Free MEMORANDUM in Support - District Court of Delaware - Delaware

Case 1:05-cv-00336-SLR

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Filed 02/12/2007

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE x ) ) ) Plaintiffs, ) ) v. ) Civil Action No. 05-336 SLR ) SICOR INC. and ) SICOR PHARMACEUTICALS, INC., ) ) Defendants. ) ) ) ------------------------------------ x Defendants' Memorandum Concerning Proposed Testimony of Inventor, Dr. Alf Sollevi Plaintiffs propose to call Dr. Alf Sollevi. Defendants submit that Dr. Sollevi cannot provide the court with competent testimony for two reasons. First, Dr. Sollevi's subjective thoughts regarding the alleged invention are irrelevant to the court's determination of obviousness under 35 U.S.C. §§ 102, 103. Second, Dr. Sollevi cannot testify regarding the state of the art or characterize the alleged invention because he has not been disclosed or qualified as an expert. I. Dr. Sollevi's Testimony About the Patent Is Irrelevant to the Issue of Obviousness The Federal Circuit has clearly held that the inventor's motivation is irrelevant to the obviousness inquiry under 35 U.S.C. §§ 102, 103. See Life Tech., Inc. v. Clontech Labs., Inc., 224 F.3d 1320, 1325 (Fed. Cir. 2000). This includes the inventor's subjective assertions, thoughts, and analysis of the prior art and the inventor's "circumstances." See Eisai Co., Ltd. V. Teva Pharm. USA, Inc., 2006 WL 2872615, slip op. at *2-*3 (S.D.N.Y. 2006) (disregarding the evidence concerning the "actions, methods, [and] goals of the actual inventor" and the inventor's "subjective circumstances," which "are irrelevant to the time-frozen, objective obviousness inquiry."). "The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry. Instead of ascertaining what was subjectively obvious to the inventor at the -----------------------------------ITEM DEVELOPMENT AB, ASTELLAS US LLC, and ASTELLAS PHARMA US, INC.,

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time of invention, the court must ascertain what would have been objectively obvious to one of ordinary skill in the art at such time." Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). See also Hoechst Celanese Corp. v. BP Chem. Ltd., 846 F. Supp. 542, 547 (S.D. Tex. 1994) ("evidence of the patent's `subjective obviousness' to the inventor ... is direct evidence of nothing.") (citing Ryko Mfg.). "There is no presumption ... that the inventor is the equivalent of [the] hypothetical" person of ordinary skill in the art. Poly-Am. Inc. v. Serrot Int'l, Inc., 2002 WL 1996561, at *5 (N.D. Tex. 2002). Similarly, the inventor's lack of knowledge of the art is irrelevant to the determination of obviousness. See Esso Research & Eng'g Co. v. Kahn & Co., Inc., 379 F. Supp. 205, 213-14 (D. Conn. 1974). Any testimony that he might give about what was known or not known prior to the priority date does not constitute evidence of the then-existing prior art. Consequently, as the inventor, Dr. Sollevi's testimony regarding his subjective thoughts, assertions, and analysis of the prior art has no bearing on the determination of whether the invention would be obvious to a person of ordinary skill in the art. II. Dr. Sollevi Cannot Testify As an Expert Regarding the State of the Art Nor can Dr. Sollevi testify regarding the state of the art or characterize the alleged invention. The state of the art and the characterization of the invention are matters for expert testimony. FRE 701-704. Plaintiffs have not timely disclosed Dr. Sollevi as an expert witness as required by FRCP Rule 26(a)(2), the local rules of this Court, and the Scheduling Order in this case. III. Conclusion For these reasons, Dr. Sollevi can offer no competent testimony and his testimony should be excluded.

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By their attorneys,

Dated: February 12, 2007

/s/ Karen E. Keller _______________________________ John W. Shaw Karen E. Keller YOUNG CONAWAY STARGATT & TAYLOR, LLP The Brandywine Building 1000 West Street, 17th Floor Wilmington, DE 19801 (302) 571-6600 Of Counsel: David M. Hashmall, P.C. Annemarie Hassett Anastasia M. Fernands GOODWIN PROCTER LLP c/o Sheraton Suites Legal Suite A 422 Delaware Street Wilmington, DE 19801 (302) 576-8167 Attorneys for Defendants Sicor, Inc. and Sicor Pharmaceuticals, Inc.

Case 1:05-cv-00336-SLR

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CERTIFICATE OF SERVICE I, Karen E. Keller, Esquire, hereby certify that on February 12, 2007, I caused to be electronically filed a true and correct copy of the foregoing document with the Clerk of the Court using CM/ECF, which will send notification that such filing is available for viewing and downloading to the following counsel of record: Paul M. Lukoff, Esquire David E. Brand, Esquire Prickett Jones & Elliot, P.A. 1310 King Street P.O. Box 1328 Wilmington, DE 19899 Richard K. Herrmann, Esquire Morris James Hitchens & Williams 222 Delaware Avenue, 10th Floor P.O. Box 2306 Wilmington, DE 19899-2306

I further certify that on February 12, 2007, I caused copies of the foregoing document to be served by e-mail on the above-listed counsel and on the following in the manner indicated: BY E-MAIL Charles E. Lipsey, Esquire FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP c/o Hotel Dupont, Suite 1140 11th and Market Streets Wilmington, DE 19801 BY E-MAIL Susan H. Griffen, Esquire David Frazier, Esquire Allison Green, Esquire Mark Feldstein, Esquire FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP c/o Hotel Dupont, Suite 1140 11th and Market Streets Wilmington, DE 19801

BY E-MAIL John Scheibeler, Esquire WHITE & CASE, LLP 1155 Avenue of the Americas New York, NY 10036 YOUNG CONAWAY STARGATT & TAYLOR, LLP /s/ Karen E. Keller Josy W. Ingersoll (No. 1088) John W. Shaw (No. 3362) Karen E. Keller (No. 4489) The Brandywine Building 1000 West Street, 17th Floor Wilmington, DE 19801 (302) 571-6600 [email protected] Attorneys for Defendants
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