Plexxikon Inc. v. Novartis Pharmaceuticals Corporation

Background

The court ruled on three motions in limine, which are pretrial requests to limit evidence or argument presented to the jury. The court stated that it would issue rulings on the remaining motions in limine later.

Plexxikon’s Motion in Limine No. 2

Plexxikon asked the court to prevent what it described as the “denigration” of the United States Patent and Trademark Office. The parties agreed that the jury should see a Federal Judicial Center video explaining that mistakes or overlooked information can occur during patent examination and that no process is perfect. Novartis stated that it did not intend to disrespect or denigrate the Patent and Trademark Office.

The court held that these subjects could be addressed at trial but declined to impose Plexxikon’s requested blanket exclusion. It denied Plexxikon’s Motion in Limine No. 2 without prejudice to renewed objections at trial. The court said it could limit evidence under Federal Rule of Evidence 403 and other evidence rules.

Plexxikon’s Motion in Limine No. 3

Plexxikon asked the court to prevent Novartis from calling three expert witnesses to give cumulative testimony about the invalidity of the asserted patents. Novartis responded that it did not intend to offer duplicative testimony.

Because the court had not yet seen how the testimony would actually be presented, it declined to issue the requested blanket order. It denied Plexxikon’s Motion in Limine No. 3 without prejudice to objections to specific testimony at trial. The court stated that Rule 403 permits it to exclude or strike testimony that is cumulative or wastes the court’s or jury’s time.

Novartis’s Motion in Limine No. 1

Novartis asked the court under Rule 403 to prevent Plexxikon from presenting evidence or argument about Novartis’s petitions for inter partes review and post-grant review, and about the Patent Trial and Appeal Board’s decisions not to institute those proceedings. The court granted Novartis’s Motion in Limine No. 1.

The court reasoned that a decision not to institute review is not a decision on the merits. It also found a substantial risk that such evidence would confuse the issues, unfairly prejudice the opposing party, and consume trial time. The court found persuasive decisions excluding similar evidence because its probative value was limited and the jury might improperly substitute its own judgment for that of the Patent Trial and Appeal Board.

The court rejected Plexxikon’s arguments based on the burden of proof applicable to issues previously considered by the Patent Office and on using the Patent Trial and Appeal Board’s actions for impeachment. It stated that the Patent Trial and Appeal Board’s views were not binding in the case. The court noted that evidence might become relevant if a witness’s testimony directly opened the door to the subject, but it granted the motion as presented.

Disposition

The court denied Plexxikon’s Motions in Limine Nos. 2 and 3 without prejudice and granted Novartis’s Motion in Limine No. 1. The order did not decide the underlying validity or other merits of the asserted patents.