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Erfindergemeinschaft Uropep GBR v. Eli Lilly And Co.

United States District Court, E.D. Texas, Marshall Division

April 13, 2017

ERFINDERGEMEINSCHAFT UROPEP GbR, Plaintiff,
v.
ELI LILLY AND COMPANY, Defendant.

          MEMORANDUM OPINION AND ORDER

          WILLIAM C. BRYSON UNITED STATES CIRCUIT JUDGE.

         Before 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.

         UroPep's 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 testimony.

         First, 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.

         Second, 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.

         Lilly 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.

         In 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 regard.

         With 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.

         Finally, 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.

         I. Expert Testimony That Would Contradict the Court's March 3 Order

         Because 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 indefiniteness discussion.

         Lilly 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.

         The 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.

         On 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 ...


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