Leaving Something off the Final Pre-Trial Order?

I teach, in addition to ethics and patent law, federal civil procedure.  So, I enjoyed and sent to my students this case, Insite Vision Inc. v. Sandoz, Inc., (Fed. Cir. Apr. 9, 2015) (Linn-auth; Prost; Newman).  The district court’s order denying the defendant’s motion to amend the final pretrial order was affirmed.  Apparently, the defendant had left off of the final pretrial exhibit list a file history from counterpart EPO patents that would have assisted its obviousness defense.

Now, of course, there are plenty of reasons things are left off of exhibit lists, but I teach my students that if you leave something off the list, or a witness or depo degs off of it, the odds of it getting changed are slim to none in many instances.  “Manifest injustice” is the standard, and it’s higher than “good cause” to amend a scheduling order and is further subject to an abuse of discretion standard of review.

Curious to see if there’s anything else that happens.

(Sorry for the long time between posts.  Buying a house and teaching an extra IP course this semester!)

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

2 thoughts on “Leaving Something off the Final Pre-Trial Order?

  1. 1

    Prof. Hricik,

    It seems that the district judge concluded that inclusion of the EPO proceedings would not have changed the outcome. If true, what did attorneys for Sandoz hope to gain by appealing the exclusion of evidence? A new trial to save a malpractice claim? I think the ethical problem is that pages and oral argument are taken away from the appealed determination that the patent was not obvious. Comments?

    1. 1.1

      I’m not sure he reached that conclusion. My read is that the patentee made a great job of showing that manifest injustice would result by amending the final PTO because it would have to come up with lots of new analysis, the EPO standards are different, etc.

      So, maybe… Like I said, there are lots of reasons things may not get on a final PTO… but there had better be a reason other than neglect.

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