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DSM IP Assets, B.V. v. Lallemand Specialties, Inc.

United States District Court, W.D. Wisconsin

April 24, 2018

DSM IP ASSETS, B.V. & DSM BIO-BASED PRODUCTS & SERVICES, B.V., Plaintiffs and Counter-Defendants
v.
LALLEMAND SPECIALTIES, INC. & MASCOMA LLC, Defendants and Counterclaimants.

          OPINION & ORDER

          WILLIAM M. CONLEY District Judge

         This patent case is set for a jury trial commencing May 7, 2018, to resolve plaintiffs' claim of patent infringement. In advance of the final pretrial conference scheduled for April 25, the court issues the following opinion and order on the parties' respective motions in limine.[1]

         OPINION

         I. DSM's Motions in Limine (dkt. #185)

         A. MIL No. 1: Exclude Evidence and Argument that Reduced Glycerol Production in the Accused Products Is Not Caused by the Deletion of the GPD2 Gene.

         DSM's first motion seeks to prevent Lallemand from arguing or presenting evidence that the Accused Products were “sufficiently altered to make any reduction in glycerol production unrelated to the elimination of the gpd2 gene as compared to the corresponding wild-type cells, ” as such an argument “is contradicted by the sworn testimony of Lallemand's own Rule 30(b)(6) witness, is not supported by any facts, and would confuse and mislead the jury.” (Dkt. #185 at 1.) Specifically, DSM asserts that Lallemand conducted batch testing to compare glycerol production between the Accused Products and corresponding wild-type cells “conclusively demonstrat[ing] that the Accused Products . . . exhibit a reduced rate of glycerol production.” (Id. at 1-2.) Further, DSM criticizes Dr. Winge's statement at the expert colloquy that the Accused Products' reduction in glycerol production was unrelated to the deletion of the GPD2 gene as unsupported and contradicted by his other testimony, as well as by testimony of Lallemand's 30(b)(6) witness, Dr. Kevin Wenger, that the “knockout of that gene has some impact, some effect of glycerol reduction, ” and by Lallemand's internal and regulatory documents. (Id. at 2-5.)

         Lallemand responds that DSM's motion is nothing more than “a request for reconsideration” of the court's decision not to grant summary judgment of infringement, purporting to quote the court at the colloquy while ignoring its ruling that this was all evidence “that the jury should hear.” (Dkt. #209 at 6.) Lallemand also asserts that Winge's testimony at the colloquy was supported by and consistent with his earlier opinions: (1) attributing TFY's reduced glycerol production to the pyruvate to ethanol conversion and reduced NADH hindering glycerol production; and (2) opining not that the Accused Products' GPD2 deletion reduced glycerol production, but that DSM's expert, Dr. Stephanopoulos, had overstated its impact. (Id. at 7-8.) Lallemand further point out that Winge's opinion is bolstered by scientist Aaron Argyros' testimony that “the metabolic pathway is the primary driver of the glycerol reduction, ” which “is what enables the glycerol reduction.” (Id. at 8.) Finally, Lallemand adds that: (1) while Dr. Wenger acknowledged that yeast lacking GPD2 had decreased glycerol synthesis, he was uncertain of the role of GPD2's reduction in the Accused Products' glycerol production; and (2) the cited regulatory document does not clearly tie reduced glycerol production to the knockout of GPD2, but instead is a “simplification” of the metabolic pathways. (Id. at 9-10.)

         The court largely agrees with Lallemand. Having declined to grant summary judgment on DSM's claims of infringement, the jury will now determine whether the Accused Products' reduction of glycerol production is caused by the GPD2 deletion as compared to corresponding wild-type cells. Accordingly, DSM's MIL No. 1 is DENIED.

         B. MIL No. 2: Exclude Argument and Evidence that Strains M8827 and M13021 Are Noninfringing Alternatives.

         Next, DSM seeks to prevent Lallemand from arguing that strains M8827 and M13021 were available, acceptable and noninfringing alternatives during the accounting period because they “are not and never have been commercially available.” (Dkt. #185 at 6.) As support for this, DSM argues that Lallemand neither produced data showing how these strains perform industrially, nor that they would be viable in the market. Without this evidence, DSM contends, these stains are irrelevant to damages and would only confuse the jury if admitted. (Id.) As support, DSM represents that developing a strain from laboratory testing to industrial-scale production “is unpredictable and often fails, ” which it asserts is confirmed by Lallemand's documents that show numerous strains were unable to be translated from favorable laboratory testing to successful industrial-scale production. (Id. at 7.) Without tests showing that strains M8827 and M13021 were viable for industrial use, DSM asserts they were not commercially available, much less non-infringing substitutes under the Georgia Pacific factors.[2]

         Lallemand acknowledges that the M13021 strain was not far enough along to be a viable noninfringing substitute, but argues that the disagreement between experts on the acceptability of strain M8827 is a factual question for the jury. (Dkt. #225-3 at 4 n.2; dkt. #209 at 11.) In fact, Lallemand points to evidence that this strain was among “dozens” of S. cerevisiae produced in its normal research and development, and was available because “the necessary equipment, know-how, and experience existed to make and sell” it. (Dkt. #209 at 11-12.) Lallemand further points to evidence that this strain would be acceptable to customers, including that: (1) DSM “confirmed that customers would be willing to switch products for an ethanol yield benefit of just 1%”; (2) other than the Accused Products, there were no alternative yield-enhancing products in the market in August 2014; and (3) as recognized by DSM's Professor Alper, the M8827 strain produces improved ethanol yields without knocking out the GPD2 gene. In contrast, Lallemand asserts that a minimum 4% improvement necessary to change products, as asserted by DSM's damages experts, is unsupported by the evidence. (Id. at 13-14.) Finally, Lallemand contends that whether this strain had yet to be commercialized is not dispositive because: (1) the M8827 strain not only existed in 2014, but was considered during YP3's development; (2) “Lallemand . . . has the equipment, know-how, and experience to make and sell genetically-engineered yeast products, ” as demonstrated by Lallemand commercializing three transgenic yeast products within five years; (3) Lallemand performance tests using a proprietary fermentation protocol that more accurately predicts a strain's abilities to endure industrial conditions; and (4) Argyros, Mascoma's director of research and development, can testify about the viability of this strain at trial. (Id. at 12-13.)

         Again, the court largely agrees with Lallemand, since the viability of the M8827 strain appears to be a factual dispute for the jury to resolve. A technology need not be available for sale during the accounting period to qualify as “an available, noninfringing alternative.” See Micro Chemical, Inc. v. Lextron, Inc., 318 F.3d 1119, 1122 (Fed. Cir. 2003) (citing Grain Processing Corp. v. American Maize-Prods. Co., 185 F.3d 1341, 1351-52 (Fed. Cir. 1999)). Indeed, as Lallemand notes, the question of availability is generally fact-dependent. See Id. at 1123.

         Where the asserted alternative was not yet on sale, the burden shifts to the offering party to establish availability. Grain Processing, 185 F.3d at 1354. This means Lallemand will have the burden of proving it “‘had all of the necessary equipment, know-how, and experience'” to produce and substitute the M8827 strain for the infringing product at the time of infringement; whether the cost of material inputs for this alternative could make it unavailable; whether the impacts of the changes were well known in the field; and whether the infringer needed to design around the patented technology. Micro Chemical, 318 F.3d. at 1123. In addition, Lallemand must prove that this strain would be “acceptable as a substitute in the relevant market” as defined by consumer demand, which may be shaped by “consumers' intended use for the patentee's product, similarity of physical and functional attributes of the patentee's product to alleged competing products, and price.” Grain Processing, 185 F.3d at 1355.

         Since all of the above are questions of fact for the jury, DSM's MIL No. 2 is DENIED as to strain M8827 and GRANTED as to M13021.

         C. MIL No. 3: Exclude Evidence and Argument Concerning the Blomberg Assay.

         Next, DSM seeks to exclude evidence and argument regarding the Blomberg assay for the purpose of showing noninfringement, because it “does not measure the rate of enzymatic production of glycerol, ” which makes its results “irrelevant to Lallemand's noninfringement defense, ” a waste of time, and misleading.[3] (Dkt. #185 at 8-9.) In so arguing, DSM repeats evidence offered at summary judgment that: (1) the Blomberg assay determines whether an enzymatic activity occurs -- not a reaction rate -- in an in vitro sample, and the '998 patent used the Blomberg assay to confirm the absence of GPD activity in a mutant lacking both GPD 1 and GDP2 genes as compared to the presence of that activity in a corresponding wild-type strain; (2) the Blomberg assay “measures the maximum theoretical capacity [kcat] of the Gpd1 enzyme under ideal conditions (e.g., saturating substrate conditions [E0] . . .) once the cells have by lysed, ” instead of GPD activity in yeast cells under fermentation conditions (and that the two may not be correlated); and (3) GPD2 is unstable in the Blomberg buffer solutions so that the assay cannot “accurately or reliably measure” GPD2 activity, making it inappropriate “for measuring comparative Gpd activities, ” as confirmed by Lallemand's Blomberg assays that had contradictory results. (Id. at 9-10.)[4]

         As it did at summary judgment, Lallemand responds by arguing that DSM is seeking to exclude evidence of disputed facts, even relying on “demonstrably false” reasons. (Dkt. #209 at 15.) First, Lallemand notes that it has filed a motion for reconsideration which explains why the court erred in finding that the '998 patent's only recognized measurement of NAD-dependent GPD activity is the rate of glycerol production. (Id.) Since the court take up the request to reconsider in a separate opinion, it will not address that motion here. Second, Lallemand asserts, DSM's argument that the Blomberg assay is irrelevant to noninfringement is a non sequitur, because the Accused Products' lack the GPD activity recited in Term 2 and the “rate of enzymatic production of glycerol” is part of Term 3. (Id.) This is at best an over-simplification of DSM's argument, but Lallemand may so argue provided that defense counsel and experts do not misrepresent the limitations of the Bloomberg assays to measure in vivo (as opposed to in vitro) GPD activity. Third, Lallemand argues that even if DSM's assertions were accurate, the requested relief is overbroad because the Blomberg assay would be relevant to GPD activity, even if it didn't measure the activity rates (which, Lallemand argues it does), because enzyme capacity or amount (as measured by Blomberg) factors into enzymatic activity. (Id. at 15-16.) Again, Lallemand may so argue -- since the patent itself suggests use of the Blomberg assays as a meaningful test procedure -- provided its counsel and experts do not misrepresent its relevance to measuring the rate of activity in vivo.

         Where Lallemand goes off the rails is in asserting that the Blomberg assays may be meaningful in ways already rejected by the court. First, the court rejects and Lallemand may not argue that the Blomberg assay “measures the rate of the reaction catalyzed by GPD.” Second, the claims in the patent concern fermentation, making the value of the use of Blomberg assays to measure in vitro activity to confirm that a reduction in glycerol production may be explained by something other than the elimination or reduction in GPD activity, if at all. Third and finally, Lallemand may not argue that GPD2 can “indisputably” be measured with the Blomberg assay. Consistent with the above, therefore, DSM's MIL No. 3 in DENIED IN PART AND GRANTED IN PART.

         D. MIL No. 4: Exclude Green's Opinion on Damages.

         DSM next seeks to exclude Phillip Green's damages opinion under Rule 702 “because he does not rely on sufficient facts, makes improper assumptions, and fails to reliably apply the relevant principles and methods to the facts of this case.” (Dkt. #185 at 11.) DSM begins by explaining that Lallemand prices products by adding two components: (1) the “Yeast Price Component, ” which is the amount for the yeast at a per-kg cost; and (2) the “MGT Price Component, ” which is based on additional ethanol yield for the Accused Products (or for TransFerm, the savings achieved through the lessened need for glucoamylase).[5] (Id. at 12.) Then, DSM notes that from 2012-2014, Lallemand's sale revenues for TransFerm were $25, 503, 431, with $13, 447.419 coming from the MGT Price Component; and from August 2014-September 2017, Lallemand's sales revenues for the Accused Products totaled $113, 579, 584, with $64, 647, 532 coming from the MGT Price Component. (Id.) Accordingly, Dr. Jesse David, DSM's damages expert, calculates lost sales with a range of $32-$40 million from August 2014 to September 2017.

         In contrast, Phillip Green, Lallemand's damages expert, calculates damages for the same period to be approximately $4.95 million. (Id. at 13.) DSM argues that this calculation is based on the incorrect assumptions that Lallemand would have been able to keep selling TransFerm and conventional yeast, as acceptable, non-infringing alternatives at levels comparable to the actual sales of Accused Products.[6]

         First, DSM argues that Lallemand cannot show that TransFerm and conventional yeast would have sold comparably to the Accused Products, nor that either was an available and acceptable, non-infringing alternative. (Id. at 15.) To the contrary, DSM points out that TransFerm's sales had “flattened” and decreased before the Accused Products hit the market, something Green does not address. (Id.) Similarly, DSM criticizes Green's attributing Lallemand's sale of the Accused Products to good customer relationships, when only six customers continued buying TransFerm from 2012 to present rather than switching to TransFerm Yield (and in greater quantities), despite the higher fermenter fee. (Id. at 15-16 & n.7.) Accordingly, DSM argues that Green greatly underestimates the value of the '998 patent to Lallemand. (Id. at 17.) Second, DSM argues that neither conventional yeast nor TransFerm is an acceptable alternative because neither provides additional revenue or savings from glycerol reduction or yield enhancement.[7] (Id. at 18.) More specifically, DSM argues that Green's opinion to the contrary must be excluded for failing to account for this difference, the large increase in customer demand for the Accused Products, and the potential savings from TransFerm being insufficient to cover the transaction costs for abandoning conventional yeast. (Id.)

         Lallemand responds that DSM's arguments boil down to disagreement with Green's opinions, rather than their admissibility. (Dkt. #209 at 18.) Lallemand explains that Green calculated a reasonable royalty for use of the patent “by considering a hypothetical negotiation . . . in August 2014 and applying the fifteen factor test set forth in Georgia-Pacific, ” which is the same framework used by DSM's expert. (Id. at 21.) In Green's opinion, the total profits and revenues associated with the Accused Products are not representative of the patent's value because the patent “does not claim yeast generally or glucoamylase expression, ” and these features' value should be apportioned out. (Id.) Lallemand argues that Green appropriately focused his analysis on the benefits Lallemand got from the patented technology, as he considered that: (1) Lallemand could have continued to sell TransFerm; (2) 80% of customers purchasing Accused Products in 2017 were already Lallemand customers; (3) Lallemand only marketed TransFerm briefly so it had not yet penetrated the market when the Accused Products were launched to replace TransFerm; and (4) Lallemand's pricing structure at the time of TransFerm's launch was unfamiliar to the market, but familiarity increased by the launch of TransFerm Yield. (Id. at 25-27.) Further, Lallemand contends that Green's opinion that TransFerm was an available non-infringing alternative was proper and that DSM's argument to the contrary is flawed because the next-best available alternative (which need not have the patented features) is considered in determining a reasonable royalty analysis. (Id. at 27-28.) Further, Lallemand explains that the appropriate comparison is between the noninfringing alternative and the patent owner's product, which is not possible here since DSM had not yet commercialized that product. (Id. at 28-29.) Finally, Lallemand defends Green's apportionment of value between the patented invention, the wild type yeast, and features not claimed by the patent, noting that “Mr. David effectively employs the entire market value rule to capture almost the entirety of the profits Lallemand derives from the Accused Products, ” yet he failed to assess if and how yield improvement impacts market demand. (Id. at 29-31.)

         In applying Rule 702, a district court is to function as a “gatekeeper, ” determining whether a party's proffered expert testimony is relevant and reliable. Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 589 (1993); see also United States v. Johnsted, 30 F.Supp.3d 814, 816 (W.D. Wis. 2013) (expert testimony must be “not only relevant, but reliable”). Still, “[v]igorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof are the traditional and appropriate means of attacking shaky but admissible evidence.” Daubert, 509 U.S. at 596. Here, DSM's criticisms go almost entirely to the factual assumptions underlying Green's opinions, not to their admissibility. See Williams v. Illinois, 567 U.S. 50, 57, 132 S.Ct. 2221, 2228 (2012) (“Under settled evidence law, an expert may express an opinion that is based on facts that the expert assumes, but does not know, to be true. It is then up to the party who calls the expert to introduce other evidence establishing the facts assumed by the expert.”). DSM may, of course, cross-examine him on those assumptions. Likewise, DSM can question him about how and why he apportioned value between the elements claimed in the '998 patent, a wild-type yeast cell, and unclaimed features. Accordingly, DSM's MIL No. 4 is DENIED.

         E. MIL No. 5: Limit the Number of Prior Art Combinations Lallemand May Present on its Obviousness Defense.

         DSM seeks to limit the number of prior art combinations Lallemand can present to “prevent” the “needless[] present[ation of] cumulative evidence, ” thereby “ensur[ing] that the jury's time is not wasted” without “prejudic[ing] Lallemand in any way.” (Dkt. #185 at 21-22.) Specifically, DSM explains that Lallemand has identified twelve prior art combinations that it asserts render the '998 patent obvious, but that Professor Winge testified that the four primary references are “equivalent” and the three secondary references are “equivalent, ” effectively reducing the twelve combinations to two.[8] (Id.)

         Lallemand opposes this motion because: (1) “it seeks to solve a ‘problem' that does not actually exist”; and (2) “limiting Lallemand to only two specific prior art combinations that DSM has selectively chosen would be unfairly prejudicial.” (Dkt. #209 at 32.) As to the first, Lallemand explains that even if it were inclined to force Professor Winge to walk the jury through the thirty-five pages of his report analyzing the combinations (which it represents it is not), the trial schedule does not afford sufficient time to do so. (Id.) Accordingly, Lallemand represents that it has already culled the prior art references it intends to rely on at trial, as noted in the proposed jury instructions.[9] (Id.) As to the second, allowing DSM to “cherry-pick two combinations which are most beneficial to its own validity case would be unfairly prejudicial to Lallemand.” (Id. at 33.) Regardless, Lallemand represents it plans to present two combinations of its own choosing to the jury on obviousness.[10] (Id.) Accordingly, DSM's MIL No. 5 is GRANTED IN PART AND DENIED IN PART by limiting Lallemand to those two combinations.

         F. MIL No. 6: Exclude Evidence and Argument Relating to the Replacement of Stephanopoulos with Alper.

         DSM next seeks to prevent Lallemand from attempting to impeach Professor Alper “on the basis that his opinions have been substituted for those of Dr. Stephanopoulos, ” relying on the parties' joint submission to the court in which they agreed that “‘neither party will draw any inference from, or rely in any argument on, the unavailability and replacement of Dr. Stephanopoulos.'” (Dkt. #185 at 22-23 (quoting dkt. #137 at 2).) Specifically, DSM argues that allowing Lallemand to impeach Alper on the basis of Stephanopoulos's unavailability would result in unfair prejudice to plaintiffs. (Id. at 23.)

         In response, Lallemand contends that it will not violate the parties' agreement. (Dkt. #209 at 34.) Rather, Lallemand argues that DSM is trying to “insulate Dr. Alper's opinions from fair-game criticism stemming from Dr. Alper's own lack of diligence.” (Id.) Specifically, as at the expert colloquy, Lallemand intends to establish that Alper failed to “perform his own search of the scientific literature, ” which goes to the weight of his opinion that the Blomberg assay cannot measure GPD2 activity and does not concern Stephanopoulos's unavailability or replacement. (Id. at 35.)[11]

         The parties agreed that they would not “draw any inference from, or rely in any argument on, the unavailability and replacement of Dr. Stephanopoulos” (dkt. #137 at 2), and they are still bound by that. While their agreement does not create a blanket prohibition on referencing the work of Professor Stephanopoulos, any reference should be cleared in advance with the court outside the jury's presence. By asking about how the scientific literature reviewed was located and how Professor Alper came to his opinions, Lallemand did not breach its agreement during pretrial discovery, including the colloquy. However, in the case of Alper's diligence in looking for further confirmation of the inability of the Blomberg Assay to detect GPD2 activity in particular, Lallemand's expert conceded the same limitation at the colloquy, making any detour as to Alper's reliance on Stephanopoulos in this regard an unnecessary departure at best. Accordingly, DSM's MIL No. 6 is RESERVED pending a proffer by Lallemand as to any reference to Stephanopoulos it believes may still be appropriate at trial.

         II. Lallemand's Combined Motions in Limine (dkt. #188)

         A. MIL No. 1: Exclude Evidence from Certain Inventors of the '998 Patent.

         Lallemand seeks to exclude testimony, documents or other evidence from inventors Victor Gabriel Guadalupe Medina and Antonius Jeroen Adriaan Van Maris because: (1) Lallemand has been unable to contact them, as DSM has provided no contact information; and (2) Mayer Brown, DSM's counsel, declined to accept service on behalf of Dr. Van Maris, despite previously informing Lallemand that it represented all of the patent's inventors. (Dkt. #188 at 7.)[12] After Mayer Brown refused to accept service of the subpoena, however, DSM served supplemental Rule 26 disclosures, still listing all three inventors as people who may be relied upon to support DSM's claims or defenses. (Id. at 8-9.)

         Lallemand further adds that at the deposition of the final inventor, Dr. Jacobus Pronk, Pronk testified that Mayer Brown had collected documents from him and Dr. Van Maris, but only two documents were produced. (Id. at 9-10.) Lallemand argues that since DSM claimed not to know where these witnesses were located, “it should be axiomatic that DSM cannot call either of these inventors to testify at trial or offer into evidence documents from them.” Otherwise, Lallemand argues, DSM's game of “hide-the-ball” would be rewarded. (Id. at 10.)

         DSM responds that it “has not identified either [Van Maris or Medina] as a potential trial witness, ” making Lallemand's complaints both “irrelevant” and untrue. (Dkt. #212 at 1.) Instead, DSM explains, “Lallemand seeks to exclude evidence that does not and will not exist in this case, ” and its motion should be denied. Regardless, since DSM is not calling either Medina or Van Maris, this motion is MOOT as to their testimony. This motion is further DENIED at this time as to documents, although Lallemand can object individually to DSM's proposed trial exhibits based on unfair surprise, assuming it did not waive any objection by failing to ripen this issue through a timely discovery motion.

         B. MIL No. 2: Exclude Evidence from Marco Mölling.

         Lallemand next asks the court to exclude evidence from Marco Mölling, the lead attorney who drafted and prosecuted the '998 patent, because DSM did not produce any evidence concerning him. (Dkt. #188 at 11.) Lallemand explains that while it “sought documents and information concerning the preparation and prosecution of the '998 patent and its European counterpart, ” DSM only produced a handful of documents concerning Mölling and his firm, which DSM represented were the relevant, non-privileged documents in its possession. Otherwise pointing to privilege logs, DSM produced only one document relating to draft patent applications, while the remaining documents related to communications to or with Mölling, two of which were produced and clawed back as privileged.[13] (Id. at 12-14.) Following this narrow production, Lallemand notes that DSM added Mölling to its Supplemental Rule 26 Disclosures on the last day of discovery. (Id. at 14.) Accordingly, Lallemand argues that DSM should not be allowed to rely on Mölling's testimony or unproduced documents at trial after this conduct. (Id. at 14-15.)

         While DSM responds that the limited evidence from Mölling is unsurprising, since he was patent counsel to TU Delft, the original patent owner, and Lallemand chose to subpoena TU Delft's U.S. patent counsel instead of Mölling himself, DSM further notes it did not identify Mölling as a trial witness, and Lallemand failed to identify any document or evidence from Mölling that DSM intends to use at trial. (Id.) (Dkt. #212 at 2.) For these reasons, Lallemand's MIL No. 2 is DENIED AS MOOT, although it may object to the use or admission of individual documents as applicable.

         C. MIL No. 3: Exclude Evidence and Argument Concerning Preparation and Prosecution of the '998 Patent beyond What Is Contained in DSM's Expert Reports.

         Lallemand next seeks to exclude evidence and argument about the preparation and prosecution of the patent not contained in DSM's expert reports because: (1) DSM's 30(b)(6) witness, Atul Thakrar, was unable to answer questions about the '998 patent's preparation and prosecution; (2) “Lallemand's attempts to obtain discovery from or about people familiar with the preparation and prosecution of the patent-in-suit . . . proved futile”; and (3) DSM represented in response to an interrogatory that the only relevant facts that it contends support its infringement claims are found within its experts' reports. (Dkt. #188 at 16.) Basically, Lallemand argues that DSM should “be limited to the record that it disclosed during the fact and expert discovery period” and “be precluded from presenting evidence or argument at trial inconsistent with its interrogatory answers” to avoid unfair surprise and undue prejudice. (Id. at 17-18.)

         DSM opposes this motion explaining that: (1) DSM only purchased the patent from TU Delft after it was issued, thus it is unsurprising that DSM's 30(b)(6) representative was unable to provide certain information about prosecution of the patent; (2) Lallemand failed to subpoena the people involved in the prosecution, including Mölling, Van Maris and Medina, so the lack of discovery is Lallemand's own doing; (3) DSM is not limited to prosecution statements identified in Professor Alper's report; and (4) DSM is entitled to rebut Lallemand's use of prosecution history at trial. (Dkt. #212 at 2-3.)

         In addition to its Rule 26(a)(1) disclosure obligations, Lallemand specifically requested by interrogatory that DSM “[i]dentify any fact concerning the preparation, filing, prosecution, examination, or maintenance of the '998 Patent that DSM contends supports its infringement contentions.” (Dkt. #191-17 at 10.) On December 22, 2017, DSM substantively responded “direct[ing] Lallemand to the expert reports of Dr. Gregory Stephanopoulos.”[14] (Id.) Rule 33 requires that “[e]ach interrogatory . . . to the extent it is not objected to, be answered separately and fully in writing under oath.” Fed.R.Civ.P. 33(b)(3) (emphasis added). One purpose of interrogatories is to identify evidence or to point a party to where it may find such evidence. See U.S. v. 216 Bottles, More or Less, Sudden Change by Lanolin Plus Lab. Div. Hazel Bishop Inc., 36 F.R.D. 695, 701 (E.D.N.Y. 1965) (“The purpose of the interrogatories is to discover facts or to learn where such facts are available and to narrow the issues of fact.”). Finally, DSM was under an obligation to update its initial Rule 26 disclosures and interrogatory responses as it acquired additional information under Rule 26(e). See Barker v. Bledsoe, 85 F.R.D. 545, 548 (W.D. Okla. 1979) (“Answers given at initial stages of discovery are not expected to be final, and are not binding to the party giving them. Thus the duty of supplementing answers.” (internal citations omitted)). To the extent DSM failed to meet these obligations, it is unfair for DSM rely on this information at trial. Accordingly, this motion is GRANTED and DSM may only rely on the information timely disclosed under Rule 26 and in response to discovery requests, including for infringement purposes, only what was disclosed in its expert reports concerning preparation, prosecution and maintenance of ...


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