Intellectual Property Law

Sue L. Robinson: Overlooking "Basic Principle of Science" Warrants Rule 59 Relief

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

Rarely does a party get to revisit discovery following a post-trial decision on the merits. In a recent memorandum order that affects an earlier invalidity holding, however, District Judge Sue L. Robinson did just that.

Finding that both parties overlooked a "basic principle of science" in discovery, the Court refused to order a new trial. Instead, the Court opened the record to admit further expert evidence:

"Ultimately, defendants bear the burden of demonstrating the invalidity of claim 7 by clear and convincing evidence. However, the Court will not grant a new trial on the validity of claim 7 based solely on defendants' failure of proof with respect to a basic principle of science. Due to the errors made by both parties, the court concludes that it is instead appropriate to open the record pursuant to Fed. R. Civ. P. 59(a)(2) to allow further evidence on the relationship between precipitation and solubility."

Whether the additional evidence cures the underlying failure of proof remains to be seen. But of more immediate importance is the precedent this decision establishes for reopening the trial record to address discovery deficiencies.

Senju Pharma. Co. Ltd. v. Apotex Inc., C.A. No. 07-779-SLR (D. Del. Nov. 3, 2010) (Robinson, J.).

Full post as published by Delaware IP Law Blog on November 08, 2010 (boomark / email).