Experts’ Testimony Excluded as to Opinions That Cost and Regulatory Constraints Would Have Suppressed Motivation to Combine​

The court partially granted defendant's motion to exclude the testimony of plaintiff's nonobviousness experts with respect to their opinions that cost and regulatory constraints would have suppressed a skilled artisan’s motivation to combine the prior art. "In a number of instances, [plaintiff's] experts conclude that because a proposed prior art combination would have been costly or legally prohibited by the FDA, a person of ordinary skill in the art would not have been motivated to change the prior art in the proposed manner. The Court will not permit [plaintiff's] experts to testify that such economic or regulatory concerns would have inhibited a person of ordinary skill in the art from changing the prior art or affected the person’s expectation that the change would have been successful. . . . [Plaintiff's] experts are not, however, prevented from testifying . . . that costs or regulatory factors are probative of whether a proposed prior art combination would have been technically feasible. . . . Similarly . . . although less probative of nonobviousness, the fact finder could conclude that regulatory restrictions reflect some technical feasibility, assuming there is evidence or opinion that the regulatory restrictions are based on technical limitations."

Arthrex, Inc. v. Smith & Nephew, Inc. et al, 2-15-cv-01047 (TXED December 1, 2016, Order) (Payne, MJ)