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