Boehringer Ingelheim Vetmedica v. Schering-Plough

• Decision Date: 21 September 2001
• Docket Number: Civ. No. 96-4047(HAA).
• Citation: 166 F.Supp.2d 19
• Parties: BOEHRINGER INGELHEIM VETMEDICA, INC., et al., Plaintiffs, v. SCHERING-PLOUGH CORPORATION and Schering Corporation, Defendants.
• Court: U.S. District Court — District of New Jersey

166 F.Supp.2d 19

BOEHRINGER INGELHEIM VETMEDICA, INC., et al., Plaintiffs, v. SCHERING-PLOUGH CORPORATION and Schering Corporation, Defendants.

Civ. No. 96-4047(HAA).

United States District Court, D. New Jersey.

September 21, 2001.

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H. Curtis Meanor, Gregory D. Miller, Podvey, Sachs, Meanor, Catenacci, Hildner & Cocoziello, Newark, NJ, Jennifer Gordon, Jonathan A. Marshall, Mr. Scott D. Stimpson, Pennie & Edmonds, New York City, for Plaintiffs.

Sidney David, Paul H. Konchanski, Lerner, David, Littenberg, Krumholz & Mentlik, Westfield, NJ, for Defendants.

AMENDED OPINION

ACKERMAN, Senior District Judge.

This matter comes before the court upon motions of Defendants Schering-Plough Corporation and Schering Corporations ("Schering" or "defendants") for judgment as a matter of law and for a new trial. Plaintiff, Boehringer Ingelheim Vetmedica, Inc., ("Boehringer" or "plaintiff") opposes these motions. For the reasons stated below, these motions are DENIED.

Background

A. Factual Background

This patent litigation arises from the efforts of Boehringer and of Schering to develop a vaccine for a disease known as Porcine Reproductive Respiratory Syndrome ("PRRS"). This disease infects pigs and causes them to give birth to dead or sickly piglets. In addition, it causes reproductive failure, respiratory disease, and other symptoms such as anorexia, fever, dyspnea and neurological impairment. In previous opinions issued in this case, this court has discussed at greater length the general process by which vaccines are developed and the respective parties' efforts to develop vaccines. The court presumes the reader's familiarity with those discussions. See, e.g., Boehringer Ingelheim v. Schering-Plough, 984 F.Supp. 239, 243 245. On December 19, 1995, the United States Patent Office ("USPO") issued Boehringer Patent No. 5,476,778 ("'778 Patent").

In this case, Boehringer claims that Schering's sales of a swine vaccine infringed upon claims 1 and 2 of Boehringer's '778 Patent, both literally and under the doctrine of equivalents. Claims 1 and 2 were as follows:

1. A method of growing and isolating swine infertility and respiratory syndrome virus, ATCC-VR2332, which comprises inoculating the virus on a full or partial sheet of simian cells in the presence of a serum in a suitable growth medium and incubating the inoculated cell sheet at about 34 [degrees] C. to 37 [degrees] C. until CPE¹ is observed.

2. The method as recited in claim 1 wherein the simian cell line is MA-104.

In November 1998, while the litigation of this infringement action was pending, the USPO issued to Boehringer Patent No. 5,840,563 ("'563 Patent"), also for a method of growing PRRS. On December 17, 1998 Boehringer commenced an action, 1998-CV-5703, alleging that Schering had infringed Claim 3 of its newly issued '563 Patent.

B. Procedural History

Plaintiff filed its original complaint in this matter in August 1996. In June 1997, this Court held a hearing pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995) in conjunction with its hearing on Boehringer's motion for a preliminary injunction. Since that time, the court has issued several written opinions in this case and one opinion in the related case 1998-CV-5703. See Boehringer Ingelheim v. Schering-Plough, 984 F.Supp. 239 (D.N.J.1997) (hereinafter "Boehringer I"); Boehringer Ingelheim v. Schering-Plough, 6 F.Supp.2d 324 (D.N.J. 1998) (hereinafter "Boehringer II"); Boehringer Ingelheim v. Schering-Plough, 68 F.Supp.2d 508 (D.N.J.1999) (hereinafter "Boehringer III"); Boehringer Ingelheim v. Schering-Plough, 106 F.Supp.2d 667 (D.N.J.2000) (hereinafter "Boehringer IV"); Boehringer Ingelheim v. Schering-Plough, 106 F.Supp.2d 696 (D.N.J.2000) (hereinafter "Boehringer V").

On October 6, 1997, this Court issued an opinion detailing its claim construction under Markman and denying Boehringer's preliminary injunction motion in the '778 Patent case. In denying Boehringer's motion for a preliminary injunction, the court found that Boehringer failed to demonstrate a likelihood of success on the merits given Schering's substantial defense of obviousness pursuant to 35 U.S.C. § 103(a), and that Boehringer failed to demonstrate irreparable harm from the defendants' sale of a competing swine vaccine. The court also found, however, that Boehringer did not engage in certain inequitable conduct in the prosecution of the patent. See Boehringer I, 984 F.Supp. at 258-59, 264. On April 27, 1998, this court denied Schering's motion for summary judgment and Boehringer's motion for summary judgment, as well as Boehringer's renewed motion for a preliminary injunction in the '778 Patent case. See Boehringer II, 6 F.Supp.2d 324. The court found that neither Schering nor Boehringer had demonstrated that no genuine issues of material fact remained regarding obviousness and infringement pursuant to the doctrine of equivalents, and that Boehringer still had not demonstrated irreparable harm or its likelihood of success on the merits. Id. at 338.

On October 26, 1999, this court denied Boehringer's preliminary injunction motion in the '563 Patent case, finding that Boehringer failed to demonstrate a likelihood of success on the merits given Schering's substantial defenses of obviousness and inequitable conduct on the part of Boehringer in obtaining the patent, and that Boehringer had failed to show irreparable injury. See Boehringer III, 68 F.Supp.2d 508. Boehringer appealed the court's decision to the Federal Circuit, who dismissed the appeal on February 22, 2000.

On June 20, 2000, this Court issued an opinion holding that Boehringer did not engage in inequitable conduct in obtaining the '778 Patent, finding that Schering failed to demonstrate that Boehringer's inclusion of third parties' work in an application section rather than citing that work as prior art, and Boehringer's failure to disclose two references which suggested a cause of swine disease was not material. The court also found that Schering had not demonstrated plaintiff's intent to deceive. See Boehringer IV, 106 F.Supp.2d 667.

Prior to trial on the issues effecting the '778 Patent, this Court severed the issue of inequitable conduct from the issues of obviousness and infringement. The issues of obviousness and infringement were tried by a jury, and on January 20, 2000 the jury returned a verdict in favor of Boehringer on those issues. The issue of inequitable conduct was tried by this Court sitting without a jury, and on June 20, 2000, this court entered judgment in favor of Boehringer on that issue. Within 10 days of that Order being entered, Schering moved for a new trial pursuant to Rule 59 and for a judgment as a matter of law pursuant to Rule 50. Boehringer filed papers opposing those motions. On August 2, 2000, this court granted Boehringer's motion for injunctive relief in the '778 Patent case and found that Schering's post-trial motions were timely but that Schering was not entitled to stay of this case pending resolution of its post-trial motions. See Boehringer V, 106 F.Supp.2d 696.

On August 16, 2000, this court issued an order staying all proceedings in the '563 Patent case pending resolution of appeals in the '778 Patent case. On August 28, 2000, this court subsequently issued an order administratively terminating the '563 patent case "without prejudice to the right of the parties to reopen the proceedings for good cause shown."

Schering brings its renewed motion for judgment as a matter of law pursuant to Fed.R.Civ.P. 50(b). During trial Schering had filed notice of a motion for judgment as a matter of law pursuant to Fed. R.Civ.P. 50(a), on the grounds that Boehringer failed to produce evidence that its commercial process of incubating for XX hours² is equivalent to the claim requirement of "incubating ... until CPE is observed" or evidence that its vaccine strain ATCC-VR2525 is equivalent to the claimed virus strain ATCC-VR2332. On December 16,1999, the Court indicated that it reserved opinion on that motion. In its renewed motion, Schering alleges that its commercial process of incubating for XX is not equivalent to the claim requirement of "incubating ... until CPE is observed." Schering also alleges that its vaccine strain ATCC-VR2525 is not equivalent to the claimed virus strain ATCC-VR2332. Finally, Schering asserts that claim 2 of the '778 Patent is invalid for obviousness. Boehringer opposes each of Schering's assertions and contends that Schering has failed to prove that there was no rational basis for the jury's findings of equivalency and obviousness.

Likewise Schering brings its motion for a new trial pursuant to Fed.R.Civ.P. 59. Schering contends that the jury's findings of equivalency were contrary to the great weight of evidence, that the trial was permeated by improper, irrelevant, and one-sided evidence concerning Boehringer's vaccine, and that the brevity of the jury's deliberations confirms the need for a new trial. In response, Boehringer argues that it provided conclusive proofs of infringement under the doctrine of equivalents at trial, that its references to its vaccine were explicitly permitted by the court's orders and were limited and appropriate, rather than prejudicial, and finally that the duration of the jury deliberations does not warrant a new trial.

On December 4, 2000, however, just over five months after filing the above motions, Schering wrote to the court to request that decisions on its post-trial motions be held in abeyance pending briefing by both parties on the impact of an en banc decision issued by the Federal Circuit on November 29, 2000, Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki and Co., Ltd., 234 F.3d 558 (Fed.Cir.2000). Schering asserts that the Festo decision overruled prior Federal Circuit precedents by placing new and significant limitations on the doctrine of equivalents. Boehringer...