Johns Hopkins University v. Alcon Laboratories Inc. et al

Filing 331

MEMORANDUM ORDER granting #299 Motion for Clarification. Signed by Judge Sherry R. Fallon on 4/12/2018. (lih)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

THE JOHNS HOPKINS UNIVERSITY,
Plaintiff,
V.

ALCON LABORATORIES, INC. and
ALCONRESEARCH,LTD.,
Defendants.

)
)
)
)
)

Civil Action No. 15-525-LS-SRF

)
)
)
)
)

ORDER

At Wilmington this 12.th day of April, 2018,
WHEREAS, on March 1, 2018, the undersigned judicial officer entered a Report and
Recommendation recommending, in pertinent part, that the court grant-in-part the plaintiff The
Johns Hopkins University's ("JHU") motion for summary judgment regarding Alcon's
obviousness defense (D.I. 294 at 55-57);
WHEREAS, on March 15, 2018, counsel for defendants Alcon Laboratories, Inc. and
Alcon Research, Ltd. (collectively, "Alcon") filed a motion for clarification regarding the March
1, 2018, Report and Recommendation's obviousness recommendation, asserting that the Report
and Recommendation should be construed to limit Alcon's obviousness combinations to the four
disclosed primary prior art references, and should not limit the number of secondary references
used only for background purposes (D.I. 299);
WHEREAS, on March 22, 2018, JHU responded that the court's March 1, 2018 Report
and Recommendation should be construed to recommend granting summary judgment on all
obviousness references except for the four unchallenged references identified in prior art
combinations in the expert reports (D.I. 306);

WHEREAS, Alcon's motion for clarification was fully briefed on March 29, 2018 (D.I.
312);
NOW THEREFORE, IT IS HEREBY ORDERED that Alcon's motion for clarification is
GRANTED. The court's March 1, 2018 Report and Recommendation regarding JHU's motion
for summary judgment on Alcon's obviousness defense was intended to limit Alcon's assertion
of prior art references for use in obviousness combinations to those combinations expressly
identified in the expert reports. 1 The Recommendation was not intended to preclude the use of
prior art references as background references illustrating, for example, the state of the art, the
knowledge possessed by the person of ordinary skill in the art, and to rebut secondary
considerations.

1

Specifically, the four prior art references which may be used in obviousness combinations in
accordance with the disclosures made in the expert reports are: Machemer 1985, Chen 1996,
Josephberg '363, and Cozean '831.
2