Plexxikon Inc. v. Novartis Pharmaceuticals Corporation

Background

Plexxikon moved before trial to exclude evidence that Novartis intended to offer on three topics: Novartis’s defense that any infringement was not willful; the development and commercialization of Mekinist, which was prescribed and sold in combination with Tafinlar; and due diligence connected with Novartis AG’s acquisition of GlaxoSmithKline’s oncology portfolio, which included Tafinlar. Plexxikon argued that Novartis had withheld information during discovery and should not be permitted to use undisclosed information at trial.

Plexxikon also filed a fifth motion in limine, which is a request to limit evidence before trial. That motion sought to prevent Novartis from offering or soliciting hearsay evidence, particularly testimony from GSK corporate witness Dr. Tara Rheault about information she learned from another GSK employee and information reflected in laboratory notebooks.

Because of the complexity of the case and her knowledge of the discovery disputes, the court appointed retired Judge Elizabeth D. Laporte as a special master. Judge Laporte issued a report and recommendation concerning Plexxikon’s fourth motion in limine.

Rulings on Motion in Limine No. 4

The court granted Plexxikon’s motion on the willfulness-defense issue. It excluded testimony from Novartis’s corporate witness, Peter Waibel, about the basis for Novartis’s willfulness defense, including reliance on an attorney’s opinion about the patents. Waibel could state, without elaboration, that after receiving notice of the litigation he looked at the patent, considered the breadth of its claims, and began the process of obtaining an attorney opinion about invalidity. The court agreed that Waibel had not substantively answered many questions about the factual basis for Novartis’s defense in his capacity as a corporate representative.

The court denied Plexxikon’s motion without prejudice as to evidence about Mekinist’s commercialization. “Without prejudice” was the court’s stated term; the court explained that Plexxikon could object at trial if Novartis attempted to use responsive information that had not been produced. The court found that Novartis had provided substantial documents and testimony about marketing and sales of Tafinlar and Mekinist in combination. Novartis also stated that it did not intend to present evidence about Mekinist’s development. The court therefore declined to predict in advance whether Novartis would try to introduce undisclosed commercialization evidence.

The court granted Plexxikon’s motion concerning due diligence related to the acquisition of GSK’s oncology portfolio. It adopted Judge Laporte’s proposed limiting instruction. If the acquisition-related evidence was presented, the jury would be told that GSK had represented to Novartis’s Swiss parent company that the transferred products did not, to GSK’s knowledge, infringe or misappropriate third-party intellectual-property rights, and that GSK had not identified freedom-to-operate issues with Tafinlar. The instruction would also explain that Plexxikon sought the underlying due-diligence documents, that Novartis’s Swiss parent company did not provide them, and that a Swiss court denied Plexxikon’s request to obtain them through judicial process. The jury would decide how much weight, if any, to give those facts.

The court rejected Novartis’s argument that the instruction improperly invited the jury to infer that Novartis or its Swiss parent had withheld damaging documents. The court concluded that allowing Novartis to present evidence obtained from the Swiss parent, while Plexxikon had been unable to test the evidence against the underlying documents, would be unfair. The parties were ordered to continue splitting Judge Laporte’s fees evenly.

Ruling on Motion in Limine No. 5

The court denied Plexxikon’s fifth motion in limine without prejudice. The court explained that a Rule 30(b)(6) corporate witness may testify during a deposition about information known or reasonably available to the organization, even if the information is outside the witness’s personal knowledge. But at trial, a lay witness generally must have personal knowledge, and information that is hearsay must fall within an authorized exception. Because the court did not yet know the specific testimony or context in which Dr. Rheault or another witness would testify, it declined to rule conclusively before trial. The court stated that it would address objections as the testimony and other evidence were presented.