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Keywords

depositiontestimonymotionpatent

motion

Related Cases

Sunovion Pharmaceuticals Inc. v. Dey Pharma., L.P., Not Reported in F.Supp.2d, 2012 WL 6858144

Facts

Dey Pharma filed a motion for reconsideration regarding the exclusion of Dr. Armstrong's expert report, claiming that the court had erred in applying the burden-shifting framework for proving anticipation. Dey argued that it had met its initial burden by disclosing the Middlemiss patent, which shifted the burden to Sunovion to provide evidence against it. The court acknowledged Dey's recitation of the framework but clarified that Dey was not required to prove the enablement of the Middlemiss patent in its opening expert report. The court ultimately denied Dey's motion in part, allowing some portions of Dr. Armstrong's report while striking others.

Dey contends that the Court ignored the proper burden-shifting framework for proving anticipation and, in doing so, clearly erred in excluding Dr. Armstrong's expert report as untimely, resulting in manifest injustice.

Issue

Did the court err in excluding Dr. Armstrong's expert report as untimely and in its application of the burden-shifting framework for proving anticipation?

Rule

The burden of production in patent cases shifts between parties, where the initial burden lies with the party asserting anticipation to identify prior art, and the burden then shifts to the opposing party to provide evidence to the contrary. Prior art patents are presumed enabled unless the patentee provides evidence to the contrary.

Analysis

The court found that Dey's assertion regarding the burden of proving enablement was incorrect, as Sunovion had not challenged the enablement of the Middlemiss patent. Therefore, Dey was not prejudiced by the court's decision to strike portions of Dr. Armstrong's report that were directed at enablement, as that issue was not in dispute. The court also noted that the expert testimony could include elaboration on the report's contents but not new information introduced for the first time in deposition.

Conclusion

The court granted Dey's motion for reconsideration in part, allowing certain aspects of Dr. Armstrong's report while denying the request to reverse the exclusion of other portions.

Dey's motion for reconsideration is therefore denied to the extent that it asks the Court to reverse itself entirely in striking Dr. Armstrong's report.

Who won?

Sunovion Pharmaceuticals prevailed in part as the court upheld its position regarding the enablement of the Middlemiss patent, clarifying that Dey was not entitled to the full relief it sought. The court's ruling emphasized that Sunovion had not challenged the enablement of the Middlemiss patent, which was a critical factor in the decision to strike portions of Dr. Armstrong's report.

Sunovion largely appears to accept Dey's recitation of the burden-shifting framework, and the Court does as well. But Dey is incorrect about the applicability of this framework to the instant case.

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