Schering Corp. v. Amgen, Inc.

• Decision Date: 03 February 1999
• Docket Number: No. Civ.A. 96-587 MMS.,Civ.A. 96-587 MMS.
• Citation: 35 F.Supp.2d 375
• Parties: SCHERING CORPORATION and Biogen, Inc., Plaintiffs, v. AMGEN, INC., Defendant.
• Court: U.S. District Court — District of Delaware

35 F.Supp.2d 375

SCHERING CORPORATION and Biogen, Inc., Plaintiffs, v. AMGEN, INC., Defendant.

No. Civ.A. 96-587 MMS.

United States District Court, D. Delaware.

February 3, 1999.

Steven J. Balick, Steven T. Margolin, Ashby & Geddes, Wilmington, DE, Gerald Sobel, Aaron Stiefel, Daniel DiNapoli, Kaye, Scholer, Fierman, Hays & Handler, LLP, New York City, James F. Jr., Haley, Fish & Neave, New York City, for plaintiffs.

Richard K. Herrmann, Blank, Rome, Comisky & McCauley LLP, Wilmington, DE, John J. McDonnell, Daniel A. Boehnen, Grantland G. Drutchas, McDonnell, Boehnen Hulbert & Berghoff, Chicago, IL, D. Dennis Allegretti, of Burns & Levinson LLP, Boston, MA, for defendant.

OPINION

SCHWARTZ, Senior District Judge.

Schering Corporation and Biogen, Inc. (collectively "Schering") initially filed a patent infringement suit against Amgen, Inc. ("Amgen") alleging infringement of its U.S. Patent No. 4,530,901 entitled "Recombinant DNA Molecules and Their Use in Producing Human Interferon-Like Polypeptides" ("'901 Patent"). After a hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), the Court issued an Opinion and Order construing the claims of Schering's '901 patent. Schering Corp. v. Amgen, Inc., 18 F.Supp.2d 372 (D.Del.1998). Schering then moved for reargument on one of the seven claim constructions, namely the Court's interpretation of the language "a polypeptide of the IFN-(alpha) type." This Court denied Schering's motion for reargument. Schering, Corp. v. Amgen, Inc., 25 F.Supp.2d 293 (D.Del.1998).

Schering now moves for entry of judgment in favor of Amgen on plaintiffs' infringement claim and for dismissal of Amgen's validity and patent misuse counterclaims as moot in order to expedite an appeal of the Court's claim interpretation decision. Amgen also filed a motion for summary judgment of non-infringement,¹ as well as a motion for attorneys' fees. For the reasons detailed below, the Court will grant Schering's motion for entry of judgment in favor of Amgen and dismiss without prejudice Amgen's counterclaims as moot.

Plaintiff previously advised the Court that under the Court's claim interpretation decision of July 30, 1998, it cannot succeed on its claim that Amgen's consensus interferon product infringes the '901 Patent. In a letter to the Court on August 28, 1998, plaintiff's counsel advised that if reargument were denied, Schering cannot pursue a case of infringement. Counsel stated:

In other words, the Court's claim construction requires a finding of noninfringement; plaintiffs cannot advance sufficient evidence to allow a reasonable jury to conclude that Amgen's consensus interferon is equivalent to that claim phrase as currently construed by the Court.

In a separate letter, plaintiff's counsel explained, "if the Court declines to revise its earlier construction, then there is no case to try, and rather than waste everyone's resources on a meaningless trial we would prefer to take an immediate appeal to the Federal Circuit and obtain prompt appellate review." (Letter to the Court on September 1, 1998 by Plaintiff's Counsel.) Schering formalized its position by filing a motion requesting entry of judgment in favor of Amgen and dismissal of Amgen's counterclaim as moot. Schering is thus asking for the functional equivalent of a grant of summary judgment against it and in favor of Amgen, so that there is an appealable final judgment.

Similarly, the defendant seeks a judgment that it does not infringe the '901 patent. It explained to the Court on September 1, 1998, "[t]he only proper procedure in this case at this time is for plaintiffs to concede to entry by the Court, upon proper motion and stipulation by the parties, of a judgment of no infringement by Amgen." The Court is therefore presented with the unique situation in which both parties agree that a judgment of noninfringement of the '901 Patent should be entered against the plaintiffs. However, they cannot agree upon the means by which this action should be accomplished. Schering's motion asks for entry of judgment in favor of Amgen and dismissal of Amgen's counterclaims as moot. Amgen on the other hand offers its own motion for summary judgment and proposed order. Amgen's submission details thirty-five "undisputed" facts, which it states will provide the Federal Circuit Court of Appeals with adequate grounds to review the noninfringement issue as a matter of law upon appeal, even if it modifies the Court's claim interpretation decision.

In order to consider Schering's motion, the Court must determine whether the Federal Circuit would approve of an entry of a judgment of noninfringement under these circumstances. In addition, the Court must decide whether, on the facts as described above, it is within its discretion to dismiss a party's counterclaims as moot. Finally, the Court must consider whether grant of Schering's motion would be the most judicious approach towards resolving this matter.

The Federal Circuit disfavors direct appeals from Markman decisions. See, e.g., Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 1479 (Fed.Cir.1998) (Newman, J. and Mayer, J., concurring) (noting that while Markman hearings are common, to date the Federal Circuit has declined interlocutory review of claim construction decisions in all certified questions brought before it). However, the Federal Circuit has decided appeals from judgments that were entered based on a party's concession that it cannot succeed under the Court's claim interpretation.² For example, in Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed.Cir.1996), the Court heard an appeal following the plaintiff's concession of noninfringement after an adverse claim construction decision by the District Court. The District Court granted judgment as a matter of law for the defendant, upon the plaintiff's request, in order to expedite the appeal. Upon concluding the District Court erred in its claim construction, the Federal Circuit reversed the judgment and remanded for further proceedings. Similarly, in Mantech Environmental Corp. v. Hudson Environmental Services, Inc., 152 F.3d 1368 (Fed.Cir.1998), the Court heard an appeal from a District Court's grant of summary judgment based on plaintiff's concession that it could not prove infringement under the Court's claim construction.

This Court could not find any criticism by the Federal Circuit of the approach which the plaintiffs advocate in this case. In fact, the Court has indicated its support for such a procedure. In York Products, Inc. v. Central Tractor Farm & Family Center, 99...