Genentech, Inc. v. Biogen MA, Inc.

Background

The parties disputed the use of Exhibit 33, a copy of an expert report by Roger M. Milgrim submitted in an earlier related proceeding involving Biogen. Biogen had retained Milgrim to address, at least in part, industry custom and practice concerning tail royalties. That proceeding settled before trial, so Milgrim did not testify there. Genentech also sought to use Exhibit 78, a copy of Milgrim’s deposition transcript from that proceeding.

Hearsay

Genentech argued that Exhibit 33 was not hearsay because it was offered to show that Biogen had previously shared Milgrim’s opinion about licensing custom and practice but had later taken the opposite position in the present dispute. The court rejected that characterization, reasoning that the exhibit was relevant to Genentech’s point only because Genentech was offering it for the truth of the opinion stated in the report.

Adoptive admission

Genentech alternatively argued that the report was admissible as an adoptive admission under Federal Rule of Evidence 801(d)(2)(B). An adoptive admission is a statement that a party is treated as having accepted as true. The court found persuasive a decision holding that, when an expert does not testify, it is unclear which portions of the expert’s report would have become the subject of testimony and therefore which opinions the retaining party may have adopted. The court concluded that Biogen’s designation of Milgrim as an expert, service of his reports, and making him available for deposition did not establish that Biogen adopted any specific statement in the report. The court applied the same reasoning to Exhibit 78 and did not find the deposition statements admissible as adoptive admissions.

Impeachment

Genentech also sought to use Exhibit 33 to impeach Biogen’s expert, Mr. Buthusiem, because he had reviewed Milgrim’s report. The court noted that a party generally may not impeach an opposing expert with hearsay statements from another expert unless the opposing expert relied on those statements in forming an opinion. The court found that Buthusiem had reviewed and apparently rejected Milgrim’s opinions, but did not appear to have relied on them. The court therefore found no current foundation for impeachment use.

Ruling

The court ruled that Exhibit 33 was not admissible on the grounds presented and that Exhibit 78 was not admissible as an adoptive admission. It found no necessary foundation for using the material to impeach Buthusiem on the current record. The court stated that if Biogen later opened the door or suggested that it had never taken the earlier position, Genentech could seek reconsideration, and the proper form of impeachment could depend on what occurred.