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Bone Care v. Pentech

September 30, 2010

BONE CARE
v.
PENTECH



Name of Assigned Judge Robert M. Dow, Jr Sitting Judge if Other or Magistrate Judge than Assigned Judge

DOCKET ENTRY TEXT

In a pre-trial joint status report [355], and again at the final pre-trial conference, the parties set forth their conflicting views on the order of proof at trial. Given the parties' dispute on that matter, the Court issues the following guidance pursuant to its authority under Federal Rule of Evidence 611(a) to "exercise reasonable control over the mode and order of interrogating witnesses and presenting evidence."

O[ For further details see text below.] Docketing to mail notices.

STATEMENT

Among the objectives to be accomplished through the trial court's determinations in regard to the order of proof are "mak[ing] the interrogation and presentation effective for the ascertainment of the truth" and "avoid[ing] needless consumption of time." Fed. R. Evid. 611(a). As Defendants have noted, "'[f]ew aspects of the trial of a case are more clearly within the discretion of the judge than the order of proof.'" Begley v. Ford Motor Co., 476 F.2d 1276, 1279 n.5 (2d Cir. 1973) (quoted in J. Status Rep. [355] at 6). Nevertheless, case law and learned commentary is available to help guide the exercise of that discretion. But before turning to the pertinent authorities, the Court first will attempt to summarize the parties' positions.

Plaintiffs propose the following order of proof: (1) Defendants will proceed first and present the entirety of their case-in-chief, covering the issues on which they bear the burden of proof; (2) Plaintiffs will respond to Defendants' case-in-chief and present any evidence of secondary considerations of non-obviousness, which is an issue as to which Plaintiffs contend they bear the burden of proof; (3) Defendants conclude with responses to Plaintiffs' secondary considerations case. Under Plaintiffs' proposal, neither side would be entitled to put on a rebuttal case.

Under Defendants' alternative proposal, the proof at trial would proceed as follows: (1) Defendants will put on their case-in-chief as to issues on which they bear the burden of proof; (2) Plaintiffs will respond to Defendants case-in-chief and present the case on issues as to which Plaintiffs bear the burden of proof; (3) Defendants will put on their rebuttal case, which "may not be limited to responding to Plaintiffs' evidence on secondary considerations, as rebuttal may be appropriate to other issues, too." J. Status Rep. [366] at 5. Notably, under Defendants' proposal, only they would be entitled to put on a rebuttal case.

Plaintiffs complain that Defendants' proposal "creates a situation in which Plaintiffs are no longer the master of their own case" by "exploiting the parties' earlier stipulation of infringement to gain a procedural advantage." J. Status Rep. [355] at 2. But even Plaintiffs' proposal sensibly adopts Chief Judge Markey's long held view that a pre-trial stipulation as to infringement -- which, as confirmed at the final pre-trial conference, remains in place in this case -- should alter the traditional order of proof (that Plaintiff goes first), though not the underlying premise of that arrangement (that the party with the principal burden of proof goes first). See Howard T. Markey, On Simplifying Patent Trials, 116 F.R.D. 369, 373-75 (1987). With infringement thus cast to the side, invalidity logically is the first issue for trial. See Fed. Jud. Ctr., PATENT CASE MGMT. JUD. GUIDE § 8.1.2.2.2.1, at 8-15 (2009) ("Where infringement is not disputed, the defendant should usually proceed first on its invalidity defenses"). As Chief Judge Markey explained, "a defendant asserting invalidity has a right to go first at trial when that issue is reached, and patentees have no right to pre-empt or 'steal a march' on defendant in the orderly conduct of the trial." 116 F.R.D. at 375. To be sure, "the patentee's countering evidence has a place in an orderly trial," but "that place is after a defendant's invalidity evidence in chief." Id. at 374. The parties' proposals agree at least that far, and properly so.

The core of the dispute over the order of proof concerns the scope of the parties' respective rebuttal cases, if any. Plaintiffs raise the concern that Defendants "do not intend to limit their last word to proper rebuttal." Joint Status Report [355], at 2. But the real dispute concerns not whether Defendants will be limited to "proper rebuttal," but what comprises "proper rebuttal" in the first place. Both courts and commentators have noted that rebuttal evidence may be introduced "to explain, repel, counteract, or disprove the evidence of the adverse party." 28 Charles Alan Wright & Victor James Gold, FEDERAL PRAC. & PROC. EVID. § 6164 (1st ed. 2010) (Westlaw version, unpaginated).

In considering the parties' respective positions on rebuttal testimony in this case, the Court is guided by the principles that (1) the rules that apply generally in civil litigation ought to apply generally in patent litigation (see Markey, supra, 116 F.R.D. at 370), and (2) in most civil trials, proper rebuttal testimony is permissible within the bounds set by the trial court. For example, in one of the few cases cited in the Joint Status Report, Judge Enslen followed the "traditional" method of presenting proofs in four steps:

 Plaintiff first presents its proofs on the issue of infringement;

 Defendant then may respond to plaintiff's proofs on that issue, and present its own proofs on the issues of [in]validity and unenforceability;

 The Court then may allow plaintiff to respond to defendant's proofs on the issues of [in]validity and unenforceability, and to rebut defendant's ...


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