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DAIICHI PHARMACEUTICAL CO. v. APOTEX

November 1, 2005.

DAIICHI PHARMACEUTICAL CO., LTD. and DAIICHI PHARMACEUTICAL CORPORATION, Plaintiffs,
v.
APOTEX, INC. and APOTEX CORP., Defendants.



The opinion of the court was delivered by: WILLIAM BASSLER, District Judge

MEMORANDUM OPINION

Defendants Apotex, Inc. and Apotex Corp. (collectively as "Apotex" or "Defendants") filed two motions in limine: (1) to exclude the expert report and testimony of Richard Killworth; and (2) to exclude the expert report and testimony of Dr. Phillip Beutel.

Plaintiffs Daiichi Pharmaceutical Co. Ltd., and Daiichi Pharmaceutical Corporation (collectively as "Daiichi" or "Plaintiffs") filed a motion in limine to exclude or limit the expert testimony of Joseph Robinson.

  For the reasons set forth below, Defendants' motion is denied, and Plaintiffs' motion is denied.

  I. DISCUSSION

  Rule 702 of the Federal Rules of Evidence, which governs expert testimony, provides:
If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.
  Under the Federal Rules of Evidence, the judge has a gatekeeping responsibility to "ensure that any and all scientific testimony or evidence admitted is not only relevant but reliable." Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 589 (1993). The purpose of the gatekeeper function "is to make certain that an expert, whether basing testimony upon professional studies or personal experience, employs in the courtroom the same level of intellectual rigor that characterizes the practice of an expert in the relevant field." Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 152 (1999). In Elcock v. Kmart Corp., 233 F.3d 734 (3d Cir. 2000), the Third Circuit held that "before an expert witness may offer an opinion pursuant to Rule 702, he must first be qualified by virtue of specialized expertise." 233 F.3d at 741. While the Circuit employs a liberal standard of qualifying experts, an expert's testimony may, nonetheless, be excluded if his specialized experience is in a field or specialty that is not directly on point with the matter before the court. Elcock, 233 F.3d at 742; see also Aloe Coal Co. v. Clark Equip. Corp., 816 F.2d 110 (3d Cir. 1987). An expert's conclusion may be drawn from a set of observations based on extensive and specialized experience, but his opinion must be more than mere speculation. See Daubert, 509 U.S. at 590; Elcock, 233 F.3d 745. If it is determined that the expert's opinion has a reliable basis in the knowledge and experience of his discipline and is relevant to the matter before the court, the expert is permitted wide latitude to offer opinions, including those that are not based on firsthand knowledge or observation. Daubert, 509 U.S. at 592; Kumho Tire, 526 U.S. at 148.

  A. Richard Killworth

  Apotex requests that the Court exclude the expert testimony of Richard Killworth, arguing that he does not qualify as an expert witness under Fed.R.Evid. 702. Defendants contend that Mr. Killworth has limited experience at the U.S. Patent and Trademark Office ("PTO") and that he is unfamiliar with the regulations enacted since his three years' employment at the PTO from 1967 through 1970. Additionally, Apotex argues that Mr. Killworth has no "specialized knowledge" because he was not employed at the PTO at the time of the prosecution of Daiichi's U.S. Patent No. 5,401,741 ("the '741 patent").

  Apotex's arguments are not credible. It is not necessary that Mr. Killworth have worked at the PTO during a specific time frame to opine on PTO practice and procedure. The Court finds no support for this contention. The plain language of Rule 702 clearly provides that work experience at a certain period in time is not a determining factor in qualifying a witness as an expert. Rule 702 requires that an expert witness have specialized knowledge, the basis of which "can be practical experience as well as academic training and credentials." Elcock v. Kmart Corp., 233 F.3d 734, 741 (3d Cir. 2000). Mr. Killworth qualifies as an expert because of his experience with the PTO in combination with the specialized skills and knowledge he has gained from his extensive work experience in the field of patent law.

  Mr. Killworth has over 35 years' experience in patent law as a patent examiner, law clerk and technical advisor to Judge Almond of the United States Court of Customs and Patent Appeals, and as a registered patent attorney. Kidd Decl., Exhibit A. In addition, he has taught patent law and procedure at numerous law schools and as a CLE instructor, and he has extensively published articles on patent law. Id.; Daiichi Opp. Br., p. 2. In his teaching capacity, he has lectured on the requirements for satisfying the duty of candor during the prosecution of patents. Killworth Deposition on Dec. 8, 2004, at 29:22-25. Clearly, Mr. Killworth has specialized knowledge and has kept informed of new requirements and changes in patent law, which, in addition to his work experience with the PTO, qualifies him as an expert on the practice and procedures of the PTO.

  "Under Rule 702, an expert can be employed if his testimony will be helpful to the trier of fact in understanding evidence that is simply difficult, though not beyond ordinary understanding." United States v. Downing, 753 F.2d 1224, 1229 (3d Cir. 1985) (internal citations omitted). The trial judge has broad discretion in admitting expert evidence. See Salem v. United States Lines Co., 370 U.S. 31, 35 (1962). The Court will allow Mr. Killworth's testimony because it is relevant and it will be beneficial to the Court's understanding of the technical requirements of patent prosecution.

  B. Doctor Phillip Beutel

  Apotex also seeks to exclude the expert testimony of Doctor Phillip Beutel since he does not qualify as an expert under Fed.R.Evid. 702 on the subject of the commercial success of Daiichi's patented product, FLOXIN® Otic ("Floxin").*fn1 Apotex contends that Dr. Beutel should be barred from testifying because his report and opinion are primarily based on information provided to him by Daiichi "with virtually no independent or objective investigation or verification of the information provided." Apotex Br., p. 6 (emphasis in original). Apotex argues Dr. Beutel's opinions and testimony are not the product of reliable principles and methods and, furthermore, he lacks the experience necessary to form his conclusions.

  Dr. Beutel is an economist and Vice President at National Economic Research Associates, an economic consulting firm that evaluates the market for patented inventions, calculations of economic damages, and the valuation of intellectual property. Livaccari Decl., Exbt. B at 2. Dr. Beutel has also ...


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