Amgen  Inc., et al. v. Sanofi, et al.C.A. No. 14-1317 – SLR (Consolidated), March 2, 2016

Robinson, J. Order resolving pre-trial evidentiary issues.

Plaintiffs seek to preclude defendants from relying on two references (a published application which is only prior art by claiming priority to an earlier filed unpublished application) as prior art.  Because plaintiffs did not object to these references until the conclusion of expert discovery, the judge will not preclude but allow defendants to supplement expert reports to address whether the references constitute prior art by comparing claims to prior disclosures. The court will postpone the trial date if needed to accommodate. In addition, the court precludes post-priority evidence to show motivation existing before the priority date.  The court permits plaintiffs to use their trial time to convince the court that particular testimony can be impeached by prior inconsistent testimony given to the PTO in prosecuting different patents but declines to give blanket permission. The court declines to preclude plaintiffs from arguing their status as “first” to develop the claimed invention. Consistent with the judge’s practice, plaintiffs shall proceed first with their opening and two trial witnesses to present plaintiff’s story. Plaintiffs may provide evidence on the well-characterized antigen doctrine. Trial hours allotted for this case include liability and damages, and the parties must set aside the appropriate number of hours for each phase; the parties need not reach agreement on the number of hours for each phase.  There is to be no mention during the liability phase of such issues as damages, injunctive relief, or willfulness.  The sanction for such conduct will be a reduction in the number of trial hours the offending party has been allocated.