Judge Sue L. Robinson recently ruled on pretrial issues in advance of a damages trial between Anesta and Mylan. Anesta Ag., et al. v. Mylan Pharmaceuticals, Inc., et al., Civ. No. 08-889-SLR (D. Del. Aug. 27, 2014). First, the Court ruled that Mylan could not contest at trial that it indirectly infringed Anesta’s method claims in light of earlier stipulations of direct infringement, explaining that Mylan “made a calculated, strategic business decision to launch their generic products ‘at risk’ – to wit, voluntarily taking the risk that the Federal Circuit would reverse my decision on validity.” Judge Robinson added that Mylan’s “stipulations of infringement and the subsequent judgments . . . are meaningless other than in the context of contributory infringement.” The Court also noted that Mylan “never identified non-infringement – clearly a dispositive issue – as an issue they contested in this damages phase of the case until the eve of the pretrial conference. . . . If a party fails to timely identify an issue (other than subject matter jurisdiction), that party is precluded from contesting it at trial.”
Next, Judge Robinson left open the door for Anesta to cross-examine Mylan’s experts on their “hundreds” of previous cases and instances where their testimony was excluded. Judge Robinson noted that past criticism in other cases “may have no relevance to the analysis performed in this case,” but left open the possibility that such cross-examination might be appropriate if Mylan first “attempt[s] to bolster their experts’ credibility by reference to their service in past cases[.]” (internal quotation marks omitted).