United States District Court, S.D. California
ORDER (1) GRANTING IN PART AND DENYING IN PART
PLAINTIFFS’ MOTION IN LIMINE AND (2) DENYING
DEFENDANTS’ MOTION IN LIMINE / DAUBERT MOTION (ECF Nos.
209 & 210)
Hon.
Janis L. Sammartino, United States District Judge
Presently
before the Court are Plaintiffs the Board of Trustees of the
Leland Stanford Junior University and ThermoLife
International, LLC’s Motion In Limine to
Exclude Certain Prior Art-Related Evidence (Plaintiffs’
Motion), (ECF No. 209), as well as Defendants’
Opposition to, (ECF No. 219), and Plaintiffs’ Reply in
Support of, (ECF No. 222), Plaintiffs’ Motion. Also
before the Court are Defendants’ Motion In
Limine / Daubert Motion to Exclude
Plaintiffs’ Expert From Offering Testimony Regarding
Secondary Considerations of Non-Obviousness
(Defendants’ Motion), (ECF No. 210), as well as
Plaintiffs’ Opposition to, (ECF No. 218), and
Defendants’ Reply in Support of, (ECF No. 221),
Defendants’ Motion. The Court held a hearing on these
Motions on July 21, 2016. As explained below, the Court
GRANTS IN PART AND DENIES IN PART Plaintiffs’ Motion
and DENIES Defendants’ Motion.
PLAINTIFFS’
MOTION
The
Plaintiffs ask the Court to preclude Defendants from
introducing various prior art references and combinations
thereof at trial. This District’s Local Rules require
invalidity contentions to include “an explanation of
why the prior art renders the asserted claim obvious, ”
Patent L.R. 3.3(b), which prevents unfair surprise at trial
and allows patentees time to analyze the prior art as it
pertains to particular claims and terms. Similarly, expert
reports must disclose the substance of an expert’s
testimony for direct examination and the bases for those
opinions. See Jenkins v. Bartlett, 487 F.3d 482, 487
(7th Cir. 2007) (“The purpose of the report is to
‘set forth the substance of the direct
examination.’ . . . A party is barred from using at
trial evidence that it failed to disclose ‘without
substantial justification’ as required by Rule 26(a),
unless that failure was harmless.”); Fed.R.Civ.P.
26(a)(2)(B)(i) (expert reports must contain “a complete
statement of all opinions the witness will express and the
basis and reasons for them.”).
The
Court GRANTS IN PART AND DENIES IN PART
Plaintiffs’ Motion and ORDERS as
follows:
1.
References Allowed if Disclosed as to Claim Element:
Where
prior art was disclosed with respect to a particular claim
element, whether in the Defendants’ Amended Invalidity
Contentions, expert report, rebuttal expert report, or expert
deposition, Defendants are not precluded from relying on that
reference as invalidating art with respect to that claim or
claim element. However, Plaintiffs may renew their objections
at trial and explain why, despite the disclosure of the
reference in one of these mediums, they would be prejudiced
and could not cure the prejudice through cross examination.
To the extent that this ruling is more liberal than the
Court’s conclusion on summary judgment (with respect to
the combination of Levere and Mugge as to
claim 10 of the ’459 Patent), the difference is
attributable to the static evidentiary record on summary
judgment, whereas here Plaintiffs will have the opportunity
to explore testimony on cross examination. That is not to say
that particularized disclosure was not required, however.
2.
References Precluded if Not Disclosed as to Claim
Element:
Where
prior art was not disclosed with respect to a particular
claim or claim element in Defendants’ Amended
Invalidity Contentions, expert report, rebuttal expert
report, or expert deposition, Defendants are precluded from
relying on that reference as invalidating art for that claim
element.
3.
Defendants’ Expert is Precluded from Testifying
About Motivations to Combine References That Were Not
Disclosed or Supported by Disclosures in His Expert Report,
Rebuttal Expert Report, or Deposition.[1]
Plaintiffs
devote much of their briefing to arguing Defendants’
expert, Dr. Volek, should not be allowed to testify to
reasons a person of ordinary skill in the art would be
motivated to combine prior art references where those reasons
were not provided in his expert report. Although it is
unclear whether Defendants actually intend to introduce any
such testimony, the Court notes that Defendants’ expert
may not introduce bases for his opinion and may not testify
about reasons or motivations to combine that were not
disclosed in his expert report, rebuttal expert report, or
deposition. See Jenkins, 487 F.3d at 487;
Fed.R.Civ.P. 26(a)(2)(B)(i). By way of example, Dr. Volek is
not precluded from testifying that the disclosure in
Weider’s Arginine & Lysine product would motivate a
person of ordinary skill to rely on other teachings-or
providing greater detail and elaborating on this disclosed
motivation to combine-because this opinion and the basis for
it are outlined in his Expert Report. Dr. Volek would be
precluded, however, from testifying about some other
publication that was not discussed in his report that
suggests combining certain prior art references.
DEFENDANTS’
MOTION
Next,
Defendants ask the Court to preclude Plaintiffs’
expert, Dr. Boger, from testifying regarding the secondary
considerations of nonobviousness.
“‘[T]he
Daubert gatekeeping obligation is less pressing in
connection with a bench trial’ where ‘the
‘gatekeeper’ and the trier of fact [are] one and
the same.’” AngioScore, Inc. v. TriReme Med.,
Inc., 87 F.Supp.3d 986, 1016 (N.D. Cal. 2015) (citing
various cases). The gatekeeping function must still be
performed, however. See Metavante Corp. v. Emigrant Sav.
Bank, 619 F.3d 748, 760 (7th Cir. 2010); see also
Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 596
(1993) (“Vigorous cross-examination, presentation of
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