Massachusetts Institute of Technology et al v. Shire PLC et al

Filing 119

Judge Mark L. Wolf: ORDER entered (Franklin, Yvonne)

UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

MASSACHUSETTS INSTITUTE
OF TECHNOLOGY and CHILDREN'S
MEDICAL CENTER CORPORATION,
Plaintiffs,
v.

1: 13-CV-10020-MLW

SHIRE PHARMACEUTICALS, INC., and
SHIRE REGENERATIVE MEDICINE, INC.,
Defendants.
ORDER
WOLF, D.J.
As

March 12, 2015

stated

at

the

March

11,

2015

hearing,

it

is

hereby

ORDERED that:
1.

By March 25,

2015,

the parties shall file supplemental

memoranda addressing the following issues:
a.

Whether the court should decide the indefiniteness

issue in connection with the Markman hearing or after discovery,
the standards for deciding indefiniteness after Nautilus,
v.

Biosig Instruments,

Inc.,

134 S.

Ct.

2120,

Inc. ,

and any progeny,

and the merits of defendants' indefiniteness defense.
b.
statements

The standards for determining whether examples or
contained

in

the

patent

specifications

limit

the

scope of a claim and how they apply in the instant case.
c.
the

Markman

Whether the court should hear expert testimony at
hearing

and

the

implications,

if

any,

of

Teva

Pharmaceuticals

USA,

Inc.

v.

Sandoz,

Inc.,

135

S.

Ct.

831

(2015), for that decision.
2.

The

parties

shall

confer

and,

by

March

25,

2015,

submit, jointly if possible but separately if necessary:
a.

The order in which the disputed claim terms should

be addressed at the Markman hearing.
b.
prosecution

A single
history

relied

construction

arguments

comment

the

in

submission

shall

document

and

on

also

by

the

prosecution

containing
each

claim

history

include

the

history relevant to plaintiffs'

the

party

language
was

parts

parts
in

its

that

each

addressing.
of

assertion that

the

of

the

claim
such
This

prosecution

it withdrew any

representation that "skin" is not covered by the patents-in-suit
before they were issued.
2.

Reply memoranda,

if any,

shall

be

filed by April

1,

2015.
3.

A Markman hearing will begin at 10:00 a.m.

2015, and will continue on April 9, 2015, if

on April 8,

necessar~.

UNITED STATES DISTRICT JUDGE

2