The opinion of the court was delivered by: Lifland, District Judge
Teva's In Limine Motion No. 1
This case arises out of Teva Pharmaceuticals U.S.A., Inc.'s ("Teva" or "Defendant") alleged infringement of U.S. Patent Nos. 5,466,823; 5,563,165; and 5,760,068 (the "patents-in-suit"), which are held by Pfizer, Inc., Pharmacia Corp., Pharmacia & Upjohn Inc., Pharmacia & Upjohn Company, G.D. Searle & Co., G.D. Searle LLC, Searle LLC (Delaware), and Searle LLC (Nevada) (collectively "Pfizer" or "Plaintiffs"). The patents-in-suit are directed toward celecoxib, the active ingredient in Celebrex, and a broad genus of compounds that includes celecoxib, pharmaceutical compositions including such compounds, and methods of using such compounds.
Before the Court is Teva's in limine motion No. 1, which contains three separate but related arguments. The first argument involves Pfizer's intention to submit evidence it claims will disqualify the Fujisawa European application No. 055,829 ("Fujisawa '829 application) as a prior art reference. The two remaining arguments involve Pfizer's intention to submit evidence aimed at disqualifying the Merck U.S. patent No. 5,474,995 ("Merck '995 patent") as a prior art reference. This Opinion deals exclusively with Teva's first argument. For the reasons stated herein, Teva's motion will be granted in part and denied in part.
In December 2004, Teva served Pfizer with a set of interrogatories that included the following request:
For each claim of the '823, '165 and '068 patents that plaintiff asserts Teva infringes, describe, on a claim by claim basis, the conception and first reduction to practice of each of the alleged inventions recited in the asserted claims, including identification of the date and location of conception and the first reduction to practice of each such alleged invention.
(Decl. of Michael E. Patunas in Support of Teva's in Limine Motion No. 1 (hereinafter, "Patunas Decl."), Ex. A, Interrogatory No. 27.) Pfizer responded to this interrogatory as follows: "Plaintiffs object to this request as premature, unduly burdensome and neither relevant nor reasonably likely to lead to the discovery of admissible evidence." (Id.,Ex. B, Response to Interrogatory No. 27.) Pfizer agreed to "supplement its response" if Teva asserted a combination of prior art references that made an intervening date of conception relevant. (Id.) Pfizer also stated, in response to a separate interrogatory, that celecoxib was first "synthesized" as early as October 4, 1993. (Id.,Ex. B, Response to Interrogatory No. 28.)
Pfizer admits that at some point "[d]uring discovery, Teva disclosed its intent to rely on [the Fujisawa '829 application.]" (Plaintiffs' Opposition to Defendant's in Limine Motion No. 1, at 4.) The Fujisawa '829 application was published on August 11, 1993-nine days after the date on which Pfizer now alleges the inventions at issue were conceived. However, fact discovery ended in January 2006 without any further response by Pfizer regarding the conception date.
On May 5, 2006, Teva served Pfizer with expert reports on obviousness and inequitable conduct, which explicitly disclosed Teva's theory that one could construct a hypothetical pharmacophore based on the Merck '995 patent and the Fujisawa '829 application, and use the '829 application to select 12 compounds embraced by the pharmacophore including celecoxib. (Id. at 6; Declaration of Daniel L. Reisner in Support of Plaintiffs' Opposition to Defendant's in Limine Motions Nos. 1-7 (hereinafter, "Reisner Decl."), Ex. 18 at ¶¶ 127, 149; Reisner Decl. Ex. 46 at ¶¶ 138-144, 158-167.) Several months later, in late August 2006, expert discovery ended.
On September 15, 2006, the parties exchanged drafts of the pre-trial order. In its draft, Pfizer stated that "it conceived the invention claimed in the patents-in-suit at least as early as August 2, 1993 and worked with reasonable diligence continuously through the time it filed for patent protection and, therefore [the Fujisawa '829 application, which was issued subsequent to this date, was] not prior art to the patents in suit." (Petunas Decl., Ex. G at ¶ 9; cf. Roger Schecter and John Thomas, Principles of Patent Law 112 (2d ed.) (explaining that a patentee can remove a reference by demonstrating that he conceived of the invention at issue prior to the date of reference and acted diligently from that date until the subsequent reduction to practice).) Teva sent a letter to Pfizer requesting citations to materials supporting this statement. On September 28, 2006, Pfizer sent Teva a response including the requested citations and served Teva with supplemental interrogatory responses. The supplemental responses included a response to Teva's long-ignored conception date inquiry, and claimed a conception date of August 2, 1993. (Reisner Decl., Ex. 2, Second Supplemental Response to Interrogatory No. 27.)
Teva now argues that Pfizer should be precluded from submitting evidence as to this date of conception under Federal Rule of Civil Procedure 37(c)(1), which provides:
A party that without substantial justification fails to disclose information required by Rule 26(a) or 26(e)(1), or to amend a prior response to discovery as required by Rule 26(e)(2), is not, unless such failure is harmless, permitted to use as evidence at a trial, at a hearing, or on a motion any witness or information not so disclosed.
Teva claims that preclusion is warranted because Pfizer failed to amend its prior response to the interrogatory regarding the date of conception, as required by Rule 26(e)(2), which states that:
A party is under a duty seasonably to amend a prior response to an interrogatory. . . if the party learns that the response is in some material respect incomplete or incorrect and if the additional or corrective information has not otherwise been made ...