Motorola Mobility, Inc. v. Apple, Inc.

Filing 158

NOTICE by Apple, Inc., Motorola Mobility, Inc. of Filing Supplemental Authority on Claim Construction (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8)(Giuliano, Douglas)

Exhibit 6

Page 1

Analysis
As of: Oct 25, 2011
AVENTIS PHARMACEUTICALS INC., MARRELL PHARMACEUTICALS INC.,
and CARDERM CAPITAL L.P., Plaintiffs, v. IMPAX LABORATORIES, INC., et
al., Defendants.
Civil Action Nos. 02-1322 (GEB), 03-1179 (GEB), 03-1180 (GEB), 03-5108 (GEB),
03-5829 (GEB), 04-1075 (GEB), 04-1076 (GEB), 04-1077 (GEB), 04-1078 (GEB),
04-2305 (GEB), 04-3194 (GEB), 05-4255 (GEB), 06-5463 (GEB), 07-5054 (GEB),
07-5180 (GEB), 09-0325 (GEB), 09-4638 (GEB), 09-5179 (GEB), 10-1471 (GEB)
UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW JERSEY
2011 U.S. Dist. LEXIS 3824

January 13, 2011, Decided
January 13, 2011, Filed
NOTICE:

NOT FOR PUBLICATION

PRIOR HISTORY: Aventis Pharms., Inc. v. Impax
Labs., Inc., 2011 U.S. Dist. LEXIS 2858 (D.N.J., Jan. 11,
2011)
COUNSEL:
[*1]
For
AVENTIS
PHARMACEUTICALS,
INC.,
MERRELL
PHARMACEUTICALS INC., CARDERM CAPITAL
L.P. (2:03-cv-01179), Plaintiffs. Counter Defendant:
LIZA M. WALSH,LEAD ATTORNEY, CHRISTINE
INTROMASSO GANNON, CONNELL FOLEY, LLP,
ROSELAND, NJ.
For
MYLAN
PHARMACEUTICALS
INC.,
Defendant, Counter Claimant: ARNOLD B.
CALMANN, LEAD ATTORNEY, JEFFREY S. SOOS,
KATHERINE ANN ESCANLAR, SAIBER LLC,
NEWARK, NJ.

For DR. REDDY'S LABORATORIES, LTD.,
Defendant: ROBERT JOSEPH FETTWEIS, LEAD
ATTORNEY, TRESSLER LLP, NEWARK, NJ.
For DR. REDDY'S LABORATORIES, INC.,
Interested Party: ROBERT JOSEPH FETTWEIS,
LEAD ATTORNEY, TRESSLER LLP, NEWARK, NJ.
For MYLAN PHARMACEUTICALS INC., Counter
Claimant:
ARNOLD
B.
CALMANN,LEAD
ATTORNEY, KATHERINE ANN ESCANLAR,
SAIBER LLC, NEWARK, NJ.
For AVENTIS PHARMACEUTICALS, INC.,
MERRELL
PHARMACEUTICALS
INC.,
CARDERM
CAPITAL
L.P.
(2:03-cv-01180),
Plaintiffs: LIZA M. WALSH, CHRISTINE
INTROMASSO GANNON, LEAD ATTORNEYS,
CONNELL FOLEY, LLP, ROSELAND, NJ.

Page 2
2011 U.S. Dist. LEXIS 3824, *1

For DR. REDDY'S PHARMACEUTICALS, LTD.,
DR. REDDY'S PHARMACEUTICALS, INC. ,
Defendants: ROBERT JOSEPH FETTWEIS, LEAD
ATTORNEY, TRESSLER LLP, NEWARK, NJ.
For DR. REDDY'S LABORATORIES, LTD., DR.
REDDY'S
LABORATORIES,
INC.,
Defendants:ROBERT [*2] JOSEPH FETTWEIS,
LEAD ATTORNEY, TRESSLER LLP, NEWARK, NJ;
THOMAS G. ROTH, LEAD ATTORNEY, LAW
OFFICES OF THOMAS G ROTH, MOUNTAIN
LAKES, NJ.
For DR. REDDY'S LABORATORIES, LTD. ,
Counter Claimant: ROBERT JOSEPH FETTWEIS,
LEAD ATTORNEY, TRESSLER LLP, NEWARK, NJ;
THOMAS G. ROTH, LEAD ATTORNEY, LAW
OFFICES OF THOMAS G ROTH, MOUNTAIN
LAKES, NJ.
For AVENTIS PHARMACEUTICALS, INC.,
MERRELL
PHARMACEUTICALS
INC.,
CARDERM
CAPITAL,
L.P.
(2:03-cv-05829),
Plaintiffs: LIZA M. WALSH, LEAD ATTORNEY,
CHRISTINE INTROMASSO GANNON, CONNELL
FOLEY, LLP, ROSELAND, NJ.

DR. REDDY'S LABORATORIES, LTD., Counter
Claimant:
ROBERT
JOSEPH
FETTWEIS,
TRESSLER LLP, NEWARK, NJ; GREGORY D.
MILLER, PODVEY, MEANOR, CATENACCI,
HILDNER, COCOZIELLO & CHATTMAN PC,
NEWARK, NJ.
For Albany Molecular Research, Inc., Counter
Defendant: GREGORY J. BEVELOCK, LEAD
ATTORNEY, DECOTIIS, FITZPATRICK, COLE &
WISLER, LLP, TEANECK, NJ.
For AVENTIS PHARMACEUTICALS INC., Counter
Defendant: CHRISTINE INTROMASSO GANNON,
LIZA M. WALSH, CONNELL FOLEY, LLP,
ROSELAND, NJ.
For AGVAR CHEMICALS INC., (2:04-cv-01076),
Movant: JONATHAN MYERS, LEAD ATTORNEY,
BRONX, NY.
For
AVENTIS
PHARMACEUTICALS
INC.,
Plaintiff: LIZA M. WALSH, LEAD ATTORNEY,
CHRISTINE INTROMASSO GANNON, CONNELL
FOLEY, LLP, ROSELAND, NJ.

For DR. REDDY'S LABORATORIES, LTD., DR.
REDDY'S LABORATORIES, INC., Defendants,
Counter Claimants: ROBERT JOSEPH FETTWEIS,
TRESSLER LLP, NEWARK, NJ.

For AMR TECHNOLOGY, INC., Plaintiff:
GREGORY J. BEVELOCK, LEAD ATTORNEY,
DECOTIIS, FITZPATRICK, COLE & WISLER, LLP,
TEANECK, NJ; LIZA M. WALSH, CONNELL
FOLEY, LLP, ROSELAND, NJ.

For AGVAR CHEMICALS, INC. (2:04-cv-01075),
Movant: JONATHAN MYERS, LEAD ATTORNEY,
BRONX, NY.

For IMPAX LABORATORIES, INC., Defendant:
ALLYN ZISSEL LITE, MICHAEL E. PATUNAS,
LITE DEPALMA GREENBERG, LLC, NEWARK, NJ.

For
AVENTIS
PHARMACEUTICALS
INC.,
Plaintiff: LIZA M. WALSH,LEAD ATTORNEY,
CHRISTINE INTROMASSO GANNON, CONNELL
FOLEY, LLP, ROSELAND, NJ.

For RANBAXY PHARMACEUTICALS INC.,
Defendant: KRISTINE L. BUTLER, VOLPE AND
KOENIG, PC, PHILADELPHIA, PA.

For AMR TECHNOLOGY INC, Plaintiff, Counter
Defendant: GREGORY J. BEVELOCK, LEAD
ATTORNEY, DECOTIIS, FITZPATRICK, COLE &
WISLER, LLP, TEANECK, NJ.
For DR. REDDY'S LABORATORIES, LTD., DR.
REDDY'S LABORATORIES, INC., Defendants:
ROBERT JOSEPH FETTWEIS, TRESSLER LLP,
NEWARK, NJ.
For [*3] DR. REDDY'S LABORATORIES, INC.,

For Albany Molecular Research, Inc., Counter
Defendant: GREGORY J. [*4] BEVELOCK, LEAD
ATTORNEY, DECOTIIS, FITZPATRICK, COLE &
WISLER, LLP, TEANECK, NJ.
For AVENTIS PHARMACEUTICALS INC., Counter
Defendant: CHRISTINE INTROMASSO GANNON,
LIZA M. WALSH, CONNELL FOLEY, LLP,
ROSELAND, NJ.
For AMR TECHNOLOGY, INC., Counter Defendant:
LIZA M. WALSH, LEAD ATTORNEY, CONNELL

Page 3
2011 U.S. Dist. LEXIS 3824, *4

FOLEY, LLP, ROSELAND, NJ.

TEANECK, NJ.

For AGVAR CHEMICALS, INC. (2:04-cv-01077),
Movant: JONATHAN MYERS, LEAD ATTORNEY,
BRONX, NY.

For MYLAN PHARMACEUTICALS INC., , Counter
Claimant:
KATHERINE
ANN
ESCANLAR,
ARNOLD B. CALMANN, SAIBER LLC, NEWARK,
NJ.

For
AVENTIS
PHARMACEUTICALS
INC.,
Plaintiff: LIZA M. WALSH, LEAD ATTORNEY,
CHRISTINE INTROMASSO GANNON, CONNELL
FOLEY, LLP, ROSELAND, NJ; GREGORY J.
BEVELOCK, DECOTIIS, FITZPATRICK, COLE &
WISLER, LLP, TEANECK, NJ.
For
AMR
TECHNOLOGY
INC,
Plaintiff:
GREGORY J. BEVELOCK, LEAD ATTORNEY,
DECOTIIS, FITZPATRICK, COLE & WISLER, LLP,
TEANECK, NJ; LIZA M. WALSH, CONNELL
FOLEY, LLP, ROSELAND, NJ.
For
MYLAN
PHARMACEUTICALS
INC.,
Defendant: ARNOLD B. CALMANN, LEAD
ATTORNEY, JEFFREY S. SOOS, KATHERINE ANN
ESCANLAR, SAIBER LLC, NEWARK, NJ; GERALD
KROVATIN,
LEAD
ATTORNEY,
KROVATIN
KLINGEMAN LLC, NEWARK, NJ.
For AMINO CHEMICALS LTD., Defendant:
GERALD
KROVATIN,
LEAD
ATTORNEY,
KROVATIN KLINGEMAN LLC, NEWARK, NJ.
For DiPharma Francis, Sr.l., DIPHARMA S.P.A.,
Defendant: GERALD KROVATIN, KROVATIN
KLINGEMAN [*5] LLC, NEWARK, NJ.
For Albany Molecular Research, Inc., Counter
Defendant: GREGORY J. BEVELOCK, LEAD
ATTORNEY, DECOTIIS, FITZPATRICK, COLE &
WISLER, LLP, TEANECK, NJ.

For AVENTIS PHARMACEUTICALS INC., Counter
Defendant: CHRISTINE INTROMASSO GANNON,
CONNELL FOLEY, LLP, ROSELAND, NJ.
For
AVENTIS
PHARMACEUTICALS
INC.
(2:04-cv-01078), Plaintiff: LIZA M. WALSH, LEAD
ATTORNEY, CHRISTINE INTROMASSO GANNON,
CONNELL
FOLEY,
LLP,
ROSELAND,
NJ;
GREGORY
J.
BEVELOCK,
DECOTIIS,
FITZPATRICK, COLE & WISLER, LLP, TEANECK,
NJ.
For
AMR
TECHNOLOGY
INC,
Plaintiff:
GREGORY
J.
BEVELOCK,
DECOTIIS,
FITZPATRICK, COLE & WISLER, LLP, TEANECK,
NJ.
For TEVA PHARMACEUTICALS USA, INC.,
Defendant: ALLYN ZISSEL LITE, MICHAEL [*6]
E. PATUNAS, LITE DEPALMA GREENBERG, LLC,
NEWARK, NJ.
For AMINO CHEMICALS LTD., DIPHARMA
FRANCIS, Sr. I, DIPHARMA S.P.A., Defendants:
GERALD KROVATIN, KROVATIN KLINGEMAN
LLC, NEWARK, NJ.
For AMINO CHEMICALS LTD., Counter Claimant:
GERALD KROVATIN, KROVATIN KLINGEMAN
LLC, NEWARK, NJ.

For MYLAN PHARMACEUTICALS INC., Counter
Claimant: ARNOLD B. CALMANN, LEAD
ATTORNEY, KATHERINE ANN ESCANLAR,
SAIBER LLC, NEWARK, NJ.

For Albany Molecular Research, Inc., AMR
TECHNOLOGY
INC,
Counter
Defendants:
GREGORY J. BEVELOCK, LEAD ATTORNEY,
DECOTIIS, FITZPATRICK, COLE & WISLER, LLP,
TEANECK, NJ.

For AVENTIS PHARMACEUTICALS INC., Counter
Defendant: CHRISTINE INTROMASSO GANNON,
LIZA M. WALSH, CONNELL FOLEY, LLP,
ROSELAND, NJ.

For AVENTIS PHARMACEUTICALS INC., Counter
Defendant: LIZA M. WALSH, LEAD ATTORNEY,
CHRISTINE INTROMASSO GANNON, CONNELL
FOLEY, LLP, ROSELAND, NJ.

For AMR TECHNOLOGY INC, Counter Defendant:
GREGORY J. BEVELOCK, LEAD ATTORNEY,
DECOTIIS, FITZPATRICK, COLE & WISLER, LLP,

For
AVENTIS
PHARMACEUTICALS
INC.,
MERRELL
PHARMACEUTICALS
INC.,
CARDERM CAPITAL LP (2:04-cv-02305) Plaintiffs,

Page 4
2011 U.S. Dist. LEXIS 3824, *6

Counter Defendants: LIZA M. WALSH, LEAD
ATTORNEY, CHRISTINE INTROMASSO GANNON,
CONNELL FOLEY, LLP, ROSELAND, NJ.

MICHAEL E. PATUNAS, LITE
GREENBERG, LLC, NEWARK, NJ.

DEPALMA

For
MYLAN
PHARMACEUTICALS
INC.,
Defendant, Counter Claimant: ARNOLD B.
CALMANN, LEAD ATTORNEY, JEFFREY S. SOOS,
SAIBER LLC, NEWARK, NJ.

For BARR LABORATORIES, INC., Plaintiff:
ALLYN ZISSEL LITE, LEAD ATTORNEY,
MICHAEL E. PATUNAS, LITE DEPALMA
GREENBERG, LLC, NEWARK, NJ; ROBERT M.
GOODMAN, GREENBAUM, [*8] ROWE, SMITH &
DAVIS, LLP, ROSELAND, NJ.

For
AVENTIS
PHARMACEUTICALS
INC.,
MERRELL
PHARMACEUTICALS
INC.,
CARDERM CAPITAL LP (2:04-cv-03194) Plaintiffs:
LIZA M. WALSH, LEAD ATTORNEY, CHRISTINE
INTROMASSO GANNON, CONNELL FOLEY, LLP,
ROSELAND, NJ.

For
AVENTIS
PHARMACEUTICALS
INC.,
Defendant:LIZA M. WALSH, LEAD ATTORNEY,
CHRISTINE INTROMASSO GANNON, CONNELL
FOLEY, LLP, ROSELAND, NJ.

For DR REDDY'S LABORATORIES LTD, DR.
REDDY'S LABORATORIES, [*7] INC., Defendants,
Counter Claimants: ROBERT JOSEPH FETTWEIS,
TRESSLER LLP, NEWARK, NJ.
For
AVENTIS
PHARMACEUTICALS
INC.,
CARDERM
CAPITAL
LP,
MERRELL
PHARMACEUTICALS INC., Counter Defendants:
CHRISTINE INTROMASSO GANNON, LIZA M.
WALSH, CONNELL FOLEY, LLP, ROSELAND, NJ.
For
AVENTIS
PHARMACEUTICALS
INC.,
MERRELL
PHARMACEUTICALS
INC.,
CARDERM
CAPITAL
L.P.
(2:05-cv-04255),
Plaintiffs: LIZA M. WALSH, LEAD ATTORNEY,
CHRISTINE INTROMASSO GANNON, CONNELL
FOLEY, LLP, ROSELAND, NJ.
For
MYLAN
PHARMACUETICALS
INC.,
Defendant: ARNOLD B. CALMANN, LEAD
ATTORNEY, JEFFREY S. SOOS, SAIBER LLC,
NEWARK, NJ.
For MYLAN PHARMACUETICALS INC., Counter
Claimant: ARNOLD B. CALMANN, LEAD
ATTORNEY, SAIBER LLC, NEWARK, NJ.
For
AVENTIS
PHARMACEUTICALS
INC.,
MERRELL
PHARMACEUTICALS
INC.,
CARDERM CAPITAL L.P., Counter Defendant:
CHRISTINE INTROMASSO GANNON, CONNELL
FOLEY, LLP, ROSELAND, NJ.
For TEVA PHARMACEUTICALS USA, INC.
(2:06-cv-05463), Plaintiff, Counter Defendant:
ALLYN ZISSEL LITE, LEAD ATTORNEY,

For AVENTIS PHARMACEUTICALS INC., Counter
Claimant: LIZA M. WALSH, LEAD ATTORNEY,
CONNELL FOLEY, LLP, ROSELAND, NJ.
For BARR LABORATORIES, INC., Counter
Defendant:
ALLYN
ZISSEL
LITE,
LEAD
ATTORNEY, LITE DEPALMA GREENBERG, LLC,
NEWARK,
NJ;
ROBERT
M.
GOODMAN,
GREENBAUM, ROWE, SMITH & DAVIS, LLP,
ROSELAND, NJ.
For
AVENTIS
PHARMACEUTICALS
INC.
(2:07-cv-05054), Plaintiff, Counter Defendant: LIZA
M. WALSH, LEAD ATTORNEY, CHRISTINE
INTROMASSO GANNON, CONNELL FOLEY, LLP,
ROSELAND, NJ.
For
MYLAN
PHARMACEUTICALS
INC.,
Defendant, Counter Claimant: ARNOLD B.
CALMANN, LEAD ATTORNEY, JEFFREY S. SOOS,
KATHERINE ANN ESCANLAR, SAIBER LLC,
NEWARK, NJ.
For
AVENTIS
PHARMACEUTICALS
INC.,
MERRELL
PHARMACEUTICALS
INC.,
CARDERM
CAPITAL
L.P.
(2:03-cv-05108),
Plaintiffs: LIZA M. WALSH, CHRISTINE
INTROMASSO GANNON, LEAD ATTORNEY,
CONNELL FOLEY, LLP, ROSELAND, NJ.
For DR. REDDY'S LABORATORIES, LTD., DR.
REDDY'S LABORATORIES, INC., Defendants,
Counter Claimants: ROBERT JOSEPH FETTWEIS,
TRESSLER LLP, NEWARK, NJ.
For AVENTIS PHARMACEUTICALS INC., [*9]
AVENTIS INC., CARDERM CAPITAL L.P.

Page 5
2011 U.S. Dist. LEXIS 3824, *9

(2:09-cv-00325), Plaintiffs, Counter Defendant: LIZA
M. WALSH, LEAD ATTORNEY, CHRISTINE
INTROMASSO GANNON, CONNELL FOLEY, LLP,
ROSELAND, NJ.
For SUN PHARMA GLOBAL INC., Defendant,
Counter Claimant: GREGORY D. MILLER, LEAD
ATTORNEY, PODVEY, MEANOR, CATENACCI,
HILDNER, COCOZIELLO & CHATTMAN PC,
NEWARK, NJ; JAMES S. RICHTER, LEAD
ATTORNEY, WINSTON & STRAWN, LLP, NEWARK,
NJ; LIZA M. WALSH, LEAD ATTORNEY, CONNELL
FOLEY, LLP, ROSELAND, NJ.
For SUN PHARMACEUTICAL INDUSTRIES INC.,
SUN PHARMACEUTICAL INDUSTRIES LTD.,
Defendants, Counter Claimant: GREGORY D.
MILLER, LEAD ATTORNEY, PODVEY, MEANOR,
CATENACCI,
HILDNER,
COCOZIELLO
&
CHATTMAN PC, NEWARK, NJ; JAMES S.
RICHTER, LEAD ATTORNEY, WINSTON &
STRAWN, LLP, NEWARK, NJ.
For ALBANY MOLECULAR RESEARCH, INC.,
(2:09-cv-04638),
Plaintiff,
Counter
Defendant:GREGORY J. BEVELOCK, LEAD
ATTORNEY, DECOTIIS, FITZPATRICK, COLE &
WISLER, LLP, TEANECK, NJ.
For SANOFI-AVENTIS U.S. LLC, Plaintiff, Counter
Defendant: LIZA M. WALSH, LEAD ATTORNEY,
CHRISTINE INTROMASSO GANNON, CONNELL
FOLEY, LLP, ROSELAND, NJ.
For DR. REDDY'S LABORATORIES, LTD., DR.
REDDY'S LABORATORIES, INC., Defendants,
Counter Claimants: ROBERT JOSEPH FETTWEIS,
LEAD [*10] ATTORNEY, TRESSLER LLP, NEWARK,
NJ.
For
AVENTIS
PHARMACEUTICALS
INC.,
AVENTIS INC., CARDERM CAPITAL L.P.
(2:09-cv-05179), Plaintiffs, Counter Defendants: LIZA
M. WALSH, LEAD ATTORNEY, CHRISTINE
INTROMASSO GANNON, CONNELL FOLEY, LLP,
ROSELAND, NJ.
For SUN PHARMACEUTICAL INDUSTRIES LTD.,
SUN PHARMACEUTICAL INDUSTRIES INC.,
SUN PHARMA GLOBAL INC., Defendants, Counter
Claimants: GREGORY D. MILLER, PODVEY,

MEANOR, CATENACCI, HILDNER, COCOZIELLO
& CHATTMAN PC, NEWARK, NJ.
For SANOFI-AVENTIS U.S. LLC, AVENTISUB II
INC.>,CARDERM CAPITAL L.P., AVENTIS
PHARMACEUTICALS INC., 07-cv-5647, AVENTIS,
INC.,
07-cv-5647
(3:10-cv-01471),
Plaintiffs:
CHRISTINE INTROMASSO GANNON, LIZA M.
WALSH, CONNELL FOLEY, LLP, ROSELAND, NJ.
For WOCKHARDT LTD., Defendant: MICHAEL
JAMES GESUALDO, LEDA DUNN WETTRE,
ROBINSON WETTRE & MILLER LLC, NEWARK,
NJ.
For WOCKHARDT USA LLC, Defendant, Counter
Claimant: LEDA DUNN WETTRE, ROBINSON
WETTRE & MILLER LLC, NEWARK, NJ.
For WOCKHARDT USA INC., Defendant:
MICHAEL JAMES GESUALDO, ROBINSON
WETTRE & MILLER LLC, NEWARK, NJ.
For WOCKHARDT LTD., Counter Claimant: LEDA
DUNN WETTRE, ROBINSON WETTRE & MILLER
LLC, NEWARK, NJ.
For AVENTISUB II INC., CARDERM CAPITAL
L.P., SANOFI-AVENTIS U.S. LLC, [*11] Counter
Defendants: CHRISTINE INTROMASSO GANNON,
LEAD ATTORNEY, LIZA M. WALSH, CONNELL
FOLEY, LLP, ROSELAND, NJ.
JUDGES: GARRETT E. BROWN, JR., UNITED
STATES DISTRICT JUDGE.
OPINION BY: GARRETT E. BROWN
OPINION

MARKMAN OPINION
BROWN, Chief Judge
This matter comes before the Court on the parties'
request for claim construction in a Markman hearing. The
parties submitted their opening Markman briefs on
September 2, 2010, and their responsive briefs on
October 14, 2010. (Doc. Nos. 214, 215, 216, 219, 260,
262, 265, 267.) 1 The Court held a Markman hearing on
November 10, 2010.

Page 6
2011 U.S. Dist. LEXIS 3824, *11

1 All docket citations are to the 09-4638 case
because several of the other dockets do not
contain every document that the parties submitted.

4,254,129. Instead, the '791 and '632 patents claim a
method for the administration of fexofenadine to several
populations who have adverse side effects from a prior
antihistamine, terfenadine.

I. Background
This is a consolidated patent infringement case
involving the pharmaceutical fexofenadine. Before the
Court is the parties' request for claim construction in a
Markman hearing. There are nine (9) patents at issue and
twenty-nine (29) different disputed claim terms. Three of
the patents are the "Method Patents" -- United States
Patent Numbers 6,037,353 (the "'353 patent"), 6,187,791
(the "'791 patent"), and 6,399,632 (the "'632 patent").
These patents share an identical specification and their
claims [*12] are directed to administering fexofenadine
to slightly different populations of people. Four of the
patents are directed to fexofenadine formulations; these
are United States Patent Numbers 6,039,974 (the "'974
patent"), 5,855,912 (the "'912 patent"), 6,113,942 (the
"'942 patent"), and 5,738,872 (the "'872 patent"). The
'942 and '912 patents share a written description. Finally,
two of the patents are directed towards the process of
making piperidine derivatives; they are United States
Patent Numbers 7,390,906 (the "'906 patent") and
5,750,703 (the "'703 patent"). These patents also share a
substantially identical written description.
On November 10, 2010, this Court conducted a
Markman hearing. At the hearing, the Court construed
eleven (11) of the twenty-nine (29) terms for the reasons
it set forth on the record. In addition to those eleven (11)
terms, the parties agreed that three (3) terms from the
'906 patents were no longer relevant to the asserted
claims and conferred to arrive at a construction for the
term "wet granulation" in the '872 patent. These rulings
resolved all of the claim construction issues in the '353,
'912, '942, and '872 patents. The Court reserved its ruling
[*13] on the remaining fourteen (14) terms; these terms
consist of all five (5) terms from the '791 and '632
patents, four (4) terms from the '974 patent, two (2) terms
from the '703 patent, and three (3) terms from the '906
patent.
This opinion addresses only the five (5) outstanding
terms in the '791 and '632 patents. These patents share a
written description because they stem from the same
patent application. The patents do not claim a method of
administering fexofenadine to patients in need of
antihistamines generally; that method had been claimed
in a previous patent, United States Patent Number

The five (5) terms that this Court must construe
involve the specific type of patient to whom fexofenadine
should be administered. They are: (1) "patient . . . .
susceptible to possible cardiac events associated with the
administration of terfenadine," from claim 1 of the '791
patent; (2) "patient susceptible to QT prolongation and/or
ventricular tachycardia when using terfenadine," from
claim 9 of the '791 patent; [*14] (3) "patient in whom
terfenadine is not metabolized at the normal rate to the
terfenadine acid metabolite, while avoiding the
concomitant liability of cardiac arrhythmias associated
with the administration of terfenadine," from claim 1 of
the '632 patent; (4) "patient in whom terfenadine is not
metabolized at the normal rate to the terfenadine acid
metabolite," from claim 5 of the '632 patent; and (5)
"patient in whom terfenadine is not metabolized at the
normal rate to the terfenadine acid metabolite and who is
subject to QT prolongation and/or ventricular tachycardia
when using terfenadine," from claim 9 of the '632 patent.
(Joint Claim Construction Chart ("JCC") at 4-14; Doc.
No. 210-1.) The Court will address the terms implicated
in the other patents in separate opinions.
II. Discussion
A. Standard of Review
The first step in a patent infringement analysis is to
define the meaning and scope of the claims of the patent.
Markman v. Westview Instruments, Inc., 52 F.3d 967, 976
(Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370, 116 S. Ct.
1384, 134 L. Ed. 2d 577 (1996). Claim construction,
which serves this purpose, is a matter of law exclusively
for the court. Id. at 979. Specifically, the focus of a
court's analysis must [*15] begin and remain on the
language of the claims, "for it is that language that the
patentee chose to use to 'particularly point[] out and
distinctly claim[] the subject matter which the patentee
regards as his invention.'" Interactive Gift Express, Inc. v.
Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001)
(quoting 35 U.S.C. § 112, ¶ 2).
Generally, there is a presumption that the words of a
claim will receive the full breadth of their ordinary
meaning. NTP, Inc. v. Research In Motion, Ltd., 392 F.3d
1336, 1346 (Fed. Cir. 2004). The ordinary meaning may

Page 7
2011 U.S. Dist. LEXIS 3824, *15

be derived from a variety of sources; including intrinsic
evidence, such as the claim language, the written
description, drawings, and the prosecution history; as
well as extrinsic evidence, such as dictionaries, treatises,
or expert testimony. Id.

ordinary skill in the art is deemed to have read the claim
terms in the context of the entire patent, including the
specification. Phillips, 415 F.3d at 1313.

When determining the meaning of the terms, the
court must primarily consider the intrinsic evidence,
including the specification and prosecution history. The
specification "is the single best guide to the meaning of a
disputed term." Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1587 (Fed. Cir. 1996). However, it is
improper to import limitations from the specification to
the claims. [*16] Phillips v. AWH Corp., 415 F.3d 1303,
1320, 1323 (Fed. Cir. 2005); Resonate Inc. v. Alteon
Websystems, Inc., 338 F.3d 1360, 1364-65 (Fed. Cir.
2003). Courts "should also consider the prosecution
history of the asserted patents" because it "can inform the
meaning of the claim language by demonstrating how the
inventor understood the invention and whether the
inventor limited the invention in the course of
prosecution." Telcordia Techs., Inc. v. Cisco Sys., 612
F.3d 1365, 1372 (Fed. Cir. 2010); Phillips, 415 F.3d at
1317. Courts should, however, grant the prosecution
history less weight than the specification because they are
negotiations and "often lack[] the clarity of the
specification." Phillips, 415 F.3d at 1317.

1. Patient . . . susceptible to possible cardiac events
associated with the administration of terfenadine

In addition to the specification and prosecution
history, a court may also consider extrinsic evidence to
determine the meaning of a term when an analysis of the
intrinsic evidence alone does not resolve the ambiguities
of a disputed claim term. Vitronics Corp., 90 F.3d at
1582-83.
The presumption of ordinary meaning may be
rebutted if the patentee acted as his or her own
lexicographer by clearly setting forth a definition of the
claim term unlike its ordinary and customary [*17]
meaning. Brookhill-Wilk I, LLC. v. Intuitive Surgical,
Inc., 334 F.3d 1294, 1298-99 (Fed. Cir. 2003). The
patentee's intent to define the term must be clear before
the court will use it to redefine the term and impose limits
on the ordinary meaning. Merck & Co, Inc. v. Teva
Pharms. USA, Inc., 395 F.3d 1364, 1370 (Fed. Cir.
2005).
When the patentee has not provided an explicit
definition of a claim term, the words of a claim are given
their plain and ordinary meaning to a person of ordinary
skill in the art. Vitronics, 90 F.3d at 1582. The person of

B. Analysis

The parties suggest substantially different
interpretations of this term. Plaintiffs propose a lengthy
definition of this term that incorporates the '791 patent's
definition of "patient" and several portions of the
specification that suggest situations in which a patient
would be susceptible to cardiac events. (JCC at 4; Doc.
No. 210-1.) Defendants propose that the term [*18]
means, "a hepatically impaired patient as defined at Co.
2, lines 53-59, making the patient susceptible to cardiac
events associated with increased blood levels of
terfenadine." (Id.) The primary difference between these
two constructions is that Defendants' construction
requires the patient to be "hepatically impaired" whereas
Plaintiffs' definition requires them only to be "a warm
blooded animal" in line with the specification's explicit
definition of "patient."
The Court adopts a construction similar to
Defendants' construction, because while the language of
the claims is open to a broader interpretation, the
specification and the prosecution history limit the
claimed patient population to those who are "hepatically
impaired." Thus, the Court finds that the term, and the
other similar terms at issue in this opinion, each refer to a
subset of hepatically impaired patients.
While the claims define the invention, the intrinsic
evidence's description of the invention as a whole can
inform a court that a term's construction should be
narrower than the meaning of the term in isolation.
Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312,
1318 (Fed. Cir. 2006); see also Telecordia Tech., Inc., v.
Cisco Sys., Inc., 612 F.3d 1365, 1374 (Fed. Cir. 2010).
[*19] The specification may narrow this meaning because
the "claims must be read in light of the specification" and
because the specification is "the single best guide to the
meaning of a disputed term." Phillips, 415 F.3d at 1315.
If the patentee uses the specification to broadcast to the
public that the invention is limited to a construction that
is more narrow than the normal meaning of the claims,
"the public is entitled to take the patentee at his word."
Honeywell, 452 F.3d at 1318. Thus, where the

Page 8
2011 U.S. Dist. LEXIS 3824, *19

specification makes statements about the entirety of the
invention, and not just the embodiments of the invention,
those statements can limit the scope of the claims.

need thereof comprising administering to
said patient an effective antihistaminic
amount of a compound of Formula (1).

For example, in Honeywell, the patentee described
"this invention" or "the present invention" as a fuel filter
on four occasions in the specification. 452 F.3d at 1318.
Specifically, the specification used several phrases like
"This invention relates to a fuel filter." Id. The Federal
Circuit found that this statement limited the invention to
fuel filters despite the fact that the claim language could
be interpreted more broadly. Id. at 1318-19. In doing so,
the Federal Circuit was not swayed by the fact that the
prosecution [*20] history contained a passage that
suggested a broader interpretation by the patentee. Id.

('791 patent, 1:63-66) (emphasis added.) The
Abstract also makes a similar statement: "The present
invention relates to a method of providing an
antihistaminic effect in a hepatically impaired patient[.]"
('791 patent, Abstract.) While these statements limit what
the invention "relates to," rather than what the invention
"is," the "relates to" language is the same language that
led the Honeywell court to determine that the
specification limited the claims. 452 F.3d at 1318-19.

This case is similar because the patentee repeatedly
stated that the invention was limited administration of
fexofenadine to hepatically impaired patients in the
specification and in the prosecution history. Indeed, the
specification repeatedly refers to treatment of
"hepatically impaired patients" as "the present invention"
and not merely as an embodiment. This is consistent with
the title of the patent, which states the patent is a "method
of providing an antihistaminic effect in a hepatically
impaired patient." ('791 patent, Title.)
The specification repeatedly references the fact that
"the present invention" is only a treatment of "hepatically
impaired patients." As in Honeywell, these statements
describe the entire invention, and not embodiments; thus,
they may limit the scope of claims that otherwise could
be interpreted more broadly. 452 F.3d at 1318. The
Detailed Description of the Invention states that:

This limitation is consistent with the portions of the
specification that center both the problem in the art
solved by the invention and the remainder of the Detailed
Description on hepatically impaired patients. When
discussing the problem identified in the art -- that
terfenadine is not metabolized [*22] into terfenadine acid
metabolite (an early name for fexofenadine) -- the
specification again points to hepatically impaired
patients:
Preliminary information indicates that in
cases of hepatic impairment, significant
concentrations of unchanged terfenadine
can be detected with the rate of acid
metabolite formation being decreased. In
subjects with normal hepatic function,
unchanged
terfenadine
plasma
concentrations have not been detected.
....

The present invention relates to a
method of providing an antihistaminic
effect in a hepatically impaired patient in
need thereof comprising administering
said patient an effective antihistaminic
[*21] amount of a compound of Formula
(1).

('791 patent, 2:37-41) (emphasis added.) The
Summary of Invention provides an identical statement
that limits the invention to hepatically impaired patients:
The present invention relates to a
method of providing an antihistaminic
effect in a hepatically impaired patient in

Surprisingly, it appears that patients
with impaired hepatic function who are
receiving terfenadine acid metabolite in
sufficient amount so as to provide an
antihistaminic effect will not experience
cardiac events of QT prolongation and/or
ventricular tachycardia.

('791 patent, 1:39-57) (emphasis added.) This
passage also suggests that difficulties metabolizing
terfenadine were not detected in non-hepatically impaired
patients.
The remainder of the specification also reflects a

Page 9
2011 U.S. Dist. LEXIS 3824, *22

focus on hepatically impaired patients. It defines a
"hepatically impaired patient," mentions the advantages
of the invention in "hepatically impaired patients" and
suggests that, in order to practice the invention, the
person of ordinary skill in the art is able to identify [*23]
patients who are hepatically impaired. ('791 patent,
2:53-64, 3:10-14.) It does not contain passages that
suggest how to identify other categories of patients.
At first blush, one portion of the specification does
seem to support Plaintiffs' assertion that the patient
population described in the claims is broader than those
with hepatic impairment. However, that portion appears
prior to the portion of the specification that describes the
present invention. Further, both the context of the passage
and the prosecution history strongly suggest that this
passage lists patients with hepatic impairment and then
other examples patients who are hepatically impaired,
and not patients with hepatic impairment and then other
groups.
This portion of the specification, which the Court
refers to as the "recently found" passage, states that:
Recently, it has been found that patients
with impaired hepatic function (alcohol
cirrhosis, hepatitis), or on ketokonazole or
troleandomycin therapy, or having
conditions leading to QT prolongation
(e.g., hypokalemia, congenital QT
syndrome), may experience cardiac events
of QT prolongation and/or ventricular
tachycardia at the recommended dose of
terfenadine.

('791 patent, [*24] 1:39-57.) This passage tacitly
suggests that both people receiving "ketokonazole or
troleandomycin therapy" and those "having conditions
leading to QT prolongation" are separate from those with
hepatic impairment because the passage lists them
separately. However, as discussed below, the
specification accounts for both of these groups and
refocuses them as subgroups of patients who are
hepatically impaired. The prosecution history also shows
that the patentee understood that these groups were those
with hepatic impairment. See Telcordia Techs., Inc., 612
F.3d at 1372 (prosecution history is useful because it may
show how the patentee understood the term).
First, this portion of the specification does not

describe the invention -- it is contained only in the
portion describing the background of the field. ('791
patent, 1:39-57.) Thus, it is not directly relevant to what
the invention constitutes. Second, the specification
explains that patients on "on ketokonazole or
troleandomycin therapy" are also hepatically impaired
patients because the patentee's own definition of a
"hepatically impaired patient" expressly includes them in
its definition:
A hepatically impaired patient is a
patient [*25] having impaired liver
function due to disease . . . or due to
administration of a drug, such as
ketokonazole,
erythromycin
or
troleandomycin, which inhibits normal
liver metabolic function.

('791 patent, 2:53-57) (emphasis added.) Thus,
patients on ketokonazole and troleandomycin are
hepatically impaired patients, despite being listed
separately. This alone suggests that the items listed after
patients with impaired hepatic function are merely
subgroups of people that have impaired hepatic function.
In addition, the sentence immediately after the "recently
found" passage also accounts for those having conditions
leading to QT prolongation by focusing that group of
people back on those with hepatic impairment:
Surprisingly, it appears that patients with
impaired hepatic function who are
receiving terfenadine acid metabolite [the
drug whose administration constitutes the
invention] in sufficient amount so as to
provide an antihistaminic effect will not
experience cardiac events of QT
prolongation
and/or
ventricular
tachycardia.

('791 patent, 1:53-57) (emphasis added.) The
Detailed Description also contains a passage that focuses
QT prolongation and/or ventricular tachycardia back on
hepatically [*26] impaired patients; that passage states:
When administered terfenadine at the
recommended dosage, a hepatically
impaired patient will experience increased
levels of terfenadine in the blood and

Page 10
2011 U.S. Dist. LEXIS 3824, *26

decreased levels of the acid metabolite
over
that
expected
with
the
non-hepatically
impaired
patient.
Increased blood levels of terfenadine in
turn may cause decreases in the action
potential and in various membrane
currents of cardiac cells which may trigger
cardiac events of QT prolongation and/or
ventricular tachycardia.

('791 patent, 2:60-3:1.) This focuses patients who
have conditions leading to QT prolongation back on
hepatically impaired patients. 2 Thus, all of the groups of
patients listed in the "recently found" passage are
hectically impaired.
2 Certainly just because hepatically impaired
patients would experience QT prolongation on
terfenadine but not terfenadine acid metabolite,
does not mean that all patients "having conditions
leading to QT prolongation" are hepatically
impaired patients. Logically, other patients with
unrelated conditions could also experience QT
prolongation on terfenadine. However, given the
immediate refocusing of this group on hepatically
impaired patients and [*27] the specification and
prosecution history's repeated statements that
limit the scope of the invention to patients who
are hepatically impaired, the Court is convinced
that patients "having conditions leading to QT
prolongation" are a subgroup of hepatically
impaired patients, i.e. those having such
conditions are also hepatically impaired.
Further, the prosecution history makes plain that the
patentee regarded the "recently found" passage as
covering only hepatically impaired patients. See
Telcordia Techs., Inc., 612 F.3d at 1372 (prosecution
history is useful because it may show how the patentee
understood the term). The patentee repeatedly conceded
or asserted in the prosecution history that this invention
was limited to hepatically impaired patients and the
patentee equated the patients listed in the passage with
hepatically impaired patients. During prosecution, the
Examiner rejected the claims because the prior art already
taught a person of skill in the art to use fexofenadine as
an antihistamine in patients. The examiner concluded:
The only essential difference between

the prior art and what is claimed herein is
that the patient is hepatically impaired.
One skilled in the art [*28] would be
motivated to employ the compounds to
treat a hepatically impaired patient since
the indication since the indication in the
prior art that the compound has
antihistaminic activity renders the
compound obvious for treating all patients
in need of antihistaminic treatment[.]

(Supp. Karta Decl. Ex. 12, p.3; Doc. No.266-2.)
The patentee did not disagree with the examiner's
characterization of the limitations of the patent. Indeed,
when the patentee responded, he equated those patients
"on ketokonazole or troleandomycin therapy, or having
conditions leading to QT prolongation," the very patients
Plaintiffs contend are not hepatically impaired, with
"hepatically impaired patients." Specifically, the patentee
stated
Applicants respectfully assert that it is
known that "patients with impaired hepatic
function (alcohol cirrhosis, hepatitis), or
on ketokonazole or troleandomycin
therapy, or having conditions leading to
QT prolongation (e.g., hypokalemia,
congenital QT syndrome), may experience
cardiac events of QT prolongation and/or
ventricular
tachycardia
at
the
recommended dose of terfenadine" (page
2, lines 6-12 of the specification). Thus,
terfenadine treatment was associated with
[*29] certain cardiac events in patients
with hepatic impairment.

(Supp. Karta Decl. Ex. 13, p.2; Doc. No. 266-2)
(emphasis added.) In this passage, the patentee
specifically uses hepatic impairment to summarize the
other patients in the "recently found" passage. Thus, the
patentee regarded the "recently found" passage that
Plaintiffs assert refers to patients who are not hepatically
impaired as listing patients with hepatic impairment and
several other conditions that are subgroups of patients
with hepatic impairment.
Further, the patentee described the invention as a
treatment of hepatically impaired patients in the

Page 11
2011 U.S. Dist. LEXIS 3824, *29

prosecution history. In response to the office action
above, the patentee concluded:
Applicants respectfully assert that the
unexpectedly superior properties of the
compounds of the present invention in the
treatment of hepatically-impaired patients
without the cardiac adverse events
associated with terfenadine treatment,
would not have been predictable with any
reasonable expectation of success based
on the teachings of the prior art.
Therefore, the rejection of Claims 1-7
under 35 U.S.C. § 103 is improper.

(Id. at p.3) (emphasis added.)
In the subsequent interference action, the [*30]
patentee also made clear that he regarded his invention as
limited to patients that are hepatically impaired.
Specifically, the patentee argued that the claims were
"limited by their own language to patients who are at risk
of possible cardiac events associated with the
administration of terfenadine -- i.e., only patients who are
hepatically impaired" and that the patent did "not claim
treatment of patients who are not at risk of adverse
cardiac consequences from administration of terfenadine
(i.e., who are not hepatically impaired.)" (Gannon Resp.
Cert. at Ex.1, p.3; Doc. No. 267-1.) Finally, the patentee
stated that "it is only patients with impaired liver function
[i.e. those who are hepatically impaired] who face an
increased risk of cardiac arrhythmia from terfenadine[.]"
(Id.) 3 Thus, this not only shows that the patentee
understood his invention to be limited to hepatically
impaired patients, but also that he argued this position in
order to avoid a rejection before the Board of Patent
Appeals and Interferences (the "Board").
3
This also explains why patients with
congenital QT syndrome must also be hepatically
impaired in order to be within the subject
invention -- even those with [*31] congenital QT
syndrome, an inborn heart condition, are not
subject to the cardiac side effects unless they are
also hepatically impaired.
Although, the Board ultimately rejected this
construction and adopted a broader construction, it did so
based upon a standard of review that is different from the
one before this court. 4 Because the Board must

anticipate what any court might construe the claims to
cover, its role is to "accord the claims of an application
and the counts of an interference 'the broadest meaning
which they will reasonably support[.]'" (Gannon Resp.
Cert. at Ex. 1, p.3; Doc. No. 267-1 (citing Bocciarelli v.
Huffman, 232 F.2d 647, 43 C.C.P.A. 873, 1956 Dec.
Comm'r Pat. 253, 109 USPQ 385, 388 (CCPA 1956).)
This Court is the ultimate arbiter of the claims, and as a
result, while it gives the patentee's words the full breadth
of their plain meaning, it does so in light of the
specification and prosecution history. These suggest that
the person of ordinary skill would understand that the
invention was limited to hepatically impaired patients.
Thus, the rejection of the patentee's argument is not as
relevant as the argument itself. It shows that the patentee,
consistent with the specification and the remainder of the
prosecution [*32] history, understood the patent and the
specification's disclosure to be limited to hepatically
impaired patients.
4 Further, the Board rejected the claims because
it found that this construction found no support in
the specification. While the subsequent examiner
ultimately granted the claims as supported, it is
not clear why. It is possible that the examiner
used another, narrower construction or did so for
a variety of other reasons. Thus, like in
Honeywell, this portion of the prosecution history
is not sufficiently persuasive to overcome the
implications of the specification, the patentee's
understanding of the invention, or the rest of the
prosecution history.
Because the specification contains numerous
statements that limit the scope of the invention to only
hepatically impaired patients and the prosecution history
reveals that this is how the patentee regarded his
invention, the Court finds that a person of ordinary skill
in the art would find that the claims are limited to a
hepatically impaired patient. See Phillips, 415 F.3d at
1317; Honeywell, 452 F.3d at 1317-18. The particular
scope of each claim in the '791 and '632 patents is
directed to a subgroup of hepatically impaired [*33]
patients.
This interpretation does not interpret the term
"patient" to be different than the definition that the patent
specifically set forth in the specification; rather, it
interprets the way in which the additional words "patient .
. . susceptible to possible cardiac events associated with

Page 12
2011 U.S. Dist. LEXIS 3824, *33

the administration of terfenadine" modify the meaning of
the word "patient." They require the patient to be
hepatically impaired.
Thus, the Court construes the term to be limited to
hepatically impaired patients and construes "patient . . .
susceptible to possible cardiac events associated with the
administration of terfenadine" to mean "a hepatically
impaired patient as defined at Col.2, lines 53-59, who is
also susceptible to possible cardiac events associated with
the administration of terfenadine."
2. Remaining Terms
The remaining terms involve similar issues and can
be easily resolved. These terms are:
(2) "patient susceptible to QT
prolongation
and
or
ventricular
tachycardia when using terfenadine"-claim 9 of the '791 patent;
(3) "patient in whom terfenadine is
not metabolized at the normal rate to the
terfenadine acid metabolite, while
avoiding the concomitant liability of
cardiac arrhythmias [*34] associated with
the administration of terfenadine" -- claim
1 of the '632 patent;
(4) "patient in whom terfenadine is
not metabolized at the normal rate to the
terfenadine acid metabolite" -- claim 5 of
the '632 patent; and
(5) "patient in whom terfenadine is
not metabolized at the normal rate to the
terfenadine acid metabolite and who is
subject to QT prolongation and/or
ventricular tachycardia when using
terfenadine" -- claim 9 of the '632 patent.

The Court first notes that the '632 patent is a
continuation of the '791 patent, which in turn is a
continuation of the '353 patent. (See '632 patent, Related
U.S. Application Data.) Thus, they share an identical
specification and have large overlaps in their prosecution
history. Consequently, the above discussion applies
equally to both patents, because the specification that
limits the claims and prosecution history that shows the

specification's statements are limited to hepatically
impaired patients are identical. 5
5 This Court does not rely on prosecution history
estoppel for the claim terms of the '632 patent;
rather it relies on the clear import of the
specification, which is identical for both of the
patents, and the prosecution history's [*35]
description of that specification. However, it notes
that the terms in the '632 patent are closely in line
with the definition of the hepatically impaired
patient in the patent. (See '632 patent, 2:53-59
("In the hepatically impaired patient, terfenadine
is not metabolized at the normal rate to the
terfenadine acid metabolite.").) Further, the
specification specifically states that problems with
conversion of terfenadine to terfenadine acid
metabolite had not been detected in patients who
were not hepatically impaired. ('632 patent,
1:40-46.)
Further, the primary dispute between the parties
about these terms is identical to that discussed at length
in the above term -- whether the term refers only to
hepatically impaired patients. (See Pls.' Br. at 20; Doc.
No. 215; Pls.' Resp. Br. at 15, 21; Doc. No. 267.) Thus,
the prior discussion decides the identical issue of whether
the patients must be hepatically impaired and the Court
will construe those terms in a similar manner. For
example, the Court construes "patient susceptible to QT
prolongation and or ventricular tachycardia when using
terfenadine" to mean "a hepatically impaired patient as
defined at Col.2, lines 53-59, who is also [*36]
susceptible to QT prolongation and or ventricular
tachycardia when using terfenadine."
Plaintiffs'
additional
argument
that
claim
differentiation requires adopting its construction is
unavailing. (See Pls.' Resp. Br. at 23-25; Doc. No. 267.)
They argue that because the '353 patent claims the
administration of fexofenadine to hepatically impaired
patients, the Defendants' constructions are improper
because their constructions cause the patents to overlap
with the '353 patent. However, as demonstrated, each of
these terms claims a different subset of hepatically
impaired patients. Thus, this construction makes the
scope of these claims similar but does not make it
indistinguishable. This similarity is justified because the
patentee admitted that the patents were obvious variants
of one another when it agreed to a terminal disclaimer. (

Page 13
2011 U.S. Dist. LEXIS 3824, *36

See '632 patent, Notice.) Further, claim differentiation is
"a rule of thumb that does not trump the clear import of
the specification." Edwards Lifesciences, LLC v. Cook
Inc., 582 F.3d 1322, 1332 (Fed. Cir. 2009). Here, the
clear import of the specification and the prosecution
history require the Court's construction.
Thus, the Court determines that each [*37] of these
claim terms refer to subsets of patients with hepatic
impairment. The Court construes those claims
accordingly.

III. Conclusion
For the foregoing reasons the Court construes the
terms in the '791 patent and the '632 patent to be limited
to hepatically impaired patients as set forth in the
accompanying order.
Dated: January 13, 2011
/s/ Garrett E. Brown, Jr.
GARRETT E. BROWN, JR., U.S.D.J.