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FOLKS WE ARE GOING TO WIN!!!!!!!! (1 Rating) 3 minutes ago DEFENDANTS' OPPOSITION TO PLAINTIFFS'
MOTION IN LIMINE NO. 15 TO PRECLUDE MENTION OF
THE EPO ACTION ON EP 0 128 733 B1 BEFORE THE JURY
This Court denied Plaintiffs' Motion in Limine No. 14, which sought to preclude mention
to the jury of the EPO Action revoking EP 0 128 733 B1 ("European Patent") on the basis that
the information is not relevant (see Trial Tr. 396:7-11). Having failed in their first attempt to
keep the jury from learning this relevant information, Plaintiffs now try again to preclude
mention of the revocation, erroneously asserting that it was not disclosed during discovery and
under Fed. R. Evid. 403. Both arguments are without merit.
Contrary to Plaintiffs' arguments, Insmed's knowledge of and reliance on the EPO
Action was disclosed during discovery. Specifically, Defendants' response to Interrogatory No.
13 stated, in part, that "[t]he specific facts that support [their defense to willful infringement] and
individuals with knowledge can be found in: . . . (3) the documents produced since July 17,
20061 regarding the issue of willfulness; (4) the deposition transcripts of Glen Kelley, Ronald
Gunn, Dr. Geoffrey Allan, Dr. Andreas Sommer, Dr. Desmond Mascarenhas, Hollie Baker, Dr.
Beth Burrous and Brian McCaslin." (Dkt. No. 855-3). The reference to documents produced
since July 17, 2006 includes the EPO Action. Specifically, the October 21, 2002 opinion letter
regarding the '414 patent specifically identifies the EPO Action. (Dkt. No. 855-6) (PTX-263A).
Indeed, it mentions the European patent in the very first paragraph. That Defendants are relying
on their opinion letters in defense of the allegations of willful infringement is beyond dispute.
Moreover, Mr. Glen Kelley testified at his deposition on willful infringement expressly
referenced in the contention interrogatory response that he was aware of both the European
Patent and the fact that it had been revoked:
Q: When did you first become aware of the patent application
that ultimately issued as the '414 patent?
A: I believe I became aware of the application by its analogy
to the European patent that issued and was revoked under
opposition proceedings, that being a patent application hadn't
You have rated
to the European patent that issued and was revoked under
opposition proceedings, that being a patent application hadn't
issued in the United States and was in the pre - prior to the
1 July 17, 2006 was the date for Insmed to produce its opinions of counsel and related
documents pursuant to the Patent Local Rules.
Case 4:04-cv-05429-CW Document 863-1 Filed 11/13/2006 Page 2 of 4
Defendants' Opposition to Plaintiffs' MIL No. 15
Case No. C-04-5429-CW (EMC)
WASH_1747847.1
DM_US\8410967.v1
publication policy.
I didn't know the exact specification in the U.S. other than
to presume that it was the same specification as in the European
Application.
Declaration of Anthony H. Son ("Son Decl."), Ex. A (Deposition of Glen Kelley dated
September 6, 2006 at 216:14-25) (Emphasis Supplied). Recognizing the importance of this
testimony, Plaintiffs' counsel then marked the European Patent as Deposition Exhibit 521 and
proceeded to question Mr. Kelley on the differences between the disclosures in the '414 patent
versus the European Patent. (Son Decl., Ex. A. at 218:3-219:15). Specifically, Mr. Kelley was
questioned on subject matter that was added to the '414 patent's specification but was not
disclosed in the European Patent. Id. This line of questions would be relevant only to Insmed's
invalidity defense pursuant to 35 U.S.C. § 112.
Mr. Kelley will be testifying at trial (possibly tomorrow, November 14, 2006). His
knowledge of the European Patent, the EPO Action, and his state of mind regarding how the
European Patent and EPO Action would impact the validity of the '414 patent are all relevant to
the issue of willfulness and he should be allowed to so testify. Indeed, this issue was disclosed
during discovery and explored during Mr. Kelley's deposition. Plaintiffs should not now be
permitted to perform a lobotomy and slice out portions of Mr. Kelley's state of mind simply
because Plaintiffs, in hindsight, failed to thoroughly explore this issue with Mr. Kelley.
Further, Plaintiffs cannot use the European Patent as a sword, to support their argument
that the disclosure of the European Patent during the prosecution of certain Celtrix patents was
an admission that the '414 patent is enabled,2 but then shield the fact that the European Patent
was revoked. This is especially true when Insmed was aware of the European Patent, that it had
been revoked, and this fact may have impacted Insmed's state of mind with respect to willful
infringement. Plaintiffs simply cannot have it both ways. As this Court has already found, the
European Patent and its subsequent revocation is relevant to the issue of willful infringement.
The sole question during the November 7, 2006 hearing on this issue was whether the European
2 The fact that the applicants of the Celtrix patents complied with their duty of candor and
disclosed known references is not an admission that the reference was enabling.
Case 4:04-cv-05429-CW Document 863-1 Filed 11/13/2006 Page 3 of 4
