In Omeros Corporation v. Par Sterile Products, LLC, et al., C.A. No. 15-773-RGA (D. Del. June 22, 2017) (“June 22 Order”), Judge Richard G. Andrews considered several of Plaintiff’s motions in limine in advance of the pre-trial conference and, following the conference, issued a subsequent ruling on one of the motions. C.A. No. 15-773-RGA (D. Del. June 29, 2017) (“June 29 Order”).
The Court granted-in-part a motion to exclude expert testimony regarding EPO practices. The Court observed that the expert’s potential “minimal knowledge about how the EPO posts and indexes documents, his testimony about how the EPO works, including when and how filings with it become public, could possibly be helpful.” June 22 Order at 1. But the Court granted the motion to exclude testimony “about whether and when EPO filings in general become prior art, and whether the particular EPO filing in this case is prior art, [as this] is a legal question that [the Court] will decide, and his opinion on that would not be helpful.” Id.
The Court deferred decision on Plaintiff’s motion to exclude an SEC document filed by Plaintiff that contained statements Defendants wished to use as prior art, observing that “neither party’s papers cited any cases dealing with an analogous situation, that is, relevant art discussion cleverly concealed in an irrelevant document from a completely unrelated field of endeavor. . . . before making a final ruling on this, [the Court would] give each side [leave] to file a supplemental letter with any results of a search for cases with closer facts to those presented here.” Id. at 2. In the subsequent ruling, the Court declined to exclude the document, noting that “Defendants cited two cases . . . that seem . . . to support their position. If a press release can be prior art, see In re Morsa, 713 F .3d 104, 109 (Fed. Cir. 2013), why not a SEC filing? While the Federal Circuit has not addressed the question, the District Court for the District of New Jersey accepted, over objection, an Annual Report filed with the SEC as prior art.” June 29 Order at 1.
Finally, the Court denied, without prejudice to renew, a motion to exclude expert testimony regarding the nature of a “solubilizer” as an ingredient that does “not materially affect the basic and novel properties of the invention” and the overall relevance of such a solubilizer to invalidity. June 22 Order at 3. The Court observed that Plaintiff “want[ed] to make it a claim construction issue,” rather than a question of fact, but since the Court did “not have complete claim construction briefing, and since [the Court] might also benefit from the trial testimony about the invention, [the Court was] hesitant to treat this as a claim construction matter at this point, although [it] might later decide that is exactly what this is.” Id.