Posted On: October 19, 2012 by Robert Vrana

Court Denies Motions to Exclude Expert Reports and Evidence of Secondary Considerations of Non-Obviousness

Judge Andrews and Magistrate Judge Thynge have issued orders resolving numerous pre-trial issues in the past few weeks in the patent infringement litigation between St. Jude Medical and Volcano Corp. related to technology for diagnosis of heart disease. In addition to rulings on claim construction and exclusion of prior art, Judge Thynge has also recently considered St. Jude’s request to exclude portions of Volcano’s expert reports due to spoliation of evidence and Judge Andrews has considered Volcano’s motions to exclude evidence and testimony related to secondary considerations of non-obviousness.

Judge Thynge considered a request by St. Jude to exclude “portions of Volcano’s expert reports based on Volcano’s purported ‘unilateral destructive testing and spoliation of a unique piece of evidence.” See St. Jude Med. Cardiology Div., Inc. v. Volcano Corp., C.A. No. 10-631-RGA-MPT (D. Del. October 9, 2012). Volcano’s expert reports relied on this testing, and St. Jude alleged that it had no notice of the pending dissection of the evidence and no opportunity to conduct its own testing on any similar piece of evidence. Judge Thynge concluded that “St. Jude did not understand Volcano’s experts were dissecting the [evidence, but] . . . Volcano did not willfully conceal the dissection prior to serving [the expert] reports.” Nevertheless, “[b]ecause Volcano altered the [evidence], and did so without St. Jude understanding that alteration would occur, the court [found] there [had] been spoliation.”

Despite finding spoliation of evidence, Judge Thynge did not exclude Volcano’s expert reports. She determined that “Volcano’s exclusive possession of the [evidence], and St. Jude’s inability to prevent, or object to . . . dissection thereof, weighs in favor of finding Volcano ‘at fault’ for altering that evidence.” Nevertheless, St. Jude’s expert was able to “form strong opinions about [the evidence] from examination of the many photographs included in the . . . report documenting the dissection.” Therefore, “the court determine[d] Volcano’s actions . . . did not cause prejudice to St. Jude sufficient to strike portions of the [expert] reports addressing that dissection.” Accordingly, Judge Thynge denied St. Jude’s motion to strike.

Judge Andrews addressed evidence of secondary considerations of non-obviousness. In addition to finding that certain studies could be relevant to secondary considerations and should be admitted, Judge Andrews considered testimony of an expert regarding secondary considerations. See St. Jude Med. Cardiology Div., Inc. v. Volcano Corp., C.A. No. 10-631-RGA-MPT (D. Del. October 12, 2012). He concluded that evidence that “each generation of St. Jude's products . . . embod[ies] its latest patent” would be insufficient to show the required “nexus” between secondary considerations and the patented invention. Rather, Judge Andrews stated, “there has to be more specific testimony” showing “that any secondary consideration is the result of the patented invention, and not the result of other factors, such as the reputation of the maker, features of the device that were known in the prior art, etc.” Because this proffer was insufficient, Judge Andrews concluded that St. Jude “should not discuss the . . . studies or [the] likely [expert] testimony during its opening. The Court [did] not, however, prohibit[] the Plaintiff from attempting to lay the appropriate foundation during testimony.”

St. Jude Med. Cardiology Div., Inc. v. Volcano Corp., C.A. No. 10-631-RGA-MPT (D. Del. October 9 & ...