United States District Court, D. Delaware
E. Farnan and Christine D. Haynes, RICHARDS, LAYTON, &
FINGER, P.A., Wilmington, DE; Dominick A. Conde, Christopher
P. Borello, Brendan M. O'Malley, and Damien N.
Dombrowski, VENABLE LLP, New York, NY, attorneys for
B. Blumenfeld and Jeremy A. Tigan, MORRIS, NICHOLS, ARSHT
& TUNNELL LLP, Wilmington, DE; Martin J. Black, Kevin M.
Flannery, Robert Ashbrook, and Sharon K. Gagliardi, DECHERT
LLP, Philadelphia, PA; Blake B. Green, DECHERT LLP, Austin,
TX, attorneys for Defendants.
ANDREWS, U.S. DISTRICT JUDGE.
pending before the Court is Plaintiffs motion to exclude the
testimony of William 0. Kerr, Ph.D. (D.I. 129). The parties
have fully briefed the issues. (D.I. 129, 139, 160). At oral
argument on the parties' summary judgment motions, I
requested further briefing. (Hr'g Trans, at 95:20-25).
The supplemental briefing was completed on March 25, 2019.
(D.I. 256, 258, 265, 266). After full consideration of the
parties' briefing, Plaintiffs motion is GRANTED-IN-PART
Vectura Limited sued Defendants GlaxoSmithKline LLC and Glaxo
Group Limited on July 27, 2016 alleging infringement of U.S.
Patent Nos. 8, 303, 991 ("the '991 patent") and
8, 435, 567 ("the '567 patent"). (D.I. 1).
Plaintiff has narrowed its infringement allegations to claim
3 of the '991 patent and claim 3 of the '567 patent
("the Asserted Claims"). The patents-in-suit
"relate to pharmaceutical compositions for inhalation
and methods of making them." (D.I. 82 at 1). The
asserted claims are dependent claims that only cover
compositions where the additive is magnesium stearate. (D.I.
195 at 9).
this litigation, the parties had entered a license agreement
on August 5, 2010 ("the 2010 Agreement"). (D.I. 256
at 6; D.I. 258 at 5). The 2010 Agreement included a covenant
not to sue for certain of Plaintiffs patents and patent
applications ("the Non-Assert Patents"), including
the patents-in-suit. (D.I. 256 at 7; D.I. 258 at 5). The 2010
Agreement provided Defendants "with an option to license
Non-Assert Patents by identifying or 'nominating'
them on or before July 31, 2016." (D.I. 256 at 7; D.I.
258 at 5). On July 26, 2016, Defendants formally notified
Plaintiff under the 2010 Agreement that they declined to
exercise the option and thereby terminated both the covenant
not to sue and the option to license. (D.I. 256 at 7; D.I.
258 at 6-7).
Rule of Evidence 702 sets out the requirements for expert
witness testimony and states:
A witness who is qualified as an expert by knowledge, skill,
experience, training, or education may testify in the form of
an opinion or otherwise if: (a) the expert's scientific,
technical, or other specialized knowledge will help the trier
of fact to understand the evidence or to determine a fact in
issue; (b) the testimony is based on sufficient facts or
data; (c) the testimony is the product of reliable principles
and methods; and (d) the expert has reliably applied the
principles and methods to the facts of the case.
Evid. 702. The Third Circuit has explained:
Rule 702 embodies a trilogy of restrictions on expert
testimony: qualification, reliability and fit. Qualification
refers to the requirement that the witness possess
specialized expertise. We have interpreted this requirement
liberally, holding that a broad range of knowledge, skills,
and training qualify an expert. Secondly, the testimony must
be reliable; it must be based on the "methods and
procedures of science" rather than on "subjective
belief or unsupported speculation"; the expert must have
"good grounds" for his or her belief. In sum,
Daubert holds that an inquiry into the reliability
of scientific evidence under Rule 702 requires a
determination as to its scientific validity. Finally, Rule
702 requires that the expert testimony must fit the issues in
the case. In other words, the expert's testimony must be
relevant for the purposes of the case and must assist the
trier of fact. The Supreme Court explained in
Daubert that Rule 702's "helpfulness"
standard requires a valid scientific connection to the
pertinent inquiry as a precondition to admissibility.
By means of a so-called "Daubert hearing,"
the district court acts as a gatekeeper, preventing opinion
testimony that does not meet the requirements of
qualification, reliability and fit from reaching the jury.
See Daubert ("Faced with a proffer of expert
scientific testimony, then, the trial judge must determine at
the outset, pursuant to Rule 104(a) of the Federal Rules of
Evidence whether the expert is proposing to testify to (1)