Bone Care Int’l., LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Mar. 22, 2012) (Dow, J.).

Judge Dow issued his opinion, findings of fact and conclusions of law following a bench trial conducted during October and November 2010 on the issues of validity and enforceability of plaintiffs’ patent for

Genzyme Corp. v. Cobrek Pharms., Inc., No. 10 C 112 (N.D. Ill. Feb. 17, 2011) (Dow, J.).
Judge Dow used the Court’s inherent power to grant plaintiff Genzyme’s motion to stay the case pending the reexamination of Genzyme’s patent related to its pharmaceutical drug Hectorol. The Patent Office had already issued an Office Action rejecting all of Genzyme’s claims. The Court also noted that reexams were valuable, during the initial stages of a case, because they either remove an issue for trial, when claims are rejected, or focus the issue by providing the Court with the PTO’s expert view on the claim issues. The Court noted that in this case only limited discovery had occurred — no depositions had been taken — and a trial date had not been set. Finally, it was the Defendant that filed the reexamination request and then opposed the motion to stay. And to the extent that the delay created by a stay would harm the Defendant, that was mitigated by the fact that the case(s) had already been pending for three years.

Continue Reading ANDA Case Stayed Pending Reexam

Bone Care Int’l, LLC v. Pentech Pharm., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Sep. 30, 2010) (Dow, J.).
Judge Dow decided the parties motions in limine in this patent infringement dispute. Of particular note, the Court made the following rulings:
The Court allowed defendants’ anticipation and written description invalidity defenses even though they were not properly disclosed or supported in defendants’ interrogatory responses or expert reports. The anticipation defense was so intertwined with the disclosed obviousness defense that there was no prejudice. And the parties argued the written description defense as part of a summary judgment motion. The Court, however, excluded other undisclosed invalidity defenses.
The Court allowed plaintiffs to present evidence regarding the priority date of one of its claims became there was a question of fact as to whether the claim had priority based upon an earlier, related application.
Plaintiffs were allowed to call defendants’ expert witnesses in plaintiffs’ case-in-chief so long as the testimony was not just cumulative. Plaintiffs could also call defendants’ experts. Even if defendants chose not to call them Defendants cannot turn an expert into a non-testifying expert pursuant to Fed. R. Civ. P. 26(b)(4)(B), once the expert issued a report and was listed on defendants’ witness list.
A parties’ witnesses should be called live whenever possible, unless the witness is unavailable.
Defendants’ expert was allowed to add references after the expert report deadline and after his deposition, by identifying the references in a deposition errata sheet and in corrected expert report pages. The references did not significantly change the experts analysis. And plaintiffs questioned the expert about the references during his deposition. So, plaintiffs were not prejudiced.
Defendants were also allowed to rely upon their experts’ rebuttal and supplemental reports became the arguments in the reports all properly responded to Plaintiffs’ reports.

Continue Reading Expert Allowed to Amend Expert Report Via Deposition Errata Sheets

Bone Care Int’l, LLC v. Pentech Pharma., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. June 4, 2010) (Dow. J.)
Judge Dow construed the claims in this patent infringement action related to methods for preventing bone mass loss using vitamin D. As an initial matter, the Court held that the person of ordinary skill in the court was someone in the field of kidney disease with either a Ph.D. or an M.D., adopting plaintiffs’ construction. Defendants’ argued that both a Ph.D. and an M.D. were required, but the parties agreed that the definition did not impact their respective arguments. Of particular interest, the Court construed the following terms:
The Court declined to construe “lowering” or “lowered” because the parties did not contest that the constructions impacted claim scope, and their ordinary meanings were sufficient.
“Serum parathyroid hormone” was construed as “blood concentrations of parathyroid hormone.”
“Suffer from” was construed as “having” consistent with its ordinary meaning. The dictionary drew a distinction between suffering from and suffering with, which is associated with pain or discomfort from a condition.
“Hyperparathyroidism” was construed consistent with medical dictionaries as “increased (i.e., above normal) secretion of PTH by the parathyroid gland.”
“End stage renal disease” was construed as “a disease wherein the patients’ kidneys no longer function at a level necessary to sustain life and thus require chronic dialysis or kidney transplantation.”
“Effective Amount” was construed as “an effective amount of 1a-OH-vitamin D2 to lower and maintain lowered blood concentrations of PTH with a lower incidence of hypercalcemia than is associated with the extant conventional Vitamin D3 treatments.”

Continue Reading Court Construes Claims re Method of Treating Kidney Disease

Bone Care Int’l, LLC v. Pentech Pharm. Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Jul. 16, 2010) (Ashman, Mag. J.).
Judge Ashman granted plaintiffs’ motion to strike defendants’ expert affidavit (the “Affidavit”) in this patent case. The Affidavit was filed in support of defendants’ Daubert motion filed after the close of fact discovery. The Court struck the Affidavit for three reasons:
The Court had already warned the parties regarding discovery that “enough [was] enough.”
The Affidavit, which contained substantive opinions and calculations, would prejudice plaintiffs. Discovery was closed, trial was looming, and plaintiffs would not have had enough opportunity to consult their experts or to file supplemental reports addressing the Affidavit.
Defendants had the information in the Affidavit at least by December 2009. Defendants could have filed the information as part of a timely expert report.

Continue Reading Court Strikes Post-Discovery Expert Declaration

Bone Care Int’l, LLC v. Pentech Pharms, Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Feb. 4, 2010) (Ashman, Mag. J.).
Judge Ashman granted defendants’ motion for a protective order precluding plaintiffs’ proposed supplemental expert reports as untimely filed. Plaintiffs’ supplemental reports sought to respond to alleged improper new material in defendants’ reply expert report. Reasoning that “[e]nough is enough,” the Court granted the motion to avoid an additional round of expert reports by both sides, further delaying resolution of the case. The Court, however, noted that plaintiffs were free to move in limine to exclude any allegedly new or unfair material in defendants’ reply report.

Continue Reading “Enough is Enough:” Court Denies Supplemental Expert Reports

Connetics Corp. v. Pentech Pharms., Inc., No. 07 C 2230, Slip Op. (N.D. Ill. May 8, 2009) (Gottschall, J.).
Judge Gottschall granted defendants’ motion to amend their answers to include new invalidity and unenforceability affirmative defenses and counterclaims in this ANDA patent case involving plaintiff’s patented pharmaceutical LUXIQ. The Court held that the amended answers and counterclaims were appropriate, although they were sought after the Court’s deadline to amend the pleadings for reasons similar to Judge Lienenweber’s analysis in a motion to amend adding the same defenses and claims in a related case — click here to read the Blog’s post on that opinion. Of particular note, the Court held that the delay at issue is delay of the trial, not a party’s delay in seeking to amend. In this case, the Court had recently extended fact discovery. So, plaintiffs had time to seek discovery on the defenses and counterclaims without delaying the trial date.

Continue Reading Motion to Amend Pleadings: Relevant Delay is to Trial Date

Connetics Corp. v. Pentech Pharms., Inc., No. 08 C 2230, Slip Op. (N.D. Ill. May 8, 2009) (Leinenweber, J.).
Judge Leinenweber granted defendants’ motion to amend their answers including new invalidity and unenforceability affirmative defenses and counterclaims in this ANDA patent case involving plaintiff’s patented pharmaceutical OLUX. The Court held that the amended answers and counterclaims were appropriate because they were filed before the Court’s deadline for amended pleadings, even though the parties briefed the motion to amend as if the amendment was sought after the deadline. Furthermore, defendants did not unduly delay in seeking to amend. The motion to amend was filed within several months of depositions in which new information necessary for the amendments was disclosed. And the litigation was still in its early stages so the amendments would not cause any prejudice.

Continue Reading Amended Pleading Filed Before Deadline to Amend Does Not Prejudice

Bone Care Int’l., LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Feb. 2, 2009) (Dow, J.).
Judge Dow denied defendants’ motion to prevent plaintiffs from using their preferred technical experts in this patent case. Pursuant to a Protective Order, plaintiffs notified defendants of their intent to provide three experts with confidential materials. Defendants objected because defendants had previously retained the same experts in a different patent case in the Northern District. The Court noted that disqualifying experts was a “drastic measure” taken only when the party seeking disqualification proves a substantial relationship between any acquired confidential information and the expert’s testimony. The two cases these experts were hired for involve different pharmaceutical formulations for treatment of different conditions. And the experts testified that because of the different technologies, no information gained in defendants’ earlier case could impact the present case or benefit defendants in this case. Additionally, the Court noted that defendants did not have a confidential or privileged relationship with the experts.

Continue Reading Experts Allowed to Testify For and Against Party in Concurrent Cases