Free Memorandum and Order - District Court of Delaware - Delaware

Case 1:04-cv-00940-JJF Document 77 Filed 08/O4/2006 Page1 0f 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
THE PROCTOR & GAMBLE COMPANY, :
Plaintiff, Z
v. ;
: Civil Action No. 04-940-JJF
TEVA PHARMACEUTICALS USA, ;
INC., :
Defendant. :
MEMORANDUM ORDER
Pending before the Court is Defendant Teva Pharmaceuticals
USA, Inc.’s Motion To Preclude The Testimony Of Plaintiff's
Patent Law Expert (D.I. 69). For the reasons discussed, the
Motion will be granted in part and denied in part.
I. BACKGROUND
In this patent infringement case, Defendant argues that
Plaintiff's patent, U.S. Patent No. 5,583,122 ("the ‘I22 patent")
is invalid because of obviousness—type double patenting.
Plaintiff submitted the Rebuttal Expert Report of Jerry D. Voight
in response to Defendant's Expert Report of George R. Lenz,
Ph.D., to address patent interference practices and whether the
one—way or two—way test should be used for determining
obviousness—type double patenting in this case. (D.I. 70 Ex. A).
On July 6, 2006, Defendant filed the instant Motion to preclude
Plaintiff from proffering Mr. Voight’s testimony on any of the

Case 1:04-cv-00940-JJF Document 77 Filed 08/O4/2006 Page 2 of 4
opinions set forth in his expert report. (D.I. 69). Defendant
contends that Mr. Voight’s testimony would exceed the scope
permitted by the Court because it will include legal conclusions
and goes beyond the practices and procedures of the U.S. Patent
and Trademark Office (PTO). (D.I. 69 at 3). In Response,
Plaintiff contends that Mr. Voight’s expert testimony is within
the parameters permitted by the Court because it includes the
workings of the PTO and the prosecution history in this case.
(D.T. 74). Plaintiff's answering brief included an Amended
Rebuttal Expert Report of Jerry D. Voight, removing certain legal
conclusions, and now contends that Defendant’s concerns are
moot.l (D I. 74 Ex. A).
II. DISCUSSION
A court has broad discretion to admit or exclude evidence
under the Federal Rules of Evidence. Gumbs v. Int'l Harvester,
Inc., 718 F.2d 88, 97 (3d Cir. 1983). Federal Rule of Evidence
702 states that
If scientific, technical, or other specialized
knowledge will assist the trier of fact to understand
the evidence or to determine a fact in issue, a witness
qualified as an expert by knowledge, skill, experience,
training, or education, may testify thereto in the form
of an opinion or otherwise, if (1) the testimony is
based upon sufficient facts or data, (2) the testimony
is the product of reliable principles and methods, and
(3) the witness has applied the principles and methods
' For the purposes of its review of this Motion, the Court
considers only the Amended Rebuttal Expert Report of Jerry D.
Voight (D.I. 74 Ex. A).
2

Case 1:04-cv-00940-JJF Document 77 Filed 08/04/2006 Page 3 of 4
reliably to the facts of the case.
Fed. R. Evid. 702. The Rules of Evidence do not permit expert
testimony as to legal conclusions. Salas by Salas v. Wang, 846
F.2d 897, 905 n.5 (3d Cir. 1988); see Fed. R. Evid. 704.
This Court excludes testimony by patent law experts on
substantive issues of patent law. (D.1. 70 Ex. C, D); Revlon
Consumer Prods. Corp. v. L'Oreal S.A., 1997 U.S. Dist. LEXIS
4117, at *9-10 (D. Del. March 26, 1997). Testimony by Mr. Voight
must therefore be restricted to PTO practice and procedures and
may not include legal conclusions or substantive issues of patent
law.
In response to Defendant’s Motion, Plaintiff’s expert
removed his legal opinions on two-way testing in the Amended
Rebuttal Expert Report. (D.I. 74 Ex. A). Plaintiff agrees to
refrain from soliciting Mr. Voight’s opinion about which test for
obviousness-type double—patenting should apply in this case.
(D.I. 74 at 7). Despite Plaintiff’s assurances, the Court
concludes that section “V. Opinions and Basis Therefor," sub-
section “A. Legal Background for Opinions" of Mr. Voight’s report
must be stricken because it contains inadmissible legal
conclusions. (D.1. 74, Ex. A at 10-11).
3

Case 1:O4—cv-00940-JJF Document 77 Filed 08/O4/2006 Page 4 of 4
ORDER
NOW THEREFORE IT IS HEREBY ORDERED that Defendant Teva
Pharmaceuticals USA, Inc ’s Motion To Preclude The Testimony Of
Plaintiff’s Patent Law Expert (D.I. 69) is GRANTED and section
V., sub—section A., of Mr. Voight’s “Amended Rebuttal Expert
Report" (D.I. 74 Ex. A at l0—ll), is stricken.
August [·, 2006 , X;\`p r_
X fa` D Lkggfg
UN TED TA~ S DISTRICT JUDGE
4