A Blog About Intellectual Property Litigation and the District of Delaware

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Here's a motion you don't see every day.

In AstraZeneca AB v. Zydus Pharmaceuticals (USA) Inc., C.A. No. 18-664-RGA (D. Del.), after a bench trial before Judge Andrews, plaintiff had filed proposed post-trial findings of fact that included a definition for a person of skill in the art for the asserted patents.

Judge Andrews then issued a trial opinion finding the asserted claims infringed and not invalid—i.e., a ruling in plaintiff's favor. He adopted plaintiff's proposed definition of a person of skill in the art.

Shortly after the opinion issued, however, plaintiff realized it made a mistake in its proposed findings of fact. It had omitted part of its definition of a person of skill in the art (POSA), and had defined the level of skill in such a way that would exclude its own expert, who the parties had not otherwise contested was a person of skill in the art.

Plaintiff filed a motion to correct the mistake under FRCP 52(b) (to amend findings of fact) and 60(a) (relief from a judgment or order). It asked Judge Andrews to correct the definition to match what it had meant to submit, a definition that would encompass its own expert. Defendant opposed, arguing in part that the relief was not available under those rules because plaintiff's proposed definition was adopted.

Judge Andrews granted the motion and amended the trial opinion to reflect the definition plaintiff had intended to propose:

Plaintiff's Motion to Correct Limited Portion of Trial Opinion (D.I. 172) is GRANTED. Assuming I have the authority to amend the Trial Opinion, I would find that a POSA could either be a pharmaceutical chemist with a Ph.D. and several years of practical experience or have a B.S. or M.S. degree in chemistry with significantly more experience. . . . Accordingly, I find that Plaintiff's expert Dr. Batchelor is a POSA.

It is interesting that the Court added "assuming I have the authority to amend the Trial Opinion," and that the Court went out of its way to hold specifically that plaintiff's expert is a person of skill in the art.

Why Did Plaintiff Move?

I'm curious what harm plaintiff was concerned about here. The Court noted that it appears undisputed that plaintiff's expert was qualified as an expert, and plaintiff obviously prevailed at trial. I'm not aware of any rule that states that a party's expert must themselves be a person of skill in the art. So it's not immediately obvious.

It looks like the Court had a similar feeling. It questioned whether the change made any difference, and noted that any argument that plaintiff's expert's conclusions should be disregarded because he wasn't a person of skill in the art would long since have been waived:

That being said, I do not think this clarification of the POSA definition makes any difference. Defendant never challenged Dr. Batchelor's qualifications to be offering his opinions. . . . It seems clear now (as it did then) that the parties agreed he was a POSA. Thus, any argument that Plaintiff's expert was not a POSA or not qualified to explain things from the perspective of a POSA would, so far as I am concerned, be waived.

Nonetheless, I'm sure the attorneys are more comfortable knowing that the error has been fully corrected (that is, "[a]ssuming [the Court has] authority to amend the Trial Opinion").

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