Intellectual Property Law

Chief Judge Gregory M. Sleet: Post-Trial Op Reminds Counsel of Duty of Candor

By Karen E. Keller, Andrew A. Lundgren et al.

Note to Counsel: Remember your duty of candor to the tribunal. In a recent post-trial findings of fact and conclusions of law, Chief Judge Gregory M. Sleet noted in a footnote the following:

?Santarus asserts that Dr. Allen, one of Par?s expert witnesses testified that ?there are substantial differences between omeprazole and leminoprazole.?? This is, at best, a highly misleading statement and is one of the more egregious examples of the distortions of the record contained in Santarus? post-trial briefing. The portion of the transcript that Santarus cites for its characterization of Dr. Allen?s testimony contains two questions that call for some comparison between leminoprazole and omeprazole. The first question and its response consisted of the following:

Q. You would agree that Laminoprazole is substantially different from omeprazole; correct?
A. It is a ben?
Q. Thank you, sir.

Tr. 710:19-22. The second question, as reworded after an objection by Par?s counsel, discussed a hypothetical, abstract patent containing leminoprazole and asked whether, for the purposes of doctrine of equivalents rather than non-obviousness, the substitution of omeprazole would constitute a ?substantial difference? such that it would not infringe under the doctrine of equivalents. (Tr. 711-25.) To that abstract, hypothetical question concerning a wholly different area of patent law, Dr. Allen answered ?I believe that is true. Id. at 712:1. The court is trouble that on this basis, Santarus asserts in the context of its obviousness argument that Dr. Allen ?testified? that leminoprazole and omeprazole were substantially different.

Sadly, such distortions are not confined to these examples ? both at trial and in the post-trial briefing. At trial, counsel for Santarus implied that one of Par?s witnesses was ?embarrassed? by his opinion in this case based on the witness?s statement during deposition that he hoped the confidentiality of his participation in the case would be respected? In its proposed findings of fact and conclusions of law, Santarus? counsel represented to the court that Dr. Orlando was unable to explain the meaning of an article at trial? Counsel neglects to mention, however, that the testimony cited was in response to a question that counsel withdrew after Dr. Orlando asked to see the context in question? Furthermore, both parties? briefs cite portions of the transcript that provide no support for the propositions for which they are cited. These tactics make it far more difficult and time-consuming for the court to examine the record when preparing its findings of fact and conclusions of law. Both the court and the parties suffer undue inconvenience when counsel engages in such tactics. Equally important, counsel who engage in such sharp practices run the risk of severely damaging their credibility and, thus, their effectiveness in the place and at the time when they most need to be viewed as honest and ethical brokers of the facts and the law.

Santarus, Inc. v. Par Pharmaceutical, Inc., C.A. No. 07-551-GMS, Memo., at 35 n.10 (D. Del. Apr. 14, 2010).

Santarus, Inc. v. Par Pharmaceutical, Inc., C.A. No. 07-551-GMS, Memo. (D. Del. Apr. 14, 2010).

Full post as published by Delaware IP Law Blog on April 26, 2010 (boomark / email).