UNIVERSITY OF PITTSBURGH OF THE COMMONWEALTH SYSTEM OF HIGHER EDUCTION v. VARIAN MEDICAL SYSTEMS, INC.

Filing 465

MEMORANDUM ORDER RE: Reference to Lack of Opinion Letter from Counsel (Doc. No. 446 at (III)(2)(C). Defendant's objection to Plaintiff presenting "evidence or argument on Varian's decision not to disclose an Opinion of Counsel concerning the '554 patent" is SUSTAINED. See 455 at 5, para. 3. Signed by Judge Arthur J. Schwab on 1/13/2012. (lcb)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
UNIVERSITY OF PITTSBURGH OF THE
COMMONWEALTH SYSTEM OF HIGHER
EDUCATION d/b/a UNIVERSITY OF
PITTSBURGH

2:08-cv-1307
ELECTRONICALLY FILED

Plaintiff,
v.
VARIAN MEDICAL SYSTEMS INC.
Defendant,

MEMORANDUM ORDER RE: REFERENCE TO LACK OF OPINION LETTER
FROM COUNSEL (DOC. NO. 446 at (III)(2)(c))
This Court issued an Order on January 12, 2012, that resolved all of the issues in the
parties‟ Joint Submission Regarding Issues to be Tried to the Jury and Proposed Verdict Slip,
(Doc. No. 446) except for the issue of reference to Varian‟s lack of disclosure of an opinion of
counsel. Doc. No. 459.
In Knorr-Bremse Systeme Fuer Nutzfahrzeuge GMBH v. Dana Corp., 383 F.3d 1337 (Fed.
Cir. 2004) (en banc), the Court held that “no adverse inference that an opinion of counsel was or
would have been unfavorable flows from an alleged infringer's failure to obtain or produce an
exculpatory opinion of counsel.” Id. at 1341. Although such evidence may be admitted in some
cases to be considered as a part of the totality of the circumstances, such as in inducement cases,
it may not be admitted in willfulness trials. World Wide Stationary Mfg. Co., Ltd. v. U.S. Ring
Binder, L.P., No. 07cv1947, 2009 WL 4730342 (E.D. Mo. Dec. 4, 2009) (citing Broadcom Corp.
v. Qualcomm Inc., 543 F.3d 683, 698-99 (Fed. Cir. 2008)).

1

For the reasons discussed above, Plaintiff University of Pittsburgh may not make any
disclosure, or submit evidence, during trial with respect to Defendant Varian‟s lack of an
Opinion of Counsel.
AND NOW, this 13th day of January 2012, IT IS HEREBY ORDERED that
Defendant‟s objection to Plaintiff presenting “evidence or argument on Varian‟s decision not to
disclose an Opinion of Counsel concerning the „554 patent” is SUSTAINED. Doc. No. 455 at 5,
¶ 3.

s/Arthur J. Schwab
Arthur J. Schwab
United States District Judge

cc: All Registered ECF Counsel and Parties

2