Plexxikon Inc. v. Novartis Pharmaceuticals Corporation

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4 UNITED STATES DISTRICT COURT

5 NORTHERN DISTRICT OF CALIFORNIA

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7 PLEXXIKON INC., Case No. 17-cv-04405-HSG

8 Plaintiff, ORDER DENYING MOTION TO

EXCLUDE CERTAIN OPINIONS AND

9 v. TESTIMONY OF DEFENDANT'S

TECHNICAL EXPERTS

10 NOVARTIS PHARMACEUTICALS

CORPORATION, Re: Dkt. No. 165

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Defendant.

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13 Pending before the Court is Plaintiff Plexxikon Inc.’s motion to exclude certain opinions

14 and testimony of Defendant Novartis Pharmaceuticals Corporation’s technical experts. Dkt. No.

15 165. The Court heard argument on this motion on November 1, 2019. See Dkt. No. 341. As

16 detailed below, the Court DENIES the motion.

17 I. BACKGROUND

18 Plaintiff challenges portions of the expert reports and the anticipated testimony of three of

19 Defendant’s technical experts: Dr. Phil S. Baran; Dr. Swaminathan Natarajan; and Dr. Andrew

20 Jennings. Dkt. No. 165. Plaintiff does not appear to question the credentials of the three experts,

21 but instead contends that they have applied incorrect legal standards in reaching their ultimate

22 conclusions that U.S. Patent Nos. 9,469,640 (the ’640 Patent) and U.S. Patent No. 9,844,539 (the

23 ’539 Patent) are invalid, anticipated, and obvious and lack written description, utility, and

24 enablement. Id. Plaintiff points to excerpts from their respective depositions in which the experts

25 did not articulate the correct legal standard and on this basis seeks to limit their testimony to the

26 underlying factual opinions set out in their reports. Id. During the hearing on this motion,

27 Plaintiff clarified that its primary concern is that if the Court allows Drs. Baran, Natarajan, and

1 the jury, who will simply hear “I, a world-class expert in medicinal chemistry, have considered the

2 question that you, the jury, are tasked with deciding, and I have concluded that the patent is

3 invalid.” See Dkt. No. 341 (“Hearing Tr.”) at 56:21–57:24.

4 II. LEGAL STANDARD

5 Federal Rule of Evidence 702 allows a qualified expert to testify “in the form of an opinion

6 or otherwise” where:

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(a) the expert’s scientific, technical, or other specialized knowledge

8 will help the trier of fact to understand the evidence or to determine a

fact in issue; (b) the testimony is based on sufficient facts or data;

9 (c) the testimony is the product of reliable principles and methods;

and (d) the expert has reliably applied the principles and methods to

10 the facts of the case.

11 Fed. R. Evid. 702. Expert testimony is admissible under Rule 702 if it is both relevant and

12 reliable. See Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 597 (1993). “[R]elevance

13 means that the evidence will assist the trier of fact to understand or determine a fact in issue.”

14 Cooper v. Brown, 510 F.3d 870, 942 (9th Cir. 2007); see also Primiano v. Cook, 598 F.3d 558,

15 564 (9th Cir. 2010) (“The requirement that the opinion testimony assist the trier of fact goes

16 primarily to relevance.”) (quotation omitted).1 Under the reliability requirement, the expert

17 testimony must “ha[ve] a reliable basis in the knowledge and experience of the relevant

18 discipline.” Primiano, 598 F.3d at 565. To ensure reliability, the Court “assess[es] the [expert’s]

19 reasoning or methodology, using as appropriate such criteria as testability, publication in peer

20 reviewed literature, and general acceptance.” Id. at 564.

21 III. DISCUSSION

22 Plaintiff’s concern about the anticipated testimony of Drs. Baran, Natarajan, and Jennings

23 appears to be twofold: First, that these technical experts did not apply the correct legal standards

24 when drawing their conclusions. Second, that it would be prejudicial to allow them to usurp the

25 jury’s role by opining on legal conclusions at trial. The Court does not believe a Daubert motion

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1 Whether to admit expert testimony is evaluated “under the law of the regional circuit,” so in this

1 to exclude their anticipated testimony is the proper vehicle for raising such concerns.

2 Plaintiff first points out that “[i]ncorrect statements of law are no more admissible through

3 ‘experts’ than are falsifiable scientific theories.” See Dkt. No. 165 at 9 (citing Hebert v. Lisle

4 Corp., 99 F.3d 1109, 1117 (Fed. Cir. 1996) (noting the court’s gatekeeping authority to preclude

5 incorrect statements of law that were “announced by a patent law expert witness”)). As an initial

6 matter, the Court is not persuaded that Defendant’s experts are seeking to introduce incorrect

7 statements of the law. For example, Plaintiff repeatedly states that Defendant’s technical experts

8 failed to apply the presumption of validity. See 35 U.S.C. § 282 (“A patent shall be presumed

9 valid” and “[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the

10 party asserting such invalidity.”). However, the presumption of validity merely provides a burden

11 and standard of proof. Defendant must establish the invalidity of the ’640 and ’539 Patents by

12 clear and convincing evidence. See Microsoft Corp. v. I4I Ltd. P’ship, 564 U.S. 91, 101–14

13 (2011) (holding that the presumption of validity incorporates a heightened clear-and-convincing

14 evidence standard). The Court does not see how knowledge of this burden and standard of proof

15 is a necessary component of the technical experts’ analysis.

16 Even assuming Defendant’s technical experts misunderstood some applicable law and had

17 difficulty articulating it at their depositions, they are not proffered as legal experts and they will

18 not be tasked with determining what the law is. The Court will instruct the jury on the correct

19 legal standards. See Hangarter v. Provident Life & Acc. Ins. Co., 373 F.3d 998, 1016 (9th Cir.

20 2004) (“[I]nstructing the jury as to the applicable law is the distinct and exclusive province of the

21 court.”) (quotation omitted). Moreover, Plaintiff will have the opportunity to address any

22 outstanding concerns through “[v]igorous cross-examination” and “presentation of contrary

23 evidence.” Daubert, 509 U.S. at 595.

24 As to Plaintiff’s secondary concern, the Ninth Circuit has held that “an expert witness

25 cannot give an opinion as to her legal conclusion, i.e., an opinion on an ultimate issue of law.”

26 See Mukhtar v. California State Univ., Hayward, 299 F.3d 1053, 1066 n.10 (9th Cir. 2002). Thus,

27 although an expert witness may give opinion testimony that embraces an ultimate issue to be

1 see also Fed. R. Evid. 704(a) (“An opinion is not objectionable just because it embraces an

2 || ultimate issue.”).

3 The Court is not aware of any exception to this fundamental principle of evidence in the

4 context of patents. Cf Markman v. Westview Instruments, Inc., 52 F.3d 967, 991 n.4 (Fed. Cir.

5 1995) (Mayer, J., concurring) (“‘A patent law expert’s opinion on the ultimate legal conclusion is

6 || neither required nor indeed ‘evidence’ at all.’”) (quoting Nutrition 21 v. United States, 930 F.2d

7 867, 871, n.2 (Fed. Cir. 1991)). No expert will be permitted to testify on ultimate legal

8 conclusions. Nevertheless, the Court finds no reason to fashion such an order based on—and

9 limited to—the anticipated testimony of Dr. Baran, Dr. Natarajan, and Dr. Jennings. At trial the

10 || Court will have the opportunity to evaluate any objections in context. Cf Icon Health & Fitness,

11 Inc. v. Strava, Inc., 849 F.3d 1034, 1041 (Fed. Cir. 2017) (“To determine if an expert’s statement

12 || is directed to factual findings or the legal conclusion of obviousness, we look to the statement not

5 13 in isolation, but in the context of the whole declaration.”).

14 || IV. CONCLUSION

15 Accordingly, the Court DENIES the motion.

a 16 IT IS SO ORDERED.

17 || Datea: 5/8/2020

Abspurned 5 Mbt)

HAYWOOD S. GILLIAM, JR.

19 United States District Judge

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