Scribd
Upload
345 views

Motion in Limine 2

Defendant Corevalve, Inc.'s motion in limine to exclude argument regarding the doctrine of equivalents was denied, but Plaintiffs Edwards Lifesciences AG et al were ordered to file a supplemental expert report in the District of Delaware.

Uploaded by

Myers, Boebel and MacLeod L.L.P.
Copyright
© Attribution Non-Commercial (BY-NC)
We take content rights seriously. If you suspect this is your content, claim it here.
Available Formats
Download as PDF, TXT or read online on Scribd
345 views

Motion in Limine 2

Defendant Corevalve, Inc.'s motion in limine to exclude argument regarding the doctrine of equivalents was denied, but Plaintiffs Edwards Lifesciences AG et al were ordered to file a supplemental expert report in the District of Delaware.

Uploaded by

Myers, Boebel and MacLeod L.L.P.
Copyright
© Attribution Non-Commercial (BY-NC)
We take content rights seriously. If you suspect this is your content, claim it here.
Available Formats
Download as PDF, TXT or read online on Scribd
You are on page 1/ 5
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE EDWARDS LIFESCIENCES AG and EDWARDS LIFESCIENCES LLC, Plaintiffs, v. C.A. No. 08-91-GMS COREVALVE, INC., Defendant. ORDER 1. OnFebruary 12, 2008, plaintiffs Edwards Lifesciences AG and Edwards Lifesciences LLC (“Edwards”) filed this action for infringement against defendant CoreValve Inc. (“CoreValve”), Presently before the court is CoreValve’s Motion in Limine No. 1 to Exclude Evidence and Argument Regarding the Doctrine of Equivalents (D.I. 204). In its motion, CoreValve makes two arguments in support ofits position that the court should “exclude any evidence or argument relating to the doctrine of equivalents from trial.” First, CoreValve asserts that Edwards did not disclose a substantive analysis of the doctrine of equivalents (“DOE”) for any claim limitation, as required by the Federal Circuit case law; and second, that prosecution history estoppel precludes Edwards from relying on the doctrine of equivalents, The court heard oral argument concerning the motion at the final pre-tsial conference held on February 16, 2010. This case is currently scheduled for an eight- day jury trial commencing on March 23, 2010. Having considered the instant motion and the responses thereto, the court will deny CoreValve's motion, but will order Edwards to file a supplemental expert report. The court’s reasoning follows. 2. tthe outset, based upon CoreValve’s first argument, the court notes that it would act well its discretion were it to grant the requested relief. ‘This is so because, in contravention of the requirements of Fed. R. Civ. Pro. 26(2)(B)(i), the report of Edwards’ DOE expert, Dr. Nigel P. Buller, fails to provide “a complete statement of [his] opinion {J ... and the basis and reasons [for his opinion}.” (D.1. 210, Ex. F (sealed)). The court’s view in this regard is informed by the CAFC’s requirements as to the quantity and quality of evidence that must be adduced by the party asserting equivalent infringement, and who must be the proponent of that evidence. As the Federal Circuit has held: When the patent holder relies on the doctrine of equivalents, as opposed to literal infringement, the difficulties and complexities of the doctrine require that evidence be presented to the jury or other fact-finder through the particularized testimony of a person of ordinary skill in the art, typically a ‘qualified expert, who (on a limitation-by-limitation basis) describes the claim limitations and establishes that those skilled in the art would recognize the equivalents. AquaTex Indus. v. Techniche Solutions, 479 F.3d 1320, 1329 (Fed. Cir. 2007) (emphasis added), Contrary to Edwards's assertions, such limitation-by-limitation analysis is necessary regardless of whether the plaintiff is asserting equivalence under an “insubstantial differences” or a “fun n, way, result” test. See id. (“AquaTex, in response to the motion for summary judgment of non-infringement, provided no particularized testimony from an expert or person skilled in the art that . . . explained the insubstantiality of the differences between the patented method and the accused product; or discussed the function, way, result test.”) Curiously, in its opposition to CoreValve’s motion, Edwards claims that Dr. Buller provided “a legally sufficient DOE analysis for all disputed claim limitations, based on the ‘insubstantial

You might also like