Amgen Inc. v. F. Hoffmann-LaRoche LTD et al

Filing 1358

BRIEF by Amgen Inc. = Bench Memorandum Regarding Application of the Doctrine of Equivalents to Establish Infringement Under 35 U.S.C. sec. 271(g). (Rich, Patricia)

Download PDF
Amgen Inc. v. F. Hoffmann-LaRoche LTD et al Doc. 1358 Case 1:05-cv-12237-WGY Document 1358 Filed 10/12/2007 Page 1 of 6 UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS ) ) ) Plaintiff, ) ) v. ) ) ) F. HOFFMANN-LA ROCHE ) LTD., a Swiss Company, ROCHE ) DIAGNOSTICS GmbH, a German ) Company and HOFFMANN-LA ROCHE ) INC., a New Jersey Corporation, ) ) Defendants. ) __________________________________________) AMGEN INC., Civil Action No.: 05-12237 WGY AMGEN'S BENCH MEMORANDUM REGARDING APPLICATION OF THE DOCTRINE OF EQUIVALENTS TO ESTABLISH INFRINGEMENT UNDER 35 U.S.C. § 271(g) During the October 10, 2007 hearing, in discussing the structure of the jury verdict form, Roche indicated that the doctrine of equivalents does not apply to claims of infringement under 35 U.S.C. § 271(g).1 Roche's assertion is wrong. Amgen submits this bench memorandum to explain how the doctrine of equivalents applies in the context of § 271(g). Section 271(g) protects patentees from the importation, use, sale or offer for sale in the United States of products made overseas by a process patented in the United States. An infringement analysis under § 271(g) involves two separate inquiries: (1) whether the imported product was made by a process falling within the scope of the asserted process claim (i.e., whether the foreign process would infringe if practiced in the U.S.); and (2) if so, whether the product of the process is "materially changed" prior to importation or constitutes a "trivial and 1 See 10/10/07 Trial Tr. at 2565:3-2569:8. 1 813267 Dockets.Justia.com Case 1:05-cv-12237-WGY Document 1358 Filed 10/12/2007 Page 2 of 6 non-essential component" of the imported product. See Genentech, Inc. v. Boehringer Mannheim GmbH, 47 F. Supp. 2d 91, 107 (D. Mass. 1999). Although the Federal Circuit has not directly considered the issue, several district courts, including this Court, have applied the doctrine of equivalents to decide the first step of the § 271(g) infringement analysis. That is, just as a patentee alleging infringement under § 271(a) may use the doctrine of equivalents to establish that a process practiced within the United States infringes its claimed process, a patentee alleging infringement under 271(g) likewise may use the doctrine of equivalents to prove that a process practiced abroad satisfies each limitation of its claimed process and therefore would infringe if practiced in the United States.2 For example, in Genentech, Inc. v. Boehringer Mannheim GmbH, 47 F. Supp. 2d 91 (D. Mass. 1999), Boehringer Mannheim ("BM") argued that it did not infringe claim 1 of Genentech's `832 patent under § 271(g) because, inter alia, BM's overseas process for constructing Reteplase production plasmids involved replicated cDNA instead of reverse transcript cDNA and therefore did not literally satisfy step (b) of Genentech's patented process. See id. at 109-10. This Court determined that even if BM did not literally practice step (b) of Genentech's patented process, that limitation was nonetheless satisfied under the doctrine of equivalents: Even if BM were correct on this point, Genentech would be easily saved by the doctrine of equivalents. As Genentech persuasively points out, under the doctrine of equivalents, replicated cDNA is the substantial equivalent of reverse transcript cDNA. See WarnerJenkinson, 520 U.S. at 39-40. BM submits no evidence that they are not interchangeable, or that they are substantially different. Genentech, 47 F. Supp 2d. at 110. Thus, although the Court ultimately held that BM's process 2 There do not appear to be any cases indicating that the doctrine of equivalents may apply to the "materially changed" inquiry. However, Amgen does not seek an instruction applying the doctrine of equivalents to this second step of the § 271(g) infringement analysis. 2 Case 1:05-cv-12237-WGY Document 1358 Filed 10/12/2007 Page 3 of 6 did not satisfy other limitations of Genentech's patented process and therefore did not infringe under 271(g), the Court's opinion clearly acknowledged that patentees may use the doctrine of equivalents in the first step of the § 271(g) infringement analysis to establish that a process practiced abroad satisfies one or more limitations of the claimed process. In Trs. of Columbia Univ. v. Roche Diagnostics GmbH, 272 F. Supp. 2d 90 (D. Mass. 2002), this Court again acknowledged the availability of the doctrine of equivalents to establish the first prong of the § 271(g) infringement test: "Although GI did not literally infringe the unlinked cotransformation claims, the doctrine of equivalents could apply to GI's processes with respect to these claims." Id. at 102. The Court ultimately held that because GI's process "did not directly infringe any of the unlinked cotransformation claims of the Axel patents, either literally or through the doctrine of equivalents," as to those particular claims, Roche was not liable under § 271(g) (or under § 271(b)) for importing the product of GI's process into the United States. See id. at 103 (emphasis added). Other district courts have similarly applied the doctrine of equivalents in assessing whether a patentee has established the first requirement of infringement under § 271(g). See, e.g., Taltech Ltd. v. Esquel Apparel, Inc., 2007 U.S. Dist. LEXIS 17005, at *56-72 (W.D. Wash. Mar. 9, 2007) (applying doctrine of equivalents in the context of § 271(g) infringement claim and holding no infringement); Pfizer Inc. v. F & S Alloys & Minerals Corp., 856 F. Supp. 808, 815-16 (S.D.N.Y. 1994) (holding that plaintiff's showing of substantial likelihood that overseas process would infringe at least under the doctrine of equivalents was sufficient to shift burden to defendant to prove non-infringement under § 271(g)/§ 295); Aventis Pharms., Inc. v. Barr Labs., Inc., 411 F. Supp. 2d 490, 495, 508-509 (D.N.J. 2006) (holding that plaintiff had not sufficiently established that foreign process would infringe under the doctrine of equivalents and therefore had not established a likelihood of success in proving its § 271(g) claim for purposes of a 3 Case 1:05-cv-12237-WGY Document 1358 Filed 10/12/2007 Page 4 of 6 preliminary injunction). Thus, there is no merit to Roche's contention that the doctrine of equivalents is inapplicable to claims of infringement under § 271(g). In light of the foregoing, Amgen respectfully submits that, for all the claims-in-suit, including the process claims alleged to infringe under § 271(g), the jury verdict form should include a separate box for infringement under the doctrine of equivalents. 4 Case 1:05-cv-12237-WGY Document 1358 Filed 10/12/2007 Page 5 of 6 Dated: October 12, 2007 Respectfully Submitted, AMGEN INC., By its attorneys, /s/ Patricia R. Rich D. DENNIS ALLEGRETTI (BBO#545511) MICHAEL R. GOTTFRIED (BBO#542156) PATRICIA R. RICH (BBO#640578) DUANE MORRIS LLP 470 Atlantic Avenue, Suite 500 Boston, MA 02210 Telephone: (857) 488-4200 Facsimile: (857) 488-4201 LLOYD R. DAY, JR DAY CASEBEER MADRID & BATCHELDER LLP 20300 Stevens Creek Boulevard, Suite 400 Cupertino, CA 95014 Telephone: (408) 873-0110 Facsimile: (408) 873-0220 WILLIAM GAEDE III McDERMOTT WILL & EMERY 3150 Porter Drive Palo Alto, CA 94304 Telephone: (650) 813-5000 Facsimile: (650) 813-5100 KEVIN M. FLOWERS MARSHALL, GERSTEIN & BORUN LLP 233 South Wacker Drive 6300 Sears Tower Chicago IL 60606 Telephone: (312) 474-6300 Facsimile: (312) 474-0448 Of Counsel: STUART L. WATT WENDY A. WHITEFORD MONIQUE L. CORDRAY DARRELL G. DOTSON KIMBERLIN L. MORLEY ERICA S. OLSON AMGEN INC. One Amgen Center Drive Thousand Oaks, CA 91320-1889 (805) 447-5000 5 Case 1:05-cv-12237-WGY Document 1358 Filed 10/12/2007 Page 6 of 6 CERTIFICATE OF SERVICE I hereby certify that this document, filed through the ECF system will be sent electronically to the registered participants as identified on the Notice of electronic filing and paper copies will be sent to those indicated as non-registered participants on October 12, 2007. /s/ Patricia R. Rich Patricia R. Rich 6

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.


Why Is My Information Online?