United States District Court, E.D. Texas, Marshall Division
MEMORANDUM OPINION AND ORDER
WILLIAM C. BRYSON UNITED STATES CIRCUIT JUDGE.
the Court is Plaintiff UroPep's Motion to Preclude
Lilly's Experts from Presenting Testimony that
Contradicts the Court's Summary Judgment Ruling
(“Motion to Preclude”), Dkt. No. 257. The
motion is GRANTED IN PART and DENIED IN PART.
motion is directed to barring some or all of the testimony
corresponding to seven expert reports submitted by Lilly.
UroPep explains that its motion is directed to three
categories of what it considers impermissible opinion
UroPep objects to any testimony from Lilly's experts on
indefiniteness and non-infringement issues that contradict
this Court's claim constructions and its March 3, 2017,
summary judgment order, Dkt. No. 234. Relatedly, UroPep
objects to any expert testimony to the effect that tadalafil
is not 20 times more selective for PDE5 than for PDE11.
UroPep argues that any such testimony would be inconsistent
with this Court's March 3 order, in which the Court held
that the '124 patent only requires selectivity for PDE5
as compared to PDE1 through PDE4.
UroPep objects to testimony from one of Lilly's experts,
Dr. Joseph A. Beavo, regarding three prior art compounds that
Lilly claims are PDE5 inhibitors. UroPep argues that the
three compounds are not selective inhibitors, within the
meaning of the Court's definition of that term for
purposes of UroPep's U.S. Patent No. 8, 791, 124
(“the '124 patent”). For that reason, UroPep
argues, evidence regarding those compounds is irrelevant and
should be excluded.
responds that it has no intention of introducing evidence
that would contradict the Court's claim construction. In
particular, Lilly represents that it will not offer expert
testimony or opinion that Lilly does not infringe the
'124 patent because tadalafil treats only the signs and
symptoms of BPH and does not treat enlargement of the
prostate. Defendant Eli Lilly & Company's
Opposition to Plaintiff Erfindergemeinschaft UroPep GbR's
Motion to Strike Experts (“Lilly's
Response”), Dkt. No. 263, at 1-2.
addition, Lilly represents that it will not offer any expert
testimony or opinion that Lilly does not infringe the
'124 patent because Cialis is not 20 times as selective
for PDE5 as it is for PDE6 through PDE11. However, Lilly
states that it intends to offer expert testimony going to the
issues of written description and enablement, as set forth in
portions of Lilly's experts' reports that UroPep is
seeking to exclude. Lilly's Response, Dkt. No.
263, at 2-3. The parties have therefore joined issue in that
respect to the three compounds as to which Dr. Beavo intends
to offer expert testimony corresponding to the contents of
his second report, Lilly argues that Dr. Beavo's
testimony regarding those compounds is relevant and does not
controvert anything in the Court's March 3, 2017, order.
in its opposition and in the Joint Proposed Pre-trial
Order, Dkt. No. 251, Lilly has requested direction from
the Court as to the status of the Court's indefiniteness
ruling in the March 3, 2017, summary judgment order, so that
the parties will understand what the Court's intentions
are with regard to the indefiniteness issue.
Expert Testimony That Would Contradict the Court's March
Lilly has made clear that it does not intend to elicit expert
testimony that would contradict any of the Court's claim
constructions, the only remaining question raised by
UroPep's first and second objections is whether
Lilly's expert testimony will conflict with anything in
the portion of the Court's March 3, 2017, order dealing
with indefiniteness. To resolve that issue, it is necessary
to address both the Court's role in deciding the
indefiniteness issue and Lilly's constitutional right to
a jury trial on other issues that may be related to the
matters resolved by the Court in the course of its
intends to have its experts testify that the '124 patent
gives inadequate guidance as to whether a particular compound
is a PDE5 inhibitor. On the assumption that the
indefiniteness issue has been resolved by the Court or, in
any event, is an issue of law for the Court and not for the
jury, Lilly proposes to offer that evidence not on the issue
of indefiniteness, but instead in support of Lilly's
written description and enablement defenses. UroPep has two
responses: first, that some of the testimony in question was
expressly directed to the issue of indefiniteness and cannot
be repurposed as relevant evidence going to written
description and enablement; and second, that much of the
expert testimony that is expressly directed to written
description and enablement conflicts with the Court's
March 3, 2017, indefiniteness ruling and thus should be
barred at trial.
first issue raised by the parties' briefs relates to the
status of the indefiniteness issue in this case. The Court
held a claim construction hearing on June 23, 2016. The
docket control order that was in effect at that time, like
each of the subsequent docket control orders issued in this
case, advised that “the parties are directed to include
any arguments related to the issue of indefiniteness in their
Markman briefing.” In its initial claim
construction briefing, Lilly argued that the claim term
“inhibitor of phosphodiesterase (PDE) V” should
be construed as a “means plus function” term
under 35 U.S.C. § 112, ¶ 6. If viewed in that
manner, Lilly argued, the claims of the '124 patent would
be limited to two compounds, zaprinast and MY5445. In the
alternative, Lilly argued that the term “inhibitor of
phosphodiesterase (PDE) V” should be construed broadly
to mean “any compound able to inhibit PDE V.” At
that time, Lilly reserved the right to call expert witnesses
regarding claim construction, see Dkt. No. 84, at 6, but
Lilly did not call any witnesses at the claim construction
hearing, which was held on June 23, 2016.
August 11, 2016, the Court entered its claim construction
order. Dkt. No. 131. In that order, the Court construed
several of the terms in dispute. However, the Court postponed
construing the phrase “inhibitor of phosphodiesterase
(PDE) V” pending the Court's ruling on Lilly's
motions for summary judgment of noninfringement, Dkt. No.
119, and invalidity, Dkt. No. 120. Lilly's invalidity
motion was based on the alleged failure of the '124
patent to satisfy the written description requirement of 35
U.S.C. § 112, ¶ 1. On October 21, 2016, the Court
entered an order that denied Lilly's motions for summary
judgment. In that order, the Court construed the term
“inhibitor of phosphodiesterase (PDE) V.” Dkt.
No. 149. The Court ...