Innogenetics, N.V. v. Abbott Laboratories - WilmerHale

permitted to adduce evidence on obviousness.”). Without having provided anysatisfactory explanation as to why it waited until the conclusion of trial to alert the courtto the inaccurate order, Abbott will have to bear the cost of being precluded frompresenting any evidence of obviousness at trial. For the above reasons, the districtcourt did not abuse its discretion denying Abbott a new trial on the issue ofobviousness.B. Anticipation1. Dr. Cha’s testimonyFor purposes of showing that the claims of the ’704 patent were anticipated byprior art and thus invalid, Abbott sought to introduce at trial the testimony of Dr. Tai-AnCha, the inventor and author of three prior art references, including the Cha PCTapplication, which was before the jury. The district court confined Dr. Cha’s testimonyto the actual words and content of the Cha PCT application because an expert reportwas required even though Abbott had only disclosed Dr. Cha as “a fact witness and,pursuant to Fed. R. Civ. P. 26(a)(2)(A), as an expert who had not been speciallyretained.” The district court concluded that, given Dr. Cha’s role as the inventor behindthe application, the mere fact that he was not receiving compensation for his scientifictestimony did not exempt Abbott from furnishing an expert report. Without informationabout the proposed content of Dr. Cha’s de facto expert testimony, Innogenetics wouldnot have been able to prepare an adequate deposition or cross-examination.On appeal, Abbott contends that “[t]here is no requirement that a retained expert,rather than the prior art’s author, provide [an explanation of how the ordinary artisanwould have understood a reference’s disclosures.]” Abbott entirely fails to address the2007-1145, -1161 15