Bos. Sci. Corp. v. Cook Med.

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BOSTON SCIENTIFIC CORP. and BOSTON SCIENTIFIC SCIMED, INC., Plaintiffs, v. COOK MEDICAL LLC, Defendant.

No. 1:17-cv-03448-JRS-MJD

United States District Court, S.D. Indiana, Indianapolis Division

May 27, 2023

ORDER ON VARIOUS MATTERS

JAMES R. SWEENEY II, JUDGE, United States District Court

In anticipation of trial, Plaintiffs, Boston Scientific Corp. and Boston Scientific SciMed, Inc., filed a Motion to Narrow Issues for Trial, (ECF No. 1081), which is now before the Court. Additionally, the Court will address several issues discussed at the May 25, 2023, telephonic pretrial conference.

A. Exclusion of Barry Slowey from Cook's Witness List

On May 1, 2023, Boston Scientific moved to strike Barry Slowey from Cook's trial witness list. (ECF No. 1020.) Although Slowey was identified in Rule 26 disclosures and appeared on various witness lists, he was not listed as a trial witness in Cook's final witness list leading up to the originally scheduled February trial. After an emergency continuance, and upon the Court's request that the parties provide updated trial documents to narrow issues and streamline litigation, Cook filed an updated Final Trial Witness List adding Slowey. (ECF No. 1010.) The Court withheld ruling on Boston Scientific's Motion pending discussion at the May 25 telephonic conference. (See ECF No. 1076.)

At the conference, Cook urged the Court that it "needs" Slowey as a witness because Cook would be prejudiced if Slowey, who will be present at trial and who will testify via deposition in Boston Scientific's case-in-chief, is precluded from testifying in Cook's own case-in-chief. Cook argues that the jury in that scenario would be confused and potentially draw adverse inferences against Cook since Slowey, the president of Cook's endoscopy division, would be seated at trial but would not have a "voice" of his own. Notwithstanding that the jury in fact will hear from Slowey via deposition testimony and that Boston Scientific stated it would not make an "empty chair" argument to the jury in any event, these same set of circumstances existed in February, when Slowey was not listed as a witness a mere three days before trial. This argument does not justify the addition of Slowey now.

Cook additionally argues in conclusory fashion that "circumstances have changed" since the Court's summary judgment order such that Slowey's testimony (as opposed to the testimony of Ms. Martinez-Smith on the same topics) is necessary. However, without actually examining the testimony Cook plans to elicit from Slowey, it is difficult for the Court to determine how the circumstances since February have changed. Cook urges, at least in part that the summary judgment order would be used by Boston Scientific to argue willfulness. Again, this is not a change in circumstance in that the order issued prior to the emergency continuance, in that the order made no mention of willfulness, in that Boston Scientific stated it would not be citing to the Court or the order, and in that Boston Scientific would have been arguing willfulness even absent the order. In short, no showing has been made as to why Slowey's testimony is now necessary, almost four months after the original trial date much less as to why he would be more appropriate than the originally designated witness, Ms Martinez-Smith, who will also be testifying at trial on other issues.

Even if the Court allows Slowey's addition, the issue of the scope of his testimony remains. In Cook's disclosures, Slowey was only designated as knowledgeable about "[s]ubjects for which Mr. Slowey was designated as a Rule 30(b)(6) witness in this action [i.e., document retention], as well as the subjects addressed during Mr. Slowey's [2017] deposition." (ECF No. 1019-4 at 7.) And when asked to disclose "the individuals having primary responsibility for the engineering, design, development, testing, regulatory approval, manufacturing, marketing, and sales of the [Accused Products]," (see ECF No. 1019-5), Cook did not list Slowey. For at least this reason, Boston Scientific did not depose Slowey again. Now, Boston Scientific is worried that if Slowey is allowed as Cook's witness, he will testify on issues for which he was not disclosed: e.g., the development of the Instinct Plus (which was not released until well after Slowey's 2017 deposition), recent market conditions, and Defendant's state of mind as to continued infringement post-2019. The Court agrees that if Slowey is permitted to testify at all, he can only do so on "[s]ubjects for which [he] was designated as a Rule 30(b)(6) witness in this action, as well as the subjects addressed during Mr. Slowey's deposition." But without examining the testimony that Cook plans to elicit, the Court cannot rule on whether the testimony is within the scope of Cook's initial disclosures.

For these reasons, the Court defers ruling on Boston Scientific's Motion to Strike. (ECF No. 1020.) Instead, the parties have indicated they will disclose witness batting orders the night before each day of trial. (See ECF No. 1088.) On the night before Cook plans to call Slowey to testify (or earlier if Cook is prepared to proffer his testimony sooner), Cook will proffer Slowey's testimony, which will be subject to follow-up by Boston Scientific and then a ruling by the Court as to whether Slowey can testify and the scope of any such testimony.

B. Reliance on Cook's Own Patents for Written Description Defense

The Court had previously withheld ruling on Boston Scientific's Motion in Limine No. 8 regarding whether Cook can reference its own patents when arguing its written description defense. (See ECF No. 982.) The Court heard argument on the issue at the telephonic conference. For the following reasons, Cook is precluded from relying on its own patents for its written description defense.

"To satisfy the written description requirement, a patent's specification must 'reasonably convey[ ] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.'" Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). "Such possession must be 'shown in the disclosure.'" Id. Generally, "[w]hen determining whether a specification contains adequate written description, one must make an 'objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.'" Boston Sci. Corp. v. Johnson & Johnson, 647 F.3d 1353, 1366 (Fed. Cir. 2011) (citation omitted).

Despite the "four corner inquiry," Cook contends that extrinsic evidence may be admitted in the written description context. Broadly, that may be true, though the law has recently been muddled. See Biogen Int'l GMBH v. Mylan Pharms. Inc., 18 F.4th 1333 (Fed. Cir. 2021) (affirming district court finding of invalid written description wherein the district court had relied, in part, on extrinsic evidence). But see Biogen Int'l GMBH v. Mylan Pharms. Inc., 28 F.4th 1194, 1202 (Fed. Cir. 2022) (Lourie, J., dissenting) (urging a rehearing en banc to ensure that courts do not misinterpret Biogen to allow extensive reliance on extrinsic evidence in the written description context). Regardless, extrinsic evidence must still be relevant to the written description inquiry to be admissible. See, e.g., id.

Here, Cook's own patents have absolutely no bearing on whether Boston Scientific's Asserted Patents contained an adequate written description. Cook's argument is understood to be: (1) if Cook's Instinct and Instinct Plus infringe Boston Scientific's patents, then by definition, those patents cover Cook's products; (2) yet, Cook was able to obtain a patent (subsequent to the patents-in-suit) that also covers the Instinct and Instinct Plus; (3) thus, because the Patent Office granted Cook's patent over Boston Scientific's asserted patents, this is evidence supporting a lack of adequate written description in the Boston Scientific patents. Stated differently, had Boston Scientific's patents adequately disclosed the Instinct/Instinct Plus (which are covered by the Asserted Claims), then Cook's patent would have been denied. This is a legally flawed argument. Cook's patent (which can be narrower and claim additional features) can issue subsequent to Boston Scientific's patent and still be valid even if a single product is covered by both patents. For example, assume Boston Scientific's patent claims features A, B, and C and Cook's patent claims A, B, C and D. If the Instinct contains features A, B, C, and D, then it is covered by both patents. The Boston Scientific patent can adequately disclose claimed features A, B, and C in satisfaction of the written description requirement without then acting as prior art that prevents Cook's patent from issuing. After all, the Boston Scientific patent does not disclose feature D which would be needed to impede Cook's patent. Even if it did, this might be reason to question the validity of Cook's patent rather than the validity of Boston Scientific's patent. See PSC Comput. Prods., Inc. v. Foxconn Int'l, Inc., 355 F.3d 1353, 1360 (Fed. Cir. 2004) (holding that a disclosed but unclaimed invention is dedicated to the public). The operative question is whether the written description of Boston Scientific's patent is sufficient to support a finding that the inventor was in intellectual possession of the invention embodied in its asserted claims.

Cook's own patents have no relevance to whether Boston Scientific's patents have an adequate written description; Cook is precluded from relying on its patents for that defense.

C. Motion to Narrow Issues for Trial

Boston Scientific's Motion to Narrow Issues for Trial, (ECF No 1081), seeks a ruling on four issues: (1) whether...