Shire ViroPharma Incorporated v. CSL Behring LLC
Filing
216
MEMORANDUM OPINION. Signed by Judge Mitchell S. Goldberg on 8/5/2019. (amf)
Case 1:17-cv-00414-MSG Document 216 Filed 08/05/19 Page 1 of 14 PageID #: 11258
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
SHIRE VIROPHARMA INCORPORATED
Plaintiff,
v.
CSL BEHRING LLC and CSL BEHRING
GMBH
Defendants.
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CIVIL ACTION
NO. 17-414
CONSOLIDATED
Goldberg, J.
August 5, 2019
MEMORANDUM OPINION
In this patent infringement case, Plaintiff Shire ViroPharma Incorporated (“Plaintiff”)
alleges that Defendants CSL Behring LLC and CSL Behring GMBH (collectively,
“Defendants”) have infringed four of Plaintiff’s patents on drugs used for the treatment and
prevention of a condition known as hereditary angioedema. Before me is a partial Motion to
Dismiss seeking dismissal of allegations of infringement regarding any of the dependent claims
of the four patents at issue. For the following reasons, I will deny the Motion in its entirety.
I.
FACTS ALLEGED IN THE SECOND AMENDED COMPLAINT
The Second Amended Complaint alleges the following: 1
1
When determining whether to grant a motion to dismiss, a federal court must construe the
complaint liberally, accept all well-pleaded factual allegations in the complaint as true, and draw
all reasonable inferences in favor of the plaintiff. Fowler v. UPMC Shadyside, 578 F.3d 203,
211 (3d Cir. 2009). Thus, my recitation of the facts assumes the truth of the factual statements in
the Complaint.
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A. Background
Hereditary angioedema (“HAE”) is a rare genetic disorder causing insufficient natural
production of functional or adequate amounts of a protein called C1 esterase inhibitor. This
protein is needed to help regulate several complex processes involved in immune system
function and fibrinolytic system function. Patients suffering from HAE experience symptoms
including unpredictable, recurrent attacks of swelling commonly affecting the hands, feet, arms,
legs, face, abdomen, tongue, genitals, and larynx. HAE may be treated by administration of a
drug containing a C1 esterase inhibitor in order to restore the levels of C1 esterase inhibitor to
levels sufficient to prevent or reduce the frequency or severity of HAE attacks. (Second Am.
Compl. (“SAC”) ¶¶ 13–14.)
Plaintiff, through its corporate affiliates, makes and sells products for the treatment of
HAE, including CINRYZE, FIRAZYR, KALBITOR, and TAKHZYRO. CINRYZE has been
approved by the United States Food and Drug Administration (“FDA”) for routine prophylactic
treatment of angioedema attacks in adolescent and adult patients with HAE, and is indicated for
intravenous treatment.
Both FIRAZYR and KALBITOR are approved for subcutaneous
administration for treatment of acute attacks of HAE.
TAKHZYRO is a subcutaneously
administered monoclonal antibody indicated for prophylactic treatment of HAE that the FDA
approved for commercial marketing on August 23, 2018. (Id. ¶¶ 14–19.)
B. The Patents-in-Suit
1. The ’788 Patent
On September 25, 2018, the United States Patent and Trademark Office (“PTO”) issued
the ’788 Patent, entitled “C1-INH Compositions and Methods for the Prevention and Treatment
of Disorders Associated With C1 Esterase Inhibitor Deficiency.” The claims of the ’788 Patent
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are directed generally to a “method for prophylactic treatment of hereditary angioedema (HAE)
comprising subcutaneously administering . . . a pharmaceutical composition comprising C1
esterase inhibitor, sodium citrate, and having a pH ranging from 6.5–8.0, wherein the C1 esterase
inhibitor has a concentration of about 500 U/mL . . .” The administration of the composition
“increases the level of the C1 esterase inhibitor in the blood of the subject to at least about 0.4
U/mL,” and the “C1 esterase inhibitor comprises the amino acid sequence of residues 23 to 500
of SEQ ID NO: 1,” which amino acid sequence is identified in the ’788 Patent. Plaintiff is the
assignee and owner of all rights, title, and interest in the ’788 Patent. (Id. ¶¶ 20–22.)
2. The ’423 Patent
On October 23, 2018, the PTO issued the ’423 Patent, entitled “C1-INH Compositions
and Methods for the Prevention and Treatment of Disorders Associated With C2 Esterase
Inhibitor Deficiency.” The claims of the ’423 Patent are directed generally to a “pharmaceutical
composition comprising C1 esterase inhibitor, sodium citrate, and having a pH ranging from 6.5–
8.0, wherein the C1 esterase inhibitor comprises the amino acid sequence of residues 23 to 500
of SEQ ID NO: 1,” which amino acid sequence is identified in the ’423 Patent. Plaintiff is the
assignee and owner of all rights, title, and interest in the ’423 Patent. (Id. ¶¶ 23–25.)
3. The ’690 Patent
On November 20, 2018, the PTO issued the ’690 Patent, entitled “C1-INH Compositions
and Methods for the Prevention and Treatment of Disorders Associated With C1 Esterase
Inhibitor Deficiency.” The claims of the ’690 Patent are directed generally to a “pharmaceutical
composition comprising C1 esterase inhibitor, sodium citrate, and having a pH ranging from 6.5–
8.0, wherein the C1 esterase inhibitor has a concentration of about 400–600 U/mL, and wherein
the C1 esterase inhibitor comprises the amino acid sequence of residues 23 to 500 of SEQ ID
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NO: 1,” which amino acid sequence is identified in the ’690 Patent. Plaintiff is the assignee and
owner of all rights, title and interest in the ’690 Patent. (Id. ¶ 26–28.)
4. The ’595 Patent
On February 12, 2019, the PTO issued the ’595 Patent, entitled “C1-INH Compositions
and Methods for the Prevention and Treatment of Disorders Associated With C1 Esterase
Inhibitor Deficiency.” The claims of the ’595 Patent are directed generally to a “method for
prophylactic
treatment
of
hereditary
angioedema
(HAE)
comprising
subcutaneously
administering . . . a pharmaceutical composition comprising C1 esterase inhibitor, sodium citrate,
and having a pH ranging from 6.5–8.0, wherein the C1 esterase inhibitor has a concentration of
about 400–600 U/mL . . . .” The administration of the composition “increases the level of the C1
esterase inhibitor in the blood of the subject to at least about 0.4 U/mL,” and the “C1 esterase
inhibitor comprises the amino acid sequence of residues 23 to 500 of SEQ ID NO: 1,” which
amino acid sequence is identified in the ’595 Patent. Plaintiff is the assignee and owner of all
rights, title, and interest in the ’595 Patent. (Id. ¶¶ 29–31.)
C. Defendants’ Alleged Infringement
On or about July 25, 2017, Defendants began U.S. sales of HAEGARDA®, a
prophylactic C1 esterase inhibitor treatment for subcutaneous administration, which received
FDA approval on June 22, 2017. Plaintiff alleges that Defendants’ manufacture, importation,
use, sale, and/or offer to sell HAEGARDA in the United States directly infringes, induces others
to infringe, and/or contributorily infringes, either directly or under the doctrine of equivalents,
one or more claims of Shire’s ’788 Patent, ’423 Patent, ’690 Patent, and ’595 Patent. (Id. ¶¶ 32–
100.)
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D. Procedural History
The procedural history of this matter is somewhat complicated. Plaintiff originally filed a
patent infringement action against Defendants on April 11, 2017, alleging that Defendants’
HAEGARDA product infringed Plaintiff’s Patent No. 9,616,111 (the “’111 Patent”). Defendants
asserted counterclaims of non-infringement and invalidity of the ’111 Patent. This matter was
filed under Civil Action Number 17-414.
Subsequently, on September 25, 2018, the PTO issued the ‘788 Patent to Plaintiff, which
is a continuation of the ’111 Patent. Plaintiff filed a new Complaint in this matter on the same
day—under Civil Action No. 18-1476—alleging that Defendants’ HAEGARDA product also
infringed at least claim 1 of the ’788 Patent.
Subsequently, the PTO issued two other
continuation applications: the ’423 Patent (October 23, 2018) and the ’690 Patent (November
20, 2018). Following a status conference, I issued an Order, on November 26, 2018, directing
Plaintiff to file an amended complaint in Civil Action No. 18-1476.
Plaintiff filed its First Amended Complaint on January 7, 2019, alleging infringement of
at least claim 1 of the ’788 Patent, the ’423 Patent, and the ’690 Patent. The PTO then indicated
that a fourth continuation patent—Patent No. 10,201,595 (the “’595 Patent”)—would issue on
February 12, 2019. The parties agreed that Plaintiff would file a Second Amended Complaint,
on February 12, 2019, to include the ’595 Patent. The Second Amended Complaint sets forth
four counts of infringement, one for each of the four listed patents (’788, ’423, ’690, and ’595).
(Id. ¶¶ 101–144.) On January 24, 2019, I administratively closed Civil Action No. 18-1476 and
consolidated it with the original action under Civil Action No. 17-414.
On February 26, 2019, Defendants filed the current partial Motion to Dismiss the Second
Amended Complaint. Although Defendants do not seek dismissal of the infringement causes of
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action as to the independent claim of each of the four patents-in-suit, they argue that Plaintiff
fails to state a claim of infringement with respect to dependent claims 11–16, 19, and 27–29 of
the ’788 Patent, dependent claims 4–6, 14, 18, 19, and 22–28 of the ’423 Patent, dependent
claims 4–6, 14, 18, 19, and 22–28 of the ’690 Patent, and dependent claims 11–16, 19, and 27–
29 of the ’595 Patent.
II.
STANDARD OF REVIEW
Under Federal Rule of Civil Procedure 12(b)(6), a defendant bears the burden of
demonstrating that the plaintiff has not stated a claim upon which relief can be granted. Fed. R.
Civ. P. 12(b)(6); see also Hedges v. United States, 404 F.3d 744, 750 (3d Cir. 2005). The United
States Supreme Court has recognized that “a plaintiff’s obligation to provide the ‘grounds’ of his
‘entitle[ment] to relief’ requires more than labels and conclusions.” Bell Atl. Corp. v. Twombly,
550 U.S. 544, 555 (2007) (quotations omitted). “[T]hreadbare recitals of the elements of a cause
of action, supported by mere conclusory statements, do not suffice” and “only a complaint that
states a plausible claim for relief survives a motion to dismiss.” Ashcroft v. Iqbal, 556 U.S. 662,
678 (2009). “A claim has facial plausibility when the plaintiff pleads factual content that allows
the court to draw the reasonable inference that the defendant is liable for the misconduct
alleged.” Id. A complaint does not show an entitlement to relief when the well-pleaded facts do
not permit the court to infer more than the mere possibility of misconduct. Id.
The United States Court of Appeals for the Third Circuit has detailed a three-step process
to determine whether a complaint meets the pleadings standard. Bistrian v. Levi, 696 F.3d 352
(3d Cir. 2014). First, the court outlines the elements a plaintiff must plead to state a claim for
relief. Id. at 365. Next, the court must “peel away those allegations that are no more than
conclusions and thus not entitled to the assumption of truth.” Id. Finally, the court “look[s] for
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well-pled factual allegations, assume[s] their veracity, and then ‘determine[s] whether they
plausibly give rise to an entitlement to relief.’” Id. (quoting Iqbal, 556 U.S. at 679). The last
step is “a context-specific task that requires the reviewing court to draw on its judicial experience
and common sense.” Id. (quoting Iqbal, 556 U.S. at 679).
Although claims of direct infringement were previously governed by Federal Rule of
Civil Procedure 84 and the Appendix of Forms, those rules were abrogated effective December
1, 2015. Raindance Techs., Inc. v. 10x Genomics, Inc., No. 15-150, 2016 WL 927143, at *2 (D.
Del. Mar. 4, 2016). It is now well established that both direct and indirect infringement claims
are subject to the Twombly/Iqbal standard. IP Commc’n Solutions, LLC v. Viber Media (USA)
Inc., No. 16-134, 2017 WL 1312942, at *2 (D. Del. Apr. 5, 2017); RAH Color Techs LLC v.
Ricoh USA Inc., 194 F. Supp. 3d 346, 350–51 (E.D. Pa. 2016).
III.
DISCUSSION
Defendants assert that Plaintiff fails to plead infringement of any of the various
dependent claims of the ’788, ’423, ’690, and ’595 Patents. Specificallly, they contend that the
Second Amended Complaint only ties specific allegations of infringement “to at least
[independent] claim 1” of each of the four patents, but is devoid of facts that allow the
reasonable inference that Defendants are liable for infringement of the nearly 130 other
dependent claims. Plaintiff counters that the Second Amended Complaint plausibly pleads
infringement of each of the four patents-in-suit.
The direct infringement of a patent occurs when a party, without authority, “makes, uses,
offers to sell, or sells any patented invention, within the United States . . . .” 35 U.S.C. § 271(a).
A patentee may prove direct infringement under § 271(a) either by (1) demonstrating specific
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instances of direct infringement; or (2) showing that an accused device necessarily infringes on
the patent. ACCO Brands, Inc. v. ABA Locks Mfrs. Co., 501 F.3d 1307, 1313 (Fed. Cir. 2007).
“Direct infringement requires a party to perform each and every step or element of a
claimed method or product.” BMC Res., Inc. v. Paymentech, L.P, 498 F.3d 1373, 1378 (Fed.
Cir. 2007), overruled on other grounds by, 692 F.3d 1301 (Fed. Cir. 2012). “If any claim
limitation is absent from the accused device, there is no literal infringement as a matter of
law.” Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). If
an accused product does not infringe an independent claim, it also does not infringe any claim
depending thereon. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir.
1989).
However,
“[o]ne
may
infringe
an
independent
claim
and
not
infringe a claim dependent on that claim.” Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d
1352, 1359 (Fed. Cir. 2007) (internal quotations omitted).
A product that does not
literally infringe a patent claim may still infringe under the doctrine of equivalents if the
differences between an individual limitation of the claimed invention and an element of
the accused product are insubstantial. See Warner–Jenkinson Co. v. Hilton Davis Chem.
Co., 520 U.S. 17, 24 (1997).
Notably, “very little is required in order to plead a claim of patent infringement.”
Election Sys. & Software, LLC v. Smartmatic USA Corp., No. 18-1259, 2019 WL 1040541, at
*1 (D. Del. Mar. 5, 2019). “[A] patent is infringed if a single claim is infringed.” Grober v.
Mako Prods., Inc., 686 F.3d 1335 (Fed. Cir. 2012). The United States Court of Appeals for the
Federal Circuit, in Disc Disease Sols, Inc. v. VGH Sols., Inc., 888 F.3d 1256 (Fed. Cir. 2018),
established the parameters for pleading patent infringement under the Iqbal/Twombly standard.
The complaint in Disc Disease specifically identified the defendant’s products and generally
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alleged that the products met each element of at least one claim of the plaintiff’s patent. Id. The
plaintiff also attached the asserted patent and photographs of the accused products to the
complaint. Id. On review of the defendant’s motion to dismiss that complaint, the Federal
Circuit reiterated the Supreme Court’s statement that the “plausibility standard is met when ‘the
plaintiff pleads factual content that allows the court to draw the reasonable inference that the
defendant is liable for the misconduct alleged.’” Id. at 1260 (quoting Iqbal, 556 U.S. at 678).
The Court held that a general allegation that certain of defendants’ products met “each and every
element of at least one claim” of plaintiff’s patents—without allegations specifically explaining
how defendants’ products infringed any asserted claim—was sufficient to plead an infringement
claim generally. Id. It noted that “specific facts are not necessary; the statement need only ‘give
the defendant fair notice of what the . . . claim is and the ground upon which it rests.’” Id.
(quotations omitted).
Here, the Second Amended Complaint contains four Counts, one for infringement of “at
least claim 1” of each of the ’788, ’423, ’690, and ’595 Patents.
The Second Amended
Complaint goes on to set forth specific facts regarding the claim limitations in independent claim
1 of each of these patents and how Defendants’ HAEGARDA product infringes on those
limitations. It then asserts that “Defendants have infringed and continued to directly infringe one
or more claims” of the various patents, under 35 U.S.C. § 271(a), all of which are based on the
method of claim 1. Such claims plausibly plead infringement of a representative claim from
each of the four patents-in-suit.
Defendants’ argument—that Plaintiffs must also plead precisely how HAEGARDA
infringes on each of the almost 130 dependent claims—attempts to impose too stringent of a
pleading standard. District courts, applying the dictates of Disc Disease, have repeatedly held
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that allegations establishing infringement of the independent claim are sufficient to encompass
the dependent claims so long as the plaintiff pleads a connection between the dependent and
independent claims.
For example, in Zimmer Surgical, Inc. v. Stryker Corp., No. 16-679, 2017 WL 1296026
(D. Del. Apr. 6, 2017), report and recommendation adopted in part and rejected on different
grounds by 2017 WL 3736750 (D. Del. Aug. 30, 2017), the defendants moved to dismiss
infringement allegations of dependent claims separately from the independent claims, arguing
that the plaintiffs had not alleged sufficient factual matter to state a claim for relief for the
dependent claims.
Id. at *7–8.
The defendant argued that plaintiffs’ mere pleading of
infringement of the independent claims was insufficient to plead infringement of the dependent
claims. Id. at *7. The court rejected this argument, holding that that as long as the plaintiffs
“make a connection between the sufficiently pled factual matter of the independent claims, and
the simultaneous effect on the dependent claims,” the pleading is sufficient. Id. at *8. The court
deemed that standard satisfied by the plaintiffs’ allegation that defendants “directly and
indirectly infringe at least claims 17–23, 25–28, 30, 32–38, 40, and 41 . . . which depend from
independent claims 15 and 29.” Id.
Numerous other courts have similarly rejected a stricter pleading standard for dependent
claims. 2
See, e.g, BioMerieux, S.A. v. Hologic, Inc., No. 18–21, 2018 WL 4603267, at *3–4
(D. Del. Sept. 25, 2018) (declining to dismiss a complaint where plaintiff identified the brand
2
Indeed, “it may not be possible for a plaintiff to describe its case-in-chief with particularity at
the outset of litigation, without access to the accused method, the accused apparatus for reverse
engineering, or confidential data such as source code.” DermaFocus LLC v. Ulthera, Inc., 201 F.
Supp. 3d 465, 468 n.3 (D. Del. 2016). This is particularly true in this case where Defendants
have repeatedly refused to provide Plaintiff with a sample of HAEGARDA. In other words,
Defendants cannot credibly argue that Plaintiff should be held to a more detailed pleading
standard while simultaneously arguing that they need not provide, in discovery, a sample of the
accused product.
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name and function of the accused products and described, on a limitation-by-limitation basis,
how the accused products infringed only an exemplary claim); Align Tech., Inc. v. 3Shape A/S,
339 F. Supp. 3d 435, 444–46 (D. Del. 2018) (finding patent infringement complaint sufficient
where each count of the complaint followed the same format:
reciting the language of a
representative claim, alleging that the accused products practice that claim, and providing
examples demonstrating the alleged use of some aspect of the accused product performing at
least some of the requirements of the representative claim); DermaFocus LLC v. Ulthera, Inc.,
201 F. Supp. 3d 465, 470 (D. Del. 2016) (concluding plaintiff’s allegations gave “defendant
reasonable notice of a plausible claim for direct infringement of at least independent claim 1” of
defendant’s patent (emphasis added)); Morton Buildings, Inc. v. SWS Innovations, LLC, Civ. A.
No. 18-1328, 2018 WL 6651527, at *1 (C.D. Ill. Dec. 19, 2018) (“Just as in Disc Disease
Solutions, this Plaintiff has specified which of Defendant’s products allegedly infringes on the
patent, and Plaintiff has specified an independent claim within the patent that the [alleged
infringing product] allegedly infringes.” (emphasis added)).
Applying these standards, I find that the allegations here give fair notice to Defendants of
the basis of the infringement claims. For each of the patents at issue, Plaintiff describes the
limitations of independent claim 1 of the patent and then details—based on public information
about HAEGARDA—how HAEGARDA infringes on each limitation. (Sec. Am. Compl. ¶¶ 20–
100.)
The Second Amended Complaint then attaches copies of each of the four patents-in-suit,
as well as HAEGARDA’s product label, instructions, news articles, prescribing information, and
other publicly-available documents.
(Id. Exs. 1–17.)
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Such allegations allow a reasonable
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inference that Defendants are liable for the infringing conduct as to each of the four patents. 3
Plaintiff then properly connects the dependent claims to the independent claims by alleging that
Defendants have infringed one or more claims of the patents-in-suit, all of which depend from
independent claim 1. Plaintiff is required to do no more for the dependent claims of these
patents to survive Rule 12(b)(6) scrutiny. Defendants cite no authority to support their argument
that separately-pled infringement allegations for the various dependent claims of the four
patents-in-suit are required at the motion to dismiss stage. 4
Moreover, Defendants’ argument is undermined by Delaware’s requirement that a
patentee plaintiff must file infringement contentions at the early stages of an infringement case.
3
In a cursory footnote argument, Defendants suggest that Plaintiff fails to plausibly plead that
Defendant directly infringes the ’788 Patent because Plaintiff “cannot credibly allege that”
Defendants—biopharmaceutical companies—provide treatment of HAE or administer a C2
esterase inhibitor, as required by that patent. The Second Amended Complaint, however,
specifically asserts that “medical professionals and others who are [Defendants’] agents,
administer HAEGARDA to HAE patients. (Sec. Am. Compl. ¶¶ 36, 54, 70, 86.) Such an
allegation is sufficient as direct infringement of a method claim may be pled by alleging that the
alleged infringer performed all steps of the claimed method “either personally or through another
acting under his direction or control.” Courtesy Prods., L.L.C. v. Hamilton Beach Brands, Inc.,
73 F. Supp. 3d 435, 439 (D. Del. 2014) (quoting Akamai Techs., Inc. v. Limelight Networks,
Inc., 692 F.3d 1301, 1307 (Fed. Cir. 2012)).
4
None of the cases cited by Defendants stand for the proposition that a plaintiff must
specifically plead infringement of an independent and all dependent claims. See North Star
Innovations, Inc. v. Micron Tech., Inc., No. 17-506, 2017 WL 5501489, at *1 (D. Del. Nov. 16,
2017) (noting that, in order to adequately allege direct infringement, plaintiff had to plead facts
that plausibly indicate that the defendant’s accused products practice each of the limitations
found in one claim from each of the patents-in-suit; no comment about having to plead
infringement for both independent and dependent claims); SIPCOm, LLC v. Streetline, Inc., No.
16-830, 2018 WL 762335, at *1 (D. Del. Feb. 7, 2018) (dismissing a complaint where plaintiff
failed to plead sufficient facts to allow the court to draw a reasonable inference that defendant
was liable for the infringing conduct generally; no suggestion that plaintiff had to specifically
plead independent and dependent claims); Horatio Wash. Depot Techs., LLC v. TOLMAR, Inc.,
No. 17-1086, 2018 WL 5669168, at *11 (D. Del. Nov. 1, 2018) (dismissing infringement counts
of the complaint where plaintiff had not pled facts to support infringement of either independent
or dependent claims).
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Specifically, the Delaware Default Standard for Discovery ¶ 4 provides, in pertinent part, that
within thirty days after receipt of the defendant’s core technical documents related to the accused
product(s), the plaintiff “shall produce to each defendant an initial claim chart relating each
accused product to the asserted claims each product allegedly infringes.” Del. Default Standard
¶ 4. The Federal Circuit has recognized that the purpose of these “infringement contentions” is
to require “parties to crystallize theories of the case early in the litigation . . . .” Allvoice
Developments US, LLC v. Microsoft Corp., 612 F. App’x 1009, 1014 (Fed. Cir. 2015)
(quotations omitted). Such infringement contentions have been deemed to obviate the need for
detailed pleading as to the individual dependent claims. See BioMerieux, S.A., 2018 WL
4603267, at *3 (declining to require specificity as to each allegedly infringed claim of the patent
and noting that “as a practical matter,” the plaintiff “will be serving infringement contentions at
an early stage in the proceedings, providing further clarity as to the charges they are asserting
against Defendants.”). 5
Pursuant to the January 31, 2019 Scheduling Order in this matter, infringement
contentions on the four patents-in-suit were due on March 4, 2019. (Order, ECF No. 132, ¶ 5.)
Plaintiff has served those initial infringement disclosures, which set forth the limitations of the
allegedly infringed independent and dependent claims of the patent-in-suit, and which detail,
based upon the available information, how Defendants’ HAEGARDA product infringes on each
5
See also Finjan, Inc. v. ESET, LLC, No. 17-183, 2017 WL 1063475, at *2 (S.D. Cal. Mar. 21,
2017) (rejecting as moot defendant’s argument that complaint failed to provide allegations as to
every claim of the patent-in-suit because plaintiff had provided claim charts for each of the
asserted claims); Orbcomm Inc. v. CalAmp Corp., No. 16-208, 2016 WL 3965205, at *8 (E.D.
Va. July 22, 2016) (declining to require the “level of granular particularity” suggested by the
defendant and noting that each side “will be required to submit a more detailed claims chart”);
Palmer Hamilton, LLC v. AmTab Mfg. Corp., No. 16-522, 2016 WL 6775458, at *1 (W.D.
Wisc. Nov. 15, 2016) (“Given that both sides will have to put their cards on the table relatively
early in the case, motions attacking the pleadings are generally a waste of resources for the
parties and the court.”).
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of those limitations. To require similarly detailed allegations at the pleading stage would render
superfluous the requirement for an infringement chart. 6
In short, Plaintiff’s infringement allegations regarding independent claim 1 of each of the
four patents-in-suit are sufficient to set forth plausible claims of infringement for each of the
patent’s claims depending from claim 1. Plaintiffs have since provided more detail as to their
dependent claims through the service of their infringement contentions. Absent any authority
requiring that these more detailed contentions be included at the pleading stage of this
infringement case, I will deny the Motion to Dismiss in its entirety.
An appropriate Order follows.
6
Defendants argue that, in deciding the Motion to Dismiss, I may not consider the infringement
contentions because they were not filed as part of the Second Amended Complaint or attached to
that pleading. Although Defendants are correct that I may not consider the substance of the
infringement contentions, I may take judicial notice that such contentions were required under
my scheduling order and that they have been provided as required. See Zedonis v. Lynch, 233 F.
Supp. 3d 417, 422 (M.D. Pa. 2017) (“Judicial opinions and docket sheets are public records, of
which this court may take judicial notice . . . .”).
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