Posted On: November 29, 2012 by Pilar G. Kraman

Judge Stark excludes testimony of plaintiffs’ legal expert and excludes testimony of plaintiffs’ technical expert, in part

Judge Leonard P. Stark recently granted defendants’ motion to exclude the testimony of plaintiffs’ legal expert, who was offered to testify as to substantive issues regarding the patent-in-suit, U.S. Patent No. RE37,314. He also granted defendants’ motion to exclude the testimony of plaintiffs’ technical expert to the extent that the expert would be offered to provide testimony as to “state of mind.” AstraZeneca UK Limited v. Watson Laboratories, Inc., C.A. No. 10-915-LPS (D. Del. Nov. 14, 2012).

Regarding plaintiffs’ legal expert, Judge Stark noted that the District of Delaware has a “well-established practice of excluding the testimony of legal experts, absent extraordinary circumstances.” Id. at 2. Despite the legal expert’s experience as a PTO examiner, a Special Program Examiner, and an Administrative Patent Judge on the Board of Patent Appeals and Interferences, Judge Stark found “no reason to depart from” the District of Delaware’s well-established practice in this case. Id. at 2-3. Turning to plaintiffs’ technical expert, Judge Stark noted that “[g]enerally, expert witnesses are not permitted to testify regarding intent, motive, or state or mind, or evidence by which such state of mind rnay be inferred.” Id. at 4. He therefore excluded the testimony of plaintiffs’ technical expert to the extent that the expert would offer opinions regarding what the inventors or corporate plaintiff “knew” about the prior art or what they “intended.” Id. Defendants’ motion to exclude was denied, however, to the extent that the expert would provide “testimony as to what one of ordinary skill in the art would understand about rosuvastatin zinc or other zinc salts in the context of the patent-in-suit.” Id. Judge Stark noted that “[s]o long as [the expert’s] focus is on what one of ordinary skill in the art would understand – and not on what the inventors or [corporate plaintiff] knew or intended – [the expert’s] testimony will be permitted.” Id.

AstraZeneca UK Limited v. Watson Laboratories, Inc., C.A. No. 10-915-LPS (D. Del. Nov. 14, 2012)