Research Corporation Technologies Incorporated v. Eli Lilly and Company

• Court: District Court, D. Arizona
• Decided: September 15, 2023
• Docket: 4:16-cv-00191
• Status: Unknown

Opinion

1 WO 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA

9 Research Corporation Technologies No. CV-16-00191-TUC-SHR Incorporated, 10 Order Re: Lilly’s Motions and RCT’s Plaintiff, Motion to Preclude Brulotte Defense 11 v. 12 Eli Lilly and Company, 13 Defendant. 14 15 16 Pursuant to the Court’s August 24, 2022 Order (Doc. 327), Defendant Eli Lilly has 17 filed a “Motion for Summary Judgment on Plaintiff’s Claims for Conversion and Unjust 18 Enrichment” (Doc. 330) and a “Submission on the Impact of the Expiration of U.S. Patents 19 on Plaintiff’s Ability to Recover Damages” (Doc. 331). Plaintiff RCT has responded to 20 both (Docs. 332 and 333), and Lilly has replied (Docs. 342 and 343). Also pending is 21 RCT’s “Motion to Preclude Untimely and Prejudicial Assertion of Heretofore Undisclosed 22 Defense” (Doc. 341).1 23 I. Lilly’s Motion for Summary Judgment on Plaintiff’s Claims for 24 Conversion and Unjust Enrichment (Doc. 330) 25 Lilly argues Indiana law “fully precludes RCT’s claims for conversion and unjust 26 enrichment” because the License Agreement here (“Agreement”) governs the conduct

27 1This case was stayed pending mediation at the request of the parties. (Docs. 350, 28 351, 354.) The parties, obviously, did not reach a settlement through mediation (Doc. 355), so the Court now lifts the stay. 1 underlying RCT’s claims, and the barrier of a contract to non-contract theories continues 2 to apply after termination of the contract. (Doc. 330 at 2.) Lilly asserts the reason RCT 3 alleges Lilly’s post-termination use of RCT’s biological materials is wrongful is “because 4 it violated Lilly’s ‘express and unambiguous contractual obligation to immediately return 5 the Pichia biological materials’” under ¶ 10.3 of the Agreement. (Id. at 2 (quoting RCT’s 6 Motion for Reconsideration, Doc. 313 at 2) (emphasis added by Lilly).) Lilly continues to 7 quote more of RCT’s Motion for Reconsideration in an attempt to show RCT’s unjust- 8 enrichment claim is “firmly anchor[ed]” in the text of the Agreement. (Id.) However, read 9 in context, the portions quoted by Lilly are related not to whether the Agreement precludes 10 RCT’s non-contract claims, but whether its non-contract claims are limited by the 11 Agreement’s natural expiration date or the expiration of the Patent Rights. (Doc. 313 at 2– 12 3.) 13 Next, Lilly argues the Court’s conclusion the non-contract claims cannot proceed 14 for the time period during which the Agreement was in effect did not go far enough—Lilly 15 asserts the Court’s analysis in its Summary Judgment Order (Doc. 309) “requires rejecting 16 the unjust enrichment and conversion claims entirely, and not just ‘for the time period 17 during which the Agreement was in effect.’” (Doc. 313 at 3 (quoting Doc. 309 at 22).) 18 Lilly frames its argument as a response to RCT’s summary-judgment argument that after 19 termination, the Agreement does not govern any actions or conduct. (Doc. 330 at 2.) 20 According to Lilly, this notion conflicts with “the terms of the Agreement and foundational 21 principles of contract law” and Indiana courts “have long enforced contractual provisions 22 that govern following termination.” (Id. at 3 (internal quotation marks and citation 23 omitted).) Lilly cites several non-binding and non-Indiana cases to support its assertion 24 the unjust-enrichment and conversion theories “simply cannot be sustained as a matter of 25 law” where an agreement “govern[s] the[] relationship [and] is not silent on post- 26 termination obligations.” (Id. at 4 (internal citation omitted).) That is, Lilly appears to 27 believe RCT’s allegation is that Lilly’s continued use of the materials described in ¶ 10.3 28 was wrongful simply because it violated Lilly’s obligation to return the materials under 1 ¶ 10.3. (Id. at 4–5.) Therefore, Lilly asserts, ¶ 10.3 speaks to the parties’ post-termination 2 conduct—namely, Lilly’s failure to return the materials to RCT after receiving notice of 3 RCT’s termination—and RCT’s unjust enrichment and conversion claims are based on that 4 same conduct, thus, the non-contract claims cannot proceed as a matter of law. (Id. at 6.) 5 In response, RCT argues the Agreement does not govern Lilly’s post-termination 6 use of the materials because it “does not contemplate, nor address the remedy for Lilly’s 7 continued wrongful use of RCT’s biological materials,” so RCT can recover in equity. 8 (Doc. 332 at 2.) RCT asserts Lilly’s argument that contract provisions can continue to 9 govern conduct after termination is irrelevant because the Agreement does not address 10 Lilly’s continued use of the materials after termination, unlike the cases Lilly cites in its 11 Motion. (Id. at 2–3.) Specifically, RCT asserts the cases Lilly cites “involved express 12 contract terms addressing the post-termination conduct at issue,” whereas Lilly’s post- 13 termination use of the materials here is “outside the Agreement, and a wrong independent 14 of any contractual obligations,” so “[a]n equitable remedy is appropriate.” (Id. at 3.) RCT 15 further asserts it “does not seek to extend Lilly’s contractual obligation to pay a 2% royalty 16 beyond termination of the Agreement, but to recover the value of Lilly’s gain from its 17 continued use of RCT’s materials.” (Id. at 3.) That is, RCT believes it is entitled to argue 18 to a jury Lilly “gained a substantial benefit by continuing to use RCT’s Pichia materials, 19 instead of incurring the time and cost to develop or find a replacement once the Agreement 20 was terminated.” (Id. at 4.) 21 As to RCT’s contention the Agreement addresses only the return of the materials 22 and not Lilly’s continued use of them, Lilly asserts this is “a distinction without a 23 difference.” (Doc. 342 at 2.) Therefore, Lilly maintains, RCT cannot “claim relief under 24 non-contract theories in addition to any damages for its breach of contract claim.” (Id.) 25 First, there is no dispute contract provisions can continue to govern the parties’ 26 conduct after termination. Second, there is no dispute ¶ 10.3 governs Lilly’s failure to 27 return the materials immediately after RCT terminated the Agreement. Rather, the issue is 28 whether ¶ 10.3 governs not only Lilly’s failure to immediately return the materials upon 1 termination, but also Lilly’s continued possession and use of the materials after 2 termination. If it does, then RCT cannot, as a matter of law, maintain its non-contract 3 claims for that conduct; if it does not, then RCT can pursue its unjust enrichment and 4 conversion claims for the post-termination period. 5 Paragraph 10.3 provides: 6 No termination of this Agreement shall constitute a termination or a waiver of any rights of any party against any other party 7 accruing at or prior to the time of such termination, nor shall it 8 terminate or waive any party’s obligations under Article 6. If this Agreement is terminated under the provisions of Paragraph 9 4.4, Paragraph 10.2 or Paragraph 10.4, [Lilly] agrees to 10 immediately return all Host Strains, Expression Vectors and Expression Systems in [Lilly]’s or an Affiliate’s or 11 sublicensee’s possession, and any information relating to such, 12 to [RCT]. (Doc. 39-1 (emphasis added).) Paragraph 10.3 clearly contemplates some post-termination 13 conduct, as it specifically states termination shall not constitute a termination or waiver “of 14 any rights of any party against any other party accruing at or prior to the time of such 15 termination.” Paragraph 10.3 further refers to the parties’ secrecy obligations in Article 6 16 and expressly requires Lilly to “immediately return” the materials and information upon 17 termination. However, the existence of a contract that contemplates some post-termination 18 conduct does not necessarily preclude non-contract claims if those claims are based on 19 post-termination conduct that is not governed by the contract. As explained in the 20 Summary Judgment Order (Doc. 309 at 21), Indiana recognizes an exception to the general 21 rule precluding non-contract claims: “when an express contract does not fully address a 22 subject, a court of equity may impose a remedy to further the ends of justice.” Coppolillo 23 v. Cort, 947 N.E.2d 994, 999 (Ind. Ct. App. 2011). 24 Although ¶ 10.3 addresses Lilly’s obligation to immediately return the materials and 25 information upon termination, nothing in ¶ 10.3 or anything else in the Agreement 26 identified by Lilly addresses its continued possession and use of the materials and 27 information after failing to return them. To the extent ¶ 10.3 provides that termination of 28 1 the Agreement does not constitute a termination or waiver of any party’s “rights against 2 any other party,” Lilly does not identify any rights relevant to the issue here. And Lilly 3 does not explain what, if any, other provisions in the Agreement fully address its continued 4 possession and use of the materials and information. The Court also notes ¶ 10.3 5 specifically states Lilly’s obligation is to immediately return the materials and information. 6 So, to the extent that paragraph contains a temporal element, it refers to immediately after 7 the Agreement was terminated—there is no indication ¶ 10.3 is intended to address Lilly’s 8 conduct for the seven-plus years after the Agreement terminated. Therefore, the Court is 9 unconvinced the Agreement fully addresses Lilly’s continued possession and use of the 10 materials and information. 11 As to Lilly’s assertion RCT cannot claim relief under non-contract theories “in 12 addition to any damages for its breach of contract claim” (Doc. 342 at 2), the Court notes 13 RCT alleges two harms: (1) harm suffered from Lilly failing to return the materials and 14 information immediately after termination; and (2) harm suffered from Lilly continuing to 15 keep and use the materials and information. Although Lilly’s continued possession of the 16 materials and information may look like nothing more than a continuation of its failure to 17 return them, RCT is alleging the harm is not just being deprived of the materials and 18 information because Lilly continues to possess them, but that Lilly has continued to use 19 the materials and information and profit from that use. These appear to be distinct harms, 20 which further supports the conclusion Lilly’s failure to immediately return the materials 21 and information is not the same conduct as its continued possession and use of them. 22 Therefore, the Court concludes the Agreement does “not fully address[]” Lilly’s continued 23 possession and use of the materials and information. See Coppolillo, 947 N.E.2d at 999. 24 Because this motion comes at the summary-judgment stage, it is Lilly’s burden to 25 show, based on the undisputed material facts, it is entitled to judgment as a matter of law. 26 See Fed. R. Civ. P. 56. Lilly has not shown it is entitled to judgment as a matter of law 27 with respect to RCT’s unjust enrichment and conversion claims based on Lilly’s continued 28 possession and use of RCT’s biological materials and information because ¶ 10.3 does not 1 fully address Lilly’s conduct alleged in those claims. Therefore, Lilly’s Motion is denied. 2 Last, in its Response to Lilly’s Motion, RCT “requests that the Court reconsider its 3 ruling that the expiration of the last Patent Right limits RCT’s recovery in equity” because 4 RCT “was not aware that Brulotte was the basis for the Court’s ruling and could not have 5 reasonably foreseen it.” (Doc. 332 at 5.) Because the Court granted leave for the parties 6 to submit briefing on whether and how the expiration of the U.S. patents limits RCT’s 7 damages, the Court will address this argument below. 8 II. Whether Expiration of the Patent Rights Limits RCT’s Damages 9 Pursuant to the Court’s August 24, 2022 Order, Lilly filed a “Submission on the 10 Impact of the Expiration of U.S. Patent Rights on [RCT]’s Ability to Recover Damages.” 11 (Doc. 331.) On the day that filing became fully briefed, RCT filed a “Motion to Preclude 12 Untimely and Prejudicial Assertion of Heretofore Undisclosed Defense,” in which RCT 13 asks the Court to “hold that Lilly has waived its patent misuse affirmative defense.” (Doc. 14 341.) 15 When denying both parties’ motions for reconsideration, the Court granted Lilly 16 leave to address “whether and how the earlier expiration of the U.S. patent(s), versus the 17 Canadian patent that expired on September 14, 2016, limits the damages RCT may recover 18 under Brulotte and Kimble.” (Doc. 327 (citing Brulotte v. Thys Co., 379 U.S. 29 (1964), 19 and Kimble v. Marvel Entm’t, LLC, 576 U.S. 446 (2015)).) In answering those questions, 20 Lilly argues the expiration of the U.S. patent limits RCT’s damages to the date on which 21 the last-asserted patent expired. (Doc. 331 at 2.) Lilly explains the Agreement does not 22 list or name the “Patent Rights” covered by the Agreement, but rather defines “Patent 23 Rights” as “all patents owned or controlled by Phillips (in the sense of having the right to 24 grant licenses thereunder) based on inventions conceived prior to December 31, 1989 25 insofar and only insofar as the claims thereof encompass, in whole or in part, the Host 26 Strain, Expression Vector, Expression System, Product, Expression Technology or 27 Reagent.” (Id. at 5; Doc. 39-1 ¶ 1.10.) Apparently, the parties disagree about which patents 28 satisfy those criteria, so, Lilly explains, “the task falls to the jury to decide whether the 1 asserted patent rights meet all conditions (and thus can set the outer bound for royalties 2 under Brulotte).” (Doc. 331 at 5; Doc. 333 at 5.) 3 In its Response, RCT asserts Brulotte does not affect its damages under the license 4 because RCT “is not seeking to recover royalties based on the post-expiration use of a 5 Patent Right.” (Doc. 333 at 4.) Specifically, RCT argues the subject of the license is a 6 technological tool—a “toolbox” to be used by licensees to research, which differs from 7 Brulotte and Kimble, which had agreements granting a license to patents “which were (at 8 least in part) incorporated into an existing product sold by [the] licensee.” (Id. at 4–5.) 9 RCT also argues it “is entitled to royalties on alternative grounds, none of which 10 run afoul of Brulotte.” (Id. at 5.) For example, RCT asserts it “may argue that U.S. Patent 11 No. 5,691,166 (‘the ’166 Patent’) covers the production of Lilly’s insulin Products, since 12 it is directed to the production of CpB, which, in turn, is used to produce insulin.” (Id.) 13 Although the parties dispute whether the ’166 Patent qualifies as a Patent Right under 14 ¶ 1.10 of the Agreement and “whether the claims of the ’166 Patent cover production of 15 the insulin products,” to the extent the ’166 Patent does cover the production of the insulin 16 products, RCT asserts it “is entitled to recover royalties for these Products’ sales only for 17 the period of coverage (Agreement § 4.2.5), i.e., only while the ’166 Patent was in force. 18 Ergo, Brulotte is not relevant here.” (Id.) And to the extent the ’166 Patent does not cover 19 the production of the insulin Products, RCT states: “the parties agree that none of the Patent 20 Rights have ever covered any of Lilly’s diabetes drugs,” so Brulotte would not be 21 implicated. (Id. at 5.) If that is the case, RCT asserts it is entitled to royalties for 5 years 22 under § 4.2.5 of the Agreement. (Id.) 23 RCT argues as an additional alternative ground, it can recover royalties for 5 years 24 under § 4.2.5 because “royalty payments for the pre-expiration use of Patent Rights during 25 the life of these patents may be deferred to the time Products are sold, even if sales take 26 place after the patents have expired,” as the United States Supreme Court recognized in 27 Zenith Radio Corporation v. Hazeltine Research, Inc., 395 U.S. 100 (1969). (Doc. 333 at 28 6.) RCT further asserts this case is like Bayer AG v. Housey Pharmaceuticals, Inc., 228 F. 1 Supp. 2d 467, 472 (D. Del. 2002), in which the Delaware District Court explained that 2 when royalties are “based on later pharmaceutical sales, but the royalties are being accrued 3 as the invention is practiced during the research phase,” collecting those royalties “after 4 the expiration of the patent has expired is not per se patent misuse.” (Id. at 6–7.) That is, 5 RCT contends it “is entitled to collect royalties that accrued as Lilly practiced these Patent 6 Rights during the life of these patents,” as the parties “appropriately agreed that royalties 7 would be paid at the time of Product sales, and the measure of the value of the licensed 8 technology would be 2% of the Products’ Net Sales Value.” (Id. at 7.) And, according to 9 RCT, “[b]ecause these Patent Rights do not cover the Product (Lilly’s diabetes drugs)” 10 under that alternative theory, “the royalty term is 5 years” under § 4.2.5 of the Agreement. 11 (Id.) 12 In Reply, Lilly argues RCT’s response “confirms” “royalties that accrue based on 13 the licensee’s use of a previously patented invention” (quoting Doc. 333 at 2), “may run 14 until the last-running patent covered by the agreement expires” (quoting Kimble, 576 U.S. 15 at 454). (Doc. 343 at 1.) Lilly asserts the parties agree royalties end with the last-to-expire 16 U.S. patent, but disagree on the cutoff, and that dispute should “be addressed through claim 17 construction and by a jury, if fact questions remain.” (Id.) Lilly urges the Court to end the 18 analysis there and reject RCT’s “alternative grounds” for two reasons. (Id. at 2.) First, 19 “RCT cannot have it both ways” when it argues the royalties are compensation for Lilly’s 20 alleged use of the ’166 Patent, but, if the ’166 Patent does not apply, then royalties are not 21 compensation for RCT’s patents at all. (Id.) Second, Lilly contends RCT’s argument the 22 royalty is “‘deferred compensation’ for pre-expiration use of the patents before the royalty 23 term even began in 2005” is “internally inconsistent” because the royalty “cannot be 24 deferred compensation for using the patents before the royalty term began and also 25 compensation for the ’166 patent until it expired in 2014.” (Id.) 26 Having considered the parties’ thorough briefing, the Court finds it useful to return 27 to what led the parties and the Court to this point. At summary judgment, Lilly was found 28 liable for Count II (breach of contract for failure to notify RCT of sublicense), Count III 1 (breach of contract for failure to report sales and pay royalties), Count IV (breach of 2 contract for failure to immediately return biological materials and information), with 3 damages for those claims to be determined at trial. (Doc. 309 at 30–31.) Lilly was found 4 not liable for Count I (breach of contract for exceeding scope of license), and Count V 5 (conversion) and Count VI (unjust enrichment) for the period during which the Agreement 6 was in effect. (Id.) Thus, the only remaining questions regarding liability are whether 7 RCT’s unjust enrichment and conversion claims are temporally limited to the period 8 between the Agreement’s termination and the expiration of the Patent Rights, and whether 9 Lilly is liable for those claims. Damages on all claims are to be determined at trial, but the 10 question before the Court now is whether RCT’s damages are limited, as a matter of law, 11 by the expiration of the Patent Rights. 12 Previously, the Court ruled RCT’s unjust enrichment and conversion claims are 13 temporally limited as a matter of law to the expiration of the last-asserted Patent Rights 14 because, as explained in Brulotte and Kimble, a hybrid licensing agreement cannot be 15 enforced beyond the expiration date of the underlying patent, unless the agreement contains 16 a discounted rate, and the Agreement here contained no such discount. See Kimble v. 17 Marvel Enterprises Inc., 727 F.3d 856, 857 (9th Cir. 2013), aff’d sub nom. Kimble, 576 18 U.S. 446; see also Brulotte, 379 U.S. at 34. This was because, at the time, the Court 19 believed RCT sought to recover royalties for Lilly’s use of the materials and information 20 that occurred after the Patent Rights expired. Now, as noted above, RCT has made clear it 21 “does not seek to extend Lilly’s contractual obligation to pay a 2% royalty beyond 22 termination of the Agreement, but to recover the value of Lilly’s gain from its continued 23 use of RCT’s materials.” (Doc. 332 at 3–4.) Because RCT is not seeking to recover 24 royalties for Lilly’s use of the materials and information that occurred after the Patent 25 Rights expired, the expiration of the Patent Rights is not relevant to RCT’s unjust 26 enrichment and conversion claims.2

27 2To the extent Lilly appears to ask the Court to set a briefing schedule to determine 28 how the patents should be construed under Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), that request is denied at this time. 1 To the extent RCT seeks royalties as damages for its contract claims, it does so for 2 the sale of Products that occurred after the Patent Rights expired, not for the use of the 3 Patent Rights after they expired. Indeed, § 4.2.5 of the Agreement provides a 5-year 4 royalty term following the date of the first sale of Products if they are not “covered by the 5 Patent Rights.” For Products covered by the Patent Rights, § 4.2.5 provides royalties “only 6 for the period of time that the production, use or sale of such Product . . . is covered by the 7 Patent Rights.” As explained in Kimble, “[a] court need only ask whether a licensing 8 agreement provides royalties for post-expiration use of a patent. If not, no problem; if so, 9 no dice.” 576 U.S. at 459. The United States Supreme Court also recognized “Brulotte 10 allows a licensee to defer payments for pre-expiration use of a patent into the post- 11 expiration period; all the decision bars are royalties for using an invention after it has 12 moved into the public domain.” Id. at 453–54. Because RCT is not seeking royalties for 13 Lilly’s use of the Patent Rights after they expired, but rather royalties that accrued during 14 the life of the Patents, the Court concludes Brulotte and Kimble do not apply. Accordingly, 15 Lilly’s submission is denied. Further, RCT’s unjust enrichment and conversion claims 16 may proceed without temporal limitation for the period after the Agreement was terminated 17 on June 29, 2016 based on Lilly’s continued use of the materials and information. 18 III. RCT’s Motion 19 RCT moves to preclude Lilly’s “untimely and prejudicial assertion of heretofore 20 undisclosed” patent misuse defense under Brulotte. (Doc. 341.) Because the Court 21 concludes Brulotte and Kimble do not apply, Lilly’s Brulotte defense is not relevant. 22 Accordingly, RCT’s motion is denied as moot. 23 IV. Conclusion 24 For the foregoing reasons, Lilly has not shown Indiana law fully precludes RCT’s 25 unjust enrichment and conversion claims because the Agreement does not fully address the 26 conduct underlying those claims. Thus, RCT’s unjust enrichment and conversion claims 27 are not precluded for the period after which the Agreement was terminated. 28 Because RCT is not seeking royalties for Lilly’s post-termination use of the Patents, || Brulotte and Kimble do not apply. Thus, the Court denies Lilly’s submission on the issue 2|| and denies as moot RCT’s motion to preclude Lilly’s Brulotte defense. Last, RCT’s unjust 3 || enrichment and conversion claims may proceed without temporal limitation for the period 4|| after which the Agreement was terminated. Accordingly, 5 IT IS ORDERED: 6 (1) The stay imposed on November 28, 2022 (Doc. 351) and extended on February 7 17, 2023 (Doc. 354) is LIFTED. 8 (2) Lilly’s Motion for Summary Judgment on Plaintiff's Claims for Conversion and 9 Unjust Enrichment (Doc. 330) is DENIED. 10 (3) Lilly’s Submission on the Impact of the Expiration of U.S. Patents on □□□□□□□□□□□ 11 Ability to Recover Damages (Doc. 331) is DENIED. 12 (4) RCT’s “Motion to Preclude Untimely and Prejudicial Assertion of Heretofore 13 Undisclosed Defense” (Doc. 341) is DENIED. 14 (5) The parties shall file a Joint Proposed Pretrial Order (“JPPTO”) as outlined in 15 the attached template on or before Friday, October 20, 2023. 16 (6) Absent leave of Court, the parties shall not file anything other than the JPPTO. 17 Dated this 15th day of September, 2023. 18 19 /) Aa: hod 7] Honorable Scott H, Rash _/ United States District Judge 22 23 24 25 26 27 28

-ll-

1 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA

9 , No. CV-XXX-XXXXX-TUC-SHR

10 Plaintiff, [Joint Proposed Pretrial Order]

11 v.

12 ,

13 Defendant.

14 Pursuant to the Scheduling Order previously entered, the following Proposed 15 Joint Pretrial Order reflects the agreement of the parties and shall, upon approval of the 16 Court, be incorporated into the Final Pretrial Order: 17 I. IDENTIFICATION OF PARTIES AND COUNSEL 18 II. NATURE OF ACTION 19 Provide a concise statement of the type of the case, including the cause of action 20 and the relief sought. 21 III. STATEMENT OF JURISDICTION 22 State the claims and cite the statutes which give this Court jurisdiction over 23 each claim. 24 IV. CONTENTIONS OF THE PARTIES 25 With respect to each count of the complaint, counterclaim or cross-claim, and to 26 any defense, affirmative defense, or the rebuttal or a presumption where the 27 burden of proof has shifted, the party having the burden of proof shall list the 28 elements or standards that must be proven in order for the party to prevail on that 1 claim or defense. 2 V. STIPULATIONS AND UNCONTESTED FACTS 3 Identify any stipulations reached between the parties and any facts that are 4 uncontested. 5 VI. CONTESTED ISSUES OF FACT 6 List issues of fact to be tried and determined upon trial. Each issue of fact must be 7 stated separately and in specific terms, followed by the parties’ contentions as to 8 each issue. E.g.: 9 Issue: 10 Plaintiff(s) contends: 11 Defendant(s) contends: 12 VII. CONTESTED ISSUES OF LAW 13 The following are issues of law to be tried and determined upon trial. Each issue 14 of law must be stated concisely, separately and in specific terms, followed by the 15 parties’ contentions as to each issue. E.g.: 16 Issue: 17 Plaintiff(s) contends: 18 Defendant(s) contends: 19 VIII. PENDING MOTIONS 20 State all motions that remain pending on the docket as of the date of the proposed 21 order. 22 IX. LIST OF WITNESSES 23 Each party shall provide a list of witnesses intended to be called at trial. As to each 24 witness, identify whether he or she is a fact or expert witness and include a brief 25 statement of the expected testimony of any expert witness. 26 X. LIST OF EXHIBITS 27 Each party shall provide a list of numbered exhibits. As to each exhibit, the party 28 shall include a description containing sufficient information to identify and 1 distinguish the exhibit. Further, a statement of either UNCONTESTED or 2 CONTESTED shall follow each listed exhibit. If contested, a brief statement of 3 the objection by the opposing party shall also follow the listed exhibit. Exhibits 4 shall be marked according to the instructions received from the Court (which 5 shall be provided approximately two weeks prior to trial). 6 (e.g. - 1. Laboratory Report from the Clinical Immunology Diagnostic Laboratory 7 dated 6/15/14. CONTESTED by ***- Relevance, foundation and hearsay.) 8 XI. LIST OF DEPOSITIONS 9 Portions of depositions that will be read at trial must be listed by the party 10 intending to introduce the same and must include the page and line number(s). A 11 statement of either UNCONTESTED or CONTESTED shall follow every 12 identified portion of each listed deposition. If contested, a brief statement of the 13 objection by the opposing party shall follow the listed portion of the deposition to 14 be offered. 15 XII. JURY TRIAL or BENCH TRIAL 16 A. For a Jury Trial 17 Trial briefs (only upon request of the Court), proposed voir dire, deposition 18 testimony, objections to exhibits and depositions, stipulations, interrogatories to 19 the jury, and stipulated jury instructions shall be filed thirty (30) days prior to trial 20 unless otherwise directed by the Court. Jury instructions which are not agreed 21 upon, together with a concise argument in support of the instruction, shall be filed 22 with the Court and served upon each party at least thirty (30) days before trial. 23 Objections to the non-agreed upon jury instructions shall be filed with the Court 24 and served upon each party fourteen (14) days thereafter. No replies shall be 25 permitted without prior approval from the Court. All proposed jury instructions 26 shall conform with Local Rule 51. Motions in limine shall be filed no later than 27 thirty (30) days before trial. Any opposition shall be filed and served fourteen 28 (14) days thereafter. No replies shall be permitted without prior approval from the 1 Court. 2 B. For a Bench Trial 3 Trial briefs (only upon request of the Court), objections to exhibits, objections to 4 deposition testimony, motions in limine, and stipulations shall be filed and served 5 at least thirty (30) days prior to trial. Proposed findings of facts and conclusions 6 of law (only upon request of the Court) shall be filed fourteen (14) days prior to 7 trial, or as otherwise directed by the Court. 8 XIII. PROBABLE LENGTH OF TRIAL 9 Each party shall identify the estimated length of time it will take to present its 10 case. 11 XIV. ADDITIONAL INFORMATION THAT MAY BE HELPFUL TO THE 12 COURT 13 A. Pending Motions: Identify all motions that remain pending on the docket as 14 of the date of this Joint Proposed Pretrial Order. 15 B. Motions in Limine: Motion in limine shall be filed and served upon each 16 party with this proposed order. Any opposition shall be filed and served 17 within fourteen (14) days. 18 C. Any other information that may be helpful to the Court. 19 XV. CERTIFICATION 20 Undersigned counsel for each of the parties in this action do hereby approve and 21 certify: 22 1. All discovery has been completed. 23 2. The identity of each witness has been disclosed to opposing counsel. 24 3. Each exhibit listed herein: (a) is in existence; (b) is numbered; and (c) has 25 been disclosed and shown to opposing counsel. 26 4. All other form and content of this proposed Joint Pretrial Order. 27 XVI. ADOPTION 28 The Court may adopt this proposed Joint Pretrial Order at the Pretrial Conference 1 or at a subsequent hearing. 2 3 ______________________ _______________________ 4 Attorney for Plaintiff Attorney for Defendant 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28