Richards Layton & Finger
 

Judge Andrews Denies Parties' Motions in Limine to Preclude Evidence on Claim Construction

December 15, 2016

In Ferring Pharmaceuticals Inc. et al. v. Par Pharmaceutical, Inc., C.A. No. 15-173-RGA (D. Del. Oct. 28, 2016), Judge Andrews denied the plaintiffs’ and the defendant’s motions in limine to preclude evidence relating to the meaning of a disputed claim term as impermissible claim construction. During the Markman hearing held in January 2016, Judge Andrews held that the claim terms “coating” or “coated” have “plain and ordinary meaning.” Judge Andrews further explained that the issue of whether the defendant’s proposed product had a coating or was coated was one on which the experts should opine. Ruling on the parties’ subsequent motions in limine, Judge Andrews clarified that expert testimony that the specification and prosecution history supported the expert’s view of the plain and ordinary meaning would be impermissible claim construction. Judge Andrews, however, further explained that experts are not precluded from opining on the plain and ordinary meaning generally or from referencing the patent specification and prosecution history during their testimony. Accordingly, Judge Andrews denied the parties’ motions without prejudice to object to specific testimony as impermissible claim construction. Moreover, Judge Andrews noted that whether an expert may testify using extrinsic evidence to support his or her testimony regarding the plain and ordinary meaning of the claim terms is “context dependent” and will thus be determined on an objection-by-objection basis.

Key Points:  Where claim terms have been construed as having “plain and ordinary meaning,” parties may present expert testimony concerning the plain and ordinary meaning of those terms as understood by one skilled in the art. Experts, however, may not testify that the specification and prosecution history support their view of the plain and ordinary meaning of a term because such testimony would be impermissible claim construction. Expert testimony relying on extrinsic evidence regarding the plain and ordinary meaning of a term must be dealt with on an objection-by-objection basis.