United States District Court, D. New Jersey
November 1, 2005.
DAIICHI PHARMACEUTICAL CO., LTD. and DAIICHI PHARMACEUTICAL CORPORATION, Plaintiffs,
APOTEX, INC. and APOTEX CORP., Defendants.
The opinion of the court was delivered by: WILLIAM BASSLER, District Judge
Defendants Apotex, Inc. and Apotex Corp. (collectively as
"Apotex" or "Defendants") filed a motion in limine to preclude
Plaintiffs Daiichi Pharmaceutical Co. Ltd., and Daiichi
Pharmaceutical Corporation (collectively as "Daiichi" or
"Plaintiffs") from presenting evidence or otherwise arguing that
an erroneous publication date for another patent provided in
Daiichi's Information Disclosure Statement was the result of a
For the reasons set forth below, Apotex's motion is denied.
On April 12, 1993, Daiichi submitted an Information Disclosure
Statement, also referred to as a Form PTO-1449 (hereinafter
"IDS"), during the prosecution of its U.S. Patent No. 5,401,741
("the '741 patent"), entitled a "Topical Preparation for Treating
Otopathy." The IDS disclosed the existence of a German patent
identified as DE 3,632,222 ("Grohe '222") and listed the date of
its publication as July 7, 1988 instead of the correct date of
April 7, 1988. Defendants contend that Grohe '222 is important to
the issue of prior art and that the wrong date submitted by
Daiichi makes it appear as though Grohe '222 is not prior art.
Defendants believe that Daiichi will argue that the listed date
was a result of a typographical error and, therefore, seek to
preclude Daiichi from pursuing that argument.
Apotex makes three arguments against Daiichi submitting that
the misstated date was the result of a typographical error.
First, Defendants seek to preclude the testimony of Peter Olexy,
who prepared the IDS, on the grounds that he lacks personal
knowledge of the listing of the Grohe '222 publication date.
Secondly, Apotex contends Richard Killworth's testimony should be
precluded based on his lack of qualification as a "document
review expert."*fn1 Finally, Apotex argues Daiichi should be
precluded from making any claims that the Grohe '222 publication
date was entered by mistake because Daiichi withheld certain
information that could indicate otherwise.
A. Testimony of Peter Olexy
Apotex seeks to preclude any testimony by Peter Olexy as to
whether the incorrect publication date of Grohe '222 on the IDS
was the result of a typographical error. Defendants conclusively
cite the text Fed.R.Evid. 602 as grounds for his exclusion.
Rule 602 states: "A witness may not testify to a matter unless
evidence is introduced sufficient to support a finding that the
witness has personal knowledge of the matter. Evidence to prove personal knowledge may . . . consist of the witness' own
testimony." Apotex argues Mr. Olexy lacks personal knowledge
because, although the IDS was typed in his office, he did not
personally type it. Defendants, however, overlook that Mr. Olexy
testified at his deposition that he authorized the IDS and he
reviewed it prior to submitting it to the United States Patent
and Trademark Office ("PTO"). Based on Mr. Olexy's deposition
testimony, the Court is satisfied that he has sufficient personal
knowledge as to whether the misstated date of Grohe '222 on the
IDS was due to a typographical error.
B. Testimony of Richard Killworth
Apotex argues Daiichi's patent law and PTO procedural expert,
Richard Killworth, should be precluded from testifying that the
Grohe '222 date was the result of a typographical error because
he is not a forensic document review expert. Defendants contend
that Fed.R.Evid. 702 requires Mr. Killworth to have training
and specialized knowledge that would enable him to make such
determinations. Apotex's concerns, however, are misplaced. Mr.
Killworth's proposed testimony is broader than Defendants claim.
Daiichi will introduce Mr. Killworth to testify as to whether
Plaintiffs have met their duty of candor in their submissions to
the PTO. As indicated in his expert report, Mr. Killworth's
opinion is not solely based on the IDS or on Mr. Olexy's
testimony. Mr. Killworth's consideration of a single misstated date submitted along with a multitude of other
information is only a minor component of his overall opinion, and
one that the Court does not find should disqualify him from
The purpose of an in limine motion is to aid the trial
process by enabling the court to rule on the relevancy of certain
evidence in advance of trial to prevent lengthy argument or
interruptions during trial. See Bradley v. Pittsburgh Bd. of
Educ., 913 F.2d 1064, 1069 (3d. Cir. 1990); Palmieri v.
Defaria, 88 F.3d 136, 141 (2d Cir. 1996); Highland Capital
Mgmt., L.P. v. Schneider, 379 F.Supp.2d 461, 467 (S.D.N.Y.
2005). An in limine ruling "is subject to change when the case
unfolds, particularly if the actual testimony differs from what
was contained in the . . . proffer." Luce v. United States,
469 U.S. 38, 41 (1984). Daiichi's Pre-trial Brief and its Opposition
to Defendants' in limine motion provide that Mr. Killworth's
testimony will concern the issue of Plaintiffs' duty of candor to
the PTO and whether that duty was met. There is no indication,
aside from Defendants' bald allegations, that Mr. Killworth will
use forensic evidence to show the Grohe '222 date was in fact a
typographical error. The Court, therefore, will not preclude Mr.
C. Withholding of Privileged Information Regarding the
Apotex argues Daiichi should be barred from asserting that the wrong Grohe '222 publication date was submitted as a result
of a typographical error because Daiichi has either destroyed or
withheld on attorney-client privilege grounds documents necessary
to refute this claim. Defendants principally cite United States
v. Bilzerian, 926 F.2d 1285, 1292 (2d Cir. 1991), for the
holding that "the attorney-client privilege cannot at once be
used as a shield and a sword." In Bilzerian, the Second Circuit
held that a criminal defendant seeking to testify as to his
personal belief and knowledge of securities laws opened the door
to cross-examination that would raise ordinarily protected
conversations he had with his attorney on the subject.
Bilzerian, however, is inapposite here. In that case, the
defendant sought to introduce some communications he had with his
attorney but not all of them. The issue in Bilzerian was
whether the defendant waived the privilege with regard to all
communications; whereas, the core of Defendants argument is that
Daiichi underhandedly withheld certain information.
The Court is not persuaded by Apotex's arguments. The purpose
of the attorney-client privilege "is to encourage full and frank
communication between attorneys and their clients and thereby
promote broader public interests in the observance of law and
administration of justice. The privilege recognizes that sound
legal advice or advocacy serves public ends and that such advice
or advocacy depends upon the lawyer's being fully informed by the client." Upjohn Co. v. United States, 449 U.S. 383, 389
(1981). Plaintiffs cite Knorr-Bremse Systeme Fuer Nutzfahrzeuge
GmbH v. Dana Corp., 383 F.3d 1337, 1344 (Fed. Cir. 2004) (en
banc), for holding that when the attorney-client privilege is
invoked by a party in a willful patent infringement suit, it is
inappropriate for the court to draw an adverse inference. While
certain circumstances, however, may support inferences against
the party claiming the privilege, the fundamental role of the
privilege dictates that it should not be heedlessly swept aside
as Apotex argues. "A negative inference should not be drawn from
the proper invocation of the attorney-client privilege." Chmil
v. Rulisa Operating Co., 20 F.3d 115, 120 (4th Cir. 1994).
There is no indication that Daiichi asserted the privilege in bad
faith. Moreover, Defendants never challenged Daiichi's list of
privileged documents. Defendants provide no basis for concluding
that the documents withheld were in fact not subject to the
attorney-client privilege. III. CONCLUSION
For the foregoing reasons, Apotex's motion in limine is
denied. Daiichi is not precluded from presenting evidence or
arguing that the incorrect publication date as to Grohe '222,
submitted on Daiichi's IDS to the '741 patent, was the result of
a typographical error.
An appropriate Order follows.
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