. etc. Signed by Judge Stanley R. Chesler on 3/24/2020. (dam, )

UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
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:
:
Plaintiff,
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v.
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ZYDUS PHARMACEUTICALS (USA), :
INC. et al.,
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Defendants.
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____________________________________:
IMPAX LABORATORIES, INC.,

Civil Action No. 17-13476 (SRC)

OPINION & ORDER

CHESLER, U.S.D.J.
This matter comes before the Court on two motions in limine, one by Plaintiff Impax
Laboratories, Inc. (“Impax”), the other by Defendants Cadila Healthcare Ltd. and Zydus
Pharmaceuticals (USA), Inc. (collectively, “Zydus”). For the reasons that follow, both
motions will be denied.
This case arises from a patent infringement dispute involving a pharmaceutical patent,
U.S. Patent No. 9,089,608 (“the ’608 patent”).

Claim 21 of this patent is at issue.

The

preamble of claim 21 states: “A controlled release oral solid formulation of levodopa having a
median levodopa plasma or serum concentration profile comprising:” Zydus moves to bar
expert testimony at trial on the subject of the method a POSA would use to generate a median
plasma or serum concentration profile.

Zydus argues that such testimony is improper as a new

area of claim construction, not previously disclosed.
Impax, in opposition, states that it will not use such testimony to argue any claim
construction.

Rather, Impax contends, it will offer such testimony to counter Zydus’s

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contention that the patent is void for indefiniteness.
The parties have thus resolved this dispute without Court intervention.

Zydus has

moved to bar the use of testimony to construe the preamble of claim 21, and Impax has
declared that it will not offer any testimony for that purpose.

Zydus’ motion in limine will be

denied as moot.
Impax moves in limine to bar expert testimony on matters and theories not disclosed in
the experts’ reports.

Impax states that it has seen “hints” that Zydus may attempt to do so.

Zydus, in opposition, contends that this is a matter better addressed at trial, and this Court
agrees.

The parties all know that, at trial, the Court will not admit expert testimony that has

not been previously and properly disclosed.

This will be a bench trial, and the Court will

cross this bridge if and when it comes to it.

Impax’s motion in limine will be denied without

prejudice, and may be renewed at trial.
For these reasons,
IT IS on this 24th day of March, 2020
ORDERED that Plaintiff’s motion in limine (Docket Entry No. 198) is DENIED
without prejudice, and may be renewed at trial; and it is further
ORDERED that Defendants’ motion in limine (Docket Entry No. 196) is DENIED.

s/ Stanley R. Chesler
Stanley R. Chesler, U.S.D.J.

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