Opinion
No. 03 CIV. 8253 (DLC).
August 3, 2005
ORDER
Takeda brought suit against Mylan on October 17, 2003. In Mylan's amended answer, it asserts that the "combination use" patents are "invalid for failing to comply with one or more of the requirements of 35 U.S.C. §§ 101, 102, 103, and 112." On March 17, 2005, Takeda served on Mylan interrogatories and requests for admission seeking to learn what, if any, claim of the "combination use" patents Mylan is challenging and the grounds for any such challenge. Mylan's responses were due by April 25, but for various reasons were not served until June 6, a week after the close of fact discovery ("June 6 Responses").
By letter of June 1, Takeda had argued that Mylan should be precluded from challenging the validity or unenforceability of the "combination use" patents at trial due to its refusal to disclose the bases for its attacks. At a conference on June 14, Takeda explained how Mylan's failure to disclose its theories until June 6, and Mylan's related delay in producing a 30(b)(6) witness, prejudiced Takeda in the completion of fact discovery and preparation of its defense of the "combination use" patents. Mylan agreed to produce witnesses, and if necessary reproduce witnesses, to cure the prejudice Takeda identified. The Court also adjusted the schedule for Takeda's production of its expert report on these newly defined issues.
On July 15, 2005, Mylan served an expert report of Dr. Edwin D. Bransome that asserts new theories of invalidity and identifies seven new alleged prior art references, in effect materially revising and expanding the June 6 Responses. Takeda requests in a July 28 letter that Mylan be limited at trial to the specific bases for its invalidity challenges that were identified in the June 6 Responses. In its letter of August 1, Mylan does not give any explanation for the change in its position, other than to say that the June 6 Responses reflected its formulation "at that time" of its bases to assert the invalidity of the "combination use" patents, and that an expert may "refine" his opinion in preparation for trial.
Mylan's having had over nineteen months to develop its theories for challenging the validity of the "combination use" patents, and having failed to identify any reason why it was prevented from setting forth a complete identification of its theories in its June 6 Responses, it is hereby
ORDERED that Mylan's attacks on the validity of the "combination use" patents shall be limited to those identified in its June 6 Responses.
IT IS FURTHER ORDERED that Mylan shall serve a revised expert report for Dr. Edwin D. Bransome conforming to this Order by August 8, 2005.
SO ORDERED.