Bone Care Int'l, LLC v. Pentech Pharm., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Sep. 30, 2010) (Dow, J.).

Judge Dow decided the parties motions in limine in this patent infringement dispute. Of particular note, the Court made the following rulings:  

  • The Court allowed defendants' anticipation and written description invalidity defenses even though they were not properly disclosed or supported in defendants' interrogatory responses or expert reports. The anticipation defense was so intertwined with the disclosed obviousness defense that there was no prejudice. And the parties argued the written description defense as part of a summary judgment motion. The Court, however, excluded other undisclosed invalidity defenses.
  • The Court allowed plaintiffs to present evidence regarding the priority date of one of its claims became there was a question of fact as to whether the claim had priority based upon an earlier, related application.
  • Plaintiffs were allowed to call defendants' expert witnesses in plaintiffs' case-in-chief so long as the testimony was not just cumulative. Plaintiffs could also call defendants' experts. Even if defendants chose not to call them Defendants cannot turn an expert into a non-testifying expert pursuant to Fed. R. Civ. P. 26(b)(4)(B), once the expert issued a report and was listed on defendants' witness list.
  • A parties' witnesses should be called live whenever possible, unless the witness is unavailable.
  • Defendants' expert was allowed to add references after the expert report deadline and after his deposition, by identifying the references in a deposition errata sheet and in corrected expert report pages. The references did not significantly change the experts analysis. And plaintiffs questioned the expert about the references during his deposition. So, plaintiffs were not prejudiced.
  • Defendants were also allowed to rely upon their experts' rebuttal and supplemental reports became the arguments in the reports all properly responded to Plaintiffs' reports.