Case 1:16-cv-00308-TWP-MPB Document 216 Filed 01/12/18 Page 1 of 4 PageID #: 6575
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF INDIANA
`INDIANAPOLIS DIVISION
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`ELI LILLY AND COMPANY,
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`Plaintiff,
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`v.
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`DR. REDDY'S LABORATORIES, LTD.,
`DR. REDDY'S LABORATORIES, INC.,
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`Defendants.
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`DR. REDDY'S LABORATORIES, INC.,
`DR. REDDY'S LABORATORIES, LTD.,
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`Counter
`Claimants,
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`v.
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`ELI LILLY AND COMPANY,
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`Counter
`Defendant.
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` ) No. 1:16-cv-00308-TWP-MPB
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`ENTRY ON DEFENDANTS’ MOTION TO AMEND PARAGRAPH 12 OF THE
`COURT’S ENTRY FOLLOWING PRETRIAL CONFERENCE
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`For the reasons stated below, the Court grants in part, Defendants Dr. Reddy’s
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`Laboratories, LTD. and Dr. Reddy’s Laboratories, Inc. (collectively, “Dr. Reddy’s”) Motion to
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`Amend Paragraph 12 of the Court’s Entry Following Pretrial Conference (ECF. No. 212) (Filing
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`No. 212). Paragraph 12 reads:
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`12. In its summary judgment ruling, the Court determined as a matter of law that
`prosecution history estoppel does not bar Lilly from asserting doctrine of
`equivalents. The parties agreed that evidence and the record submitted at summary
`judgment is identical to the record and evidence that would be presented at trial on
`this issue. Accordingly, no evidentiary presentation is required at trial on this issue.
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`

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`Case 1:16-cv-00308-TWP-MPB Document 216 Filed 01/12/18 Page 2 of 4 PageID #: 6576
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`Id. Dr. Reddy’s argues that while Lilly agreed that its opposition to the summary judgment motion
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`contained all the evidence Lilly would have elicited at trial on prosecution history estoppel, Dr.
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`Reddy’s made no concession that its evidence would be so limited. Dr. Reddy’s proposes
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`Paragraph 12 to read as follows:
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`12. In its summary judgment ruling, the Court determined as a matter of law that
`prosecution history estoppel does not bar Lilly from asserting doctrine of
`equivalents. Lilly stated that the evidence it would have elicited at trial on this issue
`is the same as that which it submitted on summary judgment.
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`Plaintiff, Eli Lilly and Company (“Lilly”) opposes the motion to amend Paragraph 12 and does
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`not agree with Dr. Reddy’s position. (Filing No. 214).
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`The Court is not persuaded by Dr. Reddy’s argument that it made no concession. At the
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`pretrial conference, Lilly raised the question of clarification regarding the Court’s summary
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`judgment ruling on the prosecution history estoppel issue. (Filing No. 210 at 21).1 Dr. Reddy’s
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`offered the context in which this question arose, which largely deals with Dr. Reddy’s concern that
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`Lilly might argue on appeal that it did not get the chance to present evidence to carry Lilly’s burden
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`of rebutting the presumption of prosecution history estoppel because the Court decided this issue
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`on summary judgment. Id. at 22. Therefore, Lilly would not be required to present any evidence
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`on this issue during the trial, and could later strategically use this for a second bite at the apple. Id.
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`at 23.
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`While the Court acknowledges that a significant portion of the dialogue focused on what
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`Lilly might argue in the event of an appeal, the Court specifically asked Dr. Reddy’s for its position
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`1 In terms of your Honor’s summary judgment ruling, Mr. Weiss and I both read you to have decided the
`prosecution history estoppel issue, that prosecution history estoppel does not bar Lilly from asserting doctrine of
`equivalents. And that is with the proviso that I agreed to with Mr. Weiss, that the evidence we would submit at trial is
`the same evidence we would submit at trial is the same evidence we’ve already submitted at summary judgment and
`that there’s no new evidence anyone intends to put in on the issue, and it’s ultimately a question of law, not a question
`of fact. (Filing No. 210 at 21). (emphasis added).
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`2
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`Case 1:16-cv-00308-TWP-MPB Document 216 Filed 01/12/18 Page 3 of 4 PageID #: 6577
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`on Lilly’s repeated assertions that both parties had put in the evidence they wanted to put in on
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`this issue.
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`MR. PERLMAN: -- I don't -- on that issue. So I
`don't -- I don't think either of us think there's more to do
`on that.
`THE COURT: And you agree, that there's nothing more
`that the parties would present?
`MR. WEISS: Yeah. I think Mr. Perlman has addressed
`my -- the real concern that I have --
`THE COURT: Okay.
`MR. WEISS: -- is that there would not be a second
`trial because Lilly says, "We didn't put our evidence in."
`THE COURT: All right. So Lilly has stated for the
`record that you have put your evidence in.
`MR. PERLMAN: We have placed in the record the
`evidence upon which we would rely.
`THE COURT: All right. And both sides have done
`that and the Court has issued a ruling on this question of
`law.
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`Filing No. 210 at 24.
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`Dr. Reddy’s now asserts that it was not making a concession that it had put in all of their
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`evidence on this issue. Although the time to have made that patently clear would have been when
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`asked by the Court at the pretrial conference, the Court will accept Dr. Reddy’s suggestion stated
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`in its Reply, (Filing No. 215 at 5) and Paragraph 12 will be amended to state the following:
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` In its summary judgment ruling, the Court determined as a matter of law that
`prosecution history estoppel does not bar Lilly from asserting doctrine of
`equivalents. The parties agreed that evidence and the record submitted at summary
`judgment is identical to the record and evidence that would be presented at trial on
`this issue. However, the Court clarifies that (i) the record on the issue of prosecution
`history estoppel will include both the summary judgment record and the trial record,
`and (ii) both parties are permitted, but not required, to supplement the summary
`judgment record on the issue of prosecution history estoppel with appropriate trial
`evidence.
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`SO ORDERED.
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`1/12/2018
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`Date:
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`3
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`

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`Case 1:16-cv-00308-TWP-MPB Document 216 Filed 01/12/18 Page 4 of 4 PageID #: 6578
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`David M. Krinsky
`WILLIAMS & CONNOLLY, LLP
`dkrinsky@wc.com
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`Andrew Lemens
`WILLIAMS & CONNOLLY LLP
`alemens@wc.com
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`Merri C Moken
`HOLLAND & KNIGHT LLP
`merri.moken@hklaw.com
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`Rory O'Bryan
`HARRISON & MOBERLY
`(Indianapolis)
`robryan@harrisonmoberly.com
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`Charles E. Oswald, IV
`HARRISON & MOBERLY
`(Indianapolis)
`coswald@harrisonmoberly.com
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`Adam L. Perlman
`WILLIAMS & CONNOLLY LLP
`aperlman@wc.com
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`Alec T. Swafford
`WILLIAMS & CONNOLLY LLP
`aswafford@wc.com
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`Charles A. Weiss
`HOLLAND & KNIGHT LLP
`charles.weiss@hklaw.com
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`Eric H. Yecies
`HOLLANDS & KNIGHT LLP
`eric.yecies@hklaw.com
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`Distribution:
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`Jeffery B. Arnold
`HOLLAND & KNIGHT LLP
`jeffery.arnold@hklaw.com
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`Stephen E. Arthur
`HARRISON & MOBERLY
`(Indianapolis)
`sarthur@harrisonmoberly.com
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`Christopher T Berg
`WILLIAMS & CONNOLLY LLP
`cberg@wc.com
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`Jan M. Carroll
`BARNES & THORNBURG, LLP
`(Indianapolis)
`jan.carroll@btlaw.com
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`Anne N. DePrez
`BARNES & THORNBURG LLP
`(Indianapolis)
`adeprez@btlaw.com
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`Galina I. Fomenkova
`WILLIAMS & CONNOLLY LLP
`gfomenkova@wc.com
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`Bruce Roger Genderson
`WILLIAMS & CONNOLLY LLP
`bgenderson@wc.com
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`Dov P. Grossman
`WILLIAMS & CONNOLLY, LLP
`dgrossman@wc.com
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`4
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