Free Letter - District Court of Delaware - Delaware

C 0608-MPT Document 383-2 Filed O2/11/2008 Page 1 of 3
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SODWEST MADiSDN STREET 34Tl-i FLOOR CHlCAGU ILLINOIS BU661
M¤ANDFiEWS HELDAMALLOY LTD (T) 312 775 HUGO (F) 312 775 8100 wwWim¤aT1drBW$~lp.C¤¥‘¤
GEORGE P. McANDREWS
(T) 312 775 8060
_ gmcand:ews@mcandrews·lp com
February 8, 2008
Via Hand Delivegv
The Honorabie Mary Pat Thynge
Magistrate Judge
J Caleb Boggs Federal Building
Lockbox 8
844 N,··i Wilmington, DE 19801
Re: Crown v. Rexam - Civii Action No. 05-608 (MPT)
Motion in Limine Regarding
Exciusion Of Evidence inconsistent With The Court’s Claim Construction
Dear Magistrate Judge Thynge:
During the pretrial conference, we discussed Rexam's objection to aiiowing
` Crown’s expert to offer opinions that are contrary to the Courts claim construction in
Rexam's Motion In Limine, Rexaan expressiy sought to exciude any testimony,
documents or other evidence that is inconsistent with the Court's claim construction.
Specificaily, we addressed Mr. Higham’s opinion relating to Crown’s non-infringement
position as to claim 13 of Rexam’s ‘230 Patent and claim 7 of Rexam’s *728 Patent. We
directed the Courts attention to those sections of his report which are solely based on
Crown’s proposed ciaitn construction arguments, and which are contrary to the Court’s
claim construction rating.

Case 1:05-cv-00608-MPT Document 383-2 Filed O2/11/2008 Page 2 of 3
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mcandrews
February 8, 2008 .
Page 2
In addition to the report that we discussed at the pretriai conference, l\/lr. l·iignam's
expert report retating tothe validity of ciaim 13 ot the ‘230 Patent and claim 7 of the *728
Patent is equaiiy fiawed. (A copy oi l\/ir. l—ligham’s validity report is attached herewith.)
Specifically, l\/ir. Higham’s expert opinions relating to validity are based exclusiveiy on
Crowrrs proposed claim construction, (See Para. 20, t-ligham Report.) However, the
Court adopted Rexam’s claim construction with respect to the disputed claim terms of
the remaining asserted claims. Crown never suppiemented l\/lr. l·iigharn’s validity report.
See Fed. R. Civ. P. 26(e)(1). Therefore, the only opinions relating to validity offered by
l\/Ir. Higham are inconsistent with the Court’s claim construction.
It is black letter law that determining validity, just as with infringement, begins with
the construction ot the ciairri terms. "[i\l]ot uniike a determination of infringement, a
determination of anticipation, as weil as obviousness, involves two steps. First is
construing the claim, a question of iaw for the court, foliowed by, in the case of
anticipation or obviousness, a comparison of the construed claim tothe prior art." Key
Pharms. v. Hercori Lab. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998).
As the Court acknowiedged during the pretrial conference, parties are netd to their
expert reports and supplemental reports. This Court has aiso held that opinions not
disclosed in expert reports snail be excluded at trial. Power integrafions, inc. v. Fairchild
Semiconductor, 2006 U.S. Dist. LEXIS 67562 (Sept. 20, 2006 D. Dei.) ( "As the Court

Case 1:0 —cv-00608-MPT Document 383-2 Filed 02/11/2008 Page 3 of 3
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mccmdrews
February B, 2008
Page 3
stated previously, opinions not disclosed by an expert in his report will not be permitted
at triai.")
Since l\/ir, Higiiarn never offered any opinions regarding the vaiidity of the
asserted claims of the ‘23O and 728 Patents, under the proper claim construction, he
snouid not be abie to offer any opinions regarding the validity or, as discussed daring the
pretrial conference, non-infringement, of those claims at trial.
Very tru urs,
v I T
. cAndrews
c: Frank Brown
Mary Schnurr
Daie Heist