Innogenetics, N.V. v. Abbott Laboratories - WilmerHale

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Abbott did not disclose the Cha patent as an anticipatory prior art referenceunder 35 U.S.C. § 282 until the last day of discovery, after the time for depositions hadpassed. Abbott had not discussed the Cha patent in an expert report, identified it duringdiscovery in response to Innogenetics’ interrogatories on anticipation, or mentioned it inthe final pretrial conference. Abbott did not refer to the Cha patent again until the eve oftrial, when Abbott sought to amend the district court’s jury instructions to include theCha patent in the jury instructions specific to anticipation. Finding that the belatedintroduction of the Cha patent as an anticipatory prior art reference was prejudicial toInnogenetics, the district court excluded the Cha patent from consideration on the issueof anticipation.Although Abbott technically complied with the requirements of § 282, the districtcourt did not abuse its discretion in excluding the Cha patent from trial. Abbott’sdisclosure of the Cha patent as an anticipatory prior art reference on the very last day ofdiscovery meant Innogenetics was stripped of any meaningful opportunity to prepare anadequate cross-examination of the reference. See ATD Corp. v. Lydall, Inc., 159 F.3d534, 551 (Fed. Cir. 1998) (“The purpose of § 282, like that of the Federal Rules, is toprevent unfair and prejudicial surprise, not to facilitate last-minute production ofevidence.”). That Innogenetics had an expert analyze the Cha patent in the context ofinequitable conduct does not mean, as Abbott would have us believe, that Abbott’s latedisclosure did not prejudice Innogenetics on the issue of validity under § 102. Thedistrict court did not abuse its discretion in precluding the Cha patent. 44This case aptly demonstrates the pitfalls of playing fast and loose withrules of discovery. Conclusory expert reports, eleventh hour disclosures, and attemptsto proffer expert testimony without compliance with Rule 26 violate both the rules and2007-1145, -1161 17
3. JMOL of no anticipation by the Resnick patentAbbott argues on appeal that the district court erred in granting JMOL of noanticipation of claim 1 of the ’704 patent by the Resnick patent and in denying its motionfor a new trial on the same basis. 5The district court’s grant of JMOL was predicated onits determination that Dr. Patterson’s testimony with regard to anticipation by theResnick patent “rested on an inaccurate understanding of the construction of the term‘genotyping.’” Innogenetics, slip op. at 29.This determination by the district court, that Dr. Patterson’s testimony was taintedby an inaccurate understanding of the claim term genotyping, is clearly erroneous. Attrial, Dr. Patterson testified on behalf of Abbott that the Resnick patent anticipated claim1 of the ’704 patent. Specifically, he stated that the Resnick patent disclosed probesthat “distinguish” between two groups of hepatitis C isolates—“one containing hepatitisC 1 . . . [and] the non-1 types of hepatitis C.” Opposing counsel objected, arguing thatDr. Patterson’s use of the word “distinguish” at trial was inappropriate because hisexpert report submitted under Rule 26 defined a “method of genotyping” as “the processof detecting and classifying the different strains of the virus as manifested by nucleotidesequence variation in a certain region of the virus genome. In other words, genotypingprinciples of discovery, and the obligations lawyers have to the court. Exclusion andforfeiture are appropriate consequences to avoid repeated occurrences of suchmanipulation of the litigation process.5Abbott additionally seeks to overturn the district court’s judgment as amatter of law of no anticipation by the Resnick patent of claim 2 of the ’704 patent.However, Abbott never presented this argument at trial or even during discovery. Wewill not decide an issue raised for the first time on appeal. Taubenfeld v. AON Corp.,415 F.3d 597, 599 (7th Cir. 2005) (citing Heller v. Equitable Life Assurance Soc’y, 833F.2d 1253, 1261-62 (7th Cir. 1987)) (“On numerous occasions we have held that if aparty fails to press an argument before the district court, he waives the right to presentthat argument on appeal.”).2007-1145, -1161 18
Page 1 and 2: United States Court of Appeals for
Page 3 and 4: appeal, we find no reversible error
Page 5 and 6: 1) U.S. Patent No. 6,071,693 (the C
Page 7 and 8: the complex has been destroyed, and
Page 10 and 11: proposed jury instruction, rather t
Page 12 and 13: granted Innogenetics’ motion in l
Page 14 and 15: On appeal, Abbott argues in a singl
Page 16 and 17: permitted to adduce evidence on obv
Page 20 and 21: detects and classifies the various
Page 22 and 23: Patterson stated that the Resnick p
Page 24 and 25: ’342 application were not novel i
Page 26 and 27: At the damages phase of trial, the
Page 28 and 29: Abbott could sell its product throu

Innogenetics, N.V. v. Abbott Laboratories - WilmerHale

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