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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE FOREST LABORATORIES INC., ef al. Plaintiffs, CONSOLIDATED COBALT LABORATORIES INC., ef al., ) ) ) ) v. ) G.A.No, 08-21-GMS-LPS ) ) ) Defendants. ) MEMORANDUM I. INTRODUCTION On January 11, 2008, the plaintiffs filed this consolidated action for infringement of U.S. Patent No. 5,061,703 (“703 patent”) against multiple defendants.' (D.1. 1.) On October 17, 2008, the parties filed a Joint Claim Chart identifying the claim terms the parties contend require construction. (D.1. 198.) The parties briefed their positions on claim construction and, on December 15, 2008, Magistrate Judge Leonard P. Stark conducted a Markman hearing. See Dec. 15, 2008 Hearing Transcript (D.L. 248.) Pursuant to 28 U.S.C. § 636(b)(1)(B), Fed. R. Civ. P. 72(b)(1), and D, Del. LR 72.1, Magistrate Judge Stark issued a report and recommendation regarding claim construction on July 2, 2009.7 (D.{. 373.) On July 20, 2009, four different subsets of defendants filed objections to the report and recommendation, (D.1. 381-384.) For the reasons that follow, the ' This consolidated ANDA action consists of C.A. Nos. 08-21, 08-22, 08-52, and 08-291 (collectively referred to as the “consolidated action” or the “action”). (D.1. 76.) The plaintiffs in this action are: Merz Pharma GmbH & Co. KgaA, Merz Pharmaceuticals GmbH, Forest Laboratories, Inc., and Forest Laboratories Holdings, Ltd. (collectively, the “plaintiffs”). The defendants in this action include, among others, the following parties: Orchid Chemicals & Pharmaceuticals Ltd. (“Orchid India”), Orchid Pharmaceuticals, Inc. (“Orchid Pharma”), and Orgenus Pharma, ine. (“Orgenus”). Defendants Orchid India and Orgenus are referred to hereinafter, collectively, in this memorandum as the “defendants.” court will adopt in part and overrule in part the claim constructions recommended by the Magistrate Judge in the July 2, 2009 Report and Recommendation. I. _ DISCUSSIO) The court reviews de novo those portions of the report and recommendation to which the parties made a timely objection; the remainder of the report and recommendation are reviewed for clear error. See 28 U.S.C. § 636(b)(1). Here, after having considered the record in this case, the Report and Recommendation, the defendants’ objections, the plaintiffs’ response, and the applicable Jaw, the court will adopt without comment the Magistrate Judge’ claim constructions of those terms for which no objections were filed. The remaining claim constructions from the Magistrate Judge’s Report and Recommendation are addressed below. A. “Cerebral ischemia” After considering the parties’ proposed constructions, the Magistrate Judge recommended ‘that the term “cerebral ischemia” in claims | and 14 be construed tomean “an imbalance of neuronal stimulation mechanisms.” (D.I. 373 at 32.) The court agrees. The defendants contended in the ‘Markman hearing, and contend now in their objections, that “cerebral ischemia” should be construed as“an acute interruption of blood supply to the brain” or “an acute interruption of blood supply to the brain characterized by the destruction of brain cells,” citing the ordinary meaning of “ischemia” > The defendants have also made a number of claim differentiation, 35 U.S.C. § 305, and other invalidity arguments, though they couched these arguments as cSaim construction objections. (See D.I. 381 at 2-6; D.l. 382 at 6-10; D.l. 383 at 8; DL. 384 at 5-6, 9-10.) Such validity arguments are not properly resolved at the claim construction stage. See, e.g., Ampex Corp. v, Eastman Kodak Co., 460 F. Supp. 2d 541, $43 n.1 (D. Del. 2006) (“The validity of a claim is not an issue of claim construction . ... L will not convert Defendants’ claim construction argument into a motion for summary judgment.”). For the same reason, the court will not yet consider the comprehensive claim construction argument rejected by Magistrate Judge Stark in his Report and Recommendation. (See D.1. 373 at 29-32; D.I. 381 at 2-6). 2 as referring to an interruption in blood supply. But itis clear from the language of the specification that the term “cerebral ischemia” as used in the patent refers to a neuronal imbalance. See, e,g., DL 243 at A002, col. 2 lines 46-48 (“[C}erebral ischemia is characterized by an imbalance of neuronal stimulation mechanisms.”); id. at col. 2 line 67 to col. 3 line 3 (“The present invention is aimed at preparing and employing compounds which can be chemically generated by simple methods, exhibiting an NMDA receptor channel-antagonistic and anticonvulsive action, for use in the prevention and treatment of cerebral ischemia.”).* The patentee defined “cerebral ischemia” with sufficient and “reasonable clarity, deliberateness, and precision,” thereby meeting their burden of establishing that the term as used in the patent carries a meaning different than the plain and ordinary meaning of the term. See Abbot Labs. v. Syntron Bioresearch, Inc. 334 F.3d 1343, 1354 (Fed. Cir. 2003). Furthermore, during the reexamination proceedings for the ‘703 patent, the patentee again expressly defined “cerebral ischemia” as “an imbalance of neuronal stimulation,” thus confirming the meaning of the term in the context of this patent. (See D.I. 243 at JA00760.) Different uses of the terms “ischemia” or “cerebral ischemia” in studies and other sources cited inthe patent do not override the specification’s clear use of the term to refer to a neuronal situation. Thus, for the reasons set forth in the Report and Recommendation, the court will adopt the Magistrate Judge’s construction.’ “ As the Magistrate Judge noted, the descriptions in the specification focus on a neuronal situation, and nowhere in the specification is the term “cerebral ischemia” used to refer to an interruption in blood supply to the brain. (See D.1. 373 at 12-16.) Thus, at the very least, itis clear that the court cannot adopt the defendant's suggested construction of “cerebral ischemia” as referring to an interruption in the blood supply. > Some of the defendants assert that the Report “expressed the view that, since ‘ischemia’ alone means an interruption of blood supply, ‘cerebral ischemia’ must mean something completely different,” citing page 13 of the Report and Recommendation for this proposition, 3)