Professional Documents
Culture Documents
v. OPINION
Defendants.
APPEARANCES:
1
The undersigned, a United States District Judge for the
District of New Jersey, is sitting by designation in the United
States District Court for the District of Delaware due to a
vacant judgeship.
[Docket Item 11].2 Defendants ask the Court to dismiss this
I. FACTUAL ALLEGATIONS
2
Also pending is a joint motion for extension of time for
Plaintiffs to oppose Defendants’ motion [Docket Item 15]. The
Court will grant the parties’ request, nunc pro tunc.
2
is a reference to Unigen and the “410" refers to the product’s
rate and in the same amount). (Id. ¶ 25.) Without both types of
3
determine whether a particular drug is truly a generic equivalent
28.)
4
the Lanham Act, that they have violated the Delaware Deceptive
B. The Patents
8.)
5
composition is derived from the wax of the insect
Ericerus pela.
3. A polycosanol composition of matter
comprised of 75%-100% of long chain aliphatic
alcohols, wherein said alcohols are selected from
the group consisting of 1-hexacosanol (-30%-50%),
1-octacosanol (-25%-45%), 1-triacontanol (-4%-10%),
and 1-tetraconsanol (-3%-9%).
4. The composition of claim 3, wherein said
composition is derived from the wax of the insect
Ericerus pela.
5. A composition of higher primary aliphatic
alcohols having from 24 to 30 carbon atoms (C24-30)
from the wax of the insect Ericerus pela prepared
according to a method comprising the steps of . . .
[steps omitted].
(Id. at 17.)
(Id.)
C. Defendants’ Motion
6
polycosanol compositions derived from the Ericerus pela insect.
II. DISCUSSION
A. Standard of Review
Allegheny, 515 F.3d 224, 231 (3d Cir. 2008) (quoting Pinker v.
Roche Holdings Ltd., 292 F.3d 361, 374 n.7 (3d Cir. 2002)).
U.S. ---, 129 S. Ct. 1937, 1949 (2009); Fowler v. UPMC Shadyside,
7
B. Patent Infringement
patent claims to exclude any polycosanol not derived from the wax
must first interpret the claim and determine the scope and the
Liquid Dynamics Corp. v. Vaughan Co., 355 F.3d 1361, 1367 (Fed.
F.3d 967 (Fed. Cir. 1995), the Federal Circuit described the
8
701-03 (Ct. Cl. 1967). "Expert testimony, including
evidence of how those skilled in the art would
interpret the claims, may also be used." Fonar
Corp. v. Johnson & Johnson, 821 F.2d 627, 631 (Fed.
Cir. 1987).
Corp., 572 F.3d 1371, 1377 (Fed. Cir. 2009) (“The court looks to
Patent Litig., No. 09-2050, 2010 U.S. Dist. LEXIS 16110, at *12
(S.D. Ohio Feb. 23, 2010); Yangaroo Inc. v. Destiny Media Techs.,
No. 09-462, 2009 U.S. Dist. LEXIS 82052, at *7-8 (E.D. Wis. Aug.
31, 2009); Bird Barrier Am., Inc. v. Bird-B-Gone, Inc., No. 09-
0418, 2009 U.S. Dist. LEXIS 125475, 7-8 (C.D. Cal. Mar. 1, 2009);
9
920 (D. Md. 2008); Cima Labs, Inc. v. Actavis Group HF, No.
2007); Schreiber v. Eli Lilly & Co., No. 05-2616, 2006 U.S. Dist.
LEXIS 13477, at *17 (E.D. Pa. Mar. 27, 2006). Defendants attempt
illustrate the point. The fact that the parties in this case
3
See N.J. L. Pat. R., Part IV, reproduced in N.J. L. Civ.
R. 9.3.
10
to exchange proposed terms for claim construction, followed by
to the local patent rules of each court that has adopted patents
4
See N.J. L. Pat. R. 4.1-4.3.
5
N.D. Cal. Patent L.R. 4; S.D. Cal. Patent L.R. 4; N.D.
Tex. Miscellaneous Order No. 62 ¶ 4; E.D. Tex. P.R. 4; D. Minn.
L.R. Form 4; W.D. Pa. L.P.R. 4; N.D. Ga. Patent L.R. 6. These
claim construction practices derive from the seminal case of
Markman v. Westview Instruments, 517 U.S. 370 (1966).
6
See, e.g., N.J. L. Pat. R. 4.5.
7
It may be prudent, to enhance efficiency of litigation,
for the parties to agree upon the few key terms that need to be
construed on an expedited basis, saving others for the Court’s
attention, if necessary, at a later date before trial. See Peter
S. Menell, et al., Patent Case Management Judicial Guide (Federal
Judicial Center 2009) at § 5.2.3.1.3. This topic may be
addressed in the initial scheduling conference to be convened
shortly in this case, with an eye toward streamlining the claim
construction process.
11
of action for which patent claims could be construed on a motion
both the ‘116 Patent and the ‘060 Patent place a great deal of
Ericerus pela wax. In both the ‘116 Patent and the ‘060 Patent,
12
overcome any presumption arising from the doctrine of claim
Ltd., 133 F.3d 1473, 1479-80 (Fed. Cir. 1998) (“[T]he doctrine of
Corp. v. United States Int’l Trade Com., 831 F.2d 1017, 1023-1024
13
composition from the wax secreted by the insect Ericerus pela, a
the patent claims and the specifications, and the fact that
14
Ericerus pela. The Court will deny Defendants’ motion to dismiss
claim under the Lanham Act on the grounds that Plaintiffs have
15
made false or misleading statements as to his own product or
Auth., 103 F.3d 1165, 1175-76 (3d Cir. 1997) (“This Rule permits
16
Plaintiffs have alleged that either Defendants’ u-
17
The Court recognizes that Defendants vehemently deny the
18
These allegations are sufficient to show that customers were
Johnson-Merck Consumer Pharms. Co., 290 F.3d 578, 586 (3d Cir.
USA, Inc., 314 F.3d 48, 57 (2d Cir. 2002). The Third Circuit has
Inc., 902 F.2d 222, 231 (3d Cir. 1990) (recognizing a line of
19
cases that “emphasize that an advertising claim is not shielded
commercial advertising.
20
that Plaintiffs have adequately alleged that Defendants engaged
8
Though not raised in this motion, the Court finds that
Plaintiffs have sufficiently alleged that Treagan has moved
through interstate commerce and that Plaintiffs have suffered
some injury due to Plaintiffs’ false advertising, thereby
satisfying the fourth and fifth elements of a Lanham Act false
advertising claim. See Warner-Lambert, 204 F.3d at 91-92.
Parker v. Google, 242 F. App’x 833, 838 (3d Cir. 2007) (citing AT
& T Co. v. Winback & Conserve Program, Inc., 42 F.3d 1421, 1428
(3d Cir. 1994)).
21
representation that Treagan is equivalent to Auralgan or any
the Court has found that Plaintiffs have adequately alleged that
claims under Section 43(a) of the Lanham Act and also governs
*10-11 (D. Del. Mar. 15, 2010) (“. . . proof of a Lanham Act
10
Plaintiffs’ Lanham Act claims are premised on the
allegation that Treagan does not contain the true chemical
equivalent of Plaintiffs’ u-polycosanol 410. Therefore, contrary
to Defendants’ suggestion, the indication on Treagan’s label that
Defendants’ u-polycosanol 410 is “synthetic” does not resolve any
confusion, because it does not distinguish the chemical makeup of
the two substances (as opposed to the source). Whether
Defendants’ u-polycosanol is synthetic or not goes to Defendants’
arguments regarding Plaintiffs’ patents and whether those patents
cover polycosanol compositions not derived from the Ericerus
pela, not Plaintiffs’ alternative claims under the Lanham Act.
22
claim would necessarily meet the requirements for a claim under
2d 648, 653 (D. Del. 2006); Toro Co. v. Textron, Inc., 499
should their DTPA claims fail. The Court has found that
11
The Court rejects Defendants’ argument that Plaintiffs
have not specified the provisions of the DTPA on which they base
their claims. Plaintiffs have cited six sections of the DTPA,
providing Defendants sufficient notice of the provisions they
intend to rely upon.
23
Ethypharm S.A. v. Abbott Labs., 598 F. Supp. 2d 611, 618 (D. Del.
1043, 1057 (Del. Super. Ct. 2001)). The Court finds that
III. CONCLUSION
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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
v. ORDER
Defendants.
Irisys Inc. [Docket Item 11] and the parties’ joint motion for an
reasons stated in the Opinion of today’s date; and for good cause
shown;
s/ Jerome B. Simandle
JEROME B. SIMANDLE
United States District Judge