Plexxikon Inc. v. Novartis Pharmaceuticals Corporation

Background

The court addressed Novartis’s objections to deposition testimony that Plexxikon designated for use in the patent dispute. The testimony concerned Novartis’s willfulness-related conduct, including its reliance on an opinion of counsel and its due-diligence process.

Court’s Analysis

For Schwartz Designations 5–10, the court held that Christina Schwartz’s testimony was relevant even though Novartis had stipulated to infringement of claim 1 of the ’640 Patent. Novartis acknowledged that the opinion of counsel was part of its defense to willfulness and that the opinion was provided before the stipulation. The court therefore concluded that the process leading to the opinion was relevant to willfulness and that the evidence’s value was not substantially outweighed by the risk of unfair prejudice or other concerns under Evidence Rules 402 and 403.

For Schwartz Designations 42–55, the court held that testimony about Schwartz’s opinions in inter partes review proceedings could be used to challenge her credibility and the reasonableness of Novartis’s reliance on her opinion. The court noted that the designated testimony did not mention those proceedings and therefore did not violate the court’s earlier ruling barring evidence or argument about Novartis’s petitions and the Patent Trial and Appeal Board’s non-institution decisions.

For Waibel Designations 12–14, the court rejected Novartis’s arguments that Peter Waibel’s testimony about due diligence related to the GSK acquisition was speculative or unfairly prejudicial. The court found his understanding of the analysis relevant to willfulness. It also rejected Novartis’s argument under the Federal Circuit’s Knorr-Bremse rule because the designated testimony did not mention Novartis’s assertion of privilege, so the jury could not draw the prohibited adverse inference from that testimony.

The court additionally rejected Novartis’s attempt to add lines 20:25–21:15 to the designation. Applying Evidence Rule 106, the court held that Waibel’s answer about when Novartis first learned of the asserted patents did not need to be considered at the same time as the offered testimony about the due-diligence process.

Disposition

Judge Haywood S. Gilliam, Jr. overruled Novartis’s objections to Plexxikon’s deposition designations and rejected Novartis’s request to add the additional deposition lines.