Lupin Ltd. v. Abbott Laboratories
| Decision Date | 14 June 2007 |
| Docket Number | Civil Action No. 3:06cv400. |
| Parties | LUPIN LIMITED, Plaintiff, v. ABBOTT LABORATORIES, and ASTELLAS PHARMA, INC., Defendants. Abbott Laboratories, and Astellas Pharma, Inc., Counterclaim Plaintiffs, v. Lupin Limited, and Lupin Pharmaceuticals, Inc., Counterclaim Defendants. |
| Court | U.S. District Court — Eastern District of Virginia |
Amy Denise Brody, Deanne M. Mazzochi, Paul J. Molino, William A. Rakoczy, Rakoczy Molino Mazzochi Siwik LLP, Chicago, IL, for Plaintiff.
Dabney Jefferson Carr, IV, Robert Armistead Angle, Troutman Sanders LLP, Richmond, VA, Ivan Michael Poullaos, James Francis Hurst, Kathleen Bridget Barry, Raymond Cortez Perkins, Winston & Strawn LLP, Chicago, IL, Jeffrey I.D. Lewis, John Charles Knapp, Scott Richard Samay, Stuart E. Pollack, William F. Cavanaugh, Jr., Patterson Belknap Webb & Tyler LLP, New York City, Richard D. Kelly, Andrew Michael Ollis, Frank Jonah West, Stephen Gene Baxter, Oblon Spivak McClelland Maier & Neustadt PC, Alexandria, VA, for Defendants.
Conrad Moss Shumadine, Willcox & Savage PC, Norfolk, VA, Deanne M. Mazzochi, Paul J. Molino, William A. Rakoczy, Rakoczy Molino Mazzochi Siwik LLP, Chicago, IL, for Counterclaim Defendants.
Richard D. Kelly, Stephen Gene Baxter, Oblon Spivak Mcclelland Maier & Neustadt PC, Alexandria, VA, Dabney Jefferson Carr, IV, Robert Armistead Angle, Troutman Sanders LLP, Richmond, VA, Ivan Michael Poullaos, James Francis Hurst, Kathleen Bridget Barry, Raymond Cortez Perkins, Winston & Strawn LLP, Chicago, IL, Jeffrey I.D. Lewis, Stuart E. Pollack, William F. Cavanaugh, Jr., Patterson Belknap Webb & Tyler LLP, New York City, Conrad Moss Shumadine, Willcox & Savage PC, Norfolk, VA, Deanne M. Mazzochi, Paul J. Molino, William A. Rakoczy, Rakoczy Molino Mazzochi Siwik LLP, Chicago, IL, for Counterclaim Plaintiffs.
This matter is before the Court on Plaintiff's Motion for Summary Judgment on Noninfringement and Invalidity for U.S. Patent No. 4,935,507 (Docket No. 208). For the reasons set forth below, the motion is granted in part and denied in part.
This action involves U.S. Patent No. 4,935,507 ("'507 patent"), which covers Crystal A, a particular form of the antibiotic cefdinir. (See Docket No. 188, Mem. Op. at 23.) Astellas Pharma, Inc. ("Astellas") obtained the '507 patent in 1990, five years after it had obtained U.S. Patent No. 4,559,334 ("1334 patent"), which also covered forms of cefdinir. The '334 patent expired on May 6, 2007, and the '507 patent is set to expire on December 4, 2011.1
Because the '334 patent expired on May 6, 2007, Astellas can no longer prevent competitors from producing forms of cefdinir not covered by the '507 patent, which is limited in scope to Crystal A. Abbott Laboratories ("Abbott") holds a license from Astellas to practice the '507 patent. Pursuant to that license, Abbott makes and markets Crystal A in a branded cefdinir product called Omnicef®, which currently has annual sales exceeding $600 million. Seizing on the expiration of the '334 patent, Lupin Limited ("Lupin") is now marketing a generic form of cefdinir to compete with Omnicef®, and seeks a declaration that its product "has not infringed, does not infringe, and will not infringe any valid and enforceable claim of the '507 patent. (Compl. for Declaratory J. at 1.) Abbott and Astellas have each filed counterclaims against Lupin, alleging infringement of the '507 patent. (Dockets No. 18 and 21.)
Lupin seeks summary judgment on six independent grounds: (1) non-infringement of Claims 1-5 of the '507 patent, both literally and under the doctrine of equivalents; (2) invalidity of the '507 patent for obviousness; (3) invalidity of the '507 patent for anticipation; (4) invalidity of the '507 patent for improper inventorship; (5) invalidity of the '507 patent for lack of enablement; (6) the absence of legal or equitable remedy for trace infringement. (See Lupin Limited's Mem. of Law in Supp. of Mot. for Summ. J. of Noninfringement and Invalidity for U.S. Patent No. 4,935,507 and Supplemental Declaration of Amy D. Brody ("Lupin Mem.").) Abbott and Astellas oppose Lupin's motion, and contend that summary judgment is inappropriate on any of those bases. (See Abbott Laboratories' and Astellas Pharma, Inc.'s Mem. in Resp. to Lupin's Mot. for Summ. J. ("Abbott and Astellas Mem.").) Oral argument was heard on May 21, 2007 and, for the reasons that follow, the Court now grants Lupin's summary judgment motion with respect to the literal infringement of Claims 2-5 and the infringement of all claims under the doctrine of equivalents.
Summary judgment is appropriate in a patent case, as in other cases, when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); Nike Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed.Cir.1994). When analyzing a summary judgment motion, the facts must be construed in the light most favorable to the non-movat, and all reasonable inferences must be drawn in the non-movant's favor. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
A determination of infringement requires a two-step, claim-by-claim analysis. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir.2001). First, the court must properly construe the claim; second, "the claim as properly construed must be compared to the accused device or process." Gart v. Logitech, Inc., 254. F.3d 1334, 1339 (Fed. Cir.2001). An infringement issue is properly decided upon summary judgment when no reasonable jury could find, by a preponderance of the evidence, that every limitation recited in the properly construed claim either is or is not found in the accused device either literally or under the doctrine of equivalents. Id.
After oral argument, the Court concluded that there were genuinely disputed issues of material fact which precluded an award of summary judgment on the literal infringement of Claim 1. In a Stipulated Order of Dismissal dated June 6, 2007 (Docket No. 349), the parties have agreed to dismiss without prejudice any claims related to the literal infringement of Claim 1. Because that issue has been resolved thusly by the parties, it is not necessary to address it further.
Claims 2-5 are product-by-process claims. (See Docket No. 188, Mem. Op. at 39.) In an order dated May 10, 2007 (Docket No. 234), the Court informed the parties that the Federal Circuit's decision in Atlantic Thermoplastics Co., Inc. v. Faytex Corp., 970 F.2d 834 (Fed.Cir.1992) would govern the literal infringement analysis of Claims 2-5. That order was necessary because the parties disagree about whether the product-by-process infringement analysis should be controlled by Atlantic Thermoplastics or Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565 (Fed.Cir.1991).
Scripps and Atlantic Thermoplastics announce conflicting rules respecting the proper analysis of product-by-process claims in an infringement action. In Scripps, a panel of the Federal Circuit determined that "the correct reading of the product-by-process claims is that they are not limited to product prepared by the process set forth in the claims." 927 F.2d at 1583. One year later, the decision in Atlantic Thermoplastics held that "process terms in product-by-process claims serve as limitations in determining infringement." 970 F.2d at 846-47. As district courts have long acknowledged, those two holdings are at odds with one another. See, e.g., Trustees of Columbia Univ. v. Roche Diagnostics GmbH, 126 F.Supp.2d 16, 31 (D.Mass.2000).
Scripps and Atlantic Thermoplastics are different in substance as well as in result. While Scripps enunciated its rule without legal citation or significant analysis, see 927 F.2d at 1583, the Atlantic Thermoplastics decision reached its contrary conclusion only after thoroughly examining both the history of product-by-process claims and the relevant precedent from the Supreme Court of the United States and the Federal Circuit pertaining to the infringement of such claims, see id. at 838-47. Indeed, the Scripps analysis was so brief by comparison that the Atlantic Thermoplastics court determined that Scripps would have been decided differently had Supreme Court precedent and other relevant authority been considered. See 970 F.2d at 838 n. 2.
Notwithstanding the analytical parsimony in Scripps, some district courts have decided to follow Scripps because it was issued first and has not been overruled en banc. See, e.g., Trustees of Columbia Univ., 126 F.Supp.2d at 32. On the other hand, other district courts have concluded that Atlantic Thermoplastics constitutes a proper statement of the law, and, therefore, should govern the analysis of product-by-process claims. See, e.g., Tropix, Inc. v. Lumigen, Inc., 825 F.Supp. 7, 8-10 (D.Mass.1993). Abbott and Astellas urge the Court to adopt Scripps, which offers a broader reading of product-by-process claims, while Lupin urges application of Atlantic Thermoplastics.
Having considered the matter further, the Court concludes, as it did in its order of May 10, 2007, that Atlantic Thermoplastics must control the product-by-process analysis because it, not Scripps, reflects controlling Supreme Court precedent. At oral argument on the motion for summary judgment, Abbott and Astellas disputed the Federal Circuit's interpretation of Supreme Court precedent in Atlantic Thermoplastics. (See Summ. J. Hr'g Tr. 185-89.) Having considered that argument, the Court finds no basis for concluding that the decision in Atlantic Thermoplastics either misconstrued or misapplied the controlling decisions of the Supreme Court. Moreover, a district court is not at liberty to ignore relevant and...
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