United States District Court, D. New Jersey
MEMORANDUM AND ORDER
G. SHERIDAN, U.S.D.J.
matter is before the Court on Defendant Sandoz, Inc.'s
(hereinafter "Sandoz") motions in limine. There are
two in limine motions before the Court. They are: (1) to
preclude introduction of evidence comparing Sandoz's
product to the alleged commercial embodiment (ECF No. 101);
and (2) to preclude Plaintiff from asserting that a nexus
exists regarding the patent-in-suit. (ECF No. 102).
motion in limine is designed to narrow the evidentiary issues
for trial and to eliminate unnecessary trial interruptions.
Bradley v. Pittsburgh Bd. of Educ, 913 F.2d 1064,
1069 (3d Cir. 1990). "An in limine motion is not a
proper vehicle for a party to ask the Court to weigh the
sufficiency of the evidence to support a particular claim or
defense, because "[t]hat is the function of a motion for
summary judgment, with its accompanying and crucial
first motion to preclude introduction of evidence comparing
Sandoz's product to a commercial embodiment, Defendant
has not pointed to any specific paragraphs or the testimony
of any particular witness which specifically concerns the
bioequivalence of the products. As such, this motion looks
more like a summary judgment motion than one attempting to
limit evidence. On the other hand, Plaintiffs contends that
it will present limitation-by-limitation evidence to
establish Defendant's proposed generic product will
infringe the asserted claims; but some bioequivalence
evidence may be educed during testimony.
general rule, "it is error for a court to compare in its
infringement analysis the accused product or process with the
patentee's commercial embodiment or other version of the
product or process; the only proper comparison is with the
claims of the patent." Zenith Labs., Inc. v.
Bristol-Myers Squibb Co., 19 F.3d 1418, 1423 (Fed. Cir.
1994). Nevertheless, "[o]ur case law does not contain a
blanket prohibition against comparing the accused product to
a commercial embodiment." Adams Respiratory
Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1288
(Fed. Cir. 2010). Compliant with an exception to the general
rule, the Court will accept a comparison of an accused
product to a commercial embodiment "where the commercial
embodiment met all of the claim limitations."
Id. at 1289. As such, the motion is denied.
second motion is to preclude Plaintiff from asserting
secondary considerations because there is no nexus between
the purported inventive features and the secondary
considerations. As with the first motion, it is very broad
and looks more like summary judgment than a motion in limine.
argument appears to be tri-fold: (1) Plaintiff has failed to
provide evidence required to prove there is a nexus
warranting introduction of secondary consideration; (2)
Plaintiff failed to provide evidence supporting that the
novel element of the asserted claims, namely autoclavability,
rather than attributes that were prior art, warrant the
introduction of secondary consideration; (3) Plaintiff has
failed to establish a causal nexus between the asserted
claims and Plaintiffs identified secondary considerations of
non-obviousness and between Defendant's infringement of
the patents-in-suit and the irreparable harm Plaintiff would
suffer. Overall, the issues presented appear to point to
Plaintiffs insufficiency of evidence and request broad
exclusion of evidence that has not been itemized.
general rule, evidence of secondary consideration "is
only significant if there is a nexus between the claimed
invention and the [secondary consideration]" so that the
non-obvious feature of the invention accounts for secondary
consideration. Ormo Corp. v. Align Tech., Inc., 463
F.3d 1299, 1311-12 (Fed. Cir. 2006). "When the patentee
can demonstrate the secondary consideration, and the
successful product is the invention disclosed and claimed in
the patent, it is presumed that the secondary consideration
is due to the patented invention." Id. Whereas,
where the secondary consideration of a claimed invention is
due to an unclaimed feature of the device, the secondary
consideration is irrelevant, (i.e. if the feature leading to
the secondary consideration was known in the prior art.)
Id. at 1312.
the ultimate question of patent validity is one of law, the
issue of obviousness "lends itself to several basic
factual inquiries." Graham v. John Deere Co.,
383 U.S. 1, 17 (1966). The inquiry takes account of review of
"secondary considerations, " which may include
evidence of commercial success, long-felt but unsolved needs,
failure of others, and unexpected results. Id. The
weight to be given any objective evidence is made on a
case-by-case basis. Id.
argument, the Court inquired about the specific evidence that
Defendant sought to exclude since the motion's request
appeared to be broad. Defendant narrowed the issue seeking to
prevent the entry of evidence not included in the reports and
not discovered. In response, Plaintiff confirmed that it is
not intending to go beyond the issues discussed in the expert
in this motion, it is unclear exactly what evidence Defendant
seeks to exclude; the request appears to seek a sweeping
exclusion of all secondary considerations. Further, the
question presented by the motion seem to raise the issue of
sufficiency of evidence. Although Defendants presents
legitimate issues, a motion in limine is not the appropriate
stage for their resolution. "[A] motion in limine is
designed to narrow the evidentiary issues for trial and to
eliminate unnecessary trial interruptions. Bradley v.
Pittsburgh Bd. of Educ, 913 F.2d 1064, 1069 (3d Cir.
1990). "An in limine motion is not a proper vehicle for
a party to ask the Court to weigh the sufficiency of the
evidence to support a particular claim or defense, because
"[t]hat is the function of a motion for summary
judgment, with its accompanying and crucial procedural
safeguards." Bowers v. NCAA, 563 F.Supp.2d 508,
532 (D.N.J. 2008).
complete exclusion of all secondary consideration evidence at
this stage is premature. Uniloc USA, Inc. v. Microsoft
Corp., 632 F.Supp.2d 147, 158 (D.R.I. 2009).
Accordingly, the Court finds Defendant's request to be
broad and outside the scope of a motion in limine. The Court
further finds that the issues presented by Defendant will be
best reserved for determination at trial. As such, this
motion is denied.
matter having come before the Court on Defendant Sandoz,
Inc.'s (hereinafter "Sandoz") motions in
limine; and for the reasons set forth above; ...