`H155kowC
`
`1
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`------------------------------x
`
`KOWA COMPANY, LTD., et al.,
`
`
`
` Plaintiffs, New York, N.Y.
`
`
` 14 Civ. 2758 (PAC)
` v. 14 Civ. 2759 (PAC)
` 14 Civ. 2760 (PAC)
`AMNEAL PHARMACEUTICALS, LLC. 14 Civ. 5575 (PAC)
`et al.,
` 14 Civ. 7934 (PAC)
` 15 Civ. 3935 (PAC)
` Defendants.
`
`------------------------------x
`
`
`
` January 5, 2017
` 2:30 p.m.
`
`Before:
`
`
`HON. PAUL A. CROTTY,
`
`
`
` District Judge
`
`
`
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 2 of 35
`H155kowC
`
`2
`
`APPEARANCES
`
`
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY & POPEO, P.C.
` Attorneys for Plaintiffs
`BY: JENNIFER L. DEREKA
` DAVID G. CONLIN
` KATHLEEN B. CARR
` ADAM PHILLIP SAMANSKY
`
`MADDOX EDWARDS, PLLC
` Attorneys for Defendants Amneal and Apotex
`BY: STEVEN A. MADDOX
`
`ALSTON & BIRD, LLP
` Attorneys for Defendant Orient
`BY: NATALIE C. CLAYTON
` FRANK G. SMITH
` YI WEN WU
` SHRI M. ABHYANKAR
`
`WHITERS BERGMAN, LLP
` Attorneys for Defendants Zydus and Cadila
`BY: STEVEN J. MOORE
` JAMES E. NEALON
`
`SUGHRUE MION, PLLC
` Attorneys for Defendant Sawai
`BY: AZY S. KOKABI
` CHIDAMBARAM S. IYER
` -AND-
`FLEMMING, ZULACK, WILLIAMSON, ZAUDERER, LLP
`BY: CRAIG S. KESCH
`
`KELLEY DRYE & WARREN, LLP
` Attorneys for Defendant Lupin
`BY: BETH D. JACOB
` DOUGLASS C. HOCHSTETLER
` MALAVIKA A. RAO
`
`
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 3 of 35
`H155kowC
`
`3
`
`(Case called)
`
`THE DEPUTY CLERK: Counsel for plaintiffs, please
`
`state your appearances.
`
`MS. DEREKA: Good afternoon, your Honor. Jennifer
`
`Dereka from Mintz Levin, here on behalf of plaintiffs Kowa
`
`Company Ltd, et al. Here with me today to my immediate right,
`
`Kathleen Carr.
`
`THE COURT: Ms. Carr.
`
`MS. CARR: Good afternoon, your Honor.
`
`MS. DEREKA: David Conlin.
`
`THE COURT: Mr. Conlin.
`
`MR. CONLIN: Your Honor.
`
`MS. DEREKA: And Adam Samansky.
`
`MR. SAMANSKY: Good afternoon.
`
`THE COURT: Mr. Samansky.
`
`THE DEPUTY CLERK: For defendants, beginning with
`
`Amneal Pharmaceuticals.
`
`MR. MADDOX: Good afternoon, your Honor. Steven
`
`Maddox from Maddox Edwards for defendant Amneal Pharmaceutical
`
`Company and also for Apotex.
`
`THE COURT: You are substituted in today?
`
`MR. MADDOX: Yes.
`
`THE COURT: Thank you, Mr. Maddox.
`
`THE DEPUTY CLERK: For Orient Pharmaceuticals.
`
`MS. CLAYTON: Good afternoon, your Honor. Natalie
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 4 of 35
`H155kowC
`
`4
`
`Clayton with Alston & Bird for Orient. With me today is my
`
`partner Frank Smith from the Atlanta office.
`
`THE COURT: Hello, Mr. Smith. Nice to see you again.
`
`MR. SMITH: Nice to see you, your Honor.
`
`MS. CLAYTON: Shri Abhyankar and Wen Wu.
`
`THE COURT: Thank you.
`
`THE DEPUTY CLERK: For Zydus?
`
`MR. MOORE: Steven Moore for Zydus Pharmaceuticals,
`
`USA, Cadila Healthcare, and with my colleague James Nealon.
`
`THE DEPUTY CLERK: For Sawai?
`
`MS. KOKABI: Good afternoon. My name is Azy Kokabi
`
`for Sawai Pharmaceuticals of Sughrue Mion, and with me today is
`
`my partner Chid Iyer, and also Craig Kesch from the law firm of
`
`Flemming Zulack.
`
`THE COURT: Thank you, Ms. Kokabi.
`
`THE DEPUTY CLERK: And for Lupin?
`
`MS. JACOB: Your Honor, Beth Jacob of Kelley, Drye &
`
`Warren, and with me is Douglass Hochstetler, Constantine
`
`Koutsoubas and Malavika Rao.
`
`THE COURT: Thank you, Ms. Jacob.
`
`The first thing I would like to take up is the motions
`
`in limine. I have read all the papers and I am prepared to
`
`rule. Does anybody want to argue?
`
`MS. CLAYTON: We have prepared short argument on the
`
`MILs that the defendants have filed, if the Court wishes to
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 5 of 35
`H155kowC
`
`5
`
`hear them.
`
`THE COURT: I have read all the papers. Unless you
`
`are going to add something new rather than emphasizing points
`
`that you have already made.
`
`MS. CLAYTON: For Orient, your Honor, we can rest on
`
`the papers. Some of the other defendants had some other issues
`
`that they raised. I would just make sure that they don't have
`
`anything to add.
`
`MR. MADDOX: Nothing for Amneal or Apotex.
`
`MR. MOORE: For Zydus Pharmaceuticals, we wanted to
`
`add in a copy of the Phillips v. AWH Corporation case which I
`
`think answers the entire question and fact that the federal
`
`circuit actually defines the ordinary and clear meaning of a
`
`term as being deemed to have the expert having read the
`
`specification and that's what this whole argument was about.
`
`If I can hand that up to the Court?
`
`THE COURT: Yes.
`
`Mr. Samansky?
`
`MR. SAMANSKY: Your Honor, with respect to that same
`
`motion, I think it is fair to say we disagree with counsel's
`
`characterization of the Phillips case. We also noticed there
`
`was one page missing from the reply declaration. We can hand a
`
`copy of that missing page up if the Court would desire, or take
`
`care of that after the hearing.
`
`THE COURT: I didn't notice the one page that was
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 6 of 35
`H155kowC
`
`6
`
`missing I had so many pages, but if you want to hand it up,
`
`fine.
`
`MR. SAMANSKY: Thank you, your Honor. It is just the
`
`last page of the last exhibit to the reply declaration.
`
`THE COURT: Yes, Mr. Conlin?
`
`MR. CONLIN: Your Honor, I don't want to argue against
`
`somebody who is not arguing but I would like to point out that
`
`in the interim, since these were filed,Amneal has stipulated to
`
`infringement which changes things a bit.
`
`THE COURT: I noticed that -- the score sheet that I
`
`am using is Ms. Clayton's letter of December 20 when she
`
`transmitted the courtesy copies defendants' pretrial filings
`
`with respect to the 16th attachment, Amneal Pharmaceuticals'
`
`motion in limine to exclude expert testimony for refusal to
`
`provide depositions, that motion has now been withdrawn, and I
`
`note also in respect to document no. 8 in Ms. Clayton's letter,
`
`Amneal's proposed findings of fact and conclusions of Law about
`
`non-infringement of the '993 patent. I take it that Amneal has
`
`now conceded infringement of the '993 patent and its motion to
`
`exclude expert testimony is now moot by its concession and its
`
`application infringes the claims '993 patent?
`
`MR. MADDOX: If they're valid, yes.
`
`THE COURT: Pardon?
`
`MR. MADDOX: If they're valid.
`
`THE COURT: Yes. Yes.
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 7 of 35
`H155kowC
`
`7
`
`MR. MADDOX: That's why we withdrew them.
`
`THE COURT: Thank you.
`
`So, submissions 8 and 16, in Ms. Clayton's affidavit
`
`are taken care of.
`
`With regard to the plaintiff's application to exclude
`
`the non-infringement testimony of the expert Dr. Joseph
`
`Reibenspies, I am going to grant the motion. The time for
`
`construction is over with and so I'm going to grant Kowa's
`
`motion in limine.
`
`With respect to the motion submitted at 14 with
`
`Ms. Clayton's letter, that to preclude the testimony of
`
`Dr. Steven Byrn, B-Y-R-N, and Dr. James Kaduk, that opinion is
`
`not disclosed in their initial expert report and associated
`
`declarations and exhibits, I'm going it deny that motion in
`
`limine.
`
`With respect to the redaction of testimony, the
`
`redacted testimony, since it is all going -- all of this
`
`testimony and exhibits are going to be received in open court,
`
`I suggest very strongly that you get rid of redaction because
`
`I'm not going to entertain, as we sit here in this proceeding,
`
`that certain proceedings and certain exhibits and testimony may
`
`be highly confidential. We can't run the court that way. So,
`
`I suggest you get rid of the redaction. In the meantime, if
`
`you don't want to do that because the concerns of security are
`
`so great, I think that plaintiff's suggestion to provide
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 8 of 35
`H155kowC
`
`8
`
`unredacted reports to defendants on attorneys' eyes only basis
`
`appears to be a good practical solution but I'm not going to
`
`listen to applications to seal parts of the record as highly
`
`confidential.
`
`Also, with regard to the motion to preclude
`
`plaintiff's experts Brandon Kaduk regarding the infringement of
`
`the '993 patent and the doctrine of equivalents, I'm going to
`
`deny that motion as well.
`
`That takes care of the motions in limine.
`
`I have a suggestion. While our court reporters will
`
`do an excellent job of recording this, the testimony, I would
`
`suggest we prepare a glossary of technical terms so that the
`
`court reporter will not have to ask for spellings or
`
`clarification or re-announcement of these various terms so that
`
`they will be available, and I suggest that you work on that.
`
`It will be also helpful to the Court as well.
`
`About documents to be submitted, exhibits, I prefer
`
`hard copies rather than looking on these things on the screen.
`
`I gather there is a number of exhibits, quite numerous?
`
`Marlon, do you want to explain the procedure for
`
`getting those documents into the court house?
`
`THE DEPUTY CLERK: May we first ask your Honor how
`
`many boxes the parties estimate will be delivered for this
`
`trial? Approximately.
`
`THE COURT: Mr. Conlin?
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 9 of 35
`H155kowC
`
`9
`
`MR. CONLIN: We think at least 20 but we have an issue
`
`with the number of the exhibits that have been identified by
`
`the other side.
`
`THE COURT: Let's take it one thing at a time.
`
`MR. CONLIN: Yes, your Honor.
`
`THE COURT: More than 20.
`
`Mr. Smith?
`
`MR. SMITH: Canvassing our group, we would estimate
`
`about 20 also, your Honor.
`
`THE COURT: So about 40.
`
`MR. SMITH: Yes, sir.
`
`THE COURT: Marlon?
`
`THE DEPUTY CLERK: So, in order to get 20 plus 20
`
`which is 40 boxes into the court house, we ask that deliveries
`
`be made by Thursday, January 12th. In order to have those
`
`boxes delivered, we assume you will have a delivery service
`
`dropping off those boxes. If you can let us know: One, the
`
`name of the delivery service; two, the name of the driver;
`
`three, license plate information in the form of letter by
`
`Wednesday, January 11th, we will let the Court Security Office
`
`and District Executive's office know of this information so
`
`that the driver and the delivery can be made directly through
`
`the freight elevator here in the court house.
`
`THE COURT: If you walk around the court house you
`
`will understand the reason for this procedure. This is a
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 10 of 35
`H155kowC
`
`10
`
`highly-gated community. To have the gates open you have to
`
`have the right kind of permission slips. Okay, 20 boxes for
`
`each side.
`
`With regard to the pretrial order which I am prepared
`
`to sign, I have the strong preference for live witness
`
`testimony. If you are going to have depositions, I'm not going
`
`to read the depositions, they'll be read into the record from
`
`the stand. I ask you to keep that to a limit, limit that as
`
`much as possible because I prefer live testimony.
`
`With regard to the experts, I note that each of the
`
`defendants has their own expert. That's fine with me. I am
`
`not going to listen to expert testimony that is repetitive.
`
`So, if an expert for defendant 1 testifies this is a patent
`
`being invalid for a particular reason, I'm not going to hear
`
`the same testimony from the expert for defendant two. If it is
`
`different, I will consider it. If it is the same, I won't
`
`consider it. You know the old expression? Everything has been
`
`said but not everybody has said it. So, I am not going to
`
`listen to everybody saying the same thing simply because he has
`
`been retained or she has been retained as an expert. You think
`
`repetition is helpful? It won't be. So, I will let you know
`
`about that.
`
`According to the pretrial order, I have the following
`
`information: The '336 patent is challenged not for lack of
`
`validity by Amneal, Orient, Sawai, and Zydus and infringement
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 11 of 35
`H155kowC
`
`11
`
`as to those particular defendants on the '336 patent is
`
`conceded, the four defendants object only to validity; is that
`
`correct?
`
`MR. CONLIN: That's correct.
`
`MS. CLAYTON: That's correct, your Honor.
`
`THE COURT: With respect to the '993 patent, Amneal
`
`concedes infringement and challenges validity as do the five
`
`other defendants Orient, Sawai, Zydus, Apotex, and Lupin;
`
`correct?
`
`MS. CLAYTON: That's correct, your Honor.
`
`THE COURT: All right.
`
`And with respect to validity, the challenges as to
`
`validity, the defendants have the burden of proof with respect
`
`to infringement, the plaintiff Kowa has the burden of proof.
`
`Now, Mr. Conlin, you wanted to take something up about
`
`the exhibits?
`
`MR. CONLIN: Well, I do.
`
`So, we feel that we don't even yet have an actual
`
`exhibit list. The exhibits we have been informed about by the
`
`other side amount to 2,501 exhibits for a two-week trial. Now,
`
`I understand they're going to put them all in 20 boxes. I'm
`
`not sure they'll be able to do that but we have no idea what,
`
`of those 2,500 exhibits, they're going to be putting before the
`
`Court and we feel that it is really unfair that we should be
`
`put in this position. And we have complained about it to the
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 12 of 35
`H155kowC
`
`12
`
`other side but we have not gotten anywhere.
`
`THE COURT: Who wants to respond to that?
`
`MR. SMITH: Your Honor, Frank Smith.
`
`THE COURT: Yes, Mr. Smith?
`
`MR. SMITH: A couple of things.
`
`There are a large number of documents that have been
`
`designated, he is perfectly correct about that. We are in the
`
`process of eliminating some duplicates from that. That will
`
`result in some reduction in the number. Frankly, the large
`
`volume is attributable to the fact that there are a number of
`
`experts, as you have seen, and out of what I would characterize
`
`as an abundance of caution, the exhibits, the documents that
`
`are referenced in their reports, were designated as potential
`
`trial exhibits and so that is one of the reasons for the large
`
`number.
`
`We have also had discussions with plaintiff's counsel
`
`about mechanisms for providing mutually, exchanges in advance
`
`of a witness testifying, the documents that will be used on the
`
`direct examination of that witness. So, I think that will
`
`ameliorate a great deal of the perceived difficulty.
`
`Two other issues.
`
`THE COURT: How long in advance of the trial are you
`
`going to do that?
`
`MR. SMITH: I beg your pardon?
`
`THE COURT: How long in advance of the trial are you
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 13 of 35
`H155kowC
`
`13
`
`going to do that?
`
`MR. SMITH: I think what we have proposed is that we
`
`would provide the list of documents be used on direct a couple
`
`of days in advance of the witness testifying.
`
`THE COURT: Can you be a little bit more precise?
`
`What I am thinking about, in criminal trials, for example, you
`
`get the order of the witnesses on Friday and you will know who
`
`the witnesses are Monday, Tuesday, and Wednesday and you can
`
`then have the weekend to sort out the documents as to which
`
`documents go with which particular witness, then you have a
`
`rolling disclosure so that it is -- you always have two or
`
`three days' notice.
`
`MR. SMITH: That is precisely what we have proposed to
`
`the plaintiffs. In addition, I point out that they've
`
`themselves designated about 1,300 exhibits and we have provided
`
`the plaintiffs with identification of each of the exhibits by
`
`Bates number reference to deposition exhibit, that sort of
`
`thing. So, they do have substantial identifiers for these
`
`documents and they did not, for whatever reason, provide us
`
`with that. We have proposed and they responded, with regard to
`
`exchanging hard copies or perhaps electronic copies of the
`
`actual documents next week so that they will have our actual
`
`exhibit set, we will have their actual exhibit set, and with
`
`regard to the rolling identification of the exhibits with
`
`regard to witnesses as they appear which your Honor referenced
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 14 of 35
`H155kowC
`
`14
`
`and as I say we have already, to some extent implemented, we
`
`think that will take care of any problem.
`
`THE COURT: And how many documents are going to be
`
`marked into evidence or submitted?
`
`MR. SMITH: Your Honor, it is hard to predict at this
`
`time but I think we all know that it typically is a small
`
`fraction of what the parties identify in the pretrial
`
`submissions. It might be a hundred. They might have 75 out of
`
`the 1,300.
`
`THE COURT: Okay.
`
`I think it is a lot to expect any judge, even judges
`
`who are much smarter than myself, to digest 2,500 exhibits. It
`
`is beyond comprehension. So, to the extent you get the list
`
`down it would be very helpful.
`
`Mr. Conlin?
`
`MR. CONLIN: Your Honor, it makes it even harder to
`
`prepare for trial with us facing this at this point so we will
`
`get something sometime next week and we don't know what. I am
`
`glad to hear they are going to do a two-day based, they had
`
`proposed one day and that's good.
`
`We are also concerned about the number of witnesses
`
`that will be prepared or will be before the Court. As of right
`
`now, the last we heard the defendants will have 11 witnesses in
`
`their case-in-chief and at least three witnesses in the
`
`rebuttal case, and because we need to respond to all of those
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 15 of 35
`H155kowC
`
`15
`
`folks, we have a list of 10 witnesses that we plan to put on.
`
`So, that's at least 24 witnesses. And they have left an option
`
`open to put up to 40-something other witnesses including people
`
`live. And so, we are flummoxed as to what their real intent,
`
`is and we also are very concerned that with a two-week trial we
`
`won't have time to put 24 witnesses on.
`
`THE COURT: We will add more time. It is a non-jury
`
`trial so we will proceed -- I am not going to tell any party
`
`that he or she can't put on the witnesses that they think are
`
`necessary to make their case up, so. Although, you know, the
`
`shorter the better. I am not going to set a numeric limitation
`
`on the number of witnesses.
`
`MR. SAMANSKY: No, we are not asking for that, your
`
`Honor. I am glad to hear it sounds like the Court has maybe
`
`additional time after the two-week period. That may be very
`
`great help but we would also like help in trying to figure out
`
`who is real. I mean, 40 possible witnesses just kind of -- and
`
`2,500 exhibits we are bouncing off the walls. That's my
`
`concern.
`
`THE COURT: Okay. Well, you will just have to wait I
`
`guess. The number of witnesses is going to come down according
`
`to what Mr. Smith said; is that right, Mr. Smith?
`
`MR. SMITH: I fully expect that to be the case, though
`
`perhaps not with the experts because, as your Honor noted, many
`
`of the defendants, in some instances, have an expert that is
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 16 of 35
`H155kowC
`
`16
`
`specific to that particular defendant with regard to the
`
`infringement issues, not with regard to some of the other
`
`common issues. In those instances it is much more likely that
`
`one expert would testify on behalf of multiple defendants.
`
`THE COURT: Give me an example then, will you?
`
`MR. SMITH: Invalidity.
`
`THE COURT: Yes.
`
`MR. SMITH: In most respects the defendants have a
`
`common interest there.
`
`THE COURT: It is obvious, if something is obvious or
`
`anticipated by prior art you don't need multiple witnesses on
`
`that; is that correct?
`
`MR. SMITH: Exactly. It may be that there is a
`
`particular defendant that has an additional invalidity theory
`
`on top of what the other defendants have.
`
`THE COURT: Yes.
`
`MR. SMITH: And that they've got their own expert with
`
`regard to that narrow invalidity issue, but for the great bulk
`
`of the validity case it will be a much more limited number of
`
`experts.
`
`THE COURT: Mr. Maddox?
`
`MR. MADDOX: If I may, your Honor?
`
`For each validity defense that you have in your
`
`pretrial order there are no multiple experts. The defendants
`
`have jointly retained the one expert that is going to talk
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 17 of 35
`H155kowC
`
`17
`
`about this validity defense, the experts are going to talk
`
`about this validity defense. There is no twists and spins.
`
`So, the reason why there will be a high number of
`
`experts is because of infringement which will frankly become
`
`somewhat repetitious because some of the infringement issues
`
`are very similar and obviously people will be guided by your
`
`not repeating things, but we have consolidated where we can and
`
`you will not have each defendant's take on invalidity.
`
`THE COURT: Okay.
`
`MR. CONLIN: Your Honor, we are still concerned about
`
`it and we had planned today to suggest that we should consider
`
`maybe moving the trial for some period which not only would try
`
`to alleviate these problems but might make for --
`
`THE COURT: Moving the trial?
`
`MR. CONLIN: Yes, your Honor.
`
`THE COURT: What do you mean moving? Adjourning it,
`
`you mean?
`
`MR. CONLIN: Moving it to a different date forward.
`
`THE COURT: I am not going to do that.
`
`MR. CONLIN: I understand.
`
`THE COURT: We have had this trial set for a long time
`
`and everybody has been preparing for it and I have been
`
`preparing for it and reading materials that you submitted,
`
`they're voluminous. I have done the best I can but I have got
`
`other things to do. And so, I have set this for two weeks in
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 18 of 35
`H155kowC
`
`18
`
`January. If we need more time maybe we will find more time but
`
`I'm not moving the trial.
`
`MR. CONLIN: Thank you, your Honor. I appreciate it.
`
`THE COURT: Anybody else want to ask for an
`
`adjournment so I can deny that as well? All right.
`
`Do you have anything else you want to take up,
`
`Mr. Conlin?
`
`MR. CONLIN: Ms. Carr is better adept than I at
`
`dealing with the details of things and she has some thoughts to
`
`raise.
`
`THE COURT: All right, Ms. Carr.
`
`MS. CARR: Your Honor has actually addressed some of
`
`the issues already. One main concern we had was the attorneys
`
`confidentiality and how the trial would proceed logically
`
`without having some kind of plan in place for that. So, we
`
`appreciate that, your Honor.
`
`THE COURT: The plan is that we are not going to
`
`entertain requests for confidentiality in an open court
`
`proceeding. It is just too complicated.
`
`MS. CARR: Thank you very much, your Honor.
`
`And with regard to trial exhibits, we had a question
`
`about witness binders. So, we understand that the Court would
`
`prefer to have two witness binders.
`
`THE COURT: One for me and one for the clerk who is
`
`assisting me.
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 19 of 35
`H155kowC
`
`19
`
`MS. CARR: And one for the witness. And we are
`
`wondering what the Court has in mind as far as providing
`
`additional witness binders to opposing counsel or -- we were
`
`hoping to be able to exchange one witness binder with opposing
`
`counsel and leave it at that as the opposed to having made six
`
`every time there is a witness.
`
`THE COURT: Well, Mr. Maddox?
`
`MR. MADDOX: Some amount of sharing is possible but I
`
`think it should more than one for six different defendants.
`
`THE COURT: One for every two?
`
`MR. MADDOX: I think that would be fine.
`
`THE COURT: So three for defendants' table, two for
`
`the Court, one for my Ms. Sarah Hoefle who is sitting here --
`
`one for my clerk working on this matter, one for me, one for
`
`the witness of course, unless the witness wants to read them
`
`off the electronic version.
`
`MS. CARR: Thank you, your Honor.
`
`THE COURT: I think it is always better to have the
`
`witness with a hard copy. It seems to work better.
`
`MS. CARR: I agree, your Honor. Thank you.
`
`One thing that we are wondering about is we understand
`
`that motions in limine were due to be filed at the same time as
`
`the pretrial submissions but we have discovered some new
`
`surprise arguments that really are kind of an attorney argument
`
`as opposed to based on evidence and we are wondering if the
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 20 of 35
`H155kowC
`
`20
`
`Court would prefer to have motions or motion at least in limine
`
`to address that before the trial or should we raise that at the
`
`time of introduction.
`
`THE COURT: Raise it now. I am fairly busy between
`
`now and the trial, but if you want to raise them now maybe I
`
`can get to consider them.
`
`So, if you want to take a date and tell me when you
`
`are going to raise these issues? Today is the 5th, trial
`
`starts on the 23rd. If you can raise them sometime during the
`
`week -- trial starts on the 17th, right after Martin Luther
`
`King Day. So, if you can raise him by the 12th, that would be
`
`fine.
`
`MS. CARR: Thank you very much, your Honor. We think
`
`that will be helpful.
`
`THE COURT: That's it, Ms. Carr?
`
`MS. CARR: I think that's it at the moment, your
`
`Honor. Thank you.
`
`THE COURT: Okay.
`
`Mr. Smith and Ms. Clayton?
`
`MR. SMITH: Yes, sir.
`
`We have got a short list of things we would like to
`
`just confirm in some instances with the Court and in one or two
`
`other instances understand how you want things run.
`
`As I understand the order of proof, plaintiffs will
`
`put on their infringement case, the defendants will then
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 21 of 35
`H155kowC
`
`21
`
`respond with our non-infringement and invalidity case,
`
`plaintiff will come back with its response on rebuttal to
`
`infringement and its response to our invalidity case, and then
`
`the defendants will have the last word with regard to validity.
`
`That's the way we had envisioned, in effect, the broad scope
`
`order of proof. And I wanted to confirm Court --
`
`THE COURT: Have you talked with Ms. Carr?
`
`MR. SMITH: We are in dialogue back and forth about
`
`that sort of thing.
`
`THE COURT: Mr. Conlin? Ms. Carr?
`
`MR. CONLIN: We haven't yet, your Honor, but we will
`
`be glad to talk with them about it. We will consider it and
`
`get back to the Court. We hadn't really talked about that yet.
`
`We talked about who was going to start and what we are going to
`
`start with but we haven't talked about that scheme, so.
`
`THE COURT: When are you going to do that, Mr. Conlin?
`
`MR. CONLIN: How about this afternoon after the
`
`proceeding?
`
`THE COURT: Okay.
`
`MR. SMITH: I am here.
`
`Your Honor, there are two subsidiary points, one
`
`relates to a couple of experts who have some particular
`
`scheduling problems, one that we know of on the plaintiff's
`
`side in particular. We will work together to make sure that
`
`those --
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-0300
`
`
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Case 1:14-cv-02758-PAC Document 128 Filed 01/13/17 Page 22 of 35
`H155kowC
`
`22
`
`THE COURT: I would be happy to take witnesses out of
`
`order.
`
`MR. SMITH: That was my point.
`
`THE COURT: Yes.
`
`MR. SMITH: But I wanted to alert the Court to the
`
`notion that there might be one or two witnesses who would
`
`appear out of order.
`
`THE COURT: It always happens, so that is fine with
`
`me.
`
`MR. SMITH: The other thing is with regard to the
`
`obviousness defense with regard to validity, it is our
`
`understanding that the secondary considerations are an element
`
`of the patentee's response to the defendants' position with
`
`regard to the patent being invalid for obviousness and that the
`
`plaintiffs -- the patentee, in its response to the defendants'
`
`validity case, would put on its evidence of the secondary
`
`considerations, for example commercial success, and then the
`
`defendants come back at the end of the trial and put on our
`
`response to the secondary considerations. That way the
`
`defendants aren't put in the position of introducing evidence
`
`on five or six of the secondary considerations when in point of
`
`fact the plaintiff may only put on evidence with regard to two
`
`or three. Now, that was not the sequence in which it was
`
`handled at the expert witness stage, I understand that, but
`
`that strikes me as a different sort of thing as opposed to
`
` SOUTHERN DISTRICT REPORTERS, P.C.
` (212) 805-