DC grant of SJ of no induced infringement affirmed, exclusion of expert report proper since Phigenix did not “timely disclose its narrowed infringement theory”

Phigenix, Inc. v. Genetech, Inc.
Docket No. 2017-2617, 2018-1042
REYNA, BRYSON, STOLL
September 5, 2019
Non-Precedential

Brief Summary: DC grant of SJ of no induced infringement after exclusion of Phigenix’s expert report affirmed (e.g., “[w]ithout its expert report, Phigenix’s direct infringement case fails”).

Summary: Phigenix appealed the DC grant of summary judgment (SJ) of non-infringement (induced infringement) of US 8,080,534 (relating to the prevention and/or treatment of breast cancer) to Genentech after striking an expert report. Genentech cross-appealed the DC denial of SJ for invalidity. Phigenix alleged induced infringement by Genentech “by encouraging health care professionals to prescribe and administer Kadcyla to breast cancer patients who had previously received the chemotherapy drugs ‘trastuzumab and a taxane, separately or in combination.’” “[A]fter fact discovery had closed and expert reports had been exchanged”, and apparently related to the DC’s determination for a lack of priority of the ‘534 patent, “Phigenix narrowed the relevant population to Kadcyla patients who were pretreated exclusively with trastuzumab and a taxane”, but did not amend the complaint. The DC agreed with Genentech on failure to provide adequate notice, and then struck Phigenix’s expert infringement opinion “based on the resulting lack of direct infringement evidence” and “a lack of evidence of specific intent to induce infringement” under the narrower theory. The FC panel held that under local CA rules, the DC “was within its discretion to exclude the infringement opinion of Phigenix’s expert” since Phigenix did not “timely disclose its narrowed infringement theory” (no “deliberate action to proactively put Genentech on notice” of its narrowed infringement theory, “Genentech relied on…original infringement theory to develop noninfringement and invalidity theories that would need to be substantially revised”). The FC panel agreed “with Phigenix that narrowing the scope of accused infringement will not always result in a failure to adequately disclose” but found that it did in this case. Phigenix unsuccessfully that Genentech was on notice since its narrowed theory “falls wholly within the scope of its original contentions” (e.g., Kemin Foods, FC 2006 (“inapposite because it addresses the scope of asserted claims and does not apply patent local rules” and “the plaintiff…could have done ‘nothing more’ to keep the disputed claim in the case”; “Phigenix plainly could have done more….”)) The FC panel also explained that it “need not consider the prejudice to Genentech in evaluating whether the court abused its discretion” and “the exclusion of evidence is often an appropriate sanction for a party’s failure to comply with the patent local rules” (O2 Micro, FC 2006). Finally, the FC panel concluded that “[w]ithout its expert report, Phigenix’s direct infringement case fails”, and so it affirmed the DC grant of SJ of noninfringement and did not address induced infringement “as there can be no inducement liability without direct infringement” (Limelight, US 2014).