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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 …

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

Bone Care Int’l, LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Sep. 30, 2010) (Dow, J.)
Judge Dow issued an Order resolving the parties’ dispute in the pre-trial joint status report regarding the order of proofs at trial, in light of defendants’ stipulation of infringement. The Court ordered that:
Defendant would present its burden of proof evidence regarding invalidity first, citing Howard T. Markey, On Simplifying Patent Trials, 116 F.R.D. 369 (1987).
Plaintiffs will then respond to defendants’ invalidity case and present evidence of any secondary considerations.
Defendants will then be allowed to respond to the secondary consideration proofs and rebut, as appropriate, plaintiffs’ validity proofs.
Plaintiffs will be allowed a rebuttal case regarding its secondary consideration.
The Court noted, however, that it would use its broad discretion pursuant to Fed. R. Evid. 611(a) to prevent either party from sandbagging the other with its respective rebuttal case.
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Continue Reading Court Exercises Discretion to Avoid “Sandbagging” Rebuttal Cases

Bone Care Int’l, LLC v. Pentech Pharma., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Jul. 16, 2010) (Ashman, Mag. J.).
Judge Ashman granted plaintiffs’ motion to strike defendants’ late-filed expert declaration. The Court previously held that discovery in this case was long closed and that “enough [was] enough.” The Court, therefore, granted the motion to strike defendants’ expert declaration filed with a Daubert motion for three reasons:
The Court’s February 9, 2010 Order holding that “enough [was] enough” regarding discovery was still in effect.
Plaintiff would suffer prejudice from defendants’ late-filed expert declaration with trial “looming.”
Defendants had the information required in December 2009, before discovery closed.
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Continue Reading Enough Really is Enough: Court Strikes Expert Declaration

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.”
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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.
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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. Apr. 23, 2010) (Dow, Jr.).

Judge Dow granted in part plaintiffs’ motion to dismiss plaintiff’s inequitable conduct affirmative defenses and corresponding counterclaim in this patent case related to a treatment for hyperthyroidism. The Court dismissed defendants’ defenses and claims based…

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