Novartis Pharmaceuticals Corp. v. Eon Labs Mfg.

Decision Date09 December 2002
Docket NumberNo. CIV.A.00-800-JJF.,CIV.A.00-800-JJF.
Citation234 F.Supp.2d 464
PartiesNOVARTIS PHARMACEUTICALS CORPORATION, Novartis AG, Novartis Pharma AG, and Novartis International Pharmaceutical Ltd., Plaintiffs, v. EON LABS MANUFACTURING, INC., Defendant.
CourtU.S. District Court — District of Delaware

Stuart B. Young, Josy W. Ingersoll, John W. Shaw, of Young, Conaway, Stargatt & Taylor, Wilmington, DE, Fitzpatrick, Cella, Harper & Scinto, New York City (Robert L. Baechtold, Nicholas N. Kallas, Brian V. Slater, of counsel) for Plaintiffs.

George H. Seitz, III, Patricia P. McGonigle, Seitz, Ogtrop and Green, P.A., Wilmington, DE, Cohen, Pontani, Lieberman & Pavane, New York City (Martin B. Pavane, Mindy H. Chettih, of counsel) for Defendant.

MEMORANDUM OPINION

FARNAN, District Judge.

Pending before the Court is Defendant's Motion For Partial Summary Judgment Dismissing Plaintiffs' Claims That Defendant Has Induced And Contributed To Infringement Of The Suit Patent (D.I.268). The Court issued its claim construction in this matter and invited the parties to submit supplemental briefing on the Motion. After reviewing the supplemental briefing, the Court reserved decision on the instant Motion. (D.I.394). Shortly thereafter, the Court informed the parties that trial in this action would be canceled, and the Court would be entering summary judgment on the papers submitted. For the reasons discussed, the Court will grant Defendant's Motion For Partial Summary Judgment Dismissing Plaintiffs' Claims That Defendant Has Induced And Contributed To Infringement Of The Suit Patent.

BACKGROUND
I. Procedural Background

This action was brought by Plaintiffs, Novartis Pharmaceuticals Corporation, Novartis AG, Novartis Pharma AG and Novartis International Pharmaceutical Ltd. (collectively, "Novartis") against Defendant, Eon Labs Manufacturing, Inc. ("Eon") for infringement of U.S. Patent No. 5,389,382 (the "'382 Patent"). Eon filed an Answer and Counterclaim to the Complaint denying infringement, asserting the affirmative defenses of patent invalidity and non-infringement, and seeking a declaratory judgment that the '382 Patent was invalid, unenforceable and not infringed. Discovery ensued, and Eon subsequently filed summary judgment motions contending that (1) Eon does not actively induce or contribute to infringement of the '382 Patent in patients' stomachs; and (2) Eon does not directly infringe the '382 Patent when it performs the ethanol content test. With regard to the second issue, Novartis sought only injunctive relief, and Eon agreed not to perform any of the alleged infringing tests in the future. Based on Eon's position and without addressing the underlying claim of whether the ethanol content tests directly infringed the '382 Patent, the Court enjoined Eon from conducting the alleged infringing tests in the future. (D.I.392). This Memorandum Opinion constitutes the Court's decision on the remaining issue raised by Eon for resolution on summary judgment.

II. The '382 Patent Generally

The '382 Patent relates to hydrosol compositions of pharmaceutically active agents, including the immunosuppressive drug cyclosporin, which are suspended or re-suspendable in an aqueous medium. The claimed hydrosol comprises solid active agent particles and behaves, insofar as pharmacological activity is concerned, as an injectable solution when it is suspended in water. ('382 Patent, col. 1, 11. 48-51). The '382 Patent also provides a process for creating the hydrosol composition. ('382 Patent, col. 6, 11. 1-64). In this action, Novartis asserts Claims 1, 2, 8 and 9 of the '382 Patent against Eon. Of the asserted claims, Claim 1 is the only independent claim. Claim 1 reads as follows:

A hydrosol which comprises solid particles of a cyclosporin and a stabilizer which maintains the size distribution of said particles, wherein said cyclosporin has a water solubility below 0.5 grams per 100 milliliters, and said particles have a weight ratio of cyclosporin to water of about 1:300 to about 1:1500 and a weight ratio of cyclosporin to said stabilizer of about 1:1 to about 1:50.

('382 Patent, col. 9, 11. 21-28).

Following a Markman hearing, the Court issued its claim construction on the disputed terms in Claim 1 of the '382 Patent. Based on this claim construction, the Court will grant Eon's motion for partial summary judgment that it does not actively induce or contribute to infringement of the '382 Patent in the stomachs of patients who ingest its cyclosporin capsules.1

DISCUSSION
I. Standard of Review

Pursuant to Rule 56(c) of the Federal Rules of Civil Procedure a party is entitled to summary judgment if a court determines from its examination of "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any," that there are no genuine issues of material fact and that the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). In determining whether there is a triable dispute of material fact, a court must review all of the evidence and construe all inferences in the light most favorable to the non-moving party. Goodman v. Mead Johnson & Co., 534 F.2d 566, 573 (3d Cir.1976). However, a court should not make credibility determinations or weigh the evidence. Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 120 S.Ct. 2097, 2110, 147 L.Ed.2d 105 (2000). Thus, to properly consider all of the evidence without making credibility determinations or weighing the evidence the "court should give credence to the evidence favoring the [non-movant] as well as that `evidence supporting the moving party that is uncontradicted and unimpeached, at least to the extent that that evidence comes from disinterested witnesses.'" Id. The moving party bears the burden of proving that no genuine issue of material fact is in dispute. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 n. 10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).

To defeat a motion for summary judgment, Rule 56(c) requires the non-moving party to:

do more than simply show that there is some metaphysical doubt as to the material facts.... In the language of the Rule, the non-moving party must come forward with "specific facts showing that there is a genuine issue for trial." ... Where the record taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is "no genuine issue for trial."

Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). Accordingly, a mere scintilla of evidence in support of the non-moving party is insufficient for a court to deny summary judgment. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Rather, a genuine issue for trial exists only if the record taken as a whole could lead a rational person to conclude that the position of the person with the burden of proof on the disputed issue is correct. Horowitz v. Federal Kemper Life Assurance Co., 57 F.3d 300, 302 n. 1 (3d Cir.1995) (citations omitted). Thus, if the non-moving party fails to make a sufficient showing on an essential element of his or her case to which he or she has the burden of proof, the moving party is entitled to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

II. The Law of Infringement

In relevant part, 35 U.S.C. § 271(b) and (c) provide:

(b) Whoever actively induces infringement of a patent shall be liable as an infringer.

(c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture or combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

35 U.S.C. § 271(b), (c).

It is well-established that there cannot be inducement of infringement or contributory infringement absent direct infringement. Carborundum Co. v. Molten Metal Equipment Innovations, Inc., 72 F.3d 872, 876 n. 4 (Fed.Cir.1995). As such, a claim for inducement of infringement and contributory infringement is dependent upon proof of direct infringement. Epcon Gas Systems, Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1033 (Fed. Cir.2002).

A patent is directly infringed when a person "without authority makes, uses or sells any patented invention, within the United States during the term of the patent...." 35 U.S.C. § 271(a). A patent owner may prove infringement under either of two theories: literal infringement or the doctrine of equivalents. Literal infringement occurs where each element of at least one claim of the patent is found in the alleged infringer's product. Panduit Corp. v. Dennison Mfg. Co., 836 F.2d 1329, 1330 n. 1 (Fed.Cir.1987); Robert L. Harmon, Patents and the Federal Circuit 195 & n. 31 (3d ed.1994). For there to be infringement under the doctrine of equivalents, the accused product or process must embody every element of a claim, either literally or by an equivalent. Warner-Jenkinson, 520 U.S. 17, 41, 117 S.Ct. 1040 (1997). Thus, the mere showing that an accused device is equivalent overall to the claimed invention is insufficient to establish infringement under the doctrine of equivalents. In determining whether a patent has been infringed, the patent owner has the burden of proof and must meet its burden by a preponderance of the evidence. SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed. Cir.1988) (citations omitted).

Infringement is a two step inquiry. Step one requires a court to construe the disputed terms of the patent at issue. Step two requires the court to compare the...

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