Free Reply to Response to Motion - District Court of Connecticut - Connecticut

Case 3:03-cv-00990-AWT Document 28-5 Filed 07/06/2004 Page 1 of 3 Page 2 of 4
Westiaye
2000 WL 356412 Page l
(Cite as: 2000 WL 356412 (S.D.N.Y.))
H for Taxol (R), asserting that, "[u]nder Grain
Briefs and Other Related Documents Processing Corp. v. American Maize-Products, 135
F.3d 1341, 1352 (Fed.Cir.l999), Bristol has the
Only the Westlaw citation is currently available. burden of proof on this issue and, yet it submitted
no expert report on this point by the February 25,
2000 deadline" (RPR Letter dated 3/ 16/00 at l.)
United States District Court, S.D. New York. On March 24, 2000, Bristol submitted a letter in
reply.
- BRISTOL—MYERS SQUIBB COMPANY, Plaintiff,
I v. These motions arise in the context of almost four
RHONE—POULENC PORER, INC., Centre years of discovery by the parties. Fact discovery
National De La Recherche Scientifique, and ended two months ago, [FNI] with the exception of
Rhone-Poulenc Rorer, S.A., Defendants. RPR's discovery of the availability of
off—the—market products described in answers by
N0. 95 CIV 8833 RPP. Bristol to certain RPR contention interrogatories as
constituting "available," nominfringing alternatives.
April 5, 2000. The Court authorized RPR to conduct such
discovery after the discovery cut off in view of
Fitzpatrick, Celia, Harper & Scinto, New York, Bristol‘s response to that interrogatory at the end of
NY, By: Thomas I-I. Beck, for Plaintiff the discovery period.
Rogers & Wells LLP, New York, NY, By: Philip
E. Roux, for Defendants. FNI. Included in fact discovery were
extensive and detailed answers to
contention interrogatories setting forth the
OPINION AND ORDER position of each party on the many issues
of this contentious litigation.
PATTERSON, J.
*1 Plaintiff Bristol-Myers Squibb Company RPR's argument that its initial expert reports are
("Bristol") by letter dated March 8, 2000, requests complete and sufficient is inappropriate in the
an order that the expert reports of defendant context of this case and the scheduling orders issued
Rhone—Poulenc Rorer, Inc. ("RPR") be amended to by the Court. Each party was given two months to
require a full statement of the expert opinions and review the expert reports of the other side. RPR,
the basis for these opinions pursuant to Rule since it bears the burden of proof of infringement,
26(a)(2) of the Federal Rules of Civil Procedure. In was to produce its expert reports first. The
addition, Bristol complains that RPR has submitted provision in the discovery schedule for rebuttal
42 expert reports and asks that Court to require expert reports does not permit RPR to evade the
RPR to reduce the number of expert reports and to requirements of Rule 26(a)(2) in its submission of
permit Bristol additional time to respond. initial expert reports.
RPR, by letter dated March 16, 2000, opposes the Rule 26(a)(2) of the Federal Rules of Civil
issuance of such an order and requests an order Procedure provides that "a witness who is retained
precluding Bristol from presenting expert testimony or specially employed to provide expert testimony"
in support of any contention that any off—the—market pursuant to Rules 702, 703 or 705 of the Federal
product was an "available" non-infringing substitute Rules of Evidence shall be identified and provide a
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Case 3:03-cv-00990-AWT Document 28-5 Filed 07/06/2004 Page 2 of 3 page 3 Of4
2000 WL 356412 Page 2
(Cite as: 2000 WL 356412 (S.D.N.Y.))
written report containing "a complete statement of deficiencies and other deficiencies in the reports,
all opinions to be expressed and the basis and the Court, if necessary, will review the revised
reasons therefor; the data or other information reports at time of trial pursuant to the Rule
considered by the witness in forming the opinions; 26(a)(2)(B) standard and consider what action, if
[and] any exhibits to be used as a summary of or any, to take under Rule 37(c)(l) of the Federal
support for the opinions." Fed.R.Civ.P. 26(a)(2)(B). Rules of Civil Procedure.
The report must be "detailed and complete
stating the testimony the witness is expected to RPR's request for an order precluding Bristol from
present during direct examination, together with the presenting expert testimony in support of any
reasons therefor." Advisory Committee Notes, 1993 contention that any off—the-market product was an
Amendments, paragraph 2. See also Walsh v. "available" non-infringing substitute for Taxol (R),
McCain Foods Ltd, 81 F.3d 722, 727 (7 th the alleged infringing product is denied. The
Cir.l996); Sierra Club v. Cedar Point Oil Co., 73 availability of non-infringing substitutes only
F.3d 546, 571 (5 th Cir.l996), cert. denied Cedar becomes an issue if plaintiff is seeking lost profits
Point Oil Co. v. Sierra Club, 519 U.S. 8ll (1996). on its sale of Taxotere or a product manufactured
under the process patent which is being infringed.
*2 Since fact discovery is complete, the parties are As stated in Grain .Processirzg Corp. v. American
hereby placed on notice that direct testimony by any Maize—Products Co.:
` expert witness at trial shall be limited to the To recover lost profits, the patent owner must
contents of the Expert Report accompanying the show "causation in fact," establishing that "but
designation of the witness and not any for" the infringement, he would have made
supplementation of the Expert Report unless the additional profits. When basing the alleged lost
witness can show that such material was not profits on lost sales, the patent owner has an
available either to him or to counsel retaining him initial burden to show a reasonable probability
as of the date of his report. ln any Rebuttal Report, that he would have made the asserted sales "but
an expert must disclose to the other party, as for" the infringement. Once the patent owner
required by Fed.R.Civ.P. 26(e)(1), any additions or establishes a reasonable probability of "but for"
changes in the experts opinions or to the basis and causation, "the burden then shifts to the accused
reasons therefor or in the data or other information infringer to show that [the patent owner‘s 'but for'
considered by the witnessin forming the opinions. causation claim] is unreasonable for some or all
of the lost sales."
RPR is ordered to revise its initial expert reports to
- comply with Rule 26(a)(2) by April 10, 2000. It is *3 185 F.3d 1341, 1349 (Fed.Cir.1999) (internal
counsel's responsibility to make sure that the expert citations omitted).
reports comply with Fed.R.Civ.P. 26. Salgodo By
Solgodo v. Gerzerol Motors Corp., 150 F.3d 735, Bristol must have the opportunity to review RPR's
741-42 n. 6 (7 th Cir.l998). ("It is the responsibility lost profits expert reports before each of_ its experts
of the attorney to ensure that the experts report presents detailed and thorough reports on the
contains complete opinions that are properly and availability of the non—infringing substitutes it
thoroughly set forth and supported; it should be the contends reduce or eliminate RPR's lost profits
goal of the parties to eliminate surprise, avoid evidence.
unnecessary depositions and reduce costs.")
Compliance with Rule 26, in particular the The number of expert reports designated by RPR
requirement of total disclosure, is emphasized in the presents a problem of significant dimension, This is
Advisory Committee Comments. ld Counsel are a jury case. The prospect of 42 expert witnesses for
ordered to study the footnote in Solgodo and adhere RPR raises questions about the length of trial, the
to it. jury impanelrnent procedures to be utilized, as well
as the obvious question of whether a jury is likely to
The Court's review of Bristol's complaint about the remain attentive and to deliberate on each of the
Expert Reports of Messrs. Martin, Osborne, Keiller issues raised by attorneys for two corporations
and Jarosz indicates that they are not in compliance unwilling to reach a business accommodation.
with Rule 26(a)(2)(B). Rather than explicate those
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Case 3:03-cv-00990-AWT Document 23-5 Filed 07/06/2004 Page 3 of 3 page 4 OM
2000 WL 356412 l ` Page 3
(Cite as: 2000 WL 356412 (S.D.N.Y.))
Accordingly, counsel for each party are directed to
make a written proposal to the Court by April 14,
2000 as to a method by which this case may be
presented to the in a meaningful manner,
including a reduction in the number of expert
witnesses. Such presentation should outline in
general terms the scope of each witness‘s expert
testimony so that the necessity for such witness to
be called can be weighed.
IT IS SO ORDERED.
2000 WL 356412, 2000 WL 356412 (S.D.N.Y.)
Briefs and Other Related Documents (Back to top)
· 2002 WL 32151947 (Trial Order) Opinion and
Order (Ian. 15, 2002)
END OF DOCUMENT
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