On December 29, 2014, Chief ALJ Charles E. Bullock issued a notice in Certain Hemostatic Products and Components Thereof (Inv. No. 337-TA-913).

By way of background, this investigation is based on a complaint filed by Baxter alleging violation of Section 337 by Ethicon, Inc. and Ferrosan Medical Devices A/S (collectively, the "Respondents") in the importation into the U.S. and sale of certain hemostatic products that infringe one or more claims of U.S. Patent Nos. 8,303,981; 8,512,729; 6,066,325; 8,357,378; and 8,603,511 (collectively, the "Asserted Patents"). See our March 5, 2014 and April 4, 2014 posts for more details on the complaint and Notice of Investigation, respectively. 

According to the notice, ALJ Bullock advised the parties on December 16, 2014 about,inter alia, the ALJ's policy regarding Ground Rule 10.5.6 relating to expert testimony. In an attempt to provide further guidance to the parties, ALJ Bullock provided the following examples of what would be deemed in compliance or not in compliance with Ground Rule 10.5.6:

Acceptable

  • An expert opines in his/her expert report that a patent is invalid as obvious and then testifies as to the specific obviousness combinations in his/her witness statement.
  • An expert states that he/she believes a patent is not infringed and then in his/her testimony sets forth his/her opinions as to why it is not infringed.

Improper

  • An expert opines in his/her expert report that a patent is invalid under § 102(a) and then testifies that the patent is invalid under both §§ 102(a) and 102(b). The testimony regarding § 102(b) would be deemed improper.
  • An expert opines only on validity in his/her expert report and then testifies as to certain non-infringement opinions. The testimony regarding his/her non-infringement opinions would be deemed improper.
  • An expert opines in his/her expert report that the asserted claims of a patent are infringed and then testifies that those claims are not only directly infringed, but also infringed under the doctrine of equivalents. The testimony regarding the doctrine of equivalents would be deemed improper.

In view of the guidance above, ALJ Bullock ordered the parties to provide a written update as to what portions of their respective motions in limine and high priority objections remain ripe for resolution.