Plexxikon Inc. v. Novartis Pharmaceuticals Corporation

Background

Plexxikon moved to exclude certain opinions and testimony from Novartis’s technical experts: Dr. Phil S. Baran, Dr. Swaminathan Natarajan, and Dr. Andrew Jennings. The challenged testimony concerned U.S. Patent Nos. 9,469,640 and 9,844,539. According to the opinion, the experts had concluded that the patents were invalid, anticipated, obvious, and lacked written description, utility, and enablement.

Plexxikon did not appear to challenge the experts’ qualifications. Instead, it argued that they had applied incorrect legal standards and pointed to deposition testimony in which they allegedly did not articulate the correct standards. Plexxikon also argued that allowing the experts to state their ultimate conclusions would improperly take over the jury’s role.

Legal standard

The court applied Federal Rule of Evidence 702, which permits qualified expert testimony when the expert’s specialized knowledge will help the fact-finder, the testimony rests on sufficient facts or data, the methods are reliable, and the expert reliably applied those methods to the case. Under the reliability and relevance principles described in the opinion, the court evaluates whether the testimony will assist the jury and has a reliable basis in the relevant field.

Court’s analysis

The court was not persuaded that Novartis’s experts were attempting to introduce incorrect statements of law. Plexxikon had emphasized the patent-law presumption of validity, but the court explained that this presumption establishes a burden and standard of proof: Novartis would have to prove invalidity by clear and convincing evidence. The court did not find that the technical experts’ analysis necessarily had to include knowledge of that burden or standard of proof.

The court further stated that, even if the experts misunderstood some applicable law or had difficulty explaining it during depositions, they were not being offered as legal experts and would not determine what the law means. The court would instruct the jury on the correct legal standards. Plexxikon could address remaining concerns through cross-examination and contrary evidence.

The court agreed that an expert may not testify to an ultimate legal conclusion. Although expert testimony may address an ultimate issue in some circumstances, the opinion stated that no expert would be permitted to testify about ultimate legal conclusions. The court nevertheless found no basis for issuing a pretrial order specifically limiting the anticipated testimony of Drs. Baran, Natarajan, and Jennings. It stated that objections could be evaluated in context at trial.

Disposition

The court denied Plexxikon’s motion to exclude the challenged opinions and testimony. The opinion did not make a final determination that any particular statement by the experts would be admissible at trial; it instead left contextual objections for trial while stating that the experts could not testify about ultimate legal conclusions.