IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
FOREST LABORATORIES INC., ef al.
Plaintiffs,
CONSOLIDATED
COBALT LABORATORIES INC., ef al.,
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v. ) G.A.No, 08-21-GMS-LPS
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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).
2as 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)