Bioverativ Inc. et al v. CSL Behring LLC et al

Filing 263

MEMORANDUM ORDER: Plaintiffs' Motion for Summary Judgment (D.I. 212 ) is DENIED as to Defendants' reverse doctrine of equivalents defense to infringement. Signed by Judge Richard G. Andrews on 3/3/2020. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELA WARE

BIO VERATIV INC., BIO VERA TIV
THERAPEUTICS INC., and BIO VERA TIV
U.S. LLC,
Plaintiffs,
Civil Action No. 17-914-RGA

V.

CSL BEHRING LLC, CSL BEHRING
GMBH, and CSL BEHRING LENGNAU
AG,
Defendants.

MEMORANDUM ORDER
Before me are five motions submitted by Bioverativ and CSL Behring regarding
Defendants' alleged infringement of patents by accused product Idelvion. This order will address
Plaintiffs' Motion for Summary Judgment. (D.I. 212) . I have reviewed the parties' briefing and
related papers. (D.I. 216,225,235). I heard oral argument on February 21, 2020. Because there
is a genuine dispute of material fact as to the degree of difference between the principle of the
accused product and that of the asserted claims, Plaintiffs' motion is denied.

I.

LEGAL STANDARD
"The court shall grant summary judgment if the movant shows that there is no genuine

dispute as to any material fact and the movant is entitled to judgment as a matter oflaw." Fed. R.
Civ. P. 56(a). The moving party has the initial burden of proving the absence of a genuinely
disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 477 U.S. 317,
330 (1986). Material facts are those "that could affect the outcome" of the proceeding, and "a

dispute about a material fact is ' genuine ' if the evidence is sufficient to permit a reasonable jury
to return a verdict for the nonmoving party ." Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir.
2011) (quoting Anderson v. Liberty Lobby, Inc. , 477 U.S. 242,248 (1986)). When determining
whether a genuine issue of material fact exists, the court must view the evidence in the light most
favorable to the non-moving party and draw all reasonable inferences in that party ' s favor. Scott
v. Harris , 550 U.S. 372, 380 (2007); Wishkin v. Potter, 476 F.3d 180, 184 (3d Cir. 2007).

II.

DISCUSSION
Plaintiffs seek summary judgment that there is no evidence to support the "reverse

doctrine of equivalents defense. " (D .I. 216 at 11 ). The reverse doctrine of equivalents is available
as a defense to infringement "where a device is so far changed in principle from a patented
article that it performs the same or a similar function in a substantially different way, but
nevertheless falls within the literal words of the claim." Graver Tank & Mfg. Co. v. Linde Air
Prod. Co. , 339 U.S. 605 , 608-09 (1950). In order to establish a prima facie case of non-

infringement under the reverse doctrine of equivalents, Defendant must first "establish the
principle of the [relevant] patent." Roche Palo Alto LLC v. Apotex, Inc., 531 F.3d 1372, 1378
(Fed. Cir. 2008). "The ' principle' or 'equitable scope of the claims' of the patented invention is
determined in light of the specification, prosecution history, and the prior art." Id.
At oral argument, Plaintiffs' counsel relied heavily upon Northern Telecom, Inc. v.
Datapoint Corp. to argue that the defense of reverse doctrine of equivalents fails as a matter of

law because the defense does not apply if the accused product performs the claimed function and
an "additional function ." See 908 F.2d 931 , 945 (Fed. Cir. 1990). In Northern Telecom , the
Federal Circuit held, "The addition of features does not avoid infringement, if all of the elements
of the patent claims have been adopted . . . . Nor is infringement avoided if a claimed feature

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performs not only as shown in the patent but also performs an additional function. " Id. Reliance
on Northern Telecom is inapt here, as Defendants are not arguing that Idelvion performs an
additional function. Rather, Defendants argue that Idelvion works on a different principle. (D.I.
262 at 50:11-18).
Defendants state that the asserted claims require that the mechanism of half-life extension
be "FcRn-dependent." (D.I. 225 at 2-3). Plaintiffs do not meaningfully contest this assertion in
their briefing nor did they do so at oral argument. See D.I. 216 at 3-5; D.I. 262 at 42 :14-19.
Defendants assert that the evidence shows that the extended half-life of Idelvion substantially
depends on other, non-FcRn mechanisms and thus, the principle of the claimed invention is
"fundamentally different" than that of the Accused Product. (D.I. 225 at 1). Defendants point to
mice studies showing that Idelvion's half-life extension "does not depend upon FcRn recycling,"
testimony from Plaintiffs' corporate designee that half-life extension in models where FcRn is
"knock[ed] out" would confirm that the extended half-life is "not due to FcRn," testimony from
the inventors of the patented product that the invention is based on the idea that FIX-albumin
fusion proteins use the same recycling mechanisms as FIX-Fe, testimony from Plaintiffs' expert,
Dr. Ward, that "properties other than FcRn recycling likely contribute to Idelvion' s mechanism
for half-life extension," and testimony from other fact witnesses that factors other than FcRn
recycling "contribute to" Idelvion' s extended half-life. (Id. at 8) .
Defendants have offered evidence demonstrating that the half-life ofldelvion is extended
by factors other than FcRn recycling. The question of whether an accused product is "so far
changed in principle that it performs the same or similar function in a substantially different
way" is a question of fact. SRI Int '! v. Matsushita Elec. Corp. ofAm., 775 F.2d 1107, 1123 (Fed.
Cir. 1985). Here, I find that there is sufficient evidence to create a genuine dispute of material

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fact as to whether Defendants ' product performs the same function as the claimed invention in a
substantially different way. Plaintiffs' arguments about the degree of difference between Idelvion
and the principle of the asserted claims do not provide a basis for granting summary judgment
against Defendants' reverse doctrine of equivalents defense . Therefore, I will deny Plaintiffs'
motion for summary judgment.

III.

CONCLUSION
For the reasons stated above, IT IS HEREBY ORDERED that Plaintiffs ' Motion for

Summary Judgment (D.I. 212) is DENIED as to Defendants' reverse doctrine of equivalents
defense to infringement.
Entered this

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day of March, 2020.