DSM IP Assets, B.V. et al v. Lallemand Specialties, Inc. et al

Filing 231

ORDER. Signed by District Judge William M. Conley on 04/25/2018. (DPM)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
DSM IP ASSETS, B.V. & DSM BIO-BASED
PRODUCTS & SERVICES, B.V.,
Plaintiffs and Counter-Defendants
v.

ORDER
16-cv-497-wmc

LALLEMAND SPECIALTIES, INC. &
MASCOMA LLC,
Defendants and Counterclaimants.
The court held a final pretrial conference today, hearing argument on defendants’
motion for reconsideration and reserved motions in limine, and directing the parties to file
supplemental briefing on certain issues. The purpose of this order is to memorialize those
rulings.
IT IS ORDERED that:
1) DSM’s MIL No. 6 is GRANTED, except that defense counsel may introduce the
fact of Professor Alper’s taking over Professor Stephanopoulos’s role in this case
and what he examined to begin his work. If Professor Stephanopoulos’s name
comes up, the jury will be informed that a severe illness necessitated his
replacement with Professor Alper.
2) The reserved portion of Lallemand’s MIL No. 3 is GRANTED as moot.
3) As to the reserved portion of Lallemand’s MIL No. 5, plaintiffs may have until
Tuesday, May 1, 2018, to file a brief proffer regarding Firestart’s relevance to
this case, if any. Lallemand may respond by May 3. Otherwise, plaintiffs’ expert
may rely on LAL00198968 only as evidence that Lallemand believed that DSM
might become a competitor with respect to industrial GMO yeast.
4) Further, defendants’ concerns about late production of documents are moot at
this point in light of plaintiffs’ representation that the produced documents only
concern Firestart.
5) The court clarified that under its ruling on DSM’s MIL No. 3, defendants may
introduce evidence related to the proper use of the Blomberg assay. The court

will reconsider defendants’ ability to argue that Blomberg assay is capable of
measuring GPD2 activity, as opposed to GPD1 activity or a combination of
GPD1 and GPD2 activity.
6) Contrary to the written opinion (dkt. #228), Lallemand’s MIL No. 14 is
GRANTED, unless defendants open the door.
7) Lallemand may renew its MIL No. 13 (to trifurcate) at the end of the liability
phase at trial.
8) At trial, motions in limine result in standing objections; parties do not need to
object again at trial if previously denied in the court’s MIL rulings.
9) Plaintiffs will have until Tuesday, May 1, to address whether the court may
exercise discretion in deciding whether Aaron Argyros may be called adversely
live, rather than be presented via video deposition designations under Rule
32(a)(3) as a manager of an opposing party.
10)
Defendants shall have until the end of the day on Friday, April 27, to brief
and propose changes to the introductory jury instructions. Plaintiffs shall have
until the end of the day on Monday, April 30, to respond.
11)
Plaintiffs may have until the end of the day Friday, April 27, to propose
changes and brief the last two sentences in the prior art and obviousness closing
instructions. Defendants shall have until the end of the day on Monday, April
30, to respond.
12)
The parties shall advise the court by the end of the day on Friday, April 27,
if they agree on removing the court’s third claim construction from the closing
instruction.
13)
Plaintiffs may proffer to the court what secondary conditions of
nonobviousness they intend to offer at trial by Monday, April 30. Defendants
may respond by Wednesday, May 2.
14)
As the court noted, it would like to provide a basic binder of materials to the
members of the jury, which would include the patent-in-suit and an overview of
the science. The court will circulate to the parties a PowerPoint presentation on
which the parties will be provided an opportunity to comment. The parties shall
then advise the court by 4:30 p.m. on Tuesday, May 1, if they are able to agree
on a basic scientific presentation to show to the jury. If the parties are able to
reach agreement, they have until Wednesday, May 2 to submit their joint
presentation.
15)

The parties agree that only Claim 1 will be at issue for the jury.

2

16)
The statement that Professor Winge’s articles have been cited over 17,000
times in his expert narrative is STRUCK because that is difficult to document.
If defendants want to make a proffer in support of this claim, they may do so by
Wednesday, May 2.
17)
References to the number of times Green testified are STRUCK from his
expert narrative.
18)
Plaintiffs’ proposed statements about Alper and David being recognized
experts in their fields are STRUCK.
19)
The parties will continue to meet and confer as to whether Lallemand’s
newest product can be addressed in this trial.
20)
Fact witnesses, but not experts, will be sequestered throughout trial, other
than the parties’ designated corporate representatives.
Entered this 25th day of April, 2018.

BY THE COURT:
/s/
__________________________________
WILLIAM M. CONLEY
District Judge

3