United States District Court, D. Massachusetts
JANSSEN BIOTECH, INC. ET AL, Plaintiffs,
CELLTRION HEALTHCARE CO. INC., ET AL., Defendants. v.
MEMORANDUM AND ORDER (AMENDED AS TO FOOTNOTE
hearings on February 7 and 8, 2017, the court intends to have
the parties address first defendants1 motion to exclude the
testimony of Drs. Wurm and Butler (Docket No. 339) and next
plaintiff's motion to limit the testimony of Dr. Glacken
(Docket No. 341). As previously discussed, the court, rather
than the experts, will instruct the jury on the law,
including providing interim instructions during trial to
assist the jury in understanding any admissible expert
testimony. As the parties recognize, an expert will not be
permitted to provide the jury an opinion as to legal
standards. See, e.g., Marx & Co. v.
Diners' Club, Inc., 550 F.2d 505, 510 (2d Cir.
1977). Moreover, any opinion based on an erroneous
understanding of the law will be excluded because it would
not be helpful to the jury. See Fed.R.Evid. 702(a).
The parties shall be prepared to address how these standards
apply to the proposed testimony of each of the experts.
addition, to admit expert testimony, the court must find,
pursuant to Federal Rule of Evidence 104(a), that it is more
likely than not that the expert's methods are reliable
and that they have been reliably applied to the relevant
evidence. This requires, among other things, a persuasive
explanation of how reliable methods are linked to each of the
expert's opinions. See General Electric v.
Joiner, 522 U.S. 136 (1999); Daubert v. Merrill Dow
Pharmaceuticals, Inc., 43 F.3d 1311, 1317-19 (9th Cir.
1995); In re: Paoli R.R. Yard PCB Litigation, 35
F.3d 717, 744-48 (3rd Cir. 1994); Heller v. Shaw,
167 F.3d 146 (3rd Cir. 1999); Ruiz-Troche v. Pepsi
Cola, 161 F.3d 77, 85 (1st Cir. 1998); Salzburg et al,
Federal Rules of Evidence Manual (11th Ed.)
§702.02. The parties shall also be prepared to discuss
these principles and cases.
addition, the parties shall be prepared to inform the court
of the availability of their respective experts for voir
dire, if necessary, during the week of February 20,
hearing argument on the motions in limine concerning the
experts, the court intends to address the questions of the
proper measure of damages and the propriety of injunctive
relief if plaintiffs prevail at trial. With regard to
defendants1 recent contention that plaintiffs lack standing
and, therefore, the court does not have subject-matter
jurisdiction, the court discerns an issue the parties have
Janssen's failure to join one of the inventors of the
'083 patent, Joseph Horwitz, in its 2015 suit was a
defect in standing, the Federal Circuit has held that parties
can cure such a defect by joining the absent party. The
Federal Circuit has permitted parties to do so either with
the party's consent under Federal Rule of Civil Procedure
21 or, in certain circumstances, involuntarily under Federal
Rule of Civil Procedure 19. See, e.g., Mentor
H/S, Inc. v. Med. Device All., Inc., 240 F.3d 1016,
1017-18 (Fed. Cir. 2001)/ STC.ONM v. Intel Corp.,
754 F.3d 940, 946 (Fed. Cir. 2014). With regard to
involuntary joinder under Rule 19, while the Federal Circuit
has recently held that, as a general rule, a co-owner cannot
be made an involuntary plaintiff under Rule 19(a), it has
recognized two exceptions to this general rule. See
STC.UNM, 754 F.3d at 946. One of these exceptions is
when the absent party is obligated by contract to join the
infringement action. Id.
at least, an amendment adding a new plaintiff would relate
back to the date of the filing of the original complaint. See
Fed.R.Civ.P. 15(c); Allied International, Inc. v.
International Longshoremen's association, AFL-CIO,
814 F.2d 32, 35-6 (1st Cir. 1987). The parties should be
prepared to address whether such an amendment would resolve,
or moot, the issue of whether plaintiffs' failure to join
Mr. Horowitz initially preclude them from seeking lost
profits under 35 U.S.C. §271 (e) (6) (B).
the argument concerning damages, the court will hear further
argument on Hospira's motion for summary judgment. The
court will then consider the disputes concerning jury
instructions, the remaining motions in limine, and matters
relating to jury selection and the conduct of the trial.
does not appear likely that all of the foregoing matters will
be resolved on or before February 8, 2017, the court is
considering conducting further hearings the week of February
13, 2017, and beginning trial on February 20, 2017. The
parties shall be prepared to discuss this as well.
 The parties shall particularly be
prepared to discuss whether Dr. Wurm's test results
provide Dr. Butler and him with a reliable basis from which
to conclude that the ingredients of the accused powders, in
their allegedly equivalent concentrations, perform
substantially the same function in the accused powders as
they do in the patented invention. See Milward v. Acuity
Specialty Products Group, Inc., 639 F.3d 11, 15 (1st
Cir. 2011); Intendis GmbH v. Glenmark Pharma Inc.,
822 F.3d 1355, 1360-61 (Fed. Cir. 2016). More specifically,
they shall be prepared to address whether Drs. Wurm and
Butler employed scientifically sound and methodologically
reliable methods in reaching their conclusions that the 29
ingredients that Dr. Wurm added to the claimed powders did
not mask[ ] large differences in Dr. Wurm's comparisons
by performing overlapping functions with the 12 allegedly
equivalent ingredients. See Milward, 639
F.3d at 15; Ruiz-Troche, 161 F.3d at 85.
Although more difficult to parse, the proposed
testimony of Dr. Glacken raises many similar issues
concerning how, if at all, his methodology is linked to many
of his conclusions. The parties should be ...