Federal Judiciary

"The court has never had counsel so recklessly disregard its orders before this trial" - Post-Trial Motions Denied in Saffran v. Boston Scientific

By Michael Smith

Saffran v. Boston Scientific Corp., 2:05cv657-TJW (E.D. Tex. July 9, 2008)
Judge: T. John Ward
Holdings:  Motions for JMOL and New Trial DENIED
This is a lengthy post, as it discusses three extraordinarily lengthy orders by Judge Ward in a complex patent case.
In this patent infringement case, the plaintiff, Bruce Saffran (?Saffran?) Ph.D., M.D., sued BSC for infringing, directly and/or contributorily, claims 1-4, 6-11, 13, and 15-18 (the ?Asserted Claims?) of United States Patent No. 5,653,760 (the ??760 patent?).  The jury returned a verdict for $431 million in February 2008, judgment was entered, and the usual flurry of postjudgment motions were filed.
Judge Ward resolved these motions today, denying BSC?s Motion for Judgment as a Matter of Law, BSC?s Alternative Motion for a New Trial and BSC's  Alternative Motion for a New Trial on Damages in three voluminous opinions.

Alternative Motion for a New Trial
On the Alternative Motion for a New Trial, BSC asserted ten grounds for setting aside the jury's verdict.  Judge Ward opened his analysis with an issue that had played an important part at the trial of this case. 

The court conducted a pre-trial hearing on January 30, 2008 at which the court issued warnings to both sides about the gravity with which the court treats violations of its orders, particularly its orders in limine. This warning included a stern admonition that the court would instruct the jury of the offending party?s failure to abide by the court?s orders. The court notified both parties at the pre-trial hearing (and also at trial) that its rulings on the parties? motions in limine were not definitive rulings on the admissibility of evidence. Rather, the court instructed the parties to approach the bench before delving into subject matter about which the court granted a party?s motion in limine to obtain a final definitive ruling on the evidence.

Judge Ward went on to note that one of his rulings was that the parties? experts could not predicate their opinions on the experts? constructions of claim terms that the court did not construe as that would violate the court?s Markman Order.  However, at trial, Judge Ward wrote, "BSC repeatedly violated the court?s orders in limine despite repeated warnings from the court. In an effort to guarantee compliance with the court?s orders, the court notified the jury that BSC had violated the court?s orders."
I won't go through each of the ten grounds, but here are some highlights from the order:
At one point BSC argued that it was entitled to a new trial because the court ?precluded BSC from comparing the Taxus stents to the preferred embodiments described in the specification of the ?760 patent.? Motion at 4. Except that the Court did not such thing

BSC ignores the court?s instructions to the parties concerning its rulings on the parties motions in limine. The court informed the parties that its rulings on motions in limine were not definitive rulings on the admissibility of evidence. See e.g., 2/7/2008 A.M. Tr. 37:08-38:04; 2/4/2008 Tr. at 6:1-4. Now, however, BSC argues that it was precluded from presenting evidence at trial because the court granted certain paragraphs of Saffran?s motions in limine. An order granting a motion in limine requires the offering party to approach the bench before offering the evidence in order to obtain a ruling on the admissibility of the evidence. 

(citations omitted).  Thus as with the QPSX v. Nortel case last year, the losing party was complaining it was precluding from offering evidence, but it never made an order of proof or, here, even obtained a definitive ruling excluding the evidence, simply (and erroneously) relying on an order on a motion in limine.  (Didn't anyone have an O'Connor's Federal Rules lying around?)
Another evidentiary lacuna (as Judge Justice once referred to it) showed up when BSC argued that the court ?effectively? precluded it from presenting evidence related to its  anticipation and obviousness defenses at trial.  Not so, Judge Ward wrote.

BSC chose to base its invalidity case on expert opinions for which the expert did not lay the proper factual predicate as discussed supra. The court will not create exceptions to the Federal Rules of Civil Procedure and Evidence because a party?s strategic decisions ultimately fail. The central fact is that Dr. Hopfenberg made conclusions that he did not support in his expert report. . . .  Ultimately, BSC made the decision to predicate expert opinions on facts that it chose not to support. The law prohibits the court from allowing an expert to testify to opinions that he does not support analytically or factually.

I hate it when that happens, don't you?  Finally, BSC complained that the Court's prior order striking its amended invalidity contentions precluded it from presenting its "prior art" defenses.  The Court wrote:

The court incorporates by reference its order striking BSC?s amended invalidity contentions [which] explains why the court struck BSC?s amended invalidity contentions. As noted in that order, BSC, without excuse, belatedly amended its invalidity disclosures to include multiple prior art references and contentions. BSC?s justifications for making these disclosures ultimately could be considered specious and frivolous. The court did not strike BSC?s original invalidity contentions. Consequently, the court never struck BSC?s ?prior art? defenses as BSC claims in the motion. Instead, the court enforced its rules. The fact that BSC chose not to make ?prior art? defenses at trial reflects a strategic decision by BSC, not the court?s rulings. The court made this point clear to BSC?s counsel at a bench conference. See 2/8/2008 A.M. Tr. 9:9-10:19.

In sum, BSC chose to amend its invalidity contentions to disclose a significant amount of prior art and add new theories less than two months from trial and long after expert reports were due. BSC argued that the court?s claim constructions mandated its amendment, but that argument was woefully unsupported. For example, BSC alleged surprise because of the court?s construction of ?small molecules.? Apparently, BSC was surprised that the court adopted the parties? agreed construction for that term.

(Emphasis added).  Good one, Your Honor, good one.  But the failure to offer evidence shows up here as well, since "BSC made the strategic decision to elicit no testimony from its expert witnesses on subjects it properly disclosed [in its original invalidity contentions]; the court never precluded BSC from doing so."  Wait a minute - a party is claiming error based on exclusion of evidence that was never excluded and which it never offered?  The order isn't clear, but something tells me BSC never made an offer of proof on the prior art that was precluded either.  Again, where's that O'Connor's when you need it?
Bust most damning was the last section of the order, where Judge Ward responded to BSC's claim that a new trial was warranted due to its claim that the Court made prejudicial comments to the jury concerning BSC's trial misconduct..  Judge Ward rejected this argument, writing that "[t]he court has never had counsel so recklessly disregard its orders before this trial. The court repeatedly warned BSC against violating its orders, but counsel for BSC paid little, if any, heed to the court?s instructions and warnings."  (Emphasis really added).  The court issued the following admonition to both parties with respect to motions in limine:

when they are violated. . . my instruction is going to be considerably more than, ?counsel, don?t do that anymore,? generally speaking. Sometimes, I?ve had the unfortunate experience of taking real serious steps, and, hopefully, I won?t have to do that, but I?m forewarning you that?s my attitude. So forewarned is usually forearmed.

I'll just note for the record that this language is familiar to everyone who has ever tried a case in Judge Ward's court, as is the Court's reaction when a party tries to do this in the face of this instruction.  (Be afraid.  Be very afraid).  Here's what happens after a witness doesn't follow the instruction the first time.  Judge Ward said:

. . .we went over it extensively, that we were going to limit your cross to the scope of direct. He [the witness] expressly said he wasn?t expressing an opinion on that. . . .Now, Mr. Delucia, you?re beginning to try my patience. If you continue to try my patience, I?m going to start instructing the jury about some things . . . that?s going to be very disadvantageous to your client. . . .And, you know, you?re here on pro hoc [sic] vice. If you think I?m going to let you just run over this Court?s rules without penalty - - Mr. Canada, you better get ready, you and Mrs. Gardner because if he continues, he is not going to continue as counsel in this case. And I?m not warning you again.

Sure enough, it didn't stop, and eventually "[t]he court had no choice but to instruct the jury that BSC violated the court?s orders to put an end to the misconduct."  Was the instruction necessary to stop the conduct?  Judge Ward noted that "[i]t bears mentions that BSC?s misconduct substantially subsided after the court gave the instruction to the jury."  So yes, apparently it was.
To summarize, the rulings on this motion, "BSC repeatedly violated the court?s orders warranting an instruction from the court. BSC failed to timely amend its invalidity contentions, tried to elicit improper opinion testimony from fact witnesses, and exceeded the scope of direct examination on cross-examination. BSC made a strategic decision not to present evidence to the jury in its invalidity case."

Motion for Judgment as a Matter of Law
On the Motion for Judgment as a Matter of Law, to make a long story short, BCS disagreed with Judge Ward's claims construction rulings.  Early and often, according to the order.  Why did the Court bring it up? 

The court revisits the claim construction history of this case because BSC tried to informally circumvent the court?s claim construction rulings in its motions for summary judgment, motions in limine, and expert reports. . . . Although BSC commented in various briefs that it did not agree with the court?s claim constructions, it did not file a motion for reconsideration at those times. . . . To make matters worse, BSC?s proposed constructions and supporting arguments changed as the case progressed. The net effect of BSC?s shifting-sands approach was to provide the court a ?moving target? with respect to claim construction. . . . The claim construction positions taken in the [JMOL] differ still from BSC?s prior positions. Thus, ironically, many of BSC?s claim construction proposals made throughout this case are, as a matter of law, incorrect according to BSC?s arguments in the Motion.

Okay, important tip - pick your story and stick to it. BSC sought JMOL in part based on its claims construction.  Judge Ward denied it.  Judge Ward also frowned on BSC's tactic of incorporating "by reference" over 100 pages of briefing from its prior SJ motions, which he noted "eviscerates the court's page limit restriction."
Judge Ward's order deals exhaustively with the myraid of grounds asserted for JMOL and I won't detail them here - many can be summarized by his statement at one point that

[t]his evidence presents a classic fact issue. BSC asks the court to disregard the fact that the jury viewed BSC documents and videos, listened to testimony, and believed that Saffran?s characterization of the evidence was more credible than BSC?s characterization. The court finds that the evidence supports the jury?s finding that the Taxus Stents met the claimed functional limitation.

Alternative Motion for a New Trial on Damages
Finally, BSC's Alternative Motion for a New Trial on Damages was denied as well.  BSC essentially claimed that its evidence was better than Dr. Saffran's, and Judge Ward noted that " [b]oth sides presented evidence supporting their positions. The jury found Saffran?s evidence more credible and the court may not supplant its judgment for the jury?s verdict where the evidence in the record can support the jury?s verdict. Consequently, the court rejects BSC?s argument." 
BSC?s violation of the court?s pretrial order (that the scope of the cross-examination was limited to the scope of the direct examination) prompted the court to issue the following warning:

When I granted these motions in limine, all I asked you to do in pretrial, and again on Monday afternoon, was to tell you not to go in and violate the terms of the order . . . . If you think you?ve got a reason that I should reconsider it, what you need to do is first approach the Bench. . . [the] first thing you [BSC] do is violate the motion in limine and then require [opposing] counsel to say ?let?s approach.? You do just the opposite of what I asked you to do. I do not understand why you will not take that instruction. I told you at pretrial that the rulings were not definitive. I would reconsider any one if you would just approach the Bench first. But you have continuously throughout this case chosen to violate the motion in limine and then try to convince me that it?s okay. So you violate two orders, I do not understand it.

After all this heavy civ pro stuff I'll close with a light moment in this order, which came when BSC argued that it was prejudiced because at the close of the plaintiff?s case the court granted its motion for JMOL that BSC did not willfully infringe the ?760 patent. (No, seriously - that's really what they said).  Its argument was that Saffran was allowed to offer evidence that BSC willfully infringed the ?760 patent, but that BSC could not rebut that testimony since the court granted BSC?s motion for JMOL and that this testimony was harmful to BSC in the eyes of the jury.  "This argument makes up in creativity what it lacks in merit," Judge Ward observed, but pointed out the flaw (okay one of the flaws) in it.  "BSC makes no allegation that the court precluded it from offering rebuttal testimony or evidence. BSC alleges that the court committed error by not including BSC?s proposed curative instruction in the court?s final instructions to the jury. However, BSC never raised that objection to the court?s jury instructions at trial. Consequently, BSC waived its objection." 
Shades of QPSX v. Nortel again.

Full post as published by Eastern District of Texas Federal Court Practice on July 09, 2008 (boomark / email).