Case 2:20-cv-00337-JRG Document 257 Filed 01/13/22 Page 1 of 12 PageID #: 9352
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Civil Action No. 2:20-CV-00337-JRG
`
`FILED UNDER SEAL
`
`SEAGEN INC.,
`
`v.
`
`Plaintiff,
`
`DAIICHI SANKYO CO., LTD.,
`
`Defendant,
`
`ASTRAZENECA PHARMACEUTICALS LP, and
`ASTRAZENECA UK LTD,
`
`
`Intervenor-Defendants.
`
`SEAGEN’S MOTION TO STRIKE THE SECOND EXPERT REPORT OF DAVID
`MANSPEIZER AND ANY RELIANCE THEREON BY DSC WITNESSES
`
`
`
`

`

`Case 2:20-cv-00337-JRG Document 257 Filed 01/13/22 Page 2 of 12 PageID #: 9353
`
`
`
`
`I.
`
`INTRODUCTION
`
`On the deadline for exchanging rebuttal expert disclosures, DSC served a second report
`
`of its prosecution laches expert, David Manspeizer (Ex. A (“Second Manspeizer Report”)). This
`
`report, titled “Expert Report of David Manspeizer as to Rebuttal Issues,” is four paragraphs long.
`
`It admits that it provides no rebuttal opinions, expressly stating Mr. Manspeizer has no opinions
`
`on willfulness, damages, infringement, or invalidity. Nor could it, as there was nothing for Mr.
`
`Manspeizer to rebut: his only claimed expertise relates to prosecution laches, an issue on which
`
`DSC bears the burden and on which he provided testimony in his opening expert report (Ex. A at
`
`Appendix A (“Opening Manspeizer Report”)).
`
`Rather, this second report merely incorporates by reference the entirety of the Opening
`
`Manspeizer Report, which it attaches as an “Appendix,” and then adds the following:
`
`3. I understand that one or more experts for Defendants, and/or counsel for
`Defendants, intend to use my testimony as to the incorporated facts and opinions
`set forth herein in support of contesting any allegations Seagen has advanced
`regarding willful infringement and patent damages.
`
`
`The report provides no further explanation regarding which experts intend to rely on which
`
`portions of Mr. Manspeizer’s testimony or how such experts intend to do so to contest Seagen’s
`
`positions regarding willful infringement or damages. DSC’s rebuttal noninfringement expert
`
`report does not cite to Mr. Manspeizer’s testimony. And while DSC’s rebuttal damages report
`
`cites to the Opening Manspeizer Report, it is only to paragraphs where Mr. Manspeizer simply
`
`conveys what he has learned about DSC or to paragraphs containing opinions at the heart of his
`
`prosecution laches inquiry.
`
`
`
`The Second Manspeizer Report is improper in both form and substance. It apparently
`
`attempts to lay the groundwork for DSC to grab from a bag of testimony related to prosecution
`
`laches—an equitable defense—that DSC can then present to the jury under the guise of
`
`
`
`

`

`Case 2:20-cv-00337-JRG Document 257 Filed 01/13/22 Page 3 of 12 PageID #: 9354
`
`
`
`
`“rebuttal.” Permitting DSC to backdoor such expert testimony (and worse, without specific
`
`disclosure regarding how it intends to use such testimony) represents the type of gamesmanship
`
`that Rule 26 was designed to combat and would substantially prejudice Seagen. Seagen
`
`therefore requests this Court strike the Second Manspeizer Report in its entirety and bar DSC
`
`from relying on Mr. Manspeizer’s testimony during the upcoming jury trial, including striking
`
`DSC’s damages report’s citations to Mr. Manspeizer.
`
`II.
`
`BACKGROUND
`
`A.
`
`The parties exchanged opening expert reports, including the Opening
`Manspeizer Report that provides opinions on DSC’s equitable prosecution
`laches defense
`
`Per this Court’s Amended Docket Control Order, Seagen and DSC served opening expert
`
`reports on November 22. (Dkt. 229 at 4.) The parties’ opening reports contained expert
`
`opinions on the issues for which each party bears the burden of proof—for DSC, this included
`
`invalidity (“Opening Lambert Report”) and its prosecution laches affirmative defense (Opening
`
`Manspeizer Report). DSC’s prosecution laches expert, Mr. Manspeizer, is an attorney with some
`
`background in patent prosecution.
`
`The Opening Manspeizer Report provides Mr. Manspeizer’s opinions regarding the
`
`alleged applicability of prosecution laches in this case, along with facts allegedly supporting
`
`those opinions. (See generally, Ex. A at Appendix A.) It does not purport to opine on other case
`
`issues, including, for example, willfulness or damages. Specifically, the “Summary of Opinions”
`
`and “Conclusion” sections of the Opening Manspeizer Report only provide opinions regarding
`
`the applicability of prosecution laches in this case. (Id., Appendix A, Sections I, VI.) The
`
`“Applicable Legal Standards” section of the report outlines only the legal standards for
`
`prosecution laches. (Id., Appendix A, Section IV.) And the report’s analysis of the facts is
`
`limited to whether Seagen’s prosecution of the asserted patent meets the requirements for
`
`
`
`
`2
`
`
`
`

`

`Case 2:20-cv-00337-JRG Document 257 Filed 01/13/22 Page 4 of 12 PageID #: 9355
`
`
`
`
`applying prosecution laches. (See id., Appendix A, Sections V.E-F.)
`
`After receiving the Opening Manspeizer Report, Seagen contacted DSC and asked
`
`whether DSC would “agree that David Manspeizer will not testify at the upcoming jury trial
`
`because his report is directed to equitable issues and related facts” and because this Court “does
`
`not permit the jury to hear equitable issues[.]” (Ex. C at 2.) Seagen also asked DSC to “please
`
`explain the basis for [its] position” if it did in fact believe Mr. Manspeizer’s opinions and
`
`underlying evidence could be presented to the jury. (Id.) DSC did not respond to this email.
`
`Roughly a week later, Seagen again contacted DSC and asked for its position on this topic. (Id.
`
`at 1-2.) DSC did not respond at that time.
`
`B.
`
`On the deadline for exchanging rebuttal expert reports, DSC served the
`Second Manspeizer “Report,” which contains no rebuttal or otherwise new
`opinions
`
`On December 13, 2021, the deadline for rebuttal expert witness reports, DSC served a
`
`second Manspeizer Report (Second Manspeizer Report) titled “Expert Report of David
`
`Manspeizer as to Rebuttal Issues.”
`
`Despite its title and date of service, which suggest it was intended to be Mr. Manspeizer’s
`
`rebuttal report, the Second Manspeizer Report provides no rebuttal testimony. (See generally,
`
`Ex. A.) Nor does it provide clarity on which of Mr. Manspeizer’s opinions DSC intends to
`
`present to the jury. (Id.) The entire body of the report is four paragraphs:
`
`
`
`
`
`
`3
`
`
`
`

`

`Case 2:20-cv-00337-JRG Document 257 Filed 01/13/22 Page 5 of 12 PageID #: 9356
`
`
`
`
`
`
`(Id.) As indicated, it attaches the entire Opening Manspeizer Report as “Appendix A.”
`
`Although this report states Defendants “intend to use” Mr. Manspeizer’s testimony “in
`
`support of contesting any allegations Seagen has advanced regarding willful infringement and
`
`patent damages,” it does not explain who will rely on this testimony or how. (Id.) DSC’s
`
`rebuttal noninfringement report was served on the same day as the Second Manspeizer Report
`
`and does not cite to or otherwise rely on Mr. Manspeizer’s testimony. DSC’s rebuttal damages
`
`report, served on January 4, cites to the Opening Manspeizer Report in three places. (Ex. B at ¶¶
`
`203, 204, 207.) These citations are to portions of the Manspeizer Opening Report where Mr.
`
`
`
`
`4
`
`
`
`

`

`Case 2:20-cv-00337-JRG Document 257 Filed 01/13/22 Page 6 of 12 PageID #: 9357
`
`
`
`
`Manspeizer explains facts he learned about DSC from DSC (id., ¶¶ 203-204, 207 (citing Opening
`
`Manspeizer Report, ¶¶ 34 (
`
`), 36 (
`
`(
`
`
`
` 43
`
`)) or where Mr. Manspeizer provides
`
`opinions at the heart of the prosecution laches analysis (id., ¶ 203 (citing Manspeizer Opening
`
`Report, ¶¶ 29 (
`
`”), 30 (
`
`), 49 (
`
`
`
`
`
`)).
`
`After serving this Second Manspeizer Report, DSC responded to Seagen’s inquiries about
`
`whether Mr. Manspeizer would testify at trial, stating it “d[oes] not agree that David Manspeizer
`
`will not testify at the upcoming jury trial” because “[t]he facts included in Mr. Manspeizer’s
`
`[opening and rebuttal] reports” “relate to issues that are triable before a jury.” (Ex. C at 1.)
`
`
`
`
`
`
`
` (Id. (citing Opening
`
`Lambert Report, ¶ 79, n. 114).)1
`
`III. ARGUMENT
`
`This Court should strike the Second Manspeizer Report in its entirety. In addition to the
`
`report being improper in both form and substance, it evinces DSC’s attempt to circumvent the
`
`disclosure requirements of Rule 26 and present new, previously-undisclosed theories at trial
`
`based on Mr. Manspeizer’s testimony. Allowing DSC to engage in such trial by ambush would
`
`be highly prejudicial to Seagen. And, more generally, as Mr. Manspeizer’s testimony relates
`
`
`1 As explained in Seagen’s concurrently filed Motion to Strike Portions of the Expert Reports of
`Dr. Lambert, this paragraph should be stricken.
`
`
`
`
`5
`
`
`
`

`

`Case 2:20-cv-00337-JRG Document 257 Filed 01/13/22 Page 7 of 12 PageID #: 9358
`
`
`
`
`only to equitable issues, it is appropriately heard—if at all—only at a bench trial.
`
`A.
`
`The Second Manspeizer Report is not a proper rebuttal report (or any other
`type of report) under the Federal Rules and this Court’s Amended Docket
`Control Order
`
` The Second Manspeizer Report appears to have been prepared and served under the
`
`guise of a rebuttal report in an attempt to present—at DSC’s option at the jury trial—some yet-
`
`to-be disclosed positions based on Manspeizer’s Opening Report (other than DSC’s damages
`
`expert parroting what Mr. Manspeizer understands from DSC or describing the heart of Mr.
`
`Manspeizer’s prosecution laches analysis). But, regardless of DSC’s intention, the Second
`
`Manspeizer Report is far from any type of expert report recognized by the Federal Rules or by
`
`courts in this district.
`
`The Second Manspeizer Report cannot be a rebuttal report because it provides no rebuttal
`
`opinion. Under the Federal Rules, rebuttal reports are defined as written expert opinions
`
`“intended to contradict or rebut evidence on the same subject matter” as the other party’s expert.
`
`Fed. R. Civ. P. 26 (a)(2)(D)(ii); see also Meier v. UHS of Del., Inc., C.A. No. 4:18-CV-00615,
`
`2021 WL 1561615, at *4 (E.D. Tex. Apr. 21, 2021) (“This Court characterizes a rebuttal report
`
`as one that ‘explains, repels, counteracts, or disproves evidence of the adverse party’s initial
`
`report.’”). Seagen served opening expert reports on infringement and damages. To be a proper
`
`rebuttal report, the Second Manspeizer Report would need to provide opinions rebutting these
`
`topics. Yet the Second Manspeizer Report expressly admits it does not do this, as it states that
`
`Mr. Manspeizer was “not asked [] to evaluate patent invalidity, willful infringement, or patent
`
`damages” and therefore “do[es] not provide any opinions on those issues.” (Ex. A at ¶ 4.)
`
`In fact, the only opinions purportedly included in the Second Manspeizer Report are
`
`those relating to prosecution laches, via its incorporation and attachment of the entire Opening
`
`Manspeizer Report. These opinions could not possibly “rebut” anything considering the only
`
`
`
`
`6
`
`
`
`

`

`Case 2:20-cv-00337-JRG Document 257 Filed 01/13/22 Page 8 of 12 PageID #: 9359
`
`
`
`
`expert testimony provided on prosecution laches at that point was Mr. Manspeizer’s.2 See
`
`Gibson Brands, Inc. v. Armadillo Distrib. Enters., Inc., C.A. No. 4:19-CV-00358, 2020 WL
`
`65811868, at *2 (E.D. Tex. Nov. 10, 2020) (“‘rebuttal’ is a term of art” used for evidence that
`
`“meet[s] new facts brought out in the [] opponent’s case in chief”); see also Clear-View Techs.,
`
`Inc. v. Rasnick, No. 13-cv-02744-BLF, 2015 WL 3509384, at *4 (N.D. Cal. Jun. 3, 2015) (“an
`
`expert cannot be said to ‘rebut’ testimony he or she has never seen or reviewed”).
`
`To the extent DSC now tries to change its strategy and pass off the Second Manspeizer
`
`Report as something else, DSC’s efforts must fail. The Second Manspeizer Report cannot be
`
`considered part of DSC’s opening report, as it was served three weeks after the initial expert
`
`disclosure deadline set by this Court (Dkt. 229 at 4). Ceats, Inc. v. TicketNetwork, Inc., No.
`
`2:15-CV-01470-JRG-RSP, 2018 WL 453732, at *3 (E.D. Tex. Jan. 17, 2018) (“Parties must
`
`provide their expert disclosures ‘at the times and in the sequence that the court orders’” (citing
`
`Fed. R. Civ. P. 26(a)(2)(D)). The Second Manspeizer Report also cannot be a proper
`
`supplemental expert report, as it does not add any facts or opinions not already included in the
`
`Opening Manspeizer Report, and certainly does not add any substance “without using
`
`information available prior to the deadline for service of the supplemented report.” Id. (citing
`
`Sierra Club v. Cedar Point Oil Co., 73 F.3d 546, 569-71 (5th Cir. 1996)).
`
`B.
`
`The Second Manspeizer Report purports to circumvent the disclosure
`requirements of Rule 26 and allow DSC to engage in trial by ambush
`
`In addition to being improper in form—as an alleged rebuttal report containing no
`
`rebuttal opinions—the little substance that is included in the Second Manspeizer Report provides
`
`an independent basis for striking it. The only content this report adds is Mr. Manspeizer’s broad
`
`
`2 Seagen did provide its own rebuttal expert testimony to the Opening Manspeizer Report, but it
`served its rebuttal report after DSC served the Second Manspeizer Report.
`
`
`
`
`7
`
`
`
`

`

`Case 2:20-cv-00337-JRG Document 257 Filed 01/13/22 Page 9 of 12 PageID #: 9360
`
`
`
`
`statement that he “understand[s] that one or more experts for Defendants, and/or counsel for
`
`Defendants, intend to use my testimony” “in support of contesting any allegations Seagen has
`
`advanced regarding willful infringement and patent damages.” (Ex. A at ¶ 3.) This report
`
`includes no further information, such as an identification of the testimony that might be used, of
`
`the specific purpose for which it will be used, by whom it will be used, or how it has anything to
`
`do with willful infringement and/or damages.
`
`In other words, the only “new” content in the Second Manspeizer Report is the statement
`
`that during the jury trial DSC or AstraZeneca may or may not have an undisclosed witness, or
`
`Mr. Manspeizer himself, present some unidentified portion of Mr. Manspeizer’s testimony in
`
`support of an unidentified rebuttal opinion. DSC’s strategy here is obvious: it hopes to raise new
`
`defensive theories during the jury trial, by using Mr. Manspeizer’s testimony on equitable topics
`
`that would otherwise be reserved for a bench trial. And it hopes to do this without providing
`
`Seagen disclosure of those theories or of how it intends to use Mr. Manspeizer’s opinions and the
`
`alleged facts on which those opinions rely. This type of gamesmanship is exactly what the
`
`disclosure requirements of Rule 26 were created to avoid. Meier, 2021 WL 1561615, at *3
`
`(“Bearing in mind that ‘[t]he basic purpose of [Rule 26 is to] prevent[] prejudice and surprise’”);
`
`Clear-View Techs., 2015 WL 3509384, at *4 (“Permitting Defendants to backdoor such expert
`
`testimony under the guise of ‘rebuttal’ testimony would render Rule 26’s limits generally
`
`meaningless, and permit Defendants to engage in substantial gamesmanship — something Rule
`
`26 was designed to combat, not foster”).
`
`DSC’s actual rebuttal reports do not cure this flaw. DSC’s rebuttal noninfringement
`
`report does not rely on Mr. Manspeizer’s testimony. In DSC’s rebuttal damages report, its expert
`
`states she reviewed both Manspeizer reports, but she does not cite to the Second Manspeizer
`
`
`
`
`8
`
`
`
`

`

`Case 2:20-cv-00337-JRG Document 257 Filed 01/13/22 Page 10 of 12 PageID #: 9361
`
`
`
`
`Report to support of any of her opinions. And, although she does cite to the Opening
`
`Manspeizer Report a couple of times (Ex. B at ¶¶ 203-204, 207), the portions to which she cites
`
`are either paragraphs explaining what Mr. Manspeizer learned about DSC from DSC or
`
`paragraphs with opinions going to the heart of the prosecution laches inquiry. See Section II.B,
`
`supra. As this is improper, the citations in DSC’s rebuttal damages report to Mr. Manspeizer
`
`should likewise be stricken.
`
`C. Mr. Manspeizer’s testimony goes to equitable issues and is thus
`appropriate—if at all—only at a bench trial
`
`Finally, even if DSC had adequately identified how it intends to rely on Mr. Manspeizer’s
`
`testimony to contest allegations of willful infringement and patent damages at the jury trial, any
`
`such reliance would still be improper. This is because Mr. Manspeizer’s reports are limited to
`
`opinions relating to the alleged applicability of prosecution laches in this case. See Sections
`
`II.A-B, supra. Prosecution laches is an equitable defense to be decided by the Court, not by the
`
`jury. Personalized Media Commc’ns, LLC v. Apple, Inc., 2:15-cv-01366-JRG, Dkt. 461 at 9-10
`
`(E.D. Tex. Feb. 2, 2021) (describing equitable defenses, including prosecution laches, as “issues
`
`that will be tried solely to the bench”). Therefore, in addition to the other issues that plague the
`
`claimed “rebuttal report,” allowing DSC to present Mr. Manspeizer’s testimony during the jury
`
`trial would be improper. SimpleAir, Inc. v. Google Inc., 2:14-cv-00011-JRG, Dkt. 325 at 3 (E.D.
`
`Tex. Oct. 6, 2016) (granting motion in limine to exclude “evidence or argument going solely to
`
`the issue of prosecution laches”).
`
`IV. CONCLUSION
`
`For all the reasons stated above, Seagen requests this Court strike the Second Manspeizer
`
`Report in its entirety and bar DSC from relying on Mr. Manspeizer’s testimony during the jury
`
`trial, including its damages expert’s purported reliance on Mr. Manspeizer.
`
`
`
`
`
`
`9
`
`
`
`

`

`Case 2:20-cv-00337-JRG Document 257 Filed 01/13/22 Page 11 of 12 PageID #: 9362
`
`
`Dated: January 6, 2022
`
`
`
`
`
`
`By: /s/ Michael A. Jacobs
`Michael A. Jacobs
`MJacobs@mofo.com
`Matthew A. Chivvis
`MChivvis@mofo.com
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`Telephone: 415.268.7000
`Facsimile: 415.268.7522
`
`Bryan Wilson
`BWilson@mofo.com
`MORRISON & FOERSTER LLP
`755 Page Mill Road
`Palo Alto, California 94304-1018
`Telephone: 650.813.5600
`Facsimile: 650.494.079
`
`Melissa R. Smith
`Texas State Bar No. 24001351
`melissa@gillamsmithlaw.com
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: 903.934.8450
`Facsimile: 903.934.9257
`
`Of Counsel:
`
`T. John Ward, Jr.
`Texas State Bar No. 00794818
`jw@wsfirm.com
`Charles Everingham IV
`Texas State Bar No. 00787447
`ce@wsfirm.com
`Andrea L. Fair
`Texas State Bar No. 24078488
`andrea@wsfirm.com
`WARD, SMITH & HILL, PLLC
`1507 Bill Owens Parkway
`Longview, Texas 75604
`Telephone: 903.757.6400
`Facsimile: 903.757.2323
`
`Attorneys for Plaintiff Seagen Inc.
`
`
`
`10
`
`
`
`
`
`

`

`Case 2:20-cv-00337-JRG Document 257 Filed 01/13/22 Page 12 of 12 PageID #: 9363
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that counsel of record who are deemed to have
`
`consented to electronic services are being served with a copy of this document via the Court’s
`
`CM/ECF system per Local Rule CV-5(a)(3) on January 6, 2022.
`
`/s/ Melissa R. Smith
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF CONFERENCE
`
`On January 6, 2022, counsel for Seagen and Defendants engaged in a meet and confer
`
`conference pursuant to Local Rule CV-7(h). Defendants’ counsel indicated that Defendants are
`
`opposed to the relief sought by this Motion.
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Melissa R. Smith
`
`
`
`
`
`
`
`
`
`
`11
`
`
`
`