Scantibodies Laboratory Inc v. Immutopics Inc et al

Filing 311

FINAL JUDGMENT OF NON-INFRINGEMENT OF THE '566 PATENT IN VIEW OF THE COURT'S SECOND AMENDED CLAIM CONSTRUCTION ORDER by U.S. District Judge Mariana R. Pfaelzer re 255 . IT IS HEREBY ORDERED, ADJUDGED AND DECREED that final judgment shall be entered in Immutopics favor as the prevailing party and Scantibodies shall recover nothing on their complaint as outlined in the Courts April 23, 2009 Order Granting Summary Judgment: IT IS FURTHER ORDERED, ADJUDGED AND DECREED that, as the prevailing party, Immutopics is awarded its costs herein in an amount to be determined in accordance with the procedures required by Central District Local Rule 54. (MD JS-6. Case Terminated.) (pp)

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STETINA BRUNDA GARRED & BRUCKER

JS-6

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PHONE: [phone]; FACSIMILE: [phone] ALISO VIEJO, CALIFORNIA 92656

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IN THE UNITED STATES DISTRICT COURT FOR THE CENTRAL DISTRICT OF CALIFORNIA Case No. CV04-8871 MRP (MANx) FINAL JUDGMENT OF NONINFRINGEMENT OF THE '566 PATENT IN VIEW OF THE COURT'S SECOND AMENDED CLAIM CONSTRUCTION ORDER

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SCANTIBODIES LABORATORY, INC., a 14 California corporation, 15 Plaintiff and Counterdefendant 16 17 vs. 18 IMMUTOPICS, INC., a California 19 corporation, and IMMUTOPICS INTERNATIONAL, LLC, a California 20 limited liability company, 21 Defendant and Counterclaimant 22 23 24 25 26 27 28

The motion of Defendants and Counterclaimants Immutopics, Inc. and Immutopics International, LLC (collectively "Immutopics") for summary judgment of non-infringement of United States Patent No. 6,689,566 (the "`566 Patent"), as

Case No. CV04-8871 MRP (MANx) 1 FINAL JUDGMENT OF NON-INFRINGEMENT OF THE '566 PATENT IN VIEW OF THE COURT'S SECOND AMENDED CLAIM CONSTRUCTION ORDER

1 reexamined1 by the United States Patent and Trademark Office came on regularly for 2 hearing on April 20, 2009, in the United States District Court for the Central District of 3 California, the Honorable Mariana R. Pfaelzer, United States District Court Judge, 4 presiding. Matthew A. Newboles and Benjamin N. Diederich of Stetina Brunda Garred 5 & Brucker and Gary A. Pemberton of Shulman Hodges & Bastian LLP appeared on 6 behalf of Immutopics. Rod S. Berman and Brian W. Kasell of Jeffer, Mangels, Butler & 7 Marmaro LLP appeared on behalf of Plaintiff and Counterdefendant Scantibodies 8 Laboratory, Inc. ("Scantibodies"). 9
STETINA BRUNDA GARRED & BRUCKER
PHONE: [phone]; FACSIMILE: [phone]

The Court, having fully considered the parties' pleadings and the evidence

10 therein, and having entertained oral argument, has issued its Order granting Immutopics'
ALISO VIEJO, CALIFORNIA 92656

11 Motion for Summary Judgment of Non-Infringement on April 23, 2009 ("Order"). The 12 Order provides that, in light of the Court's claim construction, the asserted claims of the 13 reexamined `566 Patent2 are not directly infringed by Immutopics, either literally or 14 under the doctrine of equivalents. Furthermore, because inducing patent infringement 15 requires a predicate finding of direct infringement, Dynacore Holdings Corp. v. U.S. 16 Philips Corp., 363 F.3d 1263, 1272 (Fed. Cir. 2004), the Court's Order finding no direct 17 The U.S. Patent and Trademark Office ("PTO") has issued a Notice of Intent to 18 Issue a Reexamination Certificate (Control No. 90/007,685) with respect to the '566 19 Patent. However, the Reexamination Certificate has not yet been issued by the PTO. The fact that the Reexamination Certificate has not yet issued is not an impediment to 20 the Court's entry of a Final Judgment in this proceeding. 21 2 During the reexamination proceeding asserted Claims 1 and 22 were amended, 22 Claims 3, 5, 7-9, 11, and 33 were unmodified, and Claims 38-40, 48, 53, and 57 were added. Additionally, certain claims were cancelled during the reexamination 23 proceeding. This results in a numbering discrepancy between the claims designated by Scantibodies (as anticipated by the pending Reexamination Certificate) and those 24 currently of record in the United Stated Patent and Trademark Office. Because a 25 Reexamination Certificate has not yet issued renumbering the claims, the Court uses the claim numbers as they currently stand, i.e., Claims 1, 3, 5, 7-9, 11, 22, 33, 38-40, 26 48, 53, and 57 as numbered in the final amendment to the claims in the reexamination 27 proceeding as submitted by Scantibodies on November 28, 2006. When the reexamination certificate issues, it is anticipated that claims 38-40, 48, 53 and 57 will 28 be re-numbered as 37-39, 45, 50 and 54.
Case No. CV04-8871 MRP (MANx) 2 FINAL JUDGMENT OF NON-INFRINGEMENT OF THE '566 PATENT IN VIEW OF THE COURT'S SECOND AMENDED CLAIM CONSTRUCTION ORDER

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1 infringement under 35 U.S.C. § 271(a) in light of the current claim construction, also 2 means that there is no inducement of patent infringement under 35 U.S.C. § 271(b), 3 either literally or under the doctrine of equivalents. 4 Having disposed of all of the claims in Plaintiff's Complaint, this Court hereby 5 dismisses, without prejudice, Defendants' counterclaims in this case as moot. It is 6 noted that Defendants' counterclaims may be reinstated in the event the Federal 7 Circuit Court of Appeals reverses or remands this case back to this Court, without 8 consideration of statute of limitations or laches affirmative defenses. It is further 9 noted that in the event the Federal Circuit Court of Appeals reverses the finding of
STETINA BRUNDA GARRED & BRUCKER

10 non-infringement or remands this case to this Court for further litigation on the issue
PHONE: [phone]; FACSIMILE: [phone] ALISO VIEJO, CALIFORNIA 92656

11 of infringement, Plaintiff's claim of inducement of patent infringement may be 12 reinstated without consideration of the statute of limitations or laches affirmative 13 defenses. 14 IT IS HEREBY ORDERED, ADJUDGED AND DECREED that final 15 judgment shall be entered in Immutopics' favor as the prevailing party and Scantibodies 16 shall recover nothing on their complaint as outlined in the Court's April 23, 2009 Order 17 Granting Summary Judgment: 18 IT IS FURTHER ORDERED, ADJUDGED AND DECREED that, as the 19 prevailing party, Immutopics is awarded its costs herein in an amount to be determined in 20 accordance with the procedures required by Central District Local Rule 54. 21 22 Dated: July 09, 2009 23 24 25 26 27 28
Case No. CV04-8871 MRP (MANx) 3 FINAL JUDGMENT OF NON-INFRINGEMENT OF THE '566 PATENT IN VIEW OF THE COURT'S SECOND AMENDED CLAIM CONSTRUCTION ORDER

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_____________________________________ Mariana R. Pfaelzer United States District Court Judge